 |
[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback] | |
Nominet UK Dispute Resolution Service |
||
|
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Endsleigh Insurance Services Ltd v Graham [2005] DRS 02549 (13 June 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/02549.html Cite as: [2005] DRS 2549, [2005] DRS 02549 |
||
[New search] [Printable RTF version] [Help]
Endsleigh Insurance Services Ltd v Graham [2005] DRS 02549 (13 June 2005)
Endsleigh Insurance Services Limited -v- David Graham
Nominet UK Dispute Resolution Service
DRS 02549
Endsleigh Insurance Services Limited -v- David Graham
Decision of Independent Expert
Complainant: Endsleigh Insurance Services Limited
Country: GB
Respondent: David Graham
Country: Australia
endsligh.co.uk ("the Domain Name")
The Complaint was received by Nominet on 14 April 2005. Nominet validated the Complaint and sent a copy to the Respondent on 20 April 2005.
A Response was received by Nominet on 22 April 2005 and a copy forwarded to the Complainant.
A Reply was received by Nominet on 28 April 2005 and a copy forwarded to the Respondent.
On 1 June 2005 the Complainant paid Nominet the required fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy ("the Policy").
Nominet invited the undersigned, Jason Rawkins ("the Expert"), to provide a decision on this case and duly appointed the undersigned as the Expert with effect from 8 June 2005.
The Complainant is an insurance company.
In October 2004 the Respondent registered the Domain Name.
Complainant:
The Complainant's submissions are as follows:
1. The Complainant has rights in a trade mark which is similar to the Domain Name:
(1) The Complainant owns copyright in its website at www.endsleigh.co.uk and the constituent elements of that website. The Complainant has owned and actively used such domain name since August 1996.
(2) The Complainant owns trade mark registration number 1569581 for ENDSLEIGH.
(3) The Complainant is a company of substantial reputation, having traded since incorporation on 13 August 1965. It offers a wide range of insurance-related products, its core business being motor insurance.
(4) The Domain Name is confusingly similar to the Complainant's domain name, and is also an infringement of the Complainant's registered trade mark.
2. The Domain Name is an Abusive Registration in the hands of the Respondent:
(1) The Domain Name is an infringement of the Complainant's registered trade mark.
(2) The almost identical spelling of the Domain Name misleads members of the public into believing they are dealing with the Complainant.
Respondent:
The Respondent filed a response, stating that he wished to hand the Domain Name back to the Complainant. In a non-standard reply, the Complainant referred to the Respondent's wish to transfer ownership of the Domain Name. (In spite of these communications, the fact that this case has been passed to an expert to make a decision means that, for whatever reason, it did not turn out to be possible during Nominet's mediation process to finalise the voluntary transfer of the Domain Name by the Respondent.)
General
Paragraph 2 of the Policy provides that, to be successful, 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; and
ii the Domain Name, in the hands of the Respondent, is an Abusive Registrations (as defined in paragraph 1 of the Policy).
Complainant's Rights
If the Complainant wished to be able to rely on its trading since 1965, it should have included evidence to corroborate this. Nevertheless, the Complainant's trade mark registration for ENDSLEIGH (the details of which were attached to the Complaint) is of itself sufficient to demonstrate that the Complainant has Rights in the name/mark ENDSLEIGH.
Disregarding the generic .co.uk suffix, the Domain Name is clearly extremely similar to the ENDSLEIGH mark.
I therefore find that the Complainant has proven what is required under the first part of paragraph 2 of the Policy.
Abusive Registration
Paragraph 1 of the Policy 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 Complaint attaches a copy of the Respondent's website at www.endsligh.co.uk. The home page has links to several insurance-related websites, none of which being the Complainant's. For example, the second link is headed "Tesco Car Insurance: Save online - get 10% extra off online car insurance at Tesco" and lists the www.tesco.co.uk/car website address.
On classic "bait and switch" principles, it is clear that the Domain Name has been used in a manner which has taken unfair advantage of and been unfairly detrimental to the Complainant's Rights.
For completeness, I should refer to the Complainant's submissions based on registered trade mark infringement. Whilst such matters might be relevant in any Court proceedings, they are not relevant to decisions under Nominet's Dispute Resolution Service ("DRS"). Under the DRS, the sole criterion is whether or not a Domain Name is an Abusive Registration, as defined in paragraph 1 of the Policy (as set out above).
Having found 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, endsligh.co.uk, be transferred to the Complainant.
___________________________________________________________________
Jason Rawkins 13 June 2005