 |
[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback] | |
Nominet UK Dispute Resolution Service |
||
|
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Privilege Insurance Company Ltd v Morrison [2006] DRS 3809 (17 August 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3809.html Cite as: [2006] DRS 3809 |
||
[New search] [Printable RTF version] [Help]
Direct Line Insurance PLC, and
Privilege Insurance Company Limited
–v-
Robert Morrison
Complainant: The Royal Bank of Scotland Group Plc
Country: GB
Respondent: Robert Morrison
Country: AU
The domain name in dispute is
On 3 July 2006 the dispute entered into the Nominet UK DRS system and hardcopies of the Complaint were received in full on the same date.
The Complaint was filed by three Complainants viz. The Royal Bank of Scotland Group plc ("the First Named Complainant"); Direct Line Insurance PLC, having an address at 3 Edridge Road, Croydon, Surrey, CR9 1AG, GB ("the Second Named Complainant"); and Privilege Insurance Company Limited also having an address at 3 Edridge Road, Croydon, Surrey, CR9 1AG, GB (the Third Named Complainant").
Paragraph 3(b) of the Nominet UK DRS Procedure provides that
"More than one person or entity may jointly make a complaint. Where this occurs the joint complainants must:
i. all sign the hard copy of the complaint (or have it signed on their behalf);
ii. specify one of the Complainants, or a single representative, who will the "lead Complainant" who will receive correspondence on behalf of all the Complainants and is entitled to act on behalf of them all (e.g. in informal Mediation); and
iii. specify which Complainant the Complainants wish to become the sole registrant of each Domain Name(s) which are the subject of the complaint if the Complainants are successful (this does not bind the Expert)."
"Complainant" is defined in Nominet UK DRS Policy paragraph 1 as "a third party who asserts to [Nominet UK] the elements set out in paragraph 2 of this Policy and according to the Procedure or, if there are multiple complainants, the "lead Complainant".
It would appear from the Complaint that all parties, being members of the same group of companies, have designated the First Named Complainant as the "lead Complainant" to file the Complaint and engage in the Nominet UK DRS process on their behalf.
On 4 July 2006 Nominet UK validated the Complaint and on the same day Nominet UK sent a copy of the Complaint to the Respondent and inter alia notified the Respondent that the Procedure for the conduct of proceedings under the Dispute Resolution Service ("the DRS Procedure") had been invoked and allowed the Respondent 15 working days (i.e. until 26 July 2006) within which to file a Response to the Complaint.
On 27 July 2006 as no Response had been received from the Respondent by Nominet UK, the parties were notified accordingly.
Said notifications were each sent to the Respondent by email at two addresses viz.
`
On 31 July 2006 James Bridgeman was selected and duly appointed as Expert and the file was transmitted to the Expert pursuant to paragraph 11 of the DRS Procedure.
Each of the three Complainants is a member of the same group of companies.
The First Named Complainant was incorporated in the United Kingdom as a Public Limited Company on 25 March 1968. According to the search report from the Companies House database on file, the nature of its business is a "holding company including head offices". It claims to be one of the world's leading financial services providers and one of the oldest banks in the United Kingdom. In addition to its strong presence in the United Kingdom, the First Named Complainant has offices in Europe, the United States and Asia.
The Second Named Complainant was incorporated in the United Kingdom as a Public Limited Company on 24 April 2004. According to the search report from the Companies House database on file, the nature of its business is "non life insurance".
The Second Named Complainant is the registered owner of UK Trade Mark PRIVILEGE, registration number 2324008. The application was filed on 17 February 2003, and the service mark was registered on 12 March 2004 in class 36 in respect of "Motor insurance services; home insurance services."
The Second Named Complainant is also the owner of a number of United Kingdom registered trade marks and one Irish trade mark registration, that each incorporate the word PRIVILEGE. The Second Named Complainant is also the registered owner of a CTM registration for the mark PRIVILEGE INSURANCE, registered on 10 March 2003 in class 36 and has filed a pending CTM application, number CTM 0004768024, on 6 December 2005 in respect of a figurative mark for the word PRIVILEGE in a distinctive script, in classes 9, 16, 36, 37, 39 and 42.
The Third Named Complainant was incorporated in the United Kingdom as a Private Limited Company on 30 September 1993. According to the search report from the Companies House database, the nature of its business is "non life insurance".
According to the print-outs of the WHOIS database searches supplied as an annex to the Complaint, a fourth company (that is not a party to these proceedings) RBS Insurance Services Limited, also having an address at 3 Edridge Road, Croydon, Surrey, CR9 1AG, GB is the registrant of the following Internet domain names:
According to the Complaint, all three Complainants and said RBS Insurance Services Limited are members of the same group of companies. The Third Named Complainant has established a web site that the
The Respondent has not filed any Response. According to the Nominet UK WHOIS database the Respondent has an address in Australia. He registered the
Complainant's Submissions
The First Named Complainant claims that it "operates a number of brands" worldwide and offers a wide range of financial products and services – including retail banking, wealth management and insurance services – to individual and institutional investors across the globe.
The Complainants submit that the provision of insurance services has become a significant part of the First Named Complainant's business and it provides insurance services through the aforementioned RBS Insurance Services Limited, which it claims is in turn the owner of the Second Named Complainant and the Third Named Complainant.
The Second Named Complainant was formed on 2 April 1985 and has been what the Complaint describes as "a staple" in the UK insurance industry throughout its existence. The Second Named Complainant offers a broad range of products and services, including car insurance, home insurance, and travel insurance to over five million customers across the UK and elsewhere in Europe.
The Third Named Complainant specializes in offering motor car insurance including breakdown cover and also offers home insurance cover.
The Complainants claim Rights in respect of the PRIVILEGE name and mark. The Second Named Complainant is the owner of the above-listed registered trade marks and has filed the pending Community Trade Mark application.
The Complainants also claim that they and their affiliates are the owners of numerous domain names featuring their well-known PRIVILEGE mark, including the ccTLD
The Complainants submit that the Third Named Complainant uses these domain names to promote and operate its insurance business. In support of this claim the Complainants have furnished copies of the WHOIS records for these domain names, as well as screenshots from the sites to which the names resolve in an annex to the Complaint.
The Complainants claim that the domain name
Moreover, the Complainants submit that the word PRIVILEGE is present throughout the Third Named Complainant's business as a name and trade mark and is the dominant and distinctive element in the domain name in issue. The domain name
The Complainants submit that the domain name in issue is apparently targeted toward Internet users who, while seeking to access the Complainants' websites and insurance products and services, make slight errors when typing in the domain name. Such users find themselves at the Respondent's website, which contains directories of websites advertising products and services that compete with those offered by Complainants.
The Complainants submit that the Respondent registered the
The Complainants further submit that the Respondent has no apparent rights to the domain name in issue and that the domain name in issue is an Abusive Registration in the hands of the Respondent.
The Complainants submit that the domain name in issue is an Abusive Registration because it was registered in a manner that, at the time the registration took place, took unfair advantage of, and was unfairly detrimental to, the Complainants' Rights and furthermore because it has been used in a manner that takes unfair advantage of and is unfairly detrimental to Complainants' Rights.
In support of these submissions the Complainants firstly submit that the Respondent has registered the domain name for the purpose of unfairly disrupting the Complainants' business and in this regard refers to the Nominet UK DRS Policy Section 3(a)(i)(c).
The Complainants submit that the domain name is targeted toward Internet users seeking access to the Complainants' products and services. Such Internet users, however, are taken to the Respondent's website – which contains directories of and advertising for, insurance products and services offered by the Complainants' competitors. As of 28 June 2006, for instance, the
The Complainants submit that such use of the domain name in issue, threatens to disrupt the Complainants' business by improperly directing the Complainants' current and prospective customers to the Complainants' competitors. By interfering with Internet users ability to reach the Third Named Complainant's legitimate website, the Respondent is causing the Complainants to suffer loss of business and revenue. Such use constitutes further evidence of Abusive Registration under the Nominet UK DRS Policy Section 3(a)(i)(C).
Secondly, the Complainants claim that the Respondent is using the domain name in issue in a way that has confused people into believing, and has the potential to confuse people into believing, that the domain name is registered to the Complainants, that it is operated or authorized by the Complainants, or that it is otherwise connected with the Complainants. In this regard the Complainants refer to the Nominet UK DRS Policy, Section 3(a)(ii) in submitting that such activity amounts to an Abusive Registration.
Given the similarity of the domain name in issue to the Complainants' PRIVILEGE mark, and to the Complainants' domain names, including
Furthermore, the content of the Respondent's website, because it consists of information and advertising concerning products and services similar to those offered by the Complainants, would not necessarily alert the Internet user to his or her error. Additionally, given these substantial similarities, even if an Internet user realised that he or she was not at the Third Named Complainant's official website, the user could still be confused into believing that the Third Named Complainant was in some way associated with the domain name in issue.
Thirdly, the Complainants furthermore claim that the domain name in issue is an Abusive Registration because the Respondent is using the domain name to benefit commercially from his unauthorised and illegitimate use of the Complainants' PRIVILEGE mark and the associated goodwill. The Respondent is thus using the domain name in a manner that takes unfair advantage of, and is unfairly detrimental to, the Complainants' Rights. In this regard the Complainants refer to the Nominet UK DRS Policy, Section 1 which contains the definition of Abusive Registration. Specifically, the Complainant alleges that the Respondent is using the domain name in issue to redirect Internet users who are familiar with and searching for the Third Named Complainant's products and services – including the Third Named Complainant's current and prospective customers – to a search engine website containing a search box toward the bottom of the webpage and a list of "popular links" connecting to multiple directories of and advertising for insurance products and services offered by the Complainants' competitors. The Complainants claim that the Respondent's purpose in setting up such a website is presumably to generate "click-through" revenues based on the amount of traffic he diverts to those sites. Thus, by using the confusingly similar domain name in this manner, the Respondent is attempting to profit financially, by luring the Complainants' current and prospective customers, at the Complainants' expense and based on the strength of the Complainants' famous trademark, to the websites of the Complainants' competitors. Such use is commercially exploitive of the Complainants' name and mark and evidences an Abusive Registration under the Nominet UK DRS Policy.
The Complainants also submit that the Respondent has engaged in a pattern of making Abusive Registrations of domain names and in this regard they refer to at least five Nominet UK DRS cases taken against the Respondent in the past two years viz. Sheet Music Direct Ltd. v. Robert Morrison, DRS 03408 (20 March 2006); Search Press Ltd. v. Robert Morrison, DRS 03035 (6 December 2005); Harry Corry Ltd. v. Robert Morrison, DRS 03028 (26 November 2005); Lintran v. Robert Morrison, DRS 03021 (6 December 2005); Guilbert UK Holdings Ltd. v. Robert Morrison, DRS 02775 (5 September 2005).
Furthermore the Complainants themselves have recently initiated separate Nominet UK DRS proceedings against the Respondent, seeking transfer of domain names, including
Although the contact details provided by the Respondent in connection with the domain names at issue in many of these prior proceedings differs from the address listed in the registration details for the domain name in issue in the present Complaint, the Complainants submit that the Respondent is the same person in each case, given that
(1) the registrant's name, Robert Morrison, is identical;
(2) the conduct at issue here – namely, registering a domain name that corresponds to a well-known name or mark in which the respondent has no apparent rights and making that name resolve to a website promoting the goods and/or services of competing companies – is the same as in each of the prior proceedings;
(3) the Respondent has taken steps to alter his "address information" in the past (see paragraph 16 of Complainants' DRS 03676 complaint;
(4) the address provided by the Respondent in the registration details of the domain name in issue in the present proceedings is the same as the one he provided in connection with
(5) with respect to the two prior proceedings initiated by the Complainants against the Respondent, the unlikelihood that the Respondent differs from the Robert Morrison involved in those proceedings, where each has an Australian address and where each registered, within a span of approximately one month, a domain name that was a typographically erroneous version of Complainants' PRIVILEGE mark and that resolved to a virtually identical vehicle insurance directory site.
In an annex to the Complaint, the Complainants have submitted copies of the WHOIS records for the
Accordingly, the Complainants respectfully submit that they are entitled to a presumption of an Abusive Registration in this case under the Nominet UK DRS Policy, Section 3(c).
Moreover, in each of these prior cases, the Respondent was the registrant of a domain name that corresponded to a well-known name or mark in which the Respondent had no apparent rights and that resolved to a website promoting the goods and/or services of companies competing with the complainant. That is precisely what the Respondent is doing in the present case. Thus, the Respondent is engaged in a pattern of Abusive Registrations, and the domain name in issue is a part of that pattern. This constitutes further evidence of Abusive Registration under the Nominet UK DRS Policy, Section 3(a)(iii).
Accordingly, in light of the foregoing, the Complainants respectfully request that the Expert issue an order directing the transfer of the disputed Domain Names to the First Named Complainant.
Respondent's Submissions
The Respondent has not filed any Response.
Preliminary Procedural Matters
While there are two delivery failure reports on the file, in each case recording delivery failure of the Nominet UK notices to the Respondent at the
As paragraph 2 of the Nominet UK DRS Procedure provides for service of such notices by a number of means, at the discretion of Nominet UK including by:
"…i. sending the complaint by … e-email to the Respondent at the
contact details shown as the registrant or other contacts in [the Nominet
UK] register database entry for the Domain Name in dispute;
ii sending the complaint in electronic form by email to:
a. postmaster@; …"
In the view of this Expert, Nominet UK complied with the procedures as set down in the DRS Procedure, and on the balance of probabilities the Respondent was in actual receipt of both of the notices sent on 4 July 2006 and 27 July 2006 at his
Discussion Generally
In order to succeed in these proceedings, paragraph 2(b) of the DRS Policy requires the Complainant to prove on the balance of probabilities that both elements of the test set out in paragraph 2(a) are present viz. that
i. the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
ii. the Domain Name, in the hands of the Respondent, is an Abusive Registration.
Complainants' Rights
Despite its claim to have rights in the name and mark PRIVILEGE in relation to the provision of insurance services, on its own evidence, as a holding company, the First Named Complainant appears to have no such rights. Such rights as exist, appear to be vested in its subsidiary or related company said RBS Insurance Services Limited that owns the various domain names relied upon, in the Second Named Complainant that owns the registered trade marks relied upon, and in the Third Named Complainant that appears to have built up a reputation in the market place using the name and mark PRIVILEGE in relation to the provision of motor and home insurance services.
It is somewhat confusing that the First Named Complainant, being a holding company, claims to "operate" brands worldwide, while at the same time claiming that its insurance business is carried on by said RBS Insurance Services Limited that is also the owner of its brands. The confusion is not helped by the fact that the Internet domain names used by the group for its web sites are registered in the name of said RBS Insurance Services Limited, while the PRIVILEGE trade marks are registered by the Second Named Complainant and on the evidence submitted in the Complaint, the Third Named Complainant is in fact building up the goodwill in the United Kingdom in relation to the provision of insurance services under the PRIVILEGE mark.
It is of course possible that the Complainants have licensing or user agreements in place in relation to such rights, but there is no reference in the Complaint to any such agreements or licences and the Expert must therefore proceed on the basis that no such arrangements are in place and on the face of it, the First Named Complainant has no Rights as claimed.
Nonetheless, on the evidence, the Complainants have established that the Second Named Complainant has Rights inter alia in UK registered Trade Mark PRIVILEGE, registration number 2324008 and Third Named Complainant has built an established goodwill in the use of the name and mark PRIVILEGE in relation to the provision of motor and home insurance in the United Kingdom in its commercial activities on the Internet and otherwise.
The Complaint does not satisfactorily explain the commercial relationships between each of the three Complainants inter se or their relationship with said RBS Insurance Services Limited insofar as those relationships relate to the ownership and use of their trade marks and domain names. Nonetheless, in their various trade mark registrations and in the goodwill associated with the use by the Third Named Complainant of the service mark PRIVILEGE they have established that, on the balance of probabilities, they have between them "rights enforcible in English law" as required by paragraphs 1 and 2 of the DRS Policy.
As alleged in the Complaint there is a definite visual similarity between the Complainant's service mark PRIVILEGE on the one hand and the domain name in dispute
The Complainants have therefore established the first element in the test set out in paragraph 2(b) of the DRS Policy.
Abusive Registration
The Nominet UK DRS Policy at paragraph 3, defines an Abusive Registration of a domain name as meaning 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;"
Nominet UK DRS Policy provides at paragraph 3, a non-exhaustive list of factors which may be evidence that the domain name in issue is an Abusive Registration inter alia.:
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;…
On the evidence submitted it would appear on the balance of probabilities that the Respondent has chosen this particular domain name
In the absence of any Response from the Respondent providing an explanation for his choice of domain name in the face of the allegations set out in the Complaint, on the balance of probabilities the Respondent is engaging in "typosquatting" i.e. registering a domain name, the spelling of which is very close to a well known trade mark in order to trap Internet users who inadvertently mis-spell the well known mark in their browser search.
On the evidence adduced in the Complaint and in the absence of any Response or explanation from the Respondent, one must further conclude that the domain name in dispute was registered primarily for the purposes of disrupting the business of the Complainants by diverting Internet traffic intended for the Third Named Complainant's website in particular, to the site established by the Respondent.
One must also conclude that the Respondent is using the domain name in a way which is likely to confuse Internet users into believing that the domain name in issue is registered to, operated by, authorised by, or otherwise connected with the Complainants. While the Complainants have alleged such confusion, they have not provided any evidence of actual confusion. Nonetheless, it is more than plausible that Internet users are likely to be confused, at least initially, by the similarity of the domain name and the Complainant's PRIVILEGE mark and are likely to be misled into believing that there is some such connection between the website established by the Respondent at the
In the circumstances, the Complainants have succeeded in establishing on the balance of probabilities that the Respondent's registration of the domain name
Furthermore, in the particular circumstances of this case, such a finding is supported by the fact that the experts in a number of Nominet UK DRS cases cited by the Complainants have found that the Respondent has registered Abusive Registrations. It is clear that the Respondent has engaged in a pattern of making Abusive Registrations.
The Complainants are therefore entitled to succeed in their application.
This Expert therefore directs that the Complainants' application be allowed to succeed and the domain name
James Bridgeman
Date: 17 August 2006