Saveonyourbills Ltd -v- Uswitch Ltd [2003] DRS 1055 (28 August 2003)

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3.1 The Complaint was received in full by Nominet on 11th June, 2003. Nominet validated the Complaint and notified the Respondent of the Complaint on 19th June, 2003. Nominet informed the Respondent that he had 15 working days (until 11th July, 2003) to lodge a Response. A Response was received on 9th July, 2003 and forwarded to the Complainant on 9th July, 2003 with an invitation to the Complainant to make any further submission in reply to the Response by 16th July , 2003.
3.2 The Complainant did not file a Reply. The dispute was not settled by Informal Mediation and on 5th August, 2003, the Complainant was invited to pay the fee to obtain the Expert Decision pursuant to paragraph 6 of the Nominet UK Dispute Resolution Policy (“the Policy”). The fee was duly paid.
3.3 On 11th August, 2003, Nick Gardner, the undersigned (“the Expert”), confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as an 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.

5.1 The Complainant company provides an Internet-based price comparison service which compares all UK gas and electricity suppliers via an on-line database. The service helps the consumer find savings and facilitate a change to a new supplier on-line.
5.2 The company was incorporated on 30th October 2000, at which time the only other business to offer a similar service operated via a website at www.buy.co.uk. This business was taken over by the Respondent in July 2001.
5.3 The Complainant's service is accessed on-line using the domain name www.saveonyourbills.co.uk or www.saveonyourbills.com. These domain names were registered on 19th April 2000 by the parent company of the Complainant.
5.4 The Respondent registered the Domain Name (identical to one of the domain names operated by the Complainant save for the absent letter “s”) on 17th December 2001.
5.5 On 22nd August 2001, the Respondent launched a legal attempt to claim copyright in the "on-line comparison" idea and source code, which attempt was rebuffed by the Complainant.
5.6 The Domain Name is re-directed to one of the Respondent's websites (www.uswitch.co.uk).
5.7 Both the Complainant and the Respondent are accredited by Energywatch (formerly Ofgem) under their price comparison scheme for consumer confidence and impartiality.
5.8 The Complainant and the Respondent are the two largest companies in the on-line utilities comparison market and regularly feature together in both print and television and radio media.

6.1 The Respondent has registered the Domain Name as a direct attempt to trade on the Complainant’s brand name and thereby gain an further unfair competitive advantage. The proof of this is that the Domain Name is re-directed to one of the Respondent's websites. Any consumers mis-hearing or mis-typing the Complainant's domain name, may mistakenly go to the Respondent's website. The Domain Name is therefore an Abusive Registration.
6.2 There is no reason for the Respondent to have any association with the Domain Name.
Respondent

6.3 The Domain Name us being used to offer customers a service that allows them to save money on their gas, electricity, telephone and digital bills.
6.4 The Domain Name is a descriptive one which describes fairly and accurately the service provided by the Respondent.

7.1 To succeed in its Complaint the Complainant must prove to the Experts on the balance of probabilities:
(1) that it has Rights in respect of a mark identical or similar to the Domain Name, and
(2) that the Domain Name, in the hands of the Respondent, is an Abusive Registration (paragraph 2 a of the Policy).

7.2 Under paragraph 1 of the Policy, "Rights" are defined as including, but not limited to, rights enforceable under English law. The Policy goes on to say that a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of its business.
7.3 The Complainant has not made any specific submissions on this point.
7.4 Under English law, rights in an unregistered mark enforceable on the basis of the common law action of "passing off". Such rights are acquired not through registration, but through the use of a mark, which comes to function as a badge of recognition to which the goodwill of a business attaches.
7.5 The question arises whether the Complainant has Rights of this kind in the mark “saveonyourbills” as a result of its use of the mark, given that the words “save on your bills” describe the purpose of it business i.e. its business is to enable customers to save money on certain of their bills.
7.6 Whilst the name “saveonyourbills” clearly describes the purpose or aim of the website operated by the Complainant, in the Expert’s view this is not the same as being “wholly descriptive of its business”. Coupled with the Complainant’s evidence that it has traded via two domain names which correspond to this name (www.saveonyourbills.co.uk and www.saveonyourbills.com) for at least two years, the Expert finds on the balance of probability that the Complainant’s use of the mark "saveonyourbills" has given it Rights in respect of a mark highly similar to the Domain Name.
Abusive Registration

7.7 Paragraph 1 of the Policy defines “Abusive Registration” as a Domain Name which either
(A) 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
(B) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.
7.8 A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration is set out at paragraph 3 a of the Policy. The list is as follows:
(i) Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:

(A) primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly associated with acquiring or using the Domain Name;
(B) as a blocking registration against a name or mark in which the Complainant has Rights; or
(C) primarily for the purpose of unfairly disrupting the business of the Complainant;
(ii) 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;

(iii) In combination with other circumstances indicating that the Domain Name in dispute is an Abusive Registration, the Complainant can demonstrate that the Respondent is engaged in a pattern of making Abusive Registrations; or

(iv) It is independently verified that the Respondent has given false contact details to [Nominet].

7.9 In the Expert’s view, the Domain Name is an Abusive Registration. According to the Complainant’s evidence (which is not challenged in this respect by the Respondent), it is one of the largest companies operating in the utilities price comparison market, the same market in which the Respondent operates. At the time the Respondent registered the Domain Name in December 2001, the Complainant had been trading for over two years. By this time, the Respondent had also sued, or threatened to sue the Complainant. In these circumstances, the Respondent must have been well aware of the Complainant’s business and that the business traded via the domain name www.saveonyourbills.co.uk. In this light, the Respondent’s submission that the Domain Name is descriptive of its own services is rather disingenuous.
7.10 The high likelihood that the Respondent was aware of the Complainant’s business, coupled with the fact that the Domain Name points to the Respondent’s own website at www.uswitch.co.uk which offers a service directly in competition with the service offered by the Complainant, strongly suggests that the Domain Name was registered primarily for the purpose of unfairly disrupting the business of the Complainant within the meaning of paragraph 3 a I C of the Policy. Further, whilst the Complainant may not have filed any evidence that customers confuse the Respondent’s services with its own, the Expert considers that this is a highly likely outcome of the way in which the Respondent is using the Domain Name and is further grounds for the finding that the Domain Name is an Abusive Registration.

In the light of the foregoing findings, namely that the Complainant has Rights in respect of a name which is similar to the Domain Name, and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name be transferred to the Complainant.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Saveonyourbills Ltd -v- Uswitch Ltd [2003] DRS 1055 (28 August 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/1055.html Cite as: [2003] DRS 1055

Nominet UK Dispute Resolution Service