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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Berkeley Square Trading Ltd v BG Consult Ltd [2006] DRS 3267 (16 March 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3267.html Cite as: [2006] DRS 3267 |
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Berkeley Square Trading Ltd v BG Consult Ltd
Decision of Independent Expert
Complainant: Berkeley Square Trading Ltd
Country: GB
Respondent: BG Consult Ltd, trading as Blue Chip Computer Solutions Limited
Country: GB
dreambulgarianproperties.co.uk ("the Domain Name")
The Complaint was lodged with Nominet in full on 6 January 2006. Nominet validated the Complaint. The Respondent did not file a Response. On 10 February 2006 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy ("the Policy").
Cerryg Jones, the undersigned, ("the Expert") confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.
The parties filed non-standard submissions which I decided to admit for the reasons set out in the ruling attached to this decision.
There are no other outstanding procedural issues that arise.
The Complainant provides services related to selling and letting property in Bulgaria to the English-speaking market. It registered the domain names bulgariandreams.co.uk and bulgariandreams.com on 14 September 2003 and says it commenced trading as "Bulgarian Dreams" the following month. The Complainant claims that most of its property sales are generated through its websites (www. bulgariandreams.co.uk and www.bulgariandreams.com). The Complainant alleges that it is the leading company providing services relating to the selling and letting of property in Bulgaria to the English-speaking market, and that obtained €20m of property sales in 2004. The Complainant provided evidence of various awards including "Best Bulgarian Estate Agent" 2004 and 2005 and "Best Bulgarian Property Development" 2004, and "Best Real Estate Agency Website" 2005 (Bentley International Property Awards). The Complainant claims to have spent £324,280 on advertising, public relations and exhibitions since October 2003. It also alleges that since 22 November 2003 it has paid online search engines some several hundred pounds per day and that total spending with Google now amounts to £261,136. The Complainant has provided details and/or evidence relating to (a) advertisements it has placed in the national and regional press (b) its participation in exhibitions, seminars and trade shows (c) promotional brochures and (d) press coverage it has received. The Complainant is also the proprietor of a UK trade mark registration for the word mark "Bulgarian Dreams" for services in class 36, including property brokerage and real estate agency services registered as of 13 August 2004 and a Community Trade Mark, again for the word mark "Bulgarian Dreams," registered as of 12 November 2004.
The Respondent also provides services in relation to the Bulgarian property market. The Domain Name resolves to a website (www.dreambulgarianproperties.co.uk.) which contains information about the Respondent and its services. The Respondent says that its business was first conceived in July 2004 and that it registered dreambulgarianproperty.co.uk and dreambulgarianhome.co.uk. on 9 July 2004 in connection with the proposed venture. The Respondent says that the website and database was completed a few months later in October 2004 and that in that month it registered sofiaestate.co.uk, the Domain Name, varna4sale.co.uk, bulgariaestate.co.uk, and sofiaforsale.co.uk. (In fact the registrant of these domain names apart from the Domain Name is Blue-Chip Computer Consulting Limited, which also appears to be owned and managed by the same individuals behind the Respondent). The Respondent says that it registered these domain names because they were descriptive and identified the region and the services in question. Users typing these domain names into their search engines are directed to the Respondent's website.
The Complainant's solicitors sent pre-action letters to the Respondent and Blue-Chip Computer Solutions Limited on 31 October 2005 alleging trade mark infringement and passing off and sought various undertakings, including an undertaking to transfer the Domain Name.
Complainant's submissions
The Complainant makes the following submissions in its Complaint:
1. That the "About Us" pages of the Respondent's website as at 1 November 2005 stated that Dream Bulgarian Properties was a "trade mark" of the Respondent and that this reference to "trade mark" has since been amended to "trading name". Evidence has been filed to substantiate this. The Complainant alleges that this demonstrates "Dream Bulgarian Properties" is not being used in a descriptive sense, but as a trade mark.
2. That the Domain Name is similar to trade marks in which the Complainant has rights. In that regard the Complainant says that the only differences between the Domain Name and the Complainant's BULGARIAN DREAMS trade marks and domain names are (a) the words "Bulgarian" and "dream" appear in reverse order, (b) the insignificant deletion of the letter "s" on dreams and (c) the suffix "properties", which simply describes the services offered.
3. That these differences are immaterial given (a) the inverting of the order of the words "Bulgarian" and "dream", which are not commonly used in conjunction, does not prevent confusing similarity. The Complainant refers to DRS-02532 in which the expert found that "leicesterandalliance" was similar to the name "allianceandleicester"; and DRS-02242 where the expert found that "bae-systems and systems-bae (with or without the hyphen and regardless of the domain suffix) were similar"; (b) the deletion of the "s" is of little significance. In this respect the Complainant cites DRS-01616 in which it was said by the expert that "In ordinary English usage, adding an "s" to a trading name is often immaterial; this case is an example of such usage"; (c) that both the Complainant and the Respondent are offering services related to the selling and letting of properties; for that reason the Complainant contends that "properties" in that context is being used as a descriptor, and does not serve to distinguish the Respondent's business, but in fact reinforces the likelihood of confusion between the Domain Name and the Complainant's business, by describing it. To illustrate this, the Complainant refers to DRS-2520 and the WIPO decision of D2000-0275. The Complainant also says that the Respondent admitted the descriptiveness of the word "properties" in correspondence; (d) the distinctive parts of the Complainant's BULGARIAN DREAMS trade mark are reproduced in the Domain Name; and (e) that the Respondent agreed in correspondence that the Domain Name and the Complainant's trade marks "may sound similar."
5. That the Domain Name was registered in a manner which, at the time of registration, took unfair advantage of or was unfairly detrimental to the Complainant's rights because the Domain Name was registered for the purpose of unfairly disrupting the business of the Complainant and/or otherwise taking unfair advantage of the Complainant's rights.
6. That the Respondent provides identical services to the Complainant, and, according to the Complainant, it must have been well aware of the Complainant's brand and business when it registered and used the Domain Name. In this respect, it is said that (a) the Complainant and Respondent operate in exactly the same market; (b) the market in which they operate is specialised and has relatively few participants; (c) the Complainant started trading under the name "BULGARIAN DREAMS" in 2003, and is very well known within its market; (d) the Respondent's reply to the pre-action letter shows the Respondent was well aware of the Complainant's BULGARIAN DREAMS trade mark in that it admits "we have met our colleagues from Bulgarian Dreams on many Property Exhibitions, we even know some of them"; (e) any new business will first review its market to establish the nature of the competition, and that for those businesses which operate via the internet, this will include searches at search engines such as Google. Here the Complainant refers to the Google account summary exhibited to the Complaint which sets out the listings against a search against "Bulgarian Property" after 22 November 2003, and in which the Complainant's business is prominent; and (f) the Respondent registered the Domain Name over 12 months after the Complainant started using its BULGARIAN DREAMS domain name and trading name.
7. That the Respondent must have been aware of the Complainant at the time of registration and subsequent use of the Domain Name; selected the Domain Name for its association with the Complainant's trade mark; and registered and used the Domain Name for the purpose of unfairly disrupting the business of the Complainant, and/or taking unfair advantage of the Complainant's reputation and goodwill.
8. That the Respondent is using the Domain Name in a way likely to confuse people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant because (a) the Domain Name is confusingly similar to the Complainant's trading name; (b) it is being used in connection with the same business activity; and (c) the Respondent is using a similar banner in the shape of a light blue wave at the top of its homepage to the light blue wave-shaped banner at the top of the Complainant's homepage As a result of such confusion, the Respondent's business will be unfairly advantaged, and/or the Complainant's business will be unfairly disadvantaged.
9. That while Paragraph 3(a) (ii) of the Policy requires evidence of actual confusion, in DRS02505 the expert recognised that the factors in paragraph 3 of the Policy are non-exhaustive, and held that a likelihood of confusion could suffice.
10. That the Respondent cannot demonstrate any circumstances that would constitute evidence that the registration of the Domain Name was not an Abusive Registration for the purpose of Paragraph 4 of the Policy since (a) the Respondent must have been aware of the Complainant's trading name and domain names when it registered the Domain Name, the Respondent was aware of the Complainant's cause for complaint when it registered and used the Domain Name; (b) the Respondent's use is neither legitimate non-commercial, nor fair, use of the Domain Name; (c) nor is the Domain Name generic or descriptive.
The Respondent's submissions
In its non-standard submission, the Respondent alleges :
1. That the Domain Name was registered prior to the Complainant's registered trade mark.
2. That the Complainant's trade mark is not inherently distinctive. The Respondent alleges that any acquired distinctiveness would take longer to accrue than the period between the Complainant's first use and the date of the Respondent's registration. For that reason the Respondent denies that it ought to have known about the Complainant's trade mark.
3. That the likelihood of confusion between the Domain Name and the Complainant's trade mark should be assessed in terms of how an average consumer would perceive them. In this respect the Respondent says that there are various syntactical differences between the Domain Name and the Complainant's trade marks; that "Bulgarian Dreams" has a descriptive connotation which is lost if the words are reversed; that the Domain Name mirrors the structure of some of the Respondent's other domain names; that the use of Dream/Dreams together with Bulgarian/Bulgaria is common; that the word "dream" is often employed to provoke positive associations such as, for example, "American Dream," "Dream Holidays", "Dream Team" and "Dream Home" and so is widely used for forming domain names in the property and holiday business; that Bulgarian is both descriptive of the Respondent's business and reflects the nationality of the owners and managers of the Respondent's business; and that the Domain Name suffix (which in context means "property" or "properties") makes a significant difference to the comparison as illustrated, for example, when comparing dreamcatchers.org, to dreamdoctors.com or dreamhomes.com, where the suffix is crucial to the distinction.
4. That the Nominet and WIPO decisions cited can be distinguished from this case given that in the former (a) the Respondents had no operating businesses; (b) the Complainants' had used their trade marks for a considerable time; (c) the domain names were offered for sale; and (d) the domain names in dispute incorporated the Complainants' trade marks.
5. That WIPO decision D20005-1149 is more relevant. Here the same Complainant failed in its complaint against the registrant of the domain name bulgarianpropertydream.com.
6. That whilst the Complainant is prominent in Google's search listings against the term "Bulgarian Dream/Dreams", the Respondent is not.
7. That no actual evidence of confusion has been adduced. The Respondent also refers to its unique style of business, particularly its promotion of, and association with, Bulgarian culture, which differs from the Complainant's so that no confusion will arise.
8. That both the Respondent and the Complainant were referred to by the Telegraph in an article concerning Bulgarian properties without confusion or misunderstanding.
9. That the Respondent would not benefit from the Complainant's marketing.
10. That the structure "Bulgarian Dream/Dreams" is commonly used in a variety of contexts and examples are given in the political, tourist, entertainment and culinary fields.
11. That the Respondent's website is solely used to further its business, which is well established, and that the Respondent is making a fair use of the domain name in relation to a genuine offering of services.
12. That there is no evidence in the form of statistics and consumer surveys to demonstrate that the Complainant is the market leader and that the Complainant's alleged keyword payments to Google in respect of a variety of terms undermines the claim to market leadership.
13. That confusion may result because the Complainant's have deliberately chosen a trading name which is a commonly used phrase.
14. That on 25 October the Complainant registered the domain name dreambulgarianproperties.com, which is identical to the Domain Name save for the top level domain suffix, in circumstances where the Complainant was cognisant of the Respondent's business and which serves to take advantage of the Respondent's rights and unfairly disrupt its business.
15. That the Respondent did not register dreambulgarianproperties.com at the time because it did not consider it to be necessary.
16. That the appearance of the Complainant's website has changed over time and looked very different to the Respondent's website up until April 2005. The Respondent infers that any similarities are due to the Complainant copying the Respondent's design. (In the Respondent's letter dated 3 November 2005, assertions are made as to the derivation of the Respondent's design).
The Complainant's response in a non-standard submission (so far as relevant to my decision)
The Complainant alleges in a non-standard submission that:
1. That of the domain names adopted by the Respondent, the Domain Name is the most distinctive and least descriptive.
2. That the Respondent's style of business does not differ in the sense that the Complainant also promotes and associates its business with Bulgarian culture.
3. That the Complainant relies upon both its registered trade marks and its unregistered trade mark, the latter of which would have acquired significant goodwill and reputation by July 2004; that Bulgarian Dreams is not inherently descriptive of real estate agency services; that the Respondent has not denied that it knew of the Complainant's business at the time of its registration.
4. That the average consumer's impression of the Domain Name and trade marks would be governed by his or her perception of the dominant elements of each, and not formed by the Respondent's analysis of the grammatical differences between the two.
5. That the Complainant does not seek to monopolise either "Dream" or "Bulgarian" but there combination in this field of business and that the practice of using "Dreams" in the holiday business is therefore irrelevant; that of the domain names referred to as evidence of the common nature of this formulation, one has been transferred to the Complainant in WIPO D20005-1214 (bulgariandreamhome.com) and the other, dreampropertiesbugaria.com, the Complainant considers to be an infringement of its intellectual property rights.
6. That the Respondent's grounds for differentiating the WIPO and Nominet decisions cited by the Complainant are irrelevant to the issue of similarity in this case.
7. That the Respondent has paid Google for keyword advertising in respect of the keyword "Bulgarian Dream" which is further evidence of a likelihood of confusion and of the Respondent's intention to disrupt and take unfair advantage of the Complainant's business.
8. That none of the examples used by the Respondent of the word combination in issue are relevant to the parties' businesses; that the evidence does not support the assertion that this word combination is popular and widely used, and is obscure. That the Complainant was not aware of any of the names referred to by the Respondent which used this combination, and has not received any complaints from those which use them.
9. That the Complainant's market position is true; its sales are significant as demonstrated by evidence from its accountants, and its awards are genuine.
10. That the Complainant registered dreambulgarianproperties.com to prevent further infringement by the Respondent.
11. That the Respondent has not adduced evidence that its website has been in current form since October 2004. The Complainant says it re-designed its current website in April 2005 and did not become aware of the Respondent's domain name or website until October 2005.
Paragraph 2 of the Policy requires that for the Complainant to succeed it has to prove to the Expert on a balance of probabilities, that it has rights in respect of a name or mark identical or similar to the Domain Name and that the Domain Name in the hands of the Respondent is an abusive registration (as defined in paragraph 1 of the Policy).
Complainant's Rights
This can be dealt with swiftly; the Complainant has rights in the name "Bulgarian Dreams" as a result of its trade under the name, and in its various registered trade marks. The trade mark is not wholly descriptive of the Complainant's business.
Is the Domain Name similar to the mark in question? Here I have considered the fact the well established principle that small differences between conflicting marks which are wholly or partly descriptive of the goods or services that are in issue (here real estate services and related activities in Bulgaria) are often held to be enough to distinguish them. I have also considered in particular the aural, conceptual and visual similarities between the two, bearing in mind their dominant and distinctive components, and their likely perception in the mind of an average consumer of these services in question (an analysis that is familiar and long established under the case law that has developed under the 1994 Trade Marks Act). Applying these principles, it is my view that the Domain Name is similar to the Complainant's trade marks.
Abusive Registration
The Complainant also has to show that the domain name is an abusive registration. Paragraph 1 of the Policy defines this as a domain name which either:
i. was registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR
ii. has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."
A non-exhaustive list of factors, which may be evidence of an abusive registration, are set out in paragraph 3a of the Policy. However, these are only examples of conduct, which may be evidence that a domain name is an abusive registration.
The factor relied upon in this Complaint is contained in subparagraphs 3 a i C; that is
3 a i Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
C. for the purpose of unfairly disrupting the business of the Complainant
The Complainant also says that it is highly probable that a likelihood of confusion will arise, though no such evidence of actual confusion has been provided. Whilst paragraph 3 a ii states that a Complainant has to show circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant, in my view a likelihood of such confusion can also constitute evidence of an abusive registration.
Paragraph 4 of the Policy sets out a non-exhaustive list of factors which may be evidence that the Domain Name is not an abusive registration. These include (so far as relevant to these proceedings) that before being aware of the Complainant's cause for complaint, the Respondent has used or has made preparations to use the Domain Name or a name which is similar to the Domain Name in connection with a genuine offering of services; and that the Domain Name is generic or descriptive and the Respondent is making fair use of it.
The key questions in my mind are:
1. Whether the Respondent was aware of the Complainant's business at the time it registered the domain name dreambulgarianproperty.co.uk on 9 July 2004. (The Domain Name was registered three months later but given the earlier registration of a near identical domain name, the earlier registration has a considerable bearing in my view on any assessment of the Respondent's subsequent motive for registering the Domain Name.)
2. If the Respondent was so aware, did it register the Domain Name for the purposes of taking advantage of the Complainant's rights, or to cause unfair detriment to such rights, or, does the Respondent's intention or use fall within any of the non-exhaustive factors (or other factors) which are permissible under the Policy.
The evidence and submissions are to the effect that by 9 July 2004 the Complainant had been trading for 10 months (October 2003). The Complainant's schedules suggest that by 9 July 2004, over £10,000 of advertising had been placed in a variety of national media, including the Sunday Times, the Telegraph and the Financial Times that it had participated in one exhibition at Excel, London between 20 and 22 February 2004; and that it had received some press coverage in six newspapers. In my view this evidence is sufficient to establish that the Complainant had by 9 July 2004 established some reputation and goodwill under the unregistered trade mark "Bulgarian Dreams" for estate agency services relating to Bulgarian property. The Respondent has not expressly denied that it knew of the Complainant's registration at the relevant date (it says that "…it isn't serious to suggest that at the time we registered our domain name we ought to have known about the Complainant's mark") but I do not infer from this that the Respondent is admitting it did. I do not think that the evidence establishes that the Respondent would necessarily have known about the Complainant's business at the time it registered dreambulgarianproperty.co.uk, or indeed the Domain Name, or that the Respondent would have known about the Complainant's business at this date on a balance of probabilities. In my view the Respondent's explanation of its choice of Domain Name is entirely plausible. I do not believe the evidence establishes on a balance of probabilities that the Respondent registered the Domain Name for the purposes of unfairly disrupting the Complainant's business. The Domain Name has an aspirational and descriptive power which reflects the nature of the business in question; it does not appear to me that the Complainant's reputation under "Bulgarian Dreams" was causative of the Respondent's choice. To my mind the Domain Name is, in substance, descriptive, and I believe the Respondent is making fair use of it.
Nor do I believe that the evidence or submissions establish that there is a likelihood of confusion between the Domain Name and the Complainant's trade mark, notwithstanding the Respondent's use of keyword advertising that relies on a keyword which is identical to the latter, or indeed any alleged similarity between the appearance of the websites. The question of whether keyword use under the Trade Marks Act might constitute trade mark infringement has been considered by the Court of Appeal in Reed v Reed. This case raises doubts as to whether parties who purchase keywords that incorporate the trade marks of others infringe the marks in question by giving rise to a likelihood of confusion. The position in other jurisdictions as to the legitimacy of this practice is also inconsistent. I do not think the evidence and submissions in this case allow me to say that this case gives rise to the sort of confusion that is required under the Policy for the Domain Name to constitute an abusive registration. In reaching this conclusion I have considered the aural, visual and conceptual similarities and differences between the Domain Name and the Complainant's trade marks, their dominant and distinctive components, the fact that they are being used in relation to identical services, their likely perception in the minds of the average consumer of these services, the reputation under the Complainant's trade marks and the extent to which the Domain Name and the Complainant's trade marks function as descriptors or as indications of origin. These factors lead me to conclude that the Domain Name is similar to the Complainant's trade marks but not so similar that it gives rise to a likelihood of confusion.
Accordingly, I find that the Domain Name is not an abusive registration.
In the light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is similar to the domain name in issue and that the domain name, in the hands of the Respondent, is not an abusive registration, I direct that the Domain Name should not be transferred to the Complainant.
Cerryg Jones 16 March 2006
