National Arbitration Forum




EU Property Portfolio Ltd. v. Salvia Corporation

Claim Number: FA0612000873726



Complainant is EU Property Portfolio Ltd. (“Complainant”).  Respondent is Salvia Corporation (“Respondent”), represented by Anatoly Ostrovsky, of P.O. Box 96, Riga, Latvia 1050 LV.




The domain name at issue is <>, registered with



The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.


Professor Darryl C. Wilson as Panelist.



Complainant submitted a Complaint to the National Arbitration Forum electronically on December 19, 2006; the National Arbitration Forum received a hard copy of the Complaint on December 27, 2006.


On December 20, 2006, confirmed by e-mail to the National Arbitration Forum that the <> domain name is registered with and that the Respondent is the current registrant of the name. has verified that Respondent is bound by the registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).


On January 5, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of January 25, 2007 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to by e-mail.


A timely Response was received and determined to be complete on January 22, 2007.


On January 24, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Professor Darryl C. Wilson as Panelist.



Complainant requests that the domain name be transferred from Respondent to Complainant.



A.     Complainant


Complainant asserts that it transacts business under the mark EUPP for its property investment agency EU Property Portfolio Ltd., and has acquired common law rights in the mark. Complainant indicates that it offers various types of properties and services related to the same online on <>.  Complainant contends that Respondent has been copying service categories from its website since 2005.  Complainant asserts that Respondent’s domain name <> is confusingly similar to its domain and that some of the services and products marketed are identical.  Complainant also contends that Respondent is not commonly known by the domain in dispute and has no rights or legitimate interest in the name.  Complainant states that Respondent is using its website to divert customers away from Complainant and thus registered and is using the domain in bad faith.


B.     Respondent


Respondent asserts that Complainant has not established any rights to the EUPP mark since Complainant has not actually registered the mark nor established the jurisdiction in which it claims to have acquired common law rights.  Respondent contends that it has rights and legitimate interest to the domain <> since it registered the domain prior to Complainant’s existence.  Respondent also asserts that it has never sought to sell the disputed domain to Complainant or Complainant’s competitors.



Complainant, EU Property Portfolio Ltd., is a property investment agency incorporated under U.K. law in 2003.  The Complainant offers services for property mainly located in France and Bulgaria.  The Complainant registered the domain name <> in 2004 and began advertising on Google Ad Words in 2005.  Complainant began an advertising campaign on Revisions in 2006 and some identical advertising information has been found on Respondent’s website.  Complainant filed a UDRP proceeding against Respondent on December 27, 2006, regarding Respondent’s use of the domain <>.  The Complainant has not registered the mark EUPP although it has used that designation since at least its domain name registration.


Respondent, Salvia Corporation, is a business entity located in Latvia that is using the <> website as a pass through to a variety of goods and services. These services include those related to property transactions, involving property located in Bulgaria.  Respondent registered its domain in 1999. 



Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”


Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:


(1)   the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)   the Respondent has no rights or legitimate interests in respect of the domain name; and

(3)   the domain name has been registered and is being used in bad faith.


Identical and/or Confusingly Similar


Complainant does not own a trademark registration for the EUPP mark, but instead relies on the establishment of common law rights pursuant to Policy ¶ 4(a)(i).  See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)).


Complainant has been established as a property investment agency for several years and has operated its website at <> since 2004.  Although it has been held that there is no requisite showing to establish common law rights, common sense dictates that something beyond mere proof of business establishment is necessary.  See Jason Goepfert, President and CEO v. Rogers, 861124 (Nat. Arb. Forum Jan. 17, 2007) (“[T]here is no particular amount of evidence required in order to establish common law rights.  The determination of what is sufficient is ad hoc based on the specific facts and circumstances involved, as is the scope of the rights once established.”).  The mark EUPP does not seem inherently distinctive and no evidence was tendered by Complainant to indicate the contrary, nor that some degree of secondary meaning has attached to the mark.  There was also no evidence indicating the extent of the mark’s use either prior to or since registering its domain name.  Mere registration of a domain name is insufficient to establish common law rights.  See Kip Cashmore v. URLPro, D2004-1023 (WIPO Mar. 14, 2005) (finding no common law rights where the complainant did not present any credible evidence establishing acquired distinctiveness); see also Hugo Daniel Barbaca Bejinha v. Whois Guard Protected, FA 836538 (Nat. Arb. Forum Dec. 28, 2006) (failing to find common law rights where the complainant provided little evidence showing the extent of its use of the mark over the three years that the complainant claimed to have been using the mark).


Further, the WHOIS information lists Respondent’s registration of the disputed domain <> as March 15, 1999.  Complainant’s business was incorporated in 2003 and Complainant’s <> domain name was registered on September 1, 2004.  Since rights in the mark do not predate Respondent’s domain name registration, Complainant cannot satisfy Policy ¶ 4(a)(i).  See Phoenix Mortgage Corp. v. Toggas, D2001-0101 (WIPO Mar. 30, 2001) (“[Policy ¶ 4(a)(i)] necessarily implies that the Complainant’s [trademark] rights predate the Respondent’s registration and use of the Domain Name.  Any other interpretation would allow a junior trademark user to challenge a prior domain name registration, a possibility that is obviously contrary to the intent of the Policy and to trademark law generally”); see also Intermark Media, Inc. v. Wang Logic Corp., FA 139660 (Nat. Arb. Forum Feb. 19, 2003) (finding that any enforceable interest that the complainant may have in its common law mark did not predate the respondent’s domain name registration, therefore finding that Policy ¶ 4(a)(i) had not been satisfied). 


Because Complainant has failed to satisfy Policy ¶ 4(a)(i) by failing to have rights in EUPP that predate Respondent’s registration of the <> domain name, the Panel is not required to analyze the other two elements of the policy.  See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because Complainant must prove all three elements under the Policy, Complainant’s failure to prove one of the elements makes further inquiry into the remaining element unnecessary); see also Trujillo v. 1Soft Corp., FA 171259 (Nat. Arb. Forum Sept. 10, 2003) (“As Complainants have not shown that their rights pre-date Registrant's domain name, Complainants have not satisfied paragraph 4(a)(i) of the Policy.”).


In the interest of the integrity of the process the Panel will briefly address the other two elements.


Rights or Legitimate Interests


The fact that Respondent registered the <> domain name prior to Complainant’s use supports Respondent’s claim that it has rights or legitimate interests in the disputed domain name.  See Parachute, Inc. v. Jones, FA 94947 (Nat. Arb. Forum July 12, 2000) (denying transfer of the domain name because the respondent’s use of the PARACHUTE mark and the domain name in question preceded any use of the service mark by the complainant); see also Warm Things, Inc.  v. Weiss, D2002-0085 (WIPO Apr. 18, 2002) (finding that the respondent had rights or legitimate interests in a domain name when its registration of that domain name occurred before the complainant had established rights in its alleged mark). 


Further, Respondent’s website usage of pay-per-click links is a bona fide offering of goods and services.  See INVESTools Inc v. KingWeb Inc., FA 598845 (Nat. Arb. Forum Jan. 9, 2006) (holding that the respondent’s use of the disputed domain name to operate a web directory with links to investment-related websites in competition with the complainant constituted a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i)); see also Eastbay Corp. v., Inc., FA 105983 (Nat. Arb. Forum May 20, 2002) (finding that the respondent’s use of the disputed domain name as a portal to a commercial website featuring various advertisements and links constituted a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i)).  While Complainant may have legitimate concerns regarding Respondent’s content being similar or identical to its own, the UDRP proceeding is the improper forum to resolve such a conflict when the Complainant is the junior user of the mark in dispute.


Registration and Use in Bad Faith


Because Respondent has rights and legitimate interests in the <> domain name, the Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(ii).  See Pensacola Christian Coll. v. Gage, FA 101314 (Nat. Arb. Forum Dec. 12, 2001) (“Because the Panel has found that Respondent has rights and interests in respect of [sic] the domain name at issue, there is no need to decide the issue of bad faith.”); see also Lee Procurement Solutions Co. v., Inc., FA 366270 (Nat. Arb. Forum Jan. 7, 2005) (“Respondent's rights and legitimate interests in the domain name pursuant to Policy ¶ 4(a)(ii), allow a finding that there was no bad faith registration or use under Policy ¶ 4(a)(iii).”).


Reverse Domain Name Hijacking


There is insufficient evidence to support a finding of reverse domain name hijacking.  Respondents must do more than merely indicate prior existence to Complainant’s mark to show the UDRP Policy is being used in bad faith.  Complainant has no obvious interest in obtaining Respondent’s domain name for its own use and Complainant has raised some plausible arguments in regards to the three main prongs of the UDRP Policy.  See  Goldline International, Inc. v. Gold line, D2000-1151 (WIPO Jan. 4, 2001) (“To prevail on such a claim, Respondent must show that Complainant knew of Respondent’s unassailable right or legitimate interest in the disputed domain name or the clear lack of bad faith registration and use….”).  In this proceeding Respondent made no claims regarding the past or present usage of its website or the services provided by its business prior to Complainant’s registration.  Respondent has been party to a number of prior UDRP matters where Respondent’s activities were characterized as not being legitimate commercial activities, however in those cases Respondent was not the senior mark user.



Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.



Professor Darryl C. Wilson, Panelist
Dated: February 7, 2007






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