WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Engel & Volkers Marken GmbH & Co. KG, Engel & Volkers

Residential GmbH v. Engel & Voelkers EOOD

Case No. D2010-0559

1. The Parties

The Complainants are Engel & Volkers Marken GmbH & Co. KG and Engel & Volkers Residential GmbH of Oststeinbek-Havighorst and Hamburg, Germany.

The Respondent is Engel & Voelkers EOOD of Varna, Bulgaria.

2. The Domain Name and Registrar

The disputed domain name <engelvoelkers-bulgaria.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 14, 2010. On April 15, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On April 16, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 23, 2010. The Parties were also informed by the Center on April 23, 2010 that the Parties must inform the Center of any developments in any other legal proceedings in Germany and Bulgaria in connection with or relating to the disputed domain name.

In accordance with the Rules, paragraph 5(a), the due date for Response was May 13, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on May 14, 2010.

The Complainants further in an email dated May 17, 2010 confirmed that the related legal proceedings in Germany and Bulgaria resulted in effective and legally binding decisions against the Respondent and currently the Complainants are attempting service of those judgments on the Respondent.

The Center appointed Irina V. Savelieva as the sole panelist in this matter on May 26, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The First Complainant (Engel & Volkers Marken GmbH & Co. KG) is the holder of the international trademark ENGEL & VÖLKERS registration No. 745 764, registered since October 12, 2000, which includes Bulgaria and also the holder of CTM trademark ENGEL & VÖLKERS registration No. 1013010, registered since March 17, 2000. The trademarks are used in connection with real estate, agencies of residential and commercial real estate, real estate management and agency purchase and sales of real estate property.

The Second Complainant (Engel & Volkers Residential GmbH) is a sister company of the First Complainant and operates as the main licensee in the company's franchise system for residential and commercial real estate, real estate management, agencies of purchase and sales of real estate property and using the ENGEL & VÖLKERS trademark.

Both Complainants belong to the Engel & Völkers group of companies, which has the principal place of business in Hamburg, Germany. The Engel & Völkers group operates worldwide in the field of real estate, agencies of residential and commercial real estate, real estate management and agencies of purchase and sales of real estate property. These services are offered and advertised through the official website of the Engel & Völkers group of companies at “www.engelvoelkers.com”.

The Engel & Völkers group of companies operates through a multitude of licensees, which operate their own commercial real estate offices, which are called Engel & Völkers Property Shops in numerous countries worldwide (more than 390 shops). The Engel & Völkers group was founded in 1977 and has been a licensor since 1997.

The disputed domain name was registered by the Respondent on May 22, 2006.

5. Parties' Contentions

A. Complainant

(a) The disputed domain name <engelvoelkers-bulgaria.com> is identical or confusingly similar to a trademark or service mark in which the Complainants have rights:

- The disputed domain name is in its first part almost identical to the First Complainant's trademark ENGEL & VÖLKERS. Phonetically both signs are identical - the letter “Ö” in German language is identically pronounced as “OE” in the first part of the domain name “engelvoelkers”. The ampersand in the First Complainant's trademark does not make any difference and as such is not applicable in case of a domain name. Since the domain names cannot include the ampersand and phonetically outside Germany the letter “ö” should be represented as “oe”, it obligatory must be reflected in a domain name as “engelvoelkers”.

- The second part of the disputed domain name is merely a geographical indication and as such presents no remarkable difference between the trademark and the disputed domain name.

- Both the trademark and the disputed domain name coincide in their distinctive element and are phonetically and visually almost identical.

(b) The Respondent has no rights or legitimate interests in respect of the disputed domain name:

- The Respondent operates in the identical field of services as those of the Complainants, namely of residential and commercial real estate.

- The Respondent is an owner of a real estate office in Varna, Bulgaria, where it unlawfully used the ENGEL & VÖLKERS trademark for its office, while not being a licensee or franchisee of the Engel & Völkers group of companies. The Respondent's office now acts under the name “Bulgaria Exclusive”.

- The Respondent is still using the disputed domain name for offering and agency services of residential and commercial real estate. The disputed domain name is not deposited with any content and instead redirects to website at “www.bulgariaexclusive.com”. However the Respondent still has content on subpages of the disputed domain name that use the ENGEL & VÖLKERS trademark.

(c) The Respondent registered and is using the disputed domain name in bad faith:

- The CEO of the Respondent, Mr Schmidt contacted the Second Complainant in April 2005 showing his interest in a license partnership for Bulgaria. On April 14, 2005 a representative of the Second Complainant met with Mr Schmidt to discuss this and in view of a possible future license partnership Mr Schmidt was given some general information and some forms. Further attempts after this informal discussion to contact Mr Schmidt have failed and the Second Comlpainant assumed that Mr Schmidt was no longer interested in a license partnership.

- The Second Complainant received an email from the Respondent announcing opening of an “Engel & Völkers” real estate office in Varna, Bulgaria. The designs of the opened office in Varna, Bulgaria was intended to fit in with the unique corporate design of real estate offices of Engel & Völkers group of companies around the world.

- The Respondent uses the disputed domain name for advertising and offering real estate services in Bulgaria and Mallorca by linking the disputed domain name to its official Internet presence under “www.bulgaria-exclusive.com”. Further subpages under the disputed domain name still use the ENGEL & VÖLKERS trademark and contain information about the company.

- The above behaviour indicates that the Respondent intentionally attempted to attract for commercial gain Internet users to the Respondent's website or other online location by creating likelihood of confusion with the ENGEL & VÖLKERS trademark as to the source or endorsement of the Respondent's website, location or the services offered by the Respondent.

(d) Related legal proceedings:

- The unlawful use of the disputed domain name has been already confirmed by related proceedings in Bulgaria as well as Germany.

- The Commission for the Protection of Competition of Bulgaria on October 2, 2007 in decision No. 837 imposed a fine on the Respondent due to infringement of the Bulgarian Unfair Competition law, which, inter alia, provides that it is prohibited to use a trademark similar or identical to that of other persons in a way that may result in impairing the interests of competitors and/or consumers. The appeal against this decision was rejected by the Supreme Administrative Court of Bulgaria on April 3, 2008.

- The District Court of Hamburg in its decision dated June 25, 2008 prohibited the Respondent amongst others to refrain from using the disputed domain name in connection with offering and/or agencies of real estate, including commercial real estate, in Bulgaria and in commerce in Germany without the consent of the First Complainant.

- The Respondent's CEO's also founded a further company “Swiss Top EOOD” in Bulgaria, which was linked to the Respondent and operating in the same field of business activity of purchase, construction and furnishing of real state property with a view of a sale. On January 16, 2006 Swiss Top applied for registration of two national trademarks in Bulgaria (trademark application No. 83991 for ENGEL & VÖLKERS (word) and trademark application No. 84113 for ENGEL & VÖLKERS (word/device)). The Commercial Department of the Sofia City Court on April 23, 2008 confirmed that these applications were made in bad faith.

B. Respondent

The Respondent did not reply to the Complainant's contentions.

6. Discussion and Findings

A. Effect of prior legal proceedings

According to paragraph 18(a) of the Rules, in the event of any legal proceedings initiated prior or during an administrative proceeding in respect of a domain name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding or to proceed to a decision.

In the present case, legal proceedings were initiated in Germany and Bulgaria prior to this administrative proceeding. In view of the Panel, those proceedings do not directly relate to the disputed domain name, but the disputed domain name is mentioned amongst other considerations arising out of the conduct of the Respondent in attempting to use, as well as register though a related party in bad faith, the Second Complainant's trademark in Bulgaria.

The Panel further takes the view that it shall consider, where relevant, such decisions in related legal proceedings made against the Respondent, which contain evidence as to the general conduct and specific actions of the Respondent.

B. Identical or Confusingly Similar

The First Complainant has registered the international trademark ENGEL & VÖLKERS as well as the Community Trade Mark ENGEL & VÖLKERS. The Complainants submit that the disputed domain name <engelvoelkers-bulgaria.com> is identical or confusingly similar to the trademark ENGEL & VÖLKERS as the domain name incorporates the whole of the trademark, this being a registered trademark.

On the issue of use of the phonetic spelling (“OE”) of the German letter “Ö” the Panel refers to previous decision in Klöckner & Co SE v. Klocke of America, Inc., WIPO Case No. D2010-0464, where the panel held the following view:

“The issue of confusing similarity between a trademark spelled with an “ö” and a domain name incorporating that trademark but spelled with an “oe” has arisen before. Whilst previous decisions under the UDRP are not binding, it has usually been held that the replacement of “ö” with the phonetically similar “oe” may be sufficient for confusing similarity to be found in the terms of paragraph 4(a)(i) of the Policy (for example, Deutsche Börse AG v. Pertshire Marketing, Ltd., WIPO Case No. D2006-0786; Mövenpick Holding AG v. Olive Tree Products, WIPO Case No. D2000-1540; Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936).”

The Panel therefore finds that the use of “oe” instead of the German letter “ö” is sufficient evidence of confusing similarity.

The use of the word “and” instead of the ampersand is a widely used practice as domain names do not allow the use of the ampersand. Hence Internet users expect the ampersand to be either the word “and” or instead be completely ignored (AT&T Corp. v. ATandT.com, WIPO Case No. D2002-1178).

For the reasons above the Panel finds that the first part of the disputed domain name (“engelvoelkers”) is confusingly similar to the First Complainant's trademark ENGEL & VÖLKERS.

In relation to the second part of the disputed domain name (“bulgaria”) the Panel finds that it is insufficient to dispel user confusion by simply appending a country's name or other well known geographic indicator to the trademark of the First Complainant. In fact it may lead to further confusion on the part of the user as this indicates a well-known practice for naming of country specific domain names in the gTLD area. Therefore this creates an impression with the user that the disputed domain name is in fact the domain name for the country specific website of the Engel & Völkers group of companies. The Panel also finds the Decision of the Supreme Administrative Court of the Republic of Bulgaria No. 3903 dated March 3, 2008 of further evidential significance as that includes an analysis of the website at the disputed domain name <engelvoelkers-bulgaria.com> at or around the time of those proceedings. The court in the Decision found that the website at the disputed domain name was almost identical in its design to the websites of the Engel & Völkers group of companies under which the Complainants have their online presence. The court in its Decision [translation provided in Annex 11 of the Complaint] particularly states that:

“These resemblances [...] are sufficient for determining a possibility of delusion among the consumers. This conclusion is also supported by the fact that upon a comparison of the design of the process sites there was ascertained a full imitation of the petitioner's site on the part of the defendants.”

No doubt that the intention of the Respondent was to create confusion in the minds of Internet users, not only by incorporating the First Complainant's trademark together with the geographic indicator, but also through creating an identical website under the disputed domain name that existed at or around the time of the related legal proceedings.

The Panel also refers to AT&T Corp. v. WorldclassMedia.com, WIPO Case No. D2000-0553 where the Panel found confusing similarity to the AT&T trademark by domain names formed by including a geographic descriptor following the term “ATT”.

For the above reasons the Panel find that the geographic indicator in the second part of the disputed domain name (“Bulgaria”) is not a sufficient way for the Respondent to differentiate the disputed domain name from the First Complainant's trademark ENGEL & VÖLKERS.

The Panel finds the disputed domain name to be confusingly similar to the First Complainant's trademark ENGEL & VÖLKERS.

The Panel finds that the Complainant has satisfied its burden of proof under paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Complainants contend that the Respondent has no rights or legitimate interests in the disputed domain name.

Even though the Respondent has not filed a Response to the Complaint and has not contested the Complainants' assertions, it is up to the Panel to consider whether the Respondent's use of the disputed domain name demonstrates rights or legitimate interests in the domain name.

According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent's rights or legitimate interests in a domain name:

(i) Respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; or

(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or

(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant's marks.

A respondent may elect to show rights and legitimate interests, non-exhaustively, by producing proof under paragraphs 4(c)(i)‑(iii) of the Policy.

By not responding to the Complainants' contentions, the Respondent in this proceeding has never attempted to show its rights and legitimate interests.

Firstly, there is no evidence that before any notice of a dispute with the Complainant, the Respondent was using the disputed domain name for a legitimate offer of goods and services.

According to the documents submitted by the Complainant the disputed domain name currently redirects to a website “www.bulgariaexclusive.com”, which is the current official name of the Respondent under which it is acting. This website offers information, which falls directly in the Complainants' area of business activity.

The Panel finds no evidence that the Respondent was using or is using the disputed domain name for a legitimate offering of goods and services. The Panel also draws further inferences from the fact that the Respondent created a website almost identical to that of the Engel & Völker group of companies at or around the time of certain related legal proceedings referred to above.

Secondly, as for the Respondent's proof under paragraph 4(c)(ii) of the Policy there is no evidence that the Respondent has been commonly known by the disputed domain name.

The Panel recalls that the Respondent registered the disputed domain name on May 22, 2006. The Complainant asserts that it has been trading under the Engel & Völkers name since 1977. Further the Complainant has registered ENGEL & VÖLKERS trademark internationally (including Bulgaria) and at European Community level.

The Panel believes that the Respondent knew about the Complainant's trademarks at the time of registration of the disputed domain name. This is further evidenced by another company associated with the Respondent by applying to register ENGEL & VÖLKERS trademarks in Bulgaria, an attempt which was rejected by the Commercial Department of the Sofia City Court in a Decision No. 29, dated April 23, 2008, which held that the registrations were brought in bad faith.

It is the Panel's view, on the present facts, that the Respondent probably registered the disputed domain name with awareness of the Complainant's products and trademarks as well as goodwill associated with them.

Thus the Panel also finds that the Respondent's use of the disputed domain name does not constitute a bona fide offering of services under paragraph 4(c)(i) the Policy.

The Panel finds the Complainants have carried out their burden of proof to show that the Respondent has no rights or legitimate interests in the disputed domain name.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances are deemed to be evidence that a respondent has registered and is using a domain name in bad faith:

(i) circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out‑of‑pocket costs directly related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.

The Complainants contend that the Respondent has violated the bad faith provision of the Policy because the disputed domain name was registered and used primarily for the purpose of confusing the public and diverting public attention from the Complainants' official website to the Respondent's website for potential commercial gain.

The Panel finds that the Respondent's website could have attracted potential attention from the public because of its probable association with the Complainants' products and services. At the same time it has created a risk of confusion with the Complainants' products and trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent's website.

The Respondent does not conduct any legitimate business activity using the disputed domain name. The Respondent must have known the Complainants' products and should have been aware of the trademarks of the First Complainant. These findings, together with the finding that the Respondent has no rights or legitimate interests in the domain name, lead the Panel to conclude that the disputed domain name has been registered by the Respondent in bad faith.

The Panel draws further inference of bad faith on part of the Respondent from the conduct of the Respondent as highlighted by related legal proceedings as well as the failure of the Respondent to submit a Response to the Complaint.

The Panel finds that the Complainants presented sufficient evidence that the Respondent was and is in violation of the provisions of paragraph 4(b)(iv) of the Policy and that the Respondent registered and used the disputed domain name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <engelvoelkers-bulgaria.com> be transferred to the Complainants.

Irina V. Savelieva
Sole Panelist

Dated: June 9, 2010