550 Direct Line Insurance PLC -v- Snoop4.com Ltd [2002] DRS 550 (27 September 2002)

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Nominet UK Dispute Resolution Service
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Cite as: [2002] DRS 550

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NOMINET DISPUTE RESOLUTION SERVICE

DRS 00550

DIRECT LINE INSURANCE PLC
-AND-
SNOOP4.COM LIMITED

RE: JAMAJR.CO.UK

Decision of Independent Expert

Parties:
Complainant: Direct Line Insurance plc
Represented by: Miss Rachel Menhennet
Respondent: Snoop4.com Limited
GB
Represented by:     Unrepresented
Domain Name:
jamajr.co.uk

Abbreviations used in this decision:

Abbreviation Definition
The Domain Name jamajr.co.uk
Direct Line The Complainant
JJR Jam Jar Cars Limited, a company in the same group as Direct Line; uses Direct Line's trade marks and DLGS's domain names for its business
DLGS Direct Line Group Services Limited, a company in the same group as Direct Line; owner of "jamjar.co.uk", "jamjarcars.co.uk" and other similar domain names incorporating the term "jamjar" or "jam jar"
Snoop4 The Respondent, formerly known as 24 Seven Consulting Limited (Company no. 03992773)
The Website www.snoop4.com
The Marks The trademarks registered on behalf of Direct Line as set out in Appendix 1
DRS Nominet UK's Dispute Resolution Service
DRS Policy Nominet UK's Dispute Resolution Service Policy
DRS Procedures Nominet UK's Dispute Resolution Service Procedures
The Expert Kirsten Houghton
Procedural Background:
  1. The Complaint was lodged with Nominet on 18th August 2002 and hard copies were received on the same day.

  2. Nominet validated the Complaint on 16th August 2002.

  3. Nominet sent the complaint to

    1. Snoop4's registered office (the address given in the complaint form by the Complainant) and

    2. the admin contact address referred to in Nominet's records by post on 16th August 2002, and also

    3. by e-mail to admin@jamajr.co.uk and postmaster@jamajr.co.uk.

    4. There is no evidence in the file that the complaint has not been received by or on behalf of Snoop4.

    5. No response has been forthcoming from or on behalf of Snoop4.

  4. Accordingly, on 24th September 2002, Direct Line paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 6 of the DRS Policy.

  5. On 25th September 2002, I confirmed to Nominet that I knew of no reason why I could not properly accept the invitation to act as expert in this case and further confirmed that I knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question my independence and/or impartiality.

    Outstanding Formal/Procedural Issues (if any):
  6. None. I consider that Nominet has taken adequate steps to ensure that Snoop4 has been made aware of the Complaint.

    The Facts:

    (1) The Parties - the Complainant
  7. I am told that Direct Line is a member of a group of companies that trade under the names "JAMJAR" and "JAM JAR" and other similar names. I am told that the Group Companies first started trading as Jamjar.com Limited on the Internet through the domain names www.jamjar.com and www.jamjar.co.uk and other domain names using the "JAM JAR" marks, selling, new, used imported vehicles and other motor accessories and products.

  8. I am told that In the last year Jamjar Cars has been selling approx. 1000 cars per month due to their presence on both the Internet and the telephone. I am told that Direct Line, DLGS and JJC are extremely well known in the United Kingdom and the "JAMJAR" and "JAM JAR" trade marks are names which members of the public associate with such companies.

    (2) The Parties - the Respondent

  9. The Complaint tells me very little about the Respondent:

    "...the Respondent's purpose is to attract customers to their www.Snoop4.com site, which is an online car retailer website offering car search, car sales of new and used cars, car loans, car insurance, being services similar to those offered by the Complainant, DLGS and/or JJC."

  10. I understand that Snoop4 was incorporated on 15th May 2000, and was formerly known as 24 Seven Consulting Limited (name change on 30th April 2001).

    1. its registered address is the same as the address given by Direct Line in the Complaint, but significantly different from the contact address currently being used by Nominet

    2. In its last filed accounts, the company was declared dormant.

    3. The next accounts are due on 31st March 2003

      It is overdue in filing its return.

  11. I have obtained this information from the Companies House website (www.companies-house.gov.uk).

    (3) The Website
  12. It is alleged that the Domain name resolved to the Website. It does not do so at the time of writing and I have not been provided with any direct evidence that it did. However, the Website is clearly a trading site, and Snoop4 appears to trade as a kind of directory for very many services commonly advertised and purchased on line, including new and used cars and car insurance. JamJar Cars is referred to (with a link to www.jamjar.co.uk) on the used car page as one of the top 10 websites, and Direct Line insurance is shown and linked on the car insurance page, again as one of the top 10 websites.

  13. I have been provided with a copy of an undertaking apparently signed by 2 directors of Snoop4 on 19th July 2001, pursuant to which Snoop4 undertook to Direct Line to transfer the Domain Name (and other similar names) to DLGS by 2nd August 2001, and also to cease the resolution of the Domain Name to the Website within 2 working days . I have also been provided with a copy of an e-mail dated 9th July 2002 from Ms. Luff, a commercial lawyer at Direct Line, addressed to Freezone, the tag holder for the Domain Name, indicating that the Domain Name "again" resolved to the Website. I am told that, as a result of this e-mail, Freezone prevented the link, and this is why no printout of the site has been provided.

  14. In the circumstances, I accept that, at some point in Summer 2001 and again in Summer 2002, the Domain Name resolved to the Website.

  15. There is reference in this correspondence to Direct Line having instructed Richards Butler, and to correspondence between Richards Butler and Snoop4 concerning the use of the Domain Name and other domain names, but I have not been provided with this correspondence.

  16. I have not been provided with any explanation why the transfer envisaged by the undertakings in July 2001 did not take place or whether any attempts, other than the use of the DRS procedure, have been made.

    (4) Factual Background

  17. Chronology:
    Date Event
    1996/7     Direct Line, DLGS and JJC begin using JAMJAR and JAM JAR as trading names
    17/6/99 Jamjar.co.uk registered by DLGS
    21/7/00 EU trademark registered
    19/3/01      Domain Name registered
    19/7/01 Undertaking signed on behalf of Snoop4
    30/11/01 UK trademarks registered
    9/ 7/02 E-mail to Freezone; link to the website severed


    (5) Discussion and findings:
  18. Relevant rights: For the purposes of the DRS Policy Scheme, Direct Line must establish that it has rights in respect of a name or mark which is identical or similar to the Domain Name (Art. 2(a)(i)). "Rights" are defined as including but not limited to rights enforceable under English Law (Art. 1).

  19. I am told that Direct Line is the owner of two United Kingdom trademarks and one European trademark involving the words "jam jar" and "jamjar" and that it also has several other trade mark applications pending involving those words. I have not been provided with any independent evidence such as certificates etc which verify this. However, I have conducted an online search and verified this myself.

  20. I am told that the details of the relevant trade marks are as set out in Appendix 1. I am also told that the goods and/or services in connection with which the above trade marks are used are as follows:

    1. Class 12 - motor vehicles; parts and fittings for motor vehicles

    2. Class 16 - book, publications; printed matter; maps; periodicals stationary

    3. Class 36 - Insurance services; loan services; financial services; credit card services; information and advisory services relating to the aforesaid

    4. Class 37 - Repair and maintenance of motor vehicles; servicing of motor vehicles; inspection of vehicles; accident managing services; arranging for repair, maintenance servicing of vehicles; information and advisory services relating to the aforesaid and

    5. Class 39 - Route planning services; travel services; vehicle recovery services; provision of information relating to motoring.

  21. Further, I am told that DLGS owns the registered domain names www.jamjar.co.uk and www.jamjarcars.co.uk and several other domain names including the mark "jamjar". I am also told that JJC trades on the internet using the domain names www.jamjar.co.uk and www.jamjar.com and other domain names using the "jam jar" names and that it has sold over 1000 cars per month due to its presence on the internet and other marketing devices using these names.

  22. I accept that Direct Line has relevant Rights in the words "jam jar" and "jamjar". I also accept that DLGS has rights in its domain names, and that JJC has relevant rights in the domain names and the trade marks, which it uses in the course of its business. However, DLGS and JJC are not parties to the current dispute, and, accordingly, their rights are strictly speaking irrelevant.

  23. The Domain Name is, in my opinion, similar to the Marks; in my opinion, Direct Line is right to characterise this case as one of "typo piracy". I would go as far as to say that the Domain Name is, in fact, confusingly similar to the marks, but the DRS Policy does not require me to do so.

  24. In the circumstances, Direct Line has established on the balance of probabilities that it has relevant rights for the purpose of the first limb of Art. 2 of the DRS Policy. If DLGS and JJC were also parties to the dispute, they would, in my opinion, satisfy the test as well.

  25. Abusive Registration: Direct Line must establish, on the balance of probabilities, that the Domain Name, in the hands of Atmospheric, is an abusive registration. Abusive Registration is defined in the DRS Policy as:

    "... a Domain Name which either:

    1. 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

    2. has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."

  26. Clause 3 of the DRS Policy sets out a non-exhaustive list of factors to which I may have regard in determining whether the registration of the Domain Name is abusive in the hands of Atmospheric. They include:

    1. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:

      1. 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;

      2. as a blocking registration against a name or mark in which the Complainant has Rights; or

      3. primarily for the purpose of unfairly disrupting the business of the Complainant;

    2. 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..."

  27. The Complaint states as follows :

    1. "The Complainant submits that the Complainant, DLGS and JJC have used the "JAMJAR" and "JAM JAR" trademarks and service marks in connection with the Jamjar business since that section of the company was founded in 1996/97.

    2. This mark has become a famous mark in the online motor industry, and is associated with JJC which is one of the UK's leading online car retailers.

    3. www.jamjar.co.uk enables customers to purchase cars as well as to purchase motor insurance, car loans, car rental deals, breakdown cover and accessories from the comprehensive motor store.

    4. The only difference between the trade marks, company name and domain names owned by the Complainant, JJC and DLGS respectively and the Domain Name registered by the Respondent is the second "j" and "a" which appear are changed around - "jamjar" and "jamajr".

    5. This is an example of a common form of "typo-piracy" which is inter alia, a deliberate attempt to attract or divert internet users who make a common error or spelling mistake in their internet search.

    6. Since the Respondent's purpose is to attract customers to their www.Snoop4.com site, which is an online car retailer website offering car search, car sales of new and used cars, car loans, car insurance, being services similar to those offered by the Complainant, DLGS and/or JJC, the Domain Name would be of little use to the Respondent if it was not of sufficient confusing similarity with the "JAMJAR" and "JAM JAR" trade marks, so as to attract potential customers of the Complainant, DLGS and/or JJC.

    7. It is argued there is no doubt that the Respondent's contested Domain Name is clearly and intentionally confusingly similar to the Complainant's well known trade marks set out above.

    8. It is argued this is an abusive registration whereby 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, DLGS and/or JJC.

      B. WHY THE DOMAIN NAME IS AN 'ABUSIVE REGISTRATION' IN HANDS OF THE RESPONDENT AND EVIDENCE OF ABUSIVE REGISTRATION.

    9. It is argued that the registration of the disputed Domain Name is abusive registration by the Respondent.

    10. Furthermore, it is argued that the Respondent does not have any trademark or intellectual property rights or legitimate interest in the Domain Name. The Respondents trade under the name of Snoop4 Limited. The Complainant does not believe that the Respondents have been trading or advertising under the "JAMJAR" and "JAM JAR" trade marks. Further the Complainant does not believe that the Respondents have at any time been commonly known as the disputed Domain Name, the "JAMJAR" mark or any variations thereof. If the Respondents were to trade using the disputed Domain Name of the Jamjar/Jamajr mark, the Complainant would consider taking legal action against them.

    11. In fact the Respondents have signed an undertaking dated 19 July 2001 [attached as Annex 1] stating that the disputed Domain Name would be transferred over to DLGS.

    12. The Complainant has never licensed or permitted the Respondent to use any "JAMJAR" or "JAM JAR" mark, or to register any domain name using that mark.

    13. There is no evidence that the Respondent uses www.jamajr.co.uk as its legal or business name, nor is there evidence that the Respondent is commonly known by the name www.jamajr.co.uk.

    14. The Complainant is a member of a group of companies that trade inter alia under the "JAMJAR" and "JAM JAR" and other similar marks.

    15. Jamjar Cars started trading as Jamjar.com Limited on the Internet through the domain names www.jamjar.com and www.jamjar.co.uk and other domain names using the JAMJAR marks, selling, new, used imported vehicles and other motor accessories and products. In the last year Jamjar Cars has been selling approx. 1000 cars per month due to their presence on both the Internet and the telephone.

    16. The Complainant, DLGS and JJC are extremely well known in the United Kingdom and the "JAMJAR" and "JAM JAR" trade marks are names which members of the public associate with such companies.

    17. The Respondents have intentionally attempted to attract, for commercial gain, Internet users to their web site by creating a likelihood of confusion with the Complainant's trade marks as the source, sponsorship, affiliation, or endorsement of their product and services on their website.

    18. The Domain Name directs to a web site, which does not feature the word jamajr or even any similar word in the site. But rather, it directs to a site of www.snoop4.com, that features automotive information and services in direct competition with the Complainant's, DLGS and JJC's services.

    19. The Respondent has deliberately registered the said Domain Name so that should a customer misspell the website address then they will be directed to the Respondent's website which provides similar services as JJC and therefore directing trade away from the JJC's website."

  28. It is apparent from the complaint that none of the matters raised in Paragraph 3(a)(i) is expressly relied upon in support of the complaint. I have considered whether the provisions of paragraph 3(a)(i)(C) might apply, but there is no evidence that the "primary" motive underlying the registration was to disrupt Direct Line's business unfairly.

  29. It is alleged that the registration confused people or businesses into believing that the Domain Name is registered to, operated or authorised by or otherwise connected with Direct Line, DLGS and/or JJC. However, it seems clear to me from the terms of the complaint, and from Website, that there is no realistic possibility that any reasonable member of the public could believe that the Domain Name was registered to, operated or authorised by or otherwise connected with Direct Line, DLGS and/or JJC. Further, in my opinion, this provision of the DRS Policy requires actual evidence of confusion; none has been provided.

  30. Despite the assertion that Direct Line has traded under the Marks, I have not been provided with any evidence that it has done so in the period since the Domain Name was registered in March 2001(or at all). JJC was registered during 1996 and changed its name to Direct Line E-Commerce Limited in July 2000. It seems much more likely to me that the only company which has actually traded using the JAM JAR and JAMJAR names since the date of registration is JJC, although clearly the jamjar websites also offer links to Direct Line's (separate) services. Direct Line is clearly an insurance company trading under its own name. I do not know what DLGS does, but its name suggests that it is an internal services company.

  31. In the circumstances, it seems to me that, if any business has been affected by the use of the Domain Name (as to which no convincing evidence has been provided), it is overwhelmingly likely to have been that of JJC and not of the Complainant, Direct Line. I derive support for this finding from the paragraphs numbered (b), (o), and (s) above.

  32. However, the provisions of Paragraph 3 of the DRS Policy are non-exhaustive, and do not displace the primary test of abusive registration set out in Paragraph 25 above, the primary part of both limbs of which is that the registration of the Domain Name, or the use to which the Domain Name has been put, took unfair advantage of, or was unfairly detrimental to, Direct Line's Rights.

  33. In my view, as this is obviously a case of typo-piracy, it is clear that the registration of the Domain Name, and its subsequent use, has taken unfair advantage of Direct Line's Rights in the Marks. There is no other credible explanation that can be provided, particularly where the typo-pirate is a direct competitor of the authorised user of the Marks. I regard the undertakings given by the directors of Snoop4 in July 2001 as an admission on their part that this was so.

Decision
  1. In light of the foregoing findings, namely that Direct Line 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 Snoop4, is an Abusive Registration, I direct that the Domain Name, jamajr. co.uk, be transferred to Direct Line or its nominee.

  2. I should say that I have reached this conclusion with some hesitation, bearing in mind:

    1. the quality of the information provided to Nominet by Direct Line, and, in particular, the obvious and damaging confusion of the various rights of the companies referred to in the Complaint, and

    2. the fact that the submissions in support of the Complaint did not address the issues raised by the DRS Policy to any real extent.

  3. It is particularly disappointing that Direct Line did not even provide copies of its trade mark registrations.

Kirsten Houghton

Date: 27 September 2002

Appendix 1

Trade Mark Number Jurisdiction Mark Text: Classes: Date of Application Date of Registration
227565A UK "JAMJAR" "JAM JAR" (registered as a series of 2) 12 16 35 36 37 39 29 March 2000 30 November 2001
227565B UK JAMJAR.COM" "JAM JAR.COM" (registered as a series of 2) 12 16 35 36 37 39 29 March 2000 30 November 2001
(E)1769207 Community / Europe "JAMJAR.COM" 1212 16 35 36 37 39 1 July 2000

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