In one of the most interesting WIPO decisions of the year, A one person WIPO Panel today denied the complaint of 1stQuote.com against the owner of FirstQuote.com.
What makes this case particularly interesting is that the trademark holder of 1stQuote.com already won WIPO Cases against the holders of the domains FirstQuote.net and FirstQuote.org in two separate filed WIPO actions.
Even more interesting is that this panel ruling in favor of the domain holder might have turned on the fact that the registrant of the domain was located offshore.
Here are the facts:
“”The Complainant was established in 1997 and sells its products and services through a group of more than 7,500 independent insurance agencies located in 31 states and has more than 575 employees in four regional offices, serving nearly 100,000 business customers around the U.S. Since January 2003, the Complainant is using 1STQUOTE to promote its workers’ compensation insurance products, including its on-line application processing software.””
“”The Complainant is registered owner of the US trademark No. 3,302,240 1STQUOTE for “providing on-line non-downloadable work flow computer software for use in database management and administration in the field of insurance information”, registered on October 2, 2007 and claiming first use of January 1, 2003″”
“”The Respondent acquired the disputed domain name on February 24, 2010 from an aftermarket service for the amount of $4,074 and is using it in connection with a parking website providing inter alia links to websites of the Complainant’s direct competitors.””
“”The Respondent alleged that the phrase “First Quote” is the featured tagline for thousands of insurance, financial and legal websites and can be heard in numerous ads from agencies asking to “come in today for your first quote”.
“The Respondent further argued that the disputed domain name is comprised of a generic term, which may be used in hundreds of ways, and the Complainant is attempting to leverage the domain name from its owner by using the UDRP forum to reverse hijack the domain.””
“”The Respondent further states that there are 10 active trademarks for FIRST QUOTE in the US, that there is no proof that the Complainant is the sole owner of and creator of the phrase “first quote” and that the disputed domain name was first registered on January 15, 1997, 6 years prior to the Complainant’s claim of “first use” of the 1STQUOTE-trademarks and even before the Complainant was established, which also shows that the phrase had already been popular before complainant tried to claim it.””
“”The panel found that the disputed domain name is confusingly similar to the Complainant’s 1STQUOTE-Marks.””
However the panel went on to find there was no bad faith despite being parked and being confusingly similar to the Complainant’s 1STQUOTE-Marks:
“”It seems to be more likely than not to this Panel that the Respondent acquired the disputed domain name – as he contends – because of its meaning and because of the substantial third party use of the underlying words, and not with a view to the Complainant and its 1STQUOTE-Marks.””
“”The Complainant’s 1STQUOTE-Marks are not used identically in the disputed domain name but with a different spelling, and they enjoy less than average distinction, if any distinction at all, as they are made up of two generic words which are commonly used together.””
“”Moreover, the Respondent is based in Hong Kong, SAR of China, while protection of the Complainant’s 1STQUOTE-Marks and the Complainant’s business are limited to the United States of America. “”
“”As a result, on the balance of evidence, the Complainant has failed in this Panel’s assessment to prove that the disputed domain name was registered in bad faith, i.e. with the Complainant in mind.””
“”In this Panel’s assessment, the present case needs to be distinguished from previous – though not binding – cases decided under the UDRP, such as Aspen Holdings Inc. v. Christian P. Vandendorpe, WIPO Case No. D2009-1160, <firstquote.net>, and Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation, WIPO Case No. D2009-0776, <firstquote.org>.””
“”Aspen Holdings Inc. v. Christian P. Vandendorpe, WIPO Case No. D2009-1160, <firstquote.net>, dealt with an identical second level domain name and the same Complainant, and resulted in the transfer of the domain name <firstquote.net>. With regard to the decisive question whether or not <firstquote.net> was registered and had been used in bad faith, it was found in that case that, while the word “quote” was frequently used in connection with financial products, the phrase “first quote” called for some explanation.””
“”As <firstquote.net> was registered only 5 days after the Complainant had first started using the term 1STQUOTE in commerce, as the respondent in such case had been involved in an earlier UDRP proceeding, and as he had not replied to the Complainant’s contentions, the panel in that case decided that these “factors when combined together are sufficient to tip the scales in the Complainant’s favour on the balance of probabilities.” In the absence of such factors in the present case, however, and in this Panel’s assessment in weighing the Complainant’s case against the Respondent’s reply, the Panel does not find that the Complainant has succeeded here in proving it is more likely than not that the disputed domain name was registered in bad faith.”””
“”Aspen Holdings Inc. v. Rick Natsch, Potrero Media Corporation, WIPO Case No. D2009-0776, <firstquote.org>, also dealt with an identical second level domain name and the same Complainant, and resulted in the transfer of the domain name. From the point of view of this Panel, however, the present Respondent (other than the respondent in such case) gave well-founded reasons why he was unaware of any known corporations operating under the brand name “first quote” when acquiring the disputed domain name, and, moreover, brought evidence to the Panel’s attention that numerous insurance companies are advertising under the term “first quote”.””
“”To sum up, other than in the above-cited <firstquote> cases, compelling facts and circumstances on the record of this case do not suggest that the disputed domain name was registered in bad faith. Accordingly, the transfer of the disputed domain name is denied.””
A very interesting opinion by Brigitte Joppich who was the sole panelist.
I especially noted and placed in bold above the statement that weakened the protection of the trademark because the registrant was Hong Kong based rather than US based.
We have talked in the past about the benefits of being offshore.
This case might very well have turned on the fact that the registrant was offshore, especially in light of the two previous cases for the exact domain involving the .net and .org wound up with a victory for the trademark holder.