World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

BGL Group Limited v. Blue Insurances

Case No. DIE2011-0004

1. The Parties

The Complainant is BGL Group Limited of Peterborough, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by TLT Solicitors, United Kingdom.

The Respondent is Blue Insurances of Dublin, Ireland.

2. The Domain Name and Registrar

The disputed domain name <comparethemarket.ie> is registered with IE Domain Registry Limited.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2011. On October 13, 2011, the Center transmitted by email to IE Domain Registry Limited a request for registrar verification in connection with the disputed domain name. On October 14, 2011, IE Domain Registry Limited transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint and the amendment to the Complaint satisfied the formal requirements of the .IE Domain Name Dispute Resolution Policy (the “Policy” or the “ieDRP”), the Rules for .IE Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IE Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2.1 and 4.1 the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 2, 2011. In accordance with the Rules, paragraph 5.1, the due date for Response was November 26, 2011. The Response was filed with the Center on November 21, 2011.

The Center appointed James Bridgeman as the sole panelist in this matter on November 28, 2011. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a company incorporated in the United Kingdom having company number 02593690. It was incorporated on March 21, 1991 and carries on an insurance intermediary business.

BISL Limited, which is wholly owned subsidiary of BFSL Limited which is in turn a wholly owned subsidiary of the Complainant registered the gTLD domain name <comparethemarket.com> on September 21, 2004 and established a website at established at the “www.comparethemarket.com” in 2005.

The Complainant registered a gTLD domain name <comparethemeerkat.com> on October 3, 2007 and established a website at the”www.comparethemeerkat.com” address in early 2009.

The Complainant is the owner of the following United Kingdom ( “U.K”) registered trade marks all of which are registered in classes 35 and 36:-

U.K. registered trade mark number 24586693A COMPARETHEMARKET.COM FOR CHEAPER INSURANCE, NO ONE ELSE COMPARES and Device filed on May 25, 2007;

U.K. registered trade mark number 2456693B COMPARETHEMARKET.COM and Device filed on May 25, 2007;

U.K. registered trade mark number 2456693C COMPARETHEMARKET.COM and Device filed on May 25, 2007;

U.K. registered trade mark number 2456693C COMPARETHEMARKET.COM FOR CHEAPER INSURANCE, NO ONE ELSE COMPARES and Device filed on May 25, 2007;

U.K. registered trade mark number 2522721, COMPARETHEMARKET filed on July 23, 2009;

U.K. registered trade mark number 2486675, COMPARETHEMARKET.COM filed on May 2, 2008;

U.K. registered trade mark number 2504071, COMPARETHEMEERKAT.COM filed on December 4, 2008.

The disputed domain name was registered on January 15, 2008.

5. Parties’ Contentions

A. Complainant

The Complainant initially carried on business as an insurance underwriter but since 1997 it has carried on business as a personal-lines insurance intermediary in the United Kingdom including Northern Ireland through its subsidiary companies BFSL Limited and BISL Limited.

The Complainant submits that in effect it is the owner of the domain name <comparethemarket.com> as it is owned by its subsidiary company within the group.

In 2005, the Complainant created the “Compare the Market” brand. A price comparison website for personal lines insurance products was established at the website at “www.comparethemarket.com>”.

The “Compare the Market” brand was re-launched in 2009 with television advertising campaign. The campaign featured an anthropomorphised meerkat character named Aleksandr the Meerkat, and a companion website was established at the “www.comparethemeerkat.com” address.

The Complainant submits that as a result of its marketing and extensive use of the brand in the insurance intermediary business, COMPARE THE MARKET has become a well-known brand. As evidence of the reputation of the brand the Complainant claims that both the Complainant itself and its advertising agency have won awards for the advertising campaign based on the Aleksandr the Meerkat character.

The Complainant submits that it has rights in the Protected Identifiers being the above listed U.K. registered trade marks and the goodwill accrued through the use and advertising of the of the marks in its insurance intermediary business in the United Kingdom by itself and its subsidiaries. The Complainant also claims that the ccTLD domain name <comparethemarket.co.uk> which it owns is also a Protected Identifier in which it as rights. The Complainant argues that each of said Protected Identifiers has been and will in the future be actively used has been and will be actively used in the future by the Complainant in the United Kingdom, including Northern Ireland.

The Complainant requests this Panel to note that the rights in the United Kingdom trade mark registrations are enforceable in Northern Ireland and that the Complainant has established a goodwill in the COMPARE THE MARKET marks through its active trading using the brand in Northern Ireland well as other parts of the United Kingdom. As evidence of such use the Complainant has furnished a screenshot of a page from a website at “www.northern-ireland-insurance-centre.co.uk” on which the following description is posted: “comparethemarket.com – an excellent insurance comparison service for N. Ireland”.

The Complainant submits that the Respondent has no rights or legitimate interest in the disputed domain name. The Complainant submits that the Respondent is not using the disputed domain name for any active trading but is using the disputed domain name as the address of a website that displays numerous links to various insurance comparison websites which directly compete with the Complainant.

The disputed domain name is not used to promote the Respondent’s business and at the top of the page on the Respondent’s website there is the following statement that does not refer to the Respondent’s business: “This domain comparethemarket.ie is reserved for a client of Irish Domains Ltd.” There is no mention of the Respondent whatsoever.

Any plans the Respondent has to develop a competitor of the “comparethemarket” brand in Ireland would be immediately opposed on the a basis that the Complainant already trades in Northern Ireland and there would be a significant risk of confusion and damage to the Complainant’s brand.

The Complainant submits that the disputed domain name was registered and is being used in bad faith.

The disputed domain name was registered on January 15, 2008, over 3 years after the Complainant registered the domain name <comparethemarket.com>.

The Respondent’s website uses the same colour scheme as that used by the Complainant on its website.

The disputed domain name is identical to the Complainant’s U.K. registered trade mark number 2486675, COMPARETHEMARKET.COM and the “comparethemarket” element of the disputed domain name is identical to the Complainant’s U.K. registered trade mark number 2522721, COMPARETHEMARKET.

The Complainant submits that the sole purpose of the disputed domain name registration was, and is, to take advantage of the Complainant’s reputation and goodwill. The Respondent seems to intend to launch a rival comparison website in the Ireland which would be a flagrant attempt to take advantage of the Complainant’s reputation and goodwill.

The Complainant submits that the disputed domain name registration prevents the Complainant expanding its business into the Ireland, which it a move that could be in the reasonable contemplation of the Complainant.

The Complainant argues that the disputed domain name is being used primarily for the purpose of interfering with or disrupting the business of the Complainant. The Complainant’s customers in Northern Ireland will often assume that the Complainant is the owner of the disputed domain name because of the strong reputation of the Complainant’s Protected Identifiers and the fact that the Complainant trades in Northern Ireland. Internet traffic seeking the Complainant will therefore be diverted to the Respondent’s website.

The Complainant alleges that the Respondent has, through its use of the disputed domain name intentionally attempted to attract Internet users to a website or other online location by creating a confusion with a Protected Identifier in which the Complainant has rights. The Respondent seeks only to take unfair advantage of the Complainant’s reputation.

The Complainant submits that the disputed domain name is used in a way that is likely to dilute the reputation of a trademark or service mark in which the Complainant has rights as it suggests that there is another COMPARE THE MARKET brand in the market.

The Complainant finally submits that it has enforceable trade mark rights in Northern Ireland and as the .ie domain name is used for both Northern Ireland and Ireland, the Complainant is entitled to rely on its trade mark rights to prevent the use of the disputed domain name by the Respondent.

B. Respondent

The Respondent argues that the Complainant has only operated in the United Kingdom which excludes Ireland and the Complainant’s website is for the United Kingdom market and for United Kingdom price comparison information.

The Respondent asserts that the phrase “compare the market” is a generic phrase and there is a large number of other domain names which are identical or very similar to the Complainant’s domain name. The Respondent has furnished a sample list of such domain names as an appendix to the Response (Appendix 1).

The Respondent claims to have acquired goodwill in the disputed domain name. The disputed domain name is registered on the .ie domain and as a company registered in Ireland and trading in Ireland the Respondent is the legal owner of the domain name <comparethemarket.ie>.

The website to which the disputed domain name resolves, and to which the Complainant refers, is the IEDR hosting page and is not a webpage of the Respondent.

The Respondent denies that there would be any risk of confusion and damage to the Complainant’s brand if the Respondent developed its website in Ireland. The Complainant is not registered with either the Central Bank or the Financial Services Authority in Ireland and therefore is not entitled to trade, to write business or to promote other insurance providers in Ireland.

As to whether the disputed domain name has been registered or is being used in bad faith, the Respondent argues that since its inception in 2003 the Respondent has pursued a business model whereby various domain names are registered and a product is then developed to compliment the domain name. Examples of this are set out in appendix to the Response. (Appendix 2 to the Response)

The Respondent argues that the fact that the use of a blue and green colour scheme on its web site to which the disputed domain name resolves is not material to the issue of this administrative proceeding concerning the disputed domain name. The Respondent’s business uses a blue and green colour scheme for some of its other products such as the <blueinsurance.ie> screenshot also attached in an appendix to the Response.

The Respondent asserts that “compare the market” is a generic phrase which is in everyday use and it is submitted that the Complainant has no right to the sole use of that phrase. The fact that the Complainant’s United Kingdom trademark is enforceable in Northern Ireland is not material to this dispute.

The Respondent denies the assertions that the sole purpose of the registration of the disputed domain name was (and is) to take advantage of the success of the Complainant's COMPARE THE MARKET brand and that the Respondent seems to intend to launch a rival "comparethemarket" brand in the Ireland, as alleged. The Respondent registered the domain name in early 2008. The Complainant asserts that it was only in 2009 that the COMPARE THE MARKET brand was re-launched. This was clearly done after the disputed domain name had been registered by the Respondent and therefore the sole purpose of the registration could not have been to take advantage of any success of a re-launch which had not even taken place when the registration of the domain name took place. The only motivation the Respondent has with the domain name is as part of its ongoing and well established business practice,

The Respondent asserts that the Complainant has no legal right to trade in Ireland. It is not registered to trade in Ireland with the appropriate authorities. Notwithstanding that any action the Complainant would take to try and stop the Respondent’s use of the domain name will be subject to the Courts of Ireland and is therefore not a matter for this dispute.

It is clear from the chronology of events that the Complainant had incorporated its company in March 1991 and operated from 1997 through its wholly owned subsidiaries. It was open for the Complainant to register such domains as it saw fit in 2004 when it registered <comparethemarket. com>. This was some four years before the Respondent registered the disputed domain name. It was, or should have been in the reasonable contemplation of the Complainant that it might expand its business into Northern Ireland and Ireland. It is submitted that it would be wholly unfair to deny the Respondent the use of the domain name because the Complainant neglected, failed or decided not to register the domain name <comparethemarket.ie> in 2004.

There is no evidence presented that the assertions made by the Complainant that Internet users would be diverted or that they would assume the Complainant owns the domain name. Such assertions are unsubstantiated opinion. The Complainant’s customers in Northern Ireland will be directed to the Complainant’s website because they will be using the <co.uk> domain name.

The Complainant attempts to suggest that Northern Ireland and Ireland are in some way one and the same is incorrect and is a material misstatement of the factual position. The Complainant does not and is not entitled to trade in Ireland and therefore its reference to customers in Ireland is not relevant.

The Complainant has set out the United Kingdom trademarks it owns and has confirmed that the trademarks are enforceable in Northern Ireland. Northern Ireland is part of the United Kingdom. Ireland is not. The assertion that those UK rights entitle the Complainant to prevent the Respondent using the domain name in Ireland is wholly and factually incorrect. The Complainant is not authorised by the appropriate authorities in Ireland to write business or to operate in Ireland.

In summary the Respondent submits that the Complaint should be dismissed on the following grounds:

The Respondent registered the disputed domain name in January 2008. The Complainant did not re-launch its brand until January 2009. The Respondent therefore had registered the disputed domain name before the Complainant had re-launched its brand. Therefore it is impossible for the Respondent to have acted in bad faith.

The Complainant had a four year period in which to register the disputed domain name before it was registered by the Respondent. The Complainant has brought the Complaint in bad faith on the basis that as a result of its oversight, error or neglect it did not register the domain name and it now seeks to blame the Respondent for that. It is clear that the Respondent registered the domain name in 2008 as part of a well established and ongoing business model.

Ireland is a separate legal entity from Northern Ireland. The rights that the Complainant has through its trademarks in the United Kingdom only extend to Northern Ireland. They confer or extend no rights to the Complainant in Ireland. Any attempt to confuse the geographical territories of Northern Ireland and Ireland are misleading and false.

The Complainant despite its assertions in its Complaint has not and is not registered in Ireland to write insurance business. It is not registered with the Central Bank nor with the Financial Services Authorities and therefore it is not in a position, nor has it ever been in a position, to offer services to persons in Ireland through its COMPARE THE MARKET brand.

The Respondent has been a provider of online insurance services and products in Ireland for a number of years and has built up and developed considerable goodwill in the Irish insurance market where it enjoys a reputation of being a premier provider of niche insurance products.

The Respondent has, in accordance with its well established business model and in the anticipation of its business in Ireland and in the UK registered a number of domain names which will allow it to carry on business in Ireland, the United Kingdom and worldwide.

There are other similar websites which the Complainant has not registered. These include the domain names <comparethemarketni.com>, <comparethe-market.com>, <compare-market.org.uk>, <comparethemarketinsurance.com>.

6. Discussion and Findings

Substantive Issues

Pursuant to paragraph 1 of the ieDRP, the Complainant is obliged to prove that

1.1.1. the disputed domain name is identical or misleadingly similar to a Protected Identifier in which the Complainant has rights; and

1.1.2. the Respondent has no rights in law or legitimate interests in respect of a domain name; and

1.1.3. the disputed domain name has been registered or is being used in bad faith.

A. Identical or Confusingly Similar

A Protected Identifier is defined in paragraph 1.3.1 of the ieDRP as including “trade and service marks protected in the island of Ireland.”

The Complainant has furnished evidence of its ownership of the above registered trademarks including U.K. trade mark registration number 2522721 for the word mark COMPARETHEMARKET and U.K. Trade Mark number 2486675 for the word mark COMPARETHEMARKET.COM. These trademarks are therefore protected in Norhern Ireland as the Complainant has correctly asserted.

The disputed domain name <comparethemarket.ie> is identical to the former as the “.ie” ccTLD suffix may be ignored when making the comparision and it is confusingly similar to the latter as the only distinct element is the “.com” gTLD element in the COMPARETHEMARKET.COM and “comparethemarket” is the dominant element in both the trademark and the disputed domain name.

The Complainant has therefore succeeded in the first element of the test in paragraph 1 of the ieDRP.

B. Rights or Legitimate Interests

The Respondent claims to have acquired a goodwill in the disputed domain name. The Respondent claims to pursue a business model whereby various domain names are registered and a product is then developed to compliment the domain name.

However, on the evidence the Respondent has not established any business associated with the disputed domain name. According to the Response the website to which the disputed domain name resolves is the Domain Registry hosting page and not a website associated with any legitimate business of the Respondent.

Paragraph 1.2 of the ieDRP expressly states that “[t]he fact that the Registrant has registered the domain name, the subject of the dispute, does not constitute evidence of rights in law or legitimate interests in accordance with Paragraph 1.1.2.”

Paragraph 3 of the ieDRP cites a non-exhaustive list of examples of circumstances which may amount to evidence of a respondent’s rights or legitimate interests in a domain name. In the present case there is no evidence to demonstrate that, before being put on notice of the Complainant's interests in the domain name, it had made demonstrable good faith preparations to use the domain name in connection with a good faith offering of goods or services, or operation of a business; the domain name does not correspond to the personal name or pseudonym of the Respondent; the disputed domain name is not identical or misleadingly similar to a geographical indication has been used, in good faith, by the Respondent.

This Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has therefore also succeeded in the second element of the test in paragraph 1 of the ieDRP.

C. Registered or Used in Bad Faith

The Respondent’s position is that it has registered and is using the disputed domain name in good faith. The essence of the Respondent’s defence is that it claims:

- that it has accrued an established a goodwill in the disputed domain name through its registration and use of the domain name,

- that the disputed domain name is a generic term that the Complainant cannot claim to monopolise;

- that the “.ie” ccTLD domain is the namespace for Ireland and because of the jurisdictional limitations of the Complainant’s U.K. registered trademarks and the regulatory restrictions prohibiting the Complainant from carrying on its insurance intermediary business in Ireland without specific authorization, any rights that the Complainant may have in the claimed Protected Identifiers are limited to Northern Ireland and therefore are not relevant to the issues before this Panel; and

- that the disputed domain name was registered in good faith prior to the re-launch of the Complainant’s website

This Panel does not accept those arguments.

With regard to the claim that the Respondent has acquired goodwill in the disputed domain name, as this Panel has found above, paragraph 1.2 of the ieDRP expressly states that “[t]he fact that the Registrant has registered the domain name, the subject of the dispute, does not constitute evidence of rights in law or legitimate interests in accordance with Paragraph 1.1.2.” There is no evidence of any use, legitimate or otherwise, of the disputed domain name by the Respondent beyond having it resolve to a registrar’s parking page with links.

Addressing the issue as to whether the disputed domain name is generic and therefore freely available to the Respondent to register and use, this Panel accepts that the words “compare the market” are obviously descriptive. However, the Complainant owns U.K. registered trade mark number 2522721, COMPARETHEMARKET filed on July 23, 2009 and this gives it statutory trademark rights in Northern Ireland. Furthermore the Complainant has furnished a print-out of a third party website that acknowledges that it is actively engaged in the insurance intermediary business in Northern Ireland. From the information on file the Respondent is carrying on business in that jurisdiction and apparently in United Kingdom also, and on the face of it would not be entitled to use the Complainant’s trademark for insurance services in those jurisdictions.

The “.ie” country code Top Level Domain (ccTLD) namespace extends beyond Ireland despite the Respondent’s assertion to the contrary. For example, while there are restrictive rules governing registrations on the “.ie” domain space, the Registration Policy expressly states that “applicants applying for a .ie domain name who are not situated in the 32 counties of Ireland, must demonstrate a real and substantive connection with Ireland (with the exception of those applying by means of Community Trademark).” On the face of it, both the Complainant and the Respondent meet this requirement. Elsewhere the Registration Policy makes express qualifying provisions for applicants based alternatively in both Ireland and Northern Ireland.

While the Respondent has argued that the disputed domain name was registered in good faith prior to the re-launch of the Complainant’s website, the chronology of the dispute demonstrates otherwise and on the balance of probabilities the disputed domain name was chosen and registered by the Respondent to either take advantage of the reputation of the Complainant or more likely to block the Complainant’s registration of its Protected Identifier (the COMPARE THE MARKET trademark) on the.ie domain space. When the disputed domain name was registered on January 15, 2008:-

- the Complainant had already created its COMPARE THE MARKET brand in 2004;

- the gTLD domain name <comparethemarket.com> had already been registered by the Complainant’s subsidiaries on September 21, 2004 and used; and

- the Complainant had filed trademark registration applications that resulted in the registration of U.K. trade mark registration number 24586693A COMPARETHEMARKET.COM FOR CHEAPER INSURANCE, NO ONE ELSE COMPARES and Device, UK trade mark registration number 2456693B COMPARETHEMARKET.COM and Device; UK trade mark registration number 2456693C COMPARETHEMARKET.COM and Device UK trade mark registration number 2456693C COMPARETHEMARKET.COM FOR CHEAPER INSURANCE, NO ONE ELSE COMPARES and Device on 25 May 2007 in anticipation of the re-launch of the brand in 2009.

It follows that it is improbable that the Respondent was unaware of the Complainant’s reputation when the disputed domain name was registered.

In this regard, this Panel notes from the signature line in the email correspondence sent by the Respondent to the Center dated October 28, 2011 that the Respondent is not only established in Dublin, Ireland but that it also has an office in Cardiff, United Kingdom. The email signature also states that the Respondent is the “winner best travel insurance provider in Northern Ireland in 2008, 2009 & 2010”. It follows that on the balance of probabilities the Respondent would have had industry knowledge of the Complainant’s reputation as it appears to have been either a direct competitor or at least engaged in the same industry as the Complainant in the UK, including Northern Ireland since the disputed domain name was registered in 2008.

Paragraph 2.1 of the ieDRP sets out a number of factors that, in particular but without limitation, may be considered as evidence of registration or use of a domain name in bad faith:

“2.1.1 where the domain name has been registered or is used primarily for the purpose of selling, renting, licensing or otherwise transferring the registration to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the registrant's documented expenses which are directly related to the registration of the domain name; or

2.1.2 where the domain name has been registered or is used primarily in order to prevent the Complainant from reflecting a Protected Identifier in which it has rights in a corresponding domain name; or

2.1.3 where the Registrant has registered or is using the domain name primarily for the purpose of interfering with or disrupting the business of the Complainant; or

2.1.4 where the Registrant has, through its use of the domain name, intentionally attempted to attract Internet users to a web site or other on-line location by creating confusion with a Protected Identifier in which the Complainant has rights; or

2.1.5 where the domain name is used in a way that is likely to dilute the reputation of a trade or service mark in which the complainant has rights;

2.1.6 where the Registrant has intentionally provided misleading or false information when applying for the domain name registration.”

Since, the Respondent must have been aware of the Complainant’s reputation in and use of the COMPARE THE MARKET brand when it registered the disputed domain name in 2008, since the Respondent is engaged in competing or similar insurance intermediary business as the Complainant in the U.K., including Northern Ireland, and since the Respondent has passively held the disputed domain name since January 2008 name this Panel finds that on the balance of probabilities the disputed domain name has been registered primarily in order to prevent the Complainant from reflecting the Protected Identifiers COMPARETHEMARKET and COMPARETHEMARKET.COM in which it has rights in a corresponding domain name.

This Panel therefore finds that the disputed domain name was registered and is being used in bad faith. The Complainant has therefore also succeeded in the third and final element of the test in paragraph 1 of the ieDRP and is entitled to succeed in this application.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 5.1 of the Policy and 14 of the Rules, the Panel orders that the domain name <comparethemarket.ie> be transferred to the Complainant.

James Bridgeman
Sole Panelist
Dated: December 14, 2011

 

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