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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Royal Bank of Scotland & Ors v Morrison [2006] DRS 3719 (21 July 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/3719.html Cite as: [2006] DRS 3719 |
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(1) The Royal Bank of Scotland
(2) Direct Line Insurance plc
(3) Privilege Insurance Company Limited
v
Robert Morrison
Decision of Independent Expert
Complainants: The Royal Bank of Scotland; Direct Line Insurance plc; Privilege Insurance Company Limited
Country: GB
Respondent: Robert Morrison
Country: AU
Disputed Domain Name
privelage.co.uk ("the Domain Name")
The Complaint was lodged with Nominet in full on 31 May 2006. Nominet validated the Complaint. The Respondent did not file a Response. On 30 June 2006 the Complainants paid Nominet the appropriate fee for a decision of an Expert pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy ("the Policy").
Cerryg Jones, the undersigned, ("the Expert") confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.
There are no other outstanding procedural issues that arise.
The Complaint contains the following assertions insofar as relevant to this decision:
1. The lead complainant, The Royal Bank of Scotland Group plc ("RBS"), is a leading provider of financial services and one of the oldest banks in the UK. RBS has offices in Europe, the United States and Asia. RBS offers a range of financial products and services – including retail banking, wealth management and insurance services – to both individual and institutional investors throughout the world. RBS has been registered at Companies House since 1968. A significant part of RBS's business concerns insurance services, which it provides RBS Insurance Services Ltd., which itself owns numerous subsidiaries including Direct Line Insurance plc ("Direct Line") and Privilege Insurance Company Limited ("Privilege").
2. Direct Line provides insurance services including car insurance, home insurance, and travel insurance, to over five million customers across the UK and in Europe. Direct Line has been registered at Companies House since 1984.
3. Privilege specialises in offering car insurance products and services, with home and breakdown coverage also available. Privilege has been registered at Companies House since 1993.
4. Direct Line is the owner, inter alia, of a UK registered trade mark for the word mark PRIVILEGE in class 36 for motor insurance and home insurance services. Direct Line also has a CTM application currently pending to register a stylised word mark for PRIVILEGE in a variety of classes.
5. The Complainants and their affiliates also own numerous domain names featuring the PRIVILEGE mark, including privilege.co.uk (registered prior to August 1996), privilege.com, privilege.net, and privilege.biz. Privilege uses these domain names to promote and operate its insurance business.
6. But for the Respondent's substitutions of the letter "e" for the letter "i" in the infix "-vil-" and the letter "a" for the letter "e" in the suffix "-ege," the spelling of the Domain Name is identical to that of Complainants' PRIVILEGE mark.
7. The Respondent registered the "privelage.co.uk" domain name on 14 June 2004 – long after the Complainants acquired rights to their PRIVILEGE name and mark.
8. The Respondent has no apparent rights to the Domain Name. The Domain Name, in the hands of the Respondent, 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 Complainants' rights and because it has been used in a manner that takes unfair advantage of and is unfairly detrimental to Complainants' rights. Specifically, Respondent has registered the Domain Name for the purpose of unfairly disrupting Complainants' business; is attempting to exploit Complainants' registered trademark and associated goodwill for his own commercial gain; and is engaged in a pattern of abusive registrations for the following reasons.
9. First, The Domain Name is apparently targeted toward internet users who, while seeking to access the Complainants' websites and insurance products and services, enter slight misspellings when trying to type in the Complainants' actual 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 the Complainants. Such use of the Domain Name threatens to disrupt Complainants' business by improperly directing Complainants' current and prospective customers to the Complainants' competitors.
10. Second, by reason of its confusing similarity to the Complainants' PRIVILEGE mark, the Domain Name conveys the impression that it is sponsored by, or somehow associated with Privilege and that it relates to Privilege's insurance business and services. Given the similarity of the Domain Name to Complainants' PRIVILEGE mark, and the near identicality of the Domain Name to Complainants' domain names, including "privilege.co.uk," an internet user intending to access Privilege's website could find himself at the Respondent's website without realizing that he had misspelled the word "Privilege" and failed to reach Privilege's legitimate site. Further, 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 user to his or her error. Additionally, even if a user realised that he was not at Privilege's official website, the user still could be confused into believing that Privilege was in some way associated with the Domain Name, given these substantial similarities.
11. Third, the Domain Name is also an abusive registration because the Respondent is using it to benefit commercially from his unauthorized and illegitimate use of the Complainants' mark and associated goodwill and thus is using the Domain Name in a manner that takes unfair advantage of and is unfairly detrimental to the Complainants' rights. Specifically, the Respondent is using the Domain Name to redirect Internet users who are familiar with and searching for Privilege's products and services – including Privilege'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 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 trade mark, to the websites of the Complainants' competitors. Such use is commercially exploitive of the Complainants' name and mark.
12. Finally, it appears that the Respondent has made abusive registrations in at least five DRS cases in the past two years (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)). Further, the Complainants themselves recently initiated a separate DRS proceeding against the Respondent, seeking transfer of domain names including "privalige.co.uk," which resolved to a website nearly identical to the one at issue here. The Royal Bank of Scotland Group Plc v. Robert Morrison, DRS 03676. Although the address information provided by the Respondent in connection with the domain names at issue in these prior proceedings differs from the address listed here, the Complainants submit that the Respondent is likely the same, given (1) that the registrant's name, Robert Morrison, is identical; (2) that 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) that the Respondent has taken steps to alter his address information in the past; and (4) that it is unlikely that two different Robert Morrison's, both with Australian addresses, would have, within approximately one month of each other, registered the domain names "privelage.co.uk" and "privalige.co.uk" and each made their respective domain names resolve to virtually identical vehicle insurance directory sites. Accordingly, the Complainants submit that they are entitled to a presumption of an abusive registration in this case under DRS Policy Section 3(c); thus, the Respondent is engaged in a pattern of abusive registrations, and the Domain Name is part of that pattern.
Paragraph 2 of the Policy requires that for the Complainant to succeed it has to prove to the Expert on a balance of probabilities, that it has rights in respect of a name or mark identical or similar to the Domain Name and that the Domain Name in the hands of the Respondent is an abusive registration (as defined in paragraph 1 of the Policy).
Complainant's Rights
The exhibits submitted with the Complaint prove on a balance of probabilities that the Complainants have rights in the name or mark PRIVILEGE. This mark is similar to the Domain Name, which is hardly surprising given the aural, visual and phonetic similarities.
Abusive Registration
The Complainant also has to show that the domain name is an abusive registration. Paragraph 1 of the Policy defines this 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."
A non-exhaustive list of factors, which may be evidence of an abusive registration, are set out in paragraph 3a of the Policy. However, these are only examples of conduct, which may be evidence that a domain name is an abusive registration.
Under 3 c of the Policy there is a presumption of abusive registration if the Complainant proves that the Respondent has been found to have made an abusive registration in three or more Dispute Resolution cases in the two years before the Complaint was filed.
In the absence of a Response, and on a balance of probabilities, the Complainants have made out a prima facie case that the registration is an abusive registration for the following reasons:
1. I infer from the fact that the Respondent has used the Domain Name as the address of a website that offers links to other websites operated by the Complainants' competitors that the Respondent was fully cognisant of the trade mark PRIVILEGE at the time he registered the Domain Name. In the circumstances, I also infer that the Respondent is engaged in typo-piracy; that is, he has registered the Domain Name as a deliberate miss-spelling of the PRIVILEGE name for the purpose of capturing internet users who have inadvertently miss-spelt the PRIVILEGE name when using their search engines or web-browsers. By these means the Respondent has unfairly disrupted the Complainants' business by improperly directing those seeking information about the services offered under the Privelege trade mark to the Complainants' competitors.
2. The Respondent has also taken unfair advantage of the Complainants' rights by seeking to generate click-through revenues from the typographical error referred to above.
3. The Respondent is the same Robert Morrison who has already made more than three abusive registrations in Dispute Resolution cases in the two years before the Complaint was filed.
4. The Respondent is engaged in a pattern of abusive registrations and the Domain Name is part of that pattern.
Accordingly, I find that the Domain Name is an abusive registration.
In the light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an abusive registration, I direct that the Domain Name be transferred to the Lead Complainant, RBS.
Cerryg Jones 21 July 2006