 |
[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback] | |
Nominet UK Dispute Resolution Service |
||
|
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Zurich Insurance Company v UK Financial Directory [2008] DRS 05250 (26 January 2008) URL: http://www.bailii.org/uk/cases/DRS/2008/5250.html Cite as: [2008] DRS 5250, [2008] DRS 05250 |
||
[New search] [Printable RTF version] [Help]
Nominet UK Dispute Resolution Service
DRS 05250
Zurich Insurance Company v UK Financial Directory
Decision of Independent Expert
Complainant: Zurich Insurance Company
Country: GB
Respondent: UK Financial Directory
Country: US
zurichintermediaries.co.uk ("the domain name")
On 20 November 2007, Nominet received hard copy of the complaint dated 19 November. It checked that the complaint complied with the Nominet UK Dispute Resolution Service Policy ("the Policy") and the Procedure for the conduct of proceedings under the Dispute Resolution Service ("the Procedure"). The complaint was supported by material in a series of annexes:
A extract from Companies House record for Zurich Intermediary Group Limited
B WHOIS results for 4 domain names registered by the Complainant: zurichintermediary.co.uk, zurichintermediary.net, zurichintermediary.org and zurichintermediary.com
C a summary history of the group of companies of which the Complainant is a member
D sample trademark registrations for 'Zurich' by the Complainant and another company in the group
E WHOIS results on 15 November 2007 for zurichintermediaries.co.uk
F letter from the Complainant to the Respondent
G extracts from the webpages at the domain name
H WHOIS results on 7 June 2007 for zurichintermediaries.co.uk (showing changed registrant contact details)
The day the complaint was received, Nominet notified the Respondent and informed it that it had 15 working days within which to lodge a response. No response was received. Informal mediation not being possible, Nominet notified the parties that an Expert would be appointed if it received the appropriate fee from the Complainant. The fee was received on 2 January 2008.
On 14 January I, Mark de Brunner, agreed to serve as an Expert under Nominet's Dispute Resolution Policy and Procedure. I have confirmed that I am independent of each of the parties and that there are no facts or circumstances that might call my independence into question.
There is an email delivery failure report on file, generated in connection with Nominet's attempt to notify the Respondent of the complaint. My starting point in considering the effect of this is that those registering domain names with Nominet agree to keep Nominet up to date with their contact details. The Procedure says that Nominet will send a complaint to the Respondent by, at its discretion, any one of a range of means – including
- email using the contact details shown as the registrant or other contacts in the domain name register database entry for the domain name in dispute
- email to postmaster@
In the event, Nominet sent the complaint to both [email protected] (the contact address in the register entry for the domain name) and [email protected]. The delivery failure report relates to the second of these addresses.
Given that it is the Respondent's obligation to keep its contact details with Nominet up to date, I am satisfied that Nominet did what it could to notify the Respondent of the complaint. (In fact there is no delivery failure report in connection with the first address, but I would have taken the same view even if there had been.) I therefore propose to proceed on the basis that the Respondent has been properly notified of proceedings under the Dispute Resolution Service.
I have visited the Respondent's website at zurichintermediaries.co.uk and the Complainant's website at zurichintermediary.co.uk. The other domain names registered by the Complainant (at zurichintermediary.net, zurichintermediary.org and zurichintermediary.com) returned a 'cannot display' message. But from the website visits and the complaint I accept the following as facts.
The Complainant is part of Zurich Financial Services Group, a global provider of insurance-based financial services that has around 58,000 employees in more than 170 countries. The first company in the group was established in 1872, but the name 'Zurich' was only used when the company was renamed Transport-& Unfall-Versicherungs-Actiengesellschaft 'Zürich' in 1875. There was a name change in 1894 and another in 1955, when the company became known as 'Zurich' Versicherungs-Gesellschaft. In 1998 the company was renamed Zurich Financial Services. Zurich Financial Services holds Community trademarks for 'Zurich' (registered 1 June 1999) and for a logo with a distinctive Z (registered 20 November 1998).
A fellow group company, Zurich Intermediary Group Limited, was incorporated on 29 April 1985 and trades as 'Zurich Intermediary'. Zurich Intermediary Group Limited sells financial products - in particular, life assurance - to intermediaries. Formerly known as Zurich IFA Group, the company took its current name on 4 April 2005. On 31 March 2005 it moved its website from zifa.co.uk to zurichintermediary.co.uk.
The Complainant, Zurich Insurance Company, registered the domain names zurichintermediary.net, zurichintermediary.com and zurichintermediary.org on 23 December 2004 and the domain name zurichintermediary.co.uk on 27 December 2004. It made a UK trademark registration for 'Zurich' on 25 November 2005.
The domain name at issue, zurichintermediaries.co.uk, was registered by the Respondent on 28 June 2005. It resolves to a directory site containing personal contact and dating links (some of which link to websites containing sexually explicit material) as well as links referring to products the Complainant provides.
Complainant
The Complainant says it has rights in names ('Zurich' and 'Zurich Intermediary') which are similar to the domain name.
It says the domain name is an abusive registration because
(i) the Respondent has no connection with the Complainant and no legitimate reason for registering the domain name
(ii) the Respondent's registration of the domain name can only have been in order unfairly to disrupt the Complainant's business
(iii) the Respondent's use of the domain name will inevitably have confused internet users into believing that the domain name is in some way connected with the Complainant.
Respondent
There has been no response.
General
To succeed in this complaint the Complainant must prove, on the balance of probabilities, that
- it has rights in respect of a name or mark which is identical or similar to the domain name; and
- the domain name, in the hands of the Respondent, is an abusive registration.
Complainant's Rights
On the question of rights, the Complaint is not as well formulated as it might have been. It says that the Complainant has invested 'heavily' in the 'Zurich' name worldwide, referring specifically to two trademark registrations – one for the United Kingdom and another for the European Union. But it is clear from the supporting documentation that the EU trademark registration was by 'Zürich' Versicherungs-Gesellschaft, now renamed Zurich Financial Services, rather than by the Complainant.
That said, 'rights' has a broad meaning in the Policy, which explains the word in the following terms:
'Rights' includes, but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business
The Complainant clearly does have rights in both 'Zurich' (the subject of a UK trademark registration) and 'Zurich Intermediary' (the domain name it registered in December 2004). It could perhaps be argued that 'Zurich Intermediary' is in some sense descriptive of the Complainant's business. But 'intermediary' in this context is not, in my view, adequate as part of such a description. (It is more like the 'Direct' in 'First Direct', which is not wholly descriptive of that bank's business.) In my judgement, neither of those names is wholly descriptive of the Complainant's business and there is therefore no bar to the Complainant's relying on its rights in them.
The domain name is zurichintermediaries.co.uk. That is similar to the names in which the Complainant has rights – for one of them, involving just a minor change from singular to plural. I conclude that the Complainant has rights in respect of a name or mark which is similar to the domain name.
Abusive Registration
The Dispute Resolution Service rules define an abusive registration as a domain name which either
- 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
- has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's rights.
Where there is no response to a complaint that a domain name is an abusive registration, the approach to be taken by experts is now well established. It is for the Complainant to make out a prima facie case. Such a case demands an answer. In the absence of an answer, the complaint will ordinarily succeed. The question therefore becomes whether the Complainant has established a prima facie case.
The Policy contains a non-exhaustive list of factors that may be evidence that the domain name is an abusive registration. These include
(i) circumstances indicating that the Respondent registered the domain name primarily…for the purpose of unfairly disrupting the business of the Complainant
(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.
These cover the Complainant's main claims.
The Complainant says that the Respondent has no connection with it and no legitimate reason for registering the domain name. The Respondent may, of course, have a legitimate reason for registration but it has not taken the opportunity to say what that might be. 'Intermediaries' is very similar to 'intermediary' and I am left with the Complainant's contention that the similarity is deliberate and the facts as I have been able to establish them. The key points from those facts are that the domain name resolves to a directory site containing both dating and financial services links. It is hard to avoid the conclusion that the Respondent registered the domain name with the Complainant in mind, confident that it would attract traffic that way – whether or not that traffic then had an interest in what it found on the webpages at the domain name. That seems plainly to involve unfair disruption to the Complainant's business.
There is no direct evidence that people or businesses have been confused, but the Policy's list of factors is not exhaustive, the likelihood of confusion seems to me both relevant and high and – even if the confusion lasts only to the point where people arrive at the directory site, it is a material factor that weighs against the Respondent.
The Policy also contains a non-exhaustive list of factors that may be evidence that the domain name is not an abusive registration. The only factors that might be relevant here are where
(i) before being aware of the Complainant's cause for complaint, the Respondent has
used the domain name in connection with a genuine offering of goods or services, or
(ii) the domain name is generic or descriptive and the Respondent is making fair use of it.
It is arguable that, before being aware of the Complainant's cause for complaint, the Respondent was using the domain name in connection with a genuine offering of goods or services. But it seems to me more probable that, however 'genuine' the offering, the use of the domain name was determined by a factor (similarity of name) that the Respondent knew (or should have known) would give the Complainant cause for complaint. I do not think, therefore, that that gets the Respondent anywhere.
Arguably, too, the domain name is 'descriptive'. But there remains the question whether the Respondent's use of it is 'fair' and I think that is for me to decide in the context of the facts before me.
The Complainant draws my attention to an expert decision against the same Respondent in relation to the registration of skiptonintermediaries.co.uk (DRS 03716) in what appear to be similar circumstances. However, I am basing my conclusions squarely on the facts relating to the domain name at issue here.
The Complainant has only to make out a prima facie case that the domain name is an abusive registration. It seems clear to me that in taking a name similar to one in which the Complainant has rights and using that name to divert internet traffic away from the Complainant, the Respondent's use of the domain name takes unfair advantage of those rights. That in turn makes it seem probable that the registration of the domain name in the first place was also unfair. At the very least, the Complainant has made out an arguable case that this is an abusive registration. In the absence of an answer to that case, the complaint succeeds.
I find that the Complainant has rights in respect of a name which is similar to the domain name and that the domain name, in the hands of the Respondent, is an abusive registration.
In the light of that, I direct that the domain name be transferred to the Complainant.
Mark de Brunner
26 January 2008