Nsure Holdings Ltd -v- Arnold [2003] DRS 01194 (11 November 2003)

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Hardcopies of Response received; due date extended by 2 working days because of postal strike

On 11 November 2003 I, Adam Taylor, the undersigned, 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 that ought to be drawn to the attention of the parties which might appear to call into question my independence and/or impartiality.

The Complainant, incorporated as Lilley Group Holdings Limited on 5 November 1999, is the holding company of a group trading in insurance and financial services. Its business is mainly in the UK.

The Respondent is in the business of providing comparisons of home and life insurance.

The Respondent says that it registered the Domain in April 2000 although the Nominet whois shows 24 November 1999 as the date of registration. It may be that the Respondent acquired the Domain by transfer from a third party rather than by registration in which case the whois would continue to show the original registration date. Or the Respondent may have made a mistake. In any case nothing turns on the difference between these two dates and I will treat the Respondent as having acquired the Domain in April 2000.

On 14 August 2001 the Complainant changed its name to its present name - Nsure Holdings Limited. On the same date, the following subsidiaries of the Complainant also changed their names: Lilley Cohen & Partners Limited became Nsure Financial Services Limited, Lilley Grant Rush Limited became Nsure Limited and Nsure Holdings Limited (not the Complainant) became Nsure Health Limited.

"We write as the Directors of Nsure Ltd and are most distressed to discover that you are using our name on your website. Please desist immediately and release the web address without delay to avoid expensive legal action."

You are aware from out (sic) stationery that our registered name is Nsure Ltd. Please respond via post in writing on your own business stationery as the email address from which you sent your email today was not even an "nsure" address but [email protected].

We too have checked the legalities and will be pursuing our claim via legal channels unless a satisfactory outcome can be reached."

On 23 January 2002 the Complainant registered the trade mark referred to under "Complainant's Rights" in section 7 below.

The Complainant and/or its group companies trade from a website at nsure.uk.com.

1. The businesses of the Complainant's group are registered with the General Insurance Standards Council, The Financial Services Authority and The Mortgage Code Compliance Board and as such no other organisation can use this name to trade in any of these areas as this would be a breach of these regulatory authorities' rules.

2. Considerable confusion has been caused to clients and many emails, some extremely important in terms of insurance cover, have been lost as they have been sent to the ".co.uk" address rather than the Complainant. These emails have never been forwarded to the Complainant or been "bounced" back to either clients or insurance companies who sent them.

3. As the current holder of the domain name was in the past trading in the insurance business like the Complainant, albeit not as Nsure, this has undoubtedly caused confusion to the public and other businesses and may be construed at an attempt to pass off as the Complainant in order to obtain confidential client information from email traffic intended for the Complainant.

4. It is vitally important that the domain is released to the Complainant as soon as possible to avoid a potential situation of a client confirming insurance cover by email and it not being received thereby leaving the client uninsured. An incident could occur and the claim would not be covered.

1. 'Nsure.co.uk' is the internet trading name of Maureen Irwin insurance agents. The domain name was registered in April 2000 and a fully operable web site has been in use since then.

2. The problem first came to light at least one and a half years later when a company called Nsure Holdings developed its own web site.

3. The use of the word nsure is a play on the word 'insure' which is a generic word and describes the Respondent's business. The Respondent has never tried to pass itself off as Nsure Holdings, which conducts a completely different form of insurance.

4. Prior to contact from the Complainant, the Respondent had never heard of it. The Respondent forwarded emails in the past wrongly sent to it but now deletes them following a number of aggressive emails from the Complainant. The Respondent has asked the Complainant to make sure that its clients use nsure.uk.com instead of nsure.co.uk.

1. It is untrue that a fully operable website has been in use at the Domain since April 2000. The Complainant checked the website at the Domain and found it inoperable for approximately one month, though it may have been longer. The domain host Freenetname told the Complainant that it had suspended the site owing to a dispute with the Respondent and the Domain would become available if the renewal fee was not paid by 1 November. Upon receipt of the Response, the Complainant checked and discovered that the website was up and running again.

2. Nsure is a registered trade name and is therefore inherently not generic, as generic words are not allowed to be registered as trade names.

3. The Respondent's statement that it conducts a completely different form of insurance is untrue as the Complainant's group's business encompasses all kinds of insurance, in particular home and life insurance.

4. The Respondent states that the actual name of his business is "Maureen Irwin insurance agents". The Respondent is aware that the Complainant is actually Nsure and also in the insurance business and so the Complainant is unsure how the Respondent could wish to use a competitor's name other than as passing off or to benefit from client confusion.

5. The Complainant's emails were not aggressive. Having received no satisfactory reply to its emails, the Complainant instructed solicitors who wrote on several occasions but no reply was received to those communications either.

6. It is clear from the Response that the Respondent is still receiving emails that should be coming to the Complainant. These are almost certainly confidential and will from time to time contain time sensitive information which the Respondent would understand as it is in the same business as the Complainant. It is irresponsible of the Respondent to delete rather than forward them.

To succeed, the Complainant has to prove in accordance with paragraph 2 of Nominet's DRS Policy ("the Policy) on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain and, second, that the Domain, in the hands of the Respondent, is an abusive registration (as defined in paragraph 1 of the Policy).

On 23 January 2002 the Complainant registered a UK device and word trade mark (ie a pictorial representation with a word element) no. 2290790 in class 36: pensions, investments, life assurance, fee based independent financial advice. The trade mark comprises "n" and "sure" in lower case in two intersecting circles.

The trade mark is not identical to the Domain as it is a device and word mark. However, the word element is most prominent and so the trade mark is in my view similar to the Domain.

While the definition of "rights" in the Policy excludes rights in a name wholly descriptive of the Complainant's business, NSURE is suggestive of the Complainant's business rather than wholly descriptive of it - unlike say the name INSURE.

The fact that the trade mark was registered after the Complainant acquired the Domain in April 2000 is irrelevant to the question of rights though it is relevant to abusive registration (see below).

The evidence as to common law rights is thin. While the Complainant has produced corporate name change certificates as well as various regulatory approvals for group companies, it has not provided evidence about the extent of actual trade under the name NSURE such as turnover or marketing spend. Nor has it addressed the issue as to whether the Complainant - presumably non-trading as it is a holding company - can rely on goodwill generated in the subsidiaries.

However, in view of the following I am prepared to conclude that the Complainant has common law rights and that no distinction should be drawn for these purposes between the Complainant and its trading subsidiaries:

2. it is apparent that the Complainant's group has been trading under the name NSURE since at least August 2001 (see further below); and

By virtue of its registered trade mark and its common law rights, the Complainant has established rights in a name which is identical or similar to the Domain.

Is the Domain an abusive registration in the hands of the Respondent? 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 unfairly detrimental to the Complainant's Rights."

As a preliminary point, in assessing abusive registration - as in the case of rights - I draw no distinction between the Complainant and the rest of its group. As I have said, the Respondent has not raised any issue about the Complainant not itself trading.

The first limb of the definition of abusive registration is concerned with unfair advantage of or detriment to the Complainant's rights at the time of acquisition of the relevant domain.

Here, there cannot have been any such unfair advantage of or detriment to the Complainant's rights at the time of acquisition of the Domain as those rights did not exist in April 2000.

As to common law rights, while the Complainant does not say when its group started trading under the name NSURE, it does not deny the Respondent's assertion that the name was not used until August 2001. So the common law rights also post-date the Complainant's acquisition of the Domain. (I note that one of the subsidiaries - Nsure Health Limited - was previously named Nsure Holdings Limited but the Complainant has nowhere suggested that there was any trading by reference to the name NSURE pre-August 2001.)

The second, alternative, limb concerns abusive use (as opposed to acquisition). Unlike the first limb, it does not expressly require that the Complainant's rights affected by the unfair use existed at the time of the Domain's acquisition.

The Complainant relies first on actual confusion, in particular that customer emails have in fact been misdirected to the Respondent. The Complainant says that the consequences could be serious because the emails may contain confidential and time-sensitive information and its clients might be uninsured because the Complainant has not received their emails requesting cover.

Paragraph 3a of the Policy contains a list of non-exhaustive list of factors which may be evidence that the Domain is an abusive registration. The following factor concerns actual confusion:

" 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"

The Respondent admits that it has received emails intended for the Complainant and indeed the Respondent says that, since receipt of the allegedly aggressive emails from the Complainant, it now destroys rather than forwards the misdirected emails.

The burden is however on the Complainant to prove amongst other things that such confusion as there has been arose from the Respondent's use of the Domain. The Complainant has failed to do so because it has not given any details or produced any examples of the misdirected emails. It is therefore impossible to assess whether confusion resulted from say the Complainant's customers mistakenly attempting to email the Complainant via the Respondent's website rather than say the Complainant's customers simply assuming that the Domain was the Complainant's email address or wrongly transcribing the Complainant's email address from its letterhead ie independently of the Respondent.

Even if there was evidence of confusion arising from the Respondent's use of the Domain, that would still need to be considered in light of paragraph 4aiA of the Policy (one of the factors which may be evidence that the Domain is not an abusive registration):

A. 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 ..."

It is not in dispute that the Respondent is a genuine provider of insurance-related services. The Respondent says that the Domain is the internet trading name of Maureen Irwin insurance agents and that a fully operable website has been in use since acquisition of the Domain in April 2000.

The Complainant denies this and says that the website was suspended for at least a month. It is however clear from the fact that the Complainant discovered the site up and running again on receipt of the Response that this suspension was recent and the Complainant does not deny that a website has otherwise been in place since April 2000.

The Complainant emailed the Respondent on 23 August 2001 - only a week after the Complainant apparently started trading under the name NSURE - complaining about use of "our name on your website". The Complainant does not deny the Respondent's assertion that it had never heard of the Complainant before that email.

I conclude from this that the Respondent was operating a website at the Domain before being informed of the Complaint's dispute and indeed before the Complainant itself started using the name NSURE. I have no information as to when the Respondent started using the Domain for email but I think it reasonable to infer that this coincided with its setting up a website.

The Respondent has therefore established the factor in paragraph 4aiA. While this is only a factor which may be evidence that the Domain is not an abusive registration, in my view it overrides the existence any actual confusion arising from the Respondent's use of the Domain. I have no reason to doubt the Complainant's assertion that serious problems could arise if its customers' emails go astray. I can also understand the Complainant's annoyance that the Respondent is deleting rather than forwarding the misdirected emails. However the Policy is not in my view intended to be a general antidote to the problems of confusion which may arise when genuine businesses in the same industry trade under identical or similar names. There may or may not be legal recourse for trade mark infringement, passing off or otherwise but these are matters for the courts.

Second, the Complainant says in effect that, because the Respondent is in the insurance business, its use of the Domain can be construed as an attempt to "pass off" as the Complainant in order to obtain confidential emails intended for the Complainant. It points out that the "actual name" of the Respondent's business is Maureen Irwin insurance agents whereas the Respondent is aware that the Complainant is "actually Nsure" and that the Respondent's use of a competitor's name must be passing off or to benefit from client confusion.

In my opinion any use by the Respondent of the Domain for the purpose of causing confusion so as to obtain the Complainant's confidential information or attract its customers is capable of amounting to abusive use - even if there is no evidence of actual confusion having occurred. (Abuse is not the same as the legal action of passing off though they may overlap). It is also conceivable in theory that the Respondent acquired and used the Domain genuinely but decided to use it abusively after the Complainant started trading under the name NSURE. If there were an illicit intent, then arguably the Respondent's offering of services would no longer be "genuine" for the purposes of paragraph 4aiA.

However, to show intent to confuse by the Respondent, the Complainant must do more than simply demonstrate that the Respondent continued to use the Domain after becoming aware that the Complainant had started trading under the name NSURE. Otherwise, why should the Complainant - which was second to use the name NSURE - not be treated as intending to confuse the Respondent's customers by simply using the Complainant's name after becoming aware of the Respondent?

Something more is needed. One example of abusive use might have been the Respondent copying the Complainant's website in a manner which was clearly designed to attract its customers. But the Complainant has not produced such evidence, or indeed any other evidence, of intent by the Respondent to confuse. Nor indeed has the Complainant explained why the Respondent might wish to obtain confidential information intended for the Complainant.

The Complainant places reliance on the fact that the "actual" name of the Respondent's business is Maureen Irwin insurance agents. In my view the fact of the Respondent's use of the Domain as a trading name for only the internet part of its business does not of itself suggest that the Respondent's intentions were illicit, especially given that the Respondent's use in that manner pre-dated the Complainant's use.

The Complainant says that the businesses of the Complainant's group are registered with the General Insurance Standards Council, The Financial Services Authority and The Mortgage Code Compliance Board and as such no other organisation can use the name NSURE to trade in any of these areas as this would be a breach of these regulatory authorities' rules.

I am not in a position to assess whether these regulatory rules have been breached but in any case I am concerned only with whether the Domain is an abusive registration as defined in the Policy. If the Complainant believes that there have been regulatory breaches, it can presumably take such matters up with the regulatory authorities concerned.

The Complainant says that it received no satisfactory reply to its emails of 23 August 2001 and 2 January 2002 and no reply at all to solicitors' letters sent on its behalf. I am not sure what reliance if any the Complainant seeks to place on this. The Complainant has not however produced the Respondent's email referred to in the Complainant's email of 2 January 2002 nor the solicitors' letters nor any other correspondence between the parties and so I cannot draw any conclusions from the Respondent's failure to reply satisfactorily or at all to the Complainant's communications. In any case, the Respondent has responded to these proceedings.

The Complainant has not satisfied me that on the balance of probabilities the Domain is an abusive registration.

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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Nsure Holdings Ltd -v- Arnold [2003] DRS 01194 (11 November 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/01194.html Cite as: [2003] DRS 1194, [2003] DRS 01194

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