Two UDRP decided days apart by the Czech Arbitration Court (CAC) on two very similar domains got completely results.
Both UDRP’s were brought by the same Complainant BGL Group Limited which has a trademark on the term “COMPARETHEMARKET”
In on case the panel held for the trademark holder in the other case the panel held for the domain holder.
The domains are:
As you can see one domain has hyphens the other one does not but adds UK on the end of the term.
Otherwise the domains are identical.
If you think the different decisions were due to different panelists you would be incorrect as both UDRP’s were decided by the same panelist Lada Válková.
In one case the panel in holding for the domain holder noted that the term was generic saying:
The words ‘compare’ and ‘market’ are common descriptive English words and lack any inherent distinctiveness even together. Where descriptive elements are added together, the overall mark will be descriptive unless the combination creates an entirely new impression which bestows a distinctive character on the whole which is not descriptive.
Here, although the Complainant’s word marks have been registered, they are extremely descriptive.
Even once registered, owners of highly descriptive marks must be able to establish acquired distinctiveness. The UDRP also recognizes this and that rights may in some cases subsist in descriptive registered terms–only if they have acquired a secondary meaning and that a similar showing for these registered marks may be required as for unregistered marks–see the WIPO overview at 1.7 “..a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required.
Both parties in this case are UK resident and offer competing services to the UK public. Under §15(a) of the UDRP Rules, a panel is to “decide a complaint on the basis of . . . any rules and principles of law that it deems applicable.” This is the choice of law provision and it is therefore possible to apply English law in this case.
No evidence was submitted in this case going to secondary meaning or acquired distinctiveness. We have only mere assertion and the fact of the registered marks.
While the Complainant has registered rights these are not strong due to the highly descriptive nature of the marks.
The Respondent has offered no evidence here but the Respondent registered the Disputed Domain Name on 24 December 2012. The Respondent has a UK address, as above, but nothing further is known about him. The Disputed Domain Name no longer resolves–no doubt due to a Takedown Notice from the Complainant.
However, www.archive.org shows 9 snapshots of the Disputed Domain Name in 2013, the first on 10 April 2013, and the last on 23 April 2013, offering quotes for car insurance and advertising various insurance services including for pets, health and life. Links on the site resolve to www.quotezone.co.uk which says this about itself “Quotezone’s UK car insurance quote technology allows you to compare car insurance from leading motor insurance companies and brokers in real time, so you only have to fill in one form to compare over 40 reputable UK insurers! Our insurance comparison systems now compare UK home insurance (House buildings and/or household contents cover) and van/commercial vehicle insurance.”
It is clear that the Respondent offers price comparison services in the insurance industry in connection with the Disputed Domain Name so on the face of it 4(c) (i) applies. It’s common to use generic domains and keywords or adwords to drive traffic to sites offering the relevant services and the fact the Respondent is not known by the name does not impact factor (i)–although it would be relevant to factor (ii).
The Disputed Domain Name was used for advertising comparison services in the insurance industry offered by www.quotezone.co.uk. The Complainant says this shows its reputation is being leveraged unfairly by a competitor.
The mere fact the parties are competitors is not determinative and merely illustrates that many traders will want to use highly descriptive terms relevant to their industry –thus the rule against allowing any one trader to monopolize them. The fact is that both are in the same market and want to use the same descriptive terms to describe their comparison services.
The central question here is whether the Respondent is using the Disputed Domain Name in the descriptive language sense or in the Complainant’s trade mark sense? I find the former but note it is very difficult to find where the UDRP draws the line between honest competition and unfair advantage.
This is a difficult case and finely balanced. However, on balance, I find that the Complainant has not shown bad faith. It selected highly descriptive marks and the fact is that others are entitled to make legitimate use of descriptive terms –even competitors. This negates bad faith.”
In the other case in deciding against the domain holder the panel found:
“”The Panel also finds that the disputed domain name has been registered and is being used in bad faith by Respondent.”
“This is particularly true as Respondent intentionally attempts to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademark of Complainant as to the source, sponsorship, affiliation, or endorsement of its website or of a product on its website or location.”
“In addition, Respondent has not responded to the allegation of Complainant that the website of Respondent resolves to pay-per-click site which uses the trademark of Complainant promoting the same kind of products that are sold by Complainant on the website of Complainant.”
So if the domain goes to an affiliate program or a site offering the same service as the trademark holder according to this panelist it’s fine, but if it goes to a parked page then its a violation.
Interestingly in the second case where the domain holder lost there was not a word in the decision about whether the trademark is generic or not.
For the record the domain awarded by the panel to the trademark holder was compare-the-market-car-insurance.com
The domain that was allowed to be retained by the domain holder was comparethemarketcarinsuranceuk.com