esure Insurance Ltd v Taylor [2004] DRS 01998 (27 October 2004)

Nominet UK Dispute Resolution Service

DRS 01998 

esure Insurance Limited –v- Simon Taylor 

Decision of Independent Expert

1.	Parties:

Complainant:  	esure Insurance Limited

Address:	The Observatory
		Reigate
		Surrey
		
Postcode:	RH2 0SG

Country:	GB

Respondent:	Mr Simon Taylor

Address:	40 Glebelands
		Thatcham
		Newbury 
		Berks

Postcode:	RG19 3QZ

Country:	GB

2.	Domain Name:

esured.co.uk

3.	Procedural Background:

The Complaint was lodged with Nominet on 3 September 2004.  Nominet validated the Complaint and notified the Respondent of the Complaint on 8 September 2004 and informed the Respondent that he had 15 days within to lodge a Response.  The Respondent failed to respond.  Mediation not being possible in those circumstances, Nominet so informed the Complainant and on 13 October 2004 the Complainant paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy (“the Policy”).

On 15 October 2004, David King, 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 brought to the attention of the parties, which might appear to call into question his independence and/or impartiality.

4.	Outstanding Formal/Procedural Issues (if any):

The Respondent has not submitted a Response to Nominet in time (or at all) in compliance with Paragraph 5a of the Procedure for the conduct of proceedings under the Nominet UK Dispute Resolution Service (“the Procedure”).

Paragraph 15b of the Procedure provides, inter alia, that “if in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or this Procedure, the Expert will proceed to a Decision on the complaint.”

Paragraph 15c of the Procedure provides that “if in the absence of exceptional circumstances, a Party does not comply with any provision in the Policy or this Procedure….., the Expert will draw such inferences from the Party’s non-compliance as he or she considers appropriate.”

The Expert is not aware of any exceptional circumstances present in this case 
and is satisfied that it is in order for him to proceed with this Decision.

5.	The Facts

The Complainant is a UK registered insurer involved in the direct selling of 
car, home and travel insurance to the general public, by telephone and over
the internet.  On the internet, the Complainant operates from its 
www.esure.co.uk and www.esure.com.

The Respondent has been using the Domain Name for the purpose of
offering insurance services, including car, commercial vehicle, motorcycle, 
breakdown, home and travel insurance  to members of the public under the 
trading name “esured”.

The Respondent registered the Domain Name on 21 May 2004.  

6.	The Parties Contentions

Complainant:

The Complaint reads as follows:

“Background

esure Insurance Limited is a UK registered insurer that is involved in the direct selling of car, home and travel insurance to the general public, by telephone and over the internet. Details of its trading history can be found at its website address www.esure.com. 

In summary, esure Insurance Limited (“esure”) began trading in January 2001. The esure motor insurance product was launched in July 2001, esure home insurance product in September 2001 and esure travel insurance in January 2003. 

Between the period 2001 and esure's last financial year end, its annual turnover has increased from around £70m per annum to in excess of £200m per annum. 

Since its launch in 2001, esure has spent millions of pounds in promoting and advertising the "ESURE" brand name in the UK, and the services it offers to the public under that brand name. Including: · 

•	Television commercials (shown nationally and locally)
•	Print Media (national newspapers and local newspapers
•	Inserts in national newspapers
•	Inserts in magazines (e.g. Auto Trader, Top Gear, Marie Clare etc)
•	Direct Mail campaigns
•	Door drop campaigns
•	Radio (many stations that have covered most of the UK)
•	Internet banners and buttons
•	Electronic mail campaigns; and 
•	Internet viral marketing campaigns. 

In particular, esure’s brand name has been heavily promoted through a series of adverts featuring Michael Winner, spurning (sic) the now infamous catch phrase: "Calm down, Dear … it's a commercial". 

As a consequence of esure's trading and promotional activities it has developed a significant reputation and goodwill in the brand name "ESURE". 

Registered Trade Mark 

esure is also the registered proprietor of:

1.	United Kingdom Registered Trade Mark No. 2204410, filed 30 July
 	1999, for the mark ESURE, in Class 36; and 

2.	European Community Registered Trade Mark No. E2147890, filed 13 March 2001, for the mark ESURE, in Class 36. 

These marks are referred to in this letter as “Registered Trade Marks”. 

Registration and Use of Esured.co.uk

On 9 August 2004 it came to our attention that the domain name esured.co.uk (the “Domain Name”) was being used to provide insurance services to the UK market under the trading name “esured”. The site purports to offer car, commercial vehicle, motorcycle, breakdown, home and travel insurance to members of the public. 

A copy of the pages from the website at 20 August 2004 will be provided with the hard copy of the submission. The website at that time was offering to the public car insurance, van and commercial vehicle insurance, scooter and motor cycle insurance, breakdown insurance, home insurance and travel insurance. A customer was required to click on a button to obtain an insurance quotation which then linked to a third party insurance provider. For example by clicking on the button “get quote” for home insurance the customer was directed to the More Than web site (www.morethan.com), which is a trading name of Royal Sun Alliance plc (an authorized insurer), to receive a home insurance quotation from that provider. 

We understand that the Domain Name owner was earning money from linking to the other insurance provider sites through the affiliate programs operated by these third party insurance providers. These affiliate programs essentially work by the program owner paying the affiliate, i.e. the owner of a third party site, for each referral or sale that it receives from traffic that was directed from the affiliate’s website. 

After contact from esure the Domain Name owner changed the site on 24 August 2004 to a domain name parking page provided by Sedo (www.sedo.co.uk). A copy of the pages from the website at 27 August 2004 will be provided with the hard copy of the submission. 

Sedo’s domain name parking program allows the Domain Name owner to suggest an appropriate advertising keyword for the parked page. The advertising keyword determines which advertisements will be displayed on the parked page. For example, if the advertising keyword is "insurance", then the domain name parking page will display insurance related advertisements. The Domain Name owner is paid for every click on the insurance advertisements on the Domain Name owner’s site. 

Abusive Registration 

As we are registered the Proprietor of the Registered Trade Marks, we have the exclusive right to use the Registered Trade Mark in respect of the services for which it is registered, namely insurance services and the provision of information and consultancy services relating to insurance in the UK. For any other person to use this mark or a substantially identical or deceptively similar mark, to these services, is an infringement of our rights under the Trade Marks Act 1994. 

We are also the owner of the common law trade mark rights in the word ESURE in respect of insurance services ("Common Law Mark"). As such we have the exclusive right to use the Common Law Mark in relation to insurance products. Our reputation in respect of the Common Law Mark (and the goodwill attaching to the Common Law Mark) is such that for another person to use the Common Law Mark in relation to any insurance services, without our consent would be an attempt to appropriate our significant reputation in, and goodwill attaching to, the Common Law Mark and is an infringement of our rights.

Evidence of the Domain Name owner’s abusive registration can be seem by: 

1.	The Domain Name was registered after the registration of the Registered Trade Marks and after esure had built up significant amounts of goodwill in the esure brand as an insurance provider.
2.	The trading name “esured” and the Domain Name uses our mark and is easily mistaken as our mark.
3.	The website used the same distinctive orange colour in it website (prior to 24 August 2004) as esure uses in it website and brand (see Appendix D).
4.	The Domain Name is similar to the websites that esure uses to provide insurance services and products on the internet, namely esure.co.uk and esure.com.
5.	The Domain Name registrant has been offering for sale the same insurance products as esure namely, car, home and travel insurance using a trading name and Domain Name which incorporates the esure mark and is substantially identical or deceptively similar to the esure mark 
6.	The Domain Name site is clearly aimed at the UK market in which we hold our rights. 

The Domain Name registrant’s use of this trading name and the Domain Name both before and after 24 August 2004 is in our opinion an abusive registration, infringing our rights and using our significant reputation in, and goodwill attaching to, the Registered Trade Mark and the Common Law Mark.

Conclusion 

We request that the Domain Name be transferred to esure.”

The Expert confirms that he has perused the Appendices to the Complaint and other documents supplied by the Complainant with the hard copy of the Complaint.

The Respondent has not responded to the Complaint.

7	      Discussion and Findings:

General

Paragraph 2 of the Policy requires that, for the Complainant to succeed, it 
must prove to the Expert, on the balance of probabilities, both that it has 
Rights in respect of a name or mark which is 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

The Complainant has provided evidence of its UK Registered Trade Mark No. 
2204410, filed 30 July 1999 and its EU Community Trade Mark 
No. E2147890, filed 13 March 2001 for the mark ESURE in Class 36
(insurance services; provision of information and consultancy services).  
Although the Complainant only commenced trading in 2001, it is apparent that 
it has quickly built up a significant reputation and goodwill in the name 
“esure”.  

On the basis of the evidence submitted, it is clear that the Complainant has
substantial rights in the name “esure” within the meaning of the Policy.  The 
Domain Name comprises the name “esure” with the addition of the letter “d” 
at the end.  In the Expert’s view this is very similar to the Complainant’s name 
and mark.  In assessing whether or not a name or mark is identical or 
similar to a domain name, it is appropriate to discount the domain suffix 
<co.uk> which is of no relevant significance and wholly generic.  

The Expert finds that, for the purposes of the Policy, the Complainant does 
have Rights in respect of a name of mark which is similar to the Domain
Name.

Abusive Registration

Is the Domain Name, in the hands of the Respondent, an Abusive 
Registration?  Paragraph 1 of the Policy defines “Abusive Registration” 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 detrimental to the Complainant’s Rights.”

A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration, is set out in paragraph 3 of the Policy.  
The Complainant has not referred specifically to any of these factors in its Complaint.  

The print-out of the Domain Name website, provided to the Expert by Nominet, indicates that the Domain Name is for sale for an asking price of £500 but there is no evidence that the Respondent registered the Domain Name 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.  The Expert does not consider that paragraph 3 a i A of the Policy applies to this case.

The Complainant has not submitted that the Respondent registered the Domain Name as a blocking registration or primarily for the purpose of unfairly disrupting the business of the Complainant.  The Expert has no reason to conclude that paragraph 3 a i B or C of the Policy applies.

Rather surprisingly, the Complainant has not submitted that the Respondent is using the Domain Name is 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.  As there appears to be no evidence of confusion, the Expert is unable to make a finding based on paragraph 3 a ii of the Policy.

There is no need to consider paragraph 3 a iii or iv of the Policy as there is no suggestion that the Respondent is engaged in a pattern of making Abusive Registrations or that the Respondent has given false contact details to Nominet.

Paragraph 3 a of the Policy sets out a non-exhaustive list of factors which may be evidence of Abusive Registration and previous Nominet Experts have held that these factors are only exemplary and indicative and that they are not definitive.  The Complainant contends that the Respondent’s registration of the Domain Name is abusive because the Domain Name was registered after the registration of the Complainant’s Registered Trade Marks and after the Complainant built up significant goodwill in the esure brand, because of the similarity of the name “esured” to the Complainant’s mark and websites and because the Respondent has been offering the same insurance products as the Complainant’s. 

In this case there is no evidence of the Respondent’s actual intent in registering the Domain Name. In the absence of any explanation from the Respondent, the Expert concludes that the Respondent must have been aware of the existence of the Complainant when he registered the Domain Name in May 2004.  It would have been helpful if the Complainant had stated the dates on which its websites www.esure.co.uk and www.esure.com were registered.  The Expert has made his own WHOIS searches, which reveal that www.esure.co.uk was registered on 12 March 1999 and that www.esure.com was registered on 26 May 1998.  The Expert concludes that the Respondent would also have been aware of the Complainant’s existing websites.  It appears to the Expert that, on the balance of probabilities, the Respondent chose to register a domain name and to trade under a name which was very similar to that of the Complainant in order to benefit from the established brand name of “ESURE”.    The Expert considers that this is sufficient to amount to Abusive Registration under the terms of the Policy.

Although the Respondent has not responded to the complaint, the Expert has considered paragraph 4 of the Policy headed “How the Respondent may demonstrate in its response that the Domain Name is not an Abusive Registration”.  Under paragraph 4 a i a there may be evidence that the Domain Name is not an Abusive Registration if, before being informed of the Complaint, the Respondent has used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods or services.  The Respondent has used the Domain Name to offer the same services as those offered by the Complainant.  In the view of the Expert, in doing so, the Respondent has taken unfair advantage of the Complainant’s Rights. On the evidence available, the Expert does not consider that paragraph 4 of the Policy would assist the Respondent in this case.  Accordingly, the Expert finds that the Domain Name is an Abusive Registration within the definition of that term in paragraph 1 of the Policy.

8	Decision

In light of the above findings, namely that the Complainant has Rights in respect of a name or mark 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 www.esured.co.uk be transferred to the Complainant.

David King							27 October 2004