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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Wise Insurance Services Ltd v TagNames Ltd [2007] DRS 4889 (24 September 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4889.html Cite as: [2007] DRS 4889 |
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Complainant: Wise Insurance Services Limited
Country: UK
Respondent: TagNames Limited
Country: UK
wiseinsurance.co.uk (the "Domain Name").
The Complaint was submitted to Nominet on 13th July 2007 and hard copies of the Complaint were received in full by Nominet on 18th July 2007. On 20th July 2007, the Complaint was validated by Nominet. On the same day, the Complaint was sent to the Respondent by post and by e-mail. The Respondent was informed that it had 15 working days, that is, until 13th August 2006, in which to respond to the Complaint.
On 3rd August 2007, the Respondent filed its Response. On 6th August 2007 hard copies of the Response were received by Nominet. On 6th August 2007 the Response was forwarded to the Complainant and the Complainant was informed that it had 5 working days, that is, until 15 August 2007, in which to reply to the Response. On 10th August 2007, a Reply was filed by the Complainant and hard copies of the Reply were received by Nominet.
Mediation having been unsuccessful, on 19th September 2007, Nominet wrote to the parties regarding the appointment of an expert. On 24th September 2007, Nominet received the Complainant's fee to obtain an Expert Decision pursuant to paragraph 7 of the Nominet Dispute Resolution Service Policy ("the Policy").
On 24th September 2007, Antony Gold, the undersigned, ("the Expert"), confirmed to Nominet that he knew of no reason why he could not properly accept Nominet's invitation to him to act as an Expert in this case and was appointed as the Expert.
Both parties' arguments refer to the submission by the Complainant of an earlier complaint under the DRS relating to the Respondent's registration of the Domain Name. This earlier submission was withdrawn prior to determination.
The earlier Complaint is, at best, of minor significance to the points made in this case.
However, the Expert must reach a decision on the basis of the papers before him and not on the content of a withdrawn complaint. For that reason, only brief consideration is given to the parties' references to the earlier action, even though it featured in their submissions.
The following material facts are accepted as accurate by the Expert:
The Complainant was incorporated at Companies House on 20th November 1990. It has traded under the name Wise Insurance Services Limited since at least 1994 (evidenced by copies of its filed accounts for each financial year from 1994 to 2006).
In the past, the Complainant has operated agencies under the name Wise Insurance Services Limited with companies such as AXA Insurance, Norwich Union Insurance Limited, Royal & Sun Alliance and Allianz Cornhill (evidenced by a selection of 2004 account statements).
The Complainant registered insurancewise.co.uk on 30th April 1999.
The Complainant is approved and regulated by the Financial Services Authority (FSA) under registration number 301075. As at 10th July 2007, it was shown as authorised to provide financial services on the FSA Register. The Respondent, as at 12th July 2007, was not so authorised.
A Google search for "wise insurance" on 10th July 2007 brought up 3 results which related to the Complainant out of the first 6 (non-sponsored) results.
The Complainant has recently paid for development work to be undertaken on its website.
The Complainant submitted an initial complaint in respect of the Domain Name on 8th June 2007. That complaint was subsequently withdrawn and the current Complaint was submitted in its place.
The Domain Name was registered by the Respondent on 19th November 2003. On the same date, it acquired a series of other "wise" domains (these were wisecover.co.uk, wiseloan.co.uk, wiseloans.co.uk, wisemortgage.co.uk, wisepension.co.uk, wisepensions.co.uk, wisesavings.co.uk, wiseshares.co.uk and wisetravel.co.uk - together with the Domain Name, referred to as the "Wise Domains"). In the past the Domain Name resolved to a "parked page" featuring certain "pay per click" links, although neither Party has provided a screen shot or printout of that parked page.
Complainant - Complaint
Rights
The Complainant claims that it has Rights in WISE INSURANCE (which is identical to the Domain Name) because:
Abusive Registration
The Complainant claims that the Domain Name in the hands of the Respondent is an Abusive Registration because:
Respondent
Rights
Abusive Registration
The Respondent denies that its registration of the Domain Name is an Abusive Registration for the following reasons:
Complainant - Reply
Abusive Registration
In order to succeed, the Complainant must prove, on the balance of probabilities, that:
(i) it has Rights in respect of a name or mark which is identical or similar to the Domain Name (paragraph 2(a)(i) of the Policy);
(ii) the Domain Name in the hands of the Respondent constitutes an Abusive Registration (paragraph 2(a)(ii) of the Policy).
Rights
According to paragraph 1 of the Policy, "Rights" includes, but is not limited to, rights enforceable under English law. However, the Policy makes it clear that a Complainant will not be able to rely on rights in a name or term which is wholly descriptive of the Complainant's business.
The Respondent accepts that the Complainant has Rights in the term "Wise Insurance". As a result, whether or not the Complainant has in the Expert's view satisfied paragraph 2(a)(i) of the Policy, both parties have accepted that the burden of proof has been discharged by the Complainant.
The Domain Name is www.wiseinsurance.co.uk. Although much of the evidence relates to the Complainant's use of "Wise Insurance Services" and/or "Wise Insurance Services Limited", it is accepted that the addition of these generic words does not materially alter the Complainant's rights in the words "Wise Insurance".
It being customary to ignore the ".co.uk" suffix when considering the similarity of the Complainant's name and the Domain Name, I am satisfied on the balance of probabilities that the Complainant has Rights in the words WISE INSURANCE which are identical to the Domain Name.
Abusive Registration
The Complainant must also show, on the balance of probabilities, that the Domain Name in the hands of the Respondent is an Abusive Registration under paragraph 2(a)(ii) of the Policy. The Dispute Resolution Service rules defines an 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 unfairly detrimental to the Complainant's rights.
The Policy contains a non-exhaustive list of factors which may be evidence that the Domain Name is an Abusive Registration in the hands of the Respondent.
The Complainant's submissions do not refer specifically to the non-exhaustive list of factors which may be evidence of Abusive Registration. Essentially, the Complainant's submissions can be reduced to the following:
(i) that the Domain Name previously resolved to a parked page featuring links to competitors of the Complainant, and the Complainant fears this will happen again in future if the Domain Name is not transferred to it. This can be equated to paragraph 3(a)(i)(c) - i.e. the Domain Name has been registered for the purpose of unfairly disrupting the business of the Complainant, and also paragraph 3(a)(ii) - see below; and
(ii) that such use of the Domain Name has confused the Complainant's customers and potential customers into believing that the parked site is the Complainant's website (which can be equated to paragraph 3(a)(ii) - i.e. 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).
It is important to note that the Expert is not restricted to the heads of claim put forward by the Complainant - the Expert's role is to consider whether, on the balance of probabilities, the Domain Name in the hands of the Respondent is an Abusive Registration.
Dealing then with point (i) above first, the Complainant has not been able to provide a printout of the parked page to which the Domain Name resolved previously. The Respondent has also not done so but acknowledges that it removed the parked page "following the original complaint" although the precise date on which it did so is not clear.
The Parties both provide printouts from the site wisemortgages.co.uk as a substitute for a printout from the parked page at wiseinsurance.co.uk to indicate the type of page used at wiseinsurance.co.uk. This contains links to various mortgage providers and mortgage related services. Assuming the Domain Name resolved to a similar page (from the links described by the Complainant and described as "unsurprising" by the Respondent), the style of parked page can be envisaged by the Expert, familiar with the usual form and layout of parked pages of this nature - i.e. links incorporating the words "wise" and "insurance" which may quite feasibly have directed visitors to competitors of the Complainant.
As the Respondent points out, it is legitimate to set up parked pages. However, this practice may be abusive if the domain name resolving to the parked page is identical or similar to a name/mark in which a third party has Rights.
The Respondent claims it was not aware of the Complainant's Rights at the time it registered the Domain Name and accordingly its registration/ use of the Domain Name cannot be abusive. The Respondent contends that it registered the Wise Domains as a series of "generic" domains, with the intention of putting together a brand around the word "wise" in relation to financial services.
The Respondent's contention is surprising since there is no evidence that the Respondent trades in the area of financial services and typically, so-called "generic" names are more difficult to market and protect than distinctive brands. Whilst the Respondent's explanation is not entirely convincing, and taking into account that the Respondent registered all the Wise Domains on the same date, the Expert accepts on the balance of probabilities that that the Respondent did not register the Domain Name with the intention of disrupting the Complainant's business - its registration was not therefore Abusive under paragraph 3(a)(i)(c).
However, the Complainant effectively argues (though not in so many words) that the Respondent's prior use of the Domain Name as a parked page (and any similar use in the future) has disrupted/will disrupt the Complainant's business. Paragraph 3(a)(ii) relates to abusive use of the Domain Name.
The Complainant does not provide any evidence of confusion or association with the Complainant's business as a result of the Respondent's registration of the Domain Name. This is not surprising given the difficulties in obtaining such evidence and it is considered, on the balance of probabilities, that using the Domain Name to resolve to a parking page containing insurance links was likely to disrupt the Complainant's business or imply a connection with the Complainant.
The Respondent claims that the word "wise" in the Domain Name is used in a generic way as a synonym for "clever" or "intelligent". However, the Expert does not accept this is a credible explanation because insurance would typically be described as (say) "cheap" or "comprehensive" rather than "wise" so the juxtaposition of these words is not frequently used and cannot be considered a generic expression even if the words "wise" and "insurance" are generic.
The Respondent's contention that the Google search results for "wise insurance" annexed to the Complaint can be seen as evidence of the use of "wise" in relation to insurance and financial products generally is not really made out by the search results themselves. Of the 10 results listed, 3 relate to the Complainant; 1 relates to a caravan insurance related site at www.caravanwise.co.uk (hence the references to insurance and "wise"); 4 relate to a site called www.wisemoney.com/.co.uk, which features insurance quotes; 1 mentions "insurance" being a "wise" move; and the final site is an organisation called Planet "Wise" who have teamed up with another organisation to provide travel "insurance".
Only the links to the Complainant's site feature the actual phrase/term "wise insurance" and the Respondent has not demonstrated that this pairing of words is commonly used.
The Respondent cites various DRS appeal decisions (no 3078 ghd.co.uk, no 3316 bounce.co.uk and no 3733 mercer.co.uk) in support of its contentions. The Respondent refers to paragraph 8.8 of the mercer.co.uk appeal, which states that "key to the issue as to whether or not the Domain Name is an Abusive Registration within the meaning of paragraph 1 of the Policy is the date when the Respondent first became aware of the existence of the Complainant". The Expert agrees with this view. The Respondent also refers to paragraph 8.15 of that decision which states that "…paragraph 3(a)(ii) of the Policy…does not expressly call for abusive intent on the part of the Respondent, but plainly, such knowledge/intent has to be present. For a domain name to qualify as an Abusive Registration, there has to be an element of abusive behaviour on the part of the Respondent". The Respondent refers to numerous earlier decisions to support its contention that it was not aware of the Complainant's Rights when the Domain Name was registered. The Respondent equally refers to the DRS appeal 03316 bounce.co.uk which states [at 8.3.6] that "For a domain name to constitute an Abusive Registration under sub-paragraph…(ii) of the definition, the registrant will normally be aware of the complainant's name and/or rights when using the domain name in the manner complained of". The ghd.co.uk appeal reiterates the fact that the Respondent's knowledge of the Complainant is key.
This is far from a clear cut case, made all the more difficult by a lack of key evidence on the part of both Parties. Paragraph 3(a)(ii) makes no mention of the Respondent's state of mind, although the appeals in mercer.co.uk and bounce.co.uk in particular provide that some abusive intention must be required on the Respondent's part. The DRS appeal 0359 parmaham.co.uk/parma-ham.co.uk stated, however, that the definition of abusive registration is wide enough to permit an objective assessment of the position irrespective of what the Respondent's intention or belief in fact was.
It is the Expert's view that, on the balance of probabilities, some commercial gain will have been made from the use by the Respondent of the Domain Name through the pay per click links both before and after it learned of the Complainant's Rights. This cannot be fair use under paragraph 4(a)(i)(C) of the Policy. The Expert is also of the view that, as the Domain Name is not generic, the onus must be on the Respondent to check whether its use of the Domain Name may erroneously imply a connection or association with a third party. On balance, the Expert is satisfied that the Complainant has established there is a risk of confusion/association arising out of any use of the Domain Name by the Respondent, particularly in relation to insurance/financial services.
The Policy gives a non-exhaustive list of factors which may be cited by the Respondent as evidence that the Domain Name is not an Abusive Registration. The Respondent contends that it has demonstrated that the Domain Name is not an Abusive Registration because it is generic or descriptive and the Respondent is thus making fair use of it as a parked page.
For the reasons outlined above, the Expert does not agree that the Domain Name is generic or descriptive of the Complainant's services. It may be said to have made fair use (i.e. a legitimate parked page) of the Domain Name under paragraph 4(a)(i)(C) prior to learning of the Complainant's Rights but not if it was used at any point after the acquisition of that knowledge. None of the other grounds on which a Respondent may argue that its registration of a Domain Name is not Abusive are relied on by the Respondent and do not, in any event, seem to apply.
As a result, the Expert, concludes that the Domain Name in the hands of the Respondent is an Abusive Registration.
The Complainant has Rights in respect of the name "wise insurance" which are identical to the Domain Name and the Domain Name in the hands of the Respondent is an Abusive Registration.
Reverse Domain Name Hijacking
Given the decision above, the Expert does not consider that this Complaint amounts to Reverse Domain Name Hijacking. It has been accepted (including by the Respondent) that the Complainant has Rights in "Wise Insurance" and the Expert has concluded that, on balance, use of the Domain Name in connection with a parked page (which is also admitted by the Respondent) is Abusive.
The Expert therefore orders the transfer of the Domain Name to the Complainant.
Signed Antony Gold
Date: