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Nominet UK Dispute Resolution Service

You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Royal Bank of Scotland Group Plc & Ors v Verseer [2006] DRS 3744 (4 August 2006)
URL: http://www.bailii.org/uk/cases/DRS/2006/3744.html
Cite as: [2006] DRS 3744
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    Nominet UK Dispute Resolution Service
    DRS 03744
    The Royal Bank of Scotland Group Plc & others v Sharma Verseer
    Decision of Independent Expert
  1. Parties

    2. Lead Complainant: The Royal Bank of Scotland Group Plc
    Country: GB
    Respondent: Sharma Verseer
    Country: GB
  2. Domain Name

    3. privilige.co.uk ("the Domain Name")
  3. Procedural Background

    4. The Lead Complainant is The Royal Bank of Scotland Group Plc, but there are two further Complainants namely Direct Line Insurance Plc and Privilege Insurance Company Limited. For the sake of simplicity in this Decision I refer to these companies collectively as 'the Complainant' in the singular.
    The complaint was entered into Nominet's system on 12th June 2006. Nominet validated the complaint and informed the Respondent by letter dated 13th June 2006, noting that the Dispute Resolution Service had been invoked and that the Respondent had until 5th July 2006 to submit a Response. No Response was received.
    On 12th July 2006 the Complainant was invited to pay the fee to obtain an Expert Decision pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy Version 2 ("the Policy"). The fee was duly paid on 18th July 2006.
    On 19th July 2006 Nominet invited me to provide a decision in this case and, following confirmation to Nominet that I knew of no reason why I could not properly accept the invitation to act in this case, Nominet duly appointed me as Expert with effect from 25th July 2006.
  4. Outstanding Formal/Procedural Issues

    5. None.
  5. The Facts

    6. The Royal Bank of Scotland Group Plc, Direct Line Insurance Plc and Privilege Insurance Company Limited are major players in the UK financial services and insurance sector. Between them they have been responsible for the offer of insurance services to UK consumers under and by reference to the trade mark "Privilege" since 1994.
    Direct Line Insurance Plc owns a number of trade mark registrations in the UK, Eire and EC comprising or including the word 'PRIVILEGE', including "HAVE YOU HAD THE PRIVILEGE?", "PRIVILEGE INSURANCE" and "YOU DON'T HAVE TO BE POSH TO BE PRIVILEGED", although the latter is fairly recent.
    The Complainants' affiliate company RBS Insurance Services Limited is currently the registered proprietor of a number of domain names incorporating the word 'PRIVILEGE' including privilege.co.uk (registered pre-August 1996), privilege.com, privilege.net, and privilege.biz.
    The Nominet WHOIS search with which I have been provided indicates that the Respondent, who appears to have some connection with the website "accommodation.com", registered the Domain Name on 28th August 2001.
    The print-out of the site accessible under the URL http://www.privilige.co.uk with which I have been provided is a dynamically-generated list of links to other sites including the Complainant's and the Respondent's (accommodation.com), as well as a prominent banner advertisement for 'Elephant' car insurance (a competitor of the Complainant).
  6. The Parties' Contentions

    7. Complaint
    The Complainant makes the following submissions in its Complaint:
    "I. Complainants have rights in respect of names and marks that are similar to the disputed domain name ("Domain Name").
    A. Complainants' Background (see Annex A for a listing of contact details for each of the Complainants)
    1. Complainant The Royal Bank of Scotland Group plc ("RBS") is one of the world's leading financial services providers and one of the oldest banks in the UK. In addition to its strong UK presence, RBS has offices in Europe, the United States and Asia. (Materials presenting information about RBS's business are attached as Annex B.)
    2. RBS operates a number of brands worldwide and offers a wide range of financial products and services – including retail banking, wealth management and insurance services – to individual and institutional investors across the globe. (See Annex B.)
    3. RBS is registered at Companies House and has been so registered since 1968. (See Annex C.)
    4. A significant part of RBS's business today revolves around its insurance services business. RBS provides insurance services through RBS Insurance Services Ltd., which owns numerous brands aimed at its customers' varying insurance needs, including Complainant Direct Line Insurance plc ("Direct Line") and Complainant Privilege Insurance Company Limited ("Privilege"). (Materials reflecting RBS's association with Direct Line and Privilege are provided as Annex D.)
    5. Complainant Direct Line was formed on 2 April 1985 and has been a staple in the UK insurance industry throughout its existence. Direct Line offers a broad range of products and services, including car insurance, home insurance, and travel insurance, to over five million customers across the UK and in Europe. (Materials presenting information about Direct Line's business are attached as Annex E.)
    6. Direct Line is registered at Companies House and has been so registered since 1984. (See Annex F.)
    7. Complainant Privilege specializes in offering car insurance products and services, with home and breakdown coverage also available. (Materials presenting information about Privilege's business are attached as Annex G.)
    8. Complainant Privilege is registered at Companies House and has been so registered since 1993. (See Annex H.)
    B. Complainants have rights in respect of the PRIVILEGE name and mark.
    9. The mark on which this complaint is based is PRIVILEGE.
    10. Complainant Direct Line holds registrations for Complainants' PRIVILEGE and related marks, including with the UK Patent Office ("UKPO") (a printout from the UKPO website is attached as Annex I). Complainant Direct Line also has an application currently pending in the EU Office for Harmonization in the Internal Market ("OHIM") to register the PRIVILEGE mark (a printout from the OHIM website reflecting this application is attached as Annex J). A report reflecting Complainants' registrations of their PRIVILEGE and related marks is attached as Annex K.
    11. Complainants and their affiliates own numerous domain names featuring their well-known PRIVILEGE mark, including privilege.co.uk (registered prior to August 1996), privilege.com, privilege.net, and privilege.biz. Complainant Privilege uses these domain names to promote and operate its insurance business. (Copies of the WHOIS records for these domain names, as well as pages from the websites to which the domain names resolve, are attached as Annex L.)
    C. The Domain Name is similar to Complainants' PRIVILEGE name and mark.
    12. Respondent's domain name "privilige.co.uk" is nearly identical to Complainants' PRIVILEGE name and mark. Indeed, but for Respondent's substitution of the letter "i" for the letter "e" in the suffix "-ege," the spelling of the Domain Name is identical to that of Complainants' PRIVILEGE mark. Complainants' mark remains the dominant and distinctive element in the Domain Name, and the Domain Name's confusing similarity to Complainants' PRIVILEGE mark conveys the impression that the Domain Name is sponsored by, or somehow associated with, Complainant Privilege and that it relates to Privilege's insurance business and services.
    13. Further, but for the letter substitution noted above, the Domain Name is identical to Complainants' "privilege.co.uk" domain name.
    14. The Domain Name is apparently targeted toward internet users who, while seeking to access Complainants' websites and insurance products and services, enter a slight misspelling when trying to type in Complainant Privilege's actual domain name. Such users find themselves at Respondent's website, which contains directories of websites advertising products and services including the products and services of Complainants' competitors.
    15. Respondent registered the "privilige.co.uk" domain name on 28 August 2001 – long after Complainants acquired rights to their PRIVILEGE name and mark. A copy of the current WHOIS records for the Domain Name is attached as Annex M.
    16. Respondent has no apparent rights to the Domain Name.
    II. The Domain Name, in the hands of the Respondent, is an abusive registration.
    17. The Domain Name 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 using the name in a way that confuses internet users into believing that the name is registered to, operated or authorised by, or otherwise connected with Complainants; and is attempting to exploit Complainants' registered trademark and associated goodwill for his own commercial gain.
    18. First, Respondent has registered the Domain Name for the purpose of unfairly disrupting Complainants' business. See DRS Policy Section 3(a)(i)(C). As noted, it appears that the Domain Name is targeted toward internet users seeking access to Complainant Privilege's products and services. Such users, however, are taken to Respondent's website – which includes directories of and advertising for insurance products and services offered by Complainants' competitors. As of 9 June 2006, for instance, the "privilige.co.uk" domain name resolved to a website providing information about, and links to the websites of, numerous companies providing insurance services and products in competition with Privilege. (Screenshots from the website to which the "privilige.co.uk" domain name resolved, as well as from certain of the websites to which that site provided links, are attached as Annex N.)
    19. Such use of the Domain Name threatens to disrupt Complainants' business by improperly directing Complainants' current and prospective customers to Complainants' competitors. For example, by steering those seeking information about and access to Complainant Privilege's services away from Privilege's legitimate website, Respondent is causing Complainants to suffer loss of business and revenue. Such use constitutes evidence of an abusive registration under DRS Policy Section 3(a)(i)(C).
    20. Second, Respondent is using the Domain Name in a way that has confused people into believing, and has the potential to confuse people into believing, that the Domain Name is registered to Complainants, is operated or authorized by Complainants, or otherwise is connected with Complainants. See DRS Policy, Section 3(a)(ii). 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 Complainant Privilege's website could find himself at Respondent's website without realizing that he had misspelled the word "Privilege" and failed to reach Privilege's legitimate site. Further, the content of Respondent's website, because it consists of information and advertising concerning products and services of the type offered by Complainants (including information regarding Complainant Privilege itself) would not necessarily alert the user to his or her error. Additionally, even if a user realized that he was not at Complainant 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.
    21. Finally, the Domain Name is also an abusive registration because Respondent is using it to benefit commercially from his unauthorized and illegitimate use of 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 Complainants' rights. See DRS Policy, Section 1 (defining Abusive Registration.) Specifically, Respondent is using the Domain Name to redirect Internet users who are familiar with and searching for Complainant Privilege's products and services – including Privilege's current and prospective customers – to a search engine website containing a search box toward the top of the webpage and a list of "popular links" connecting to multiple directories of and advertising for insurance products and services offered by Complainants' competitors. 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, Respondent is attempting to profit financially from his unauthorized use of Complainants' mark, including by luring Complainants' current and prospective customers to the websites of Complainants' competitors. Such use is commercially exploitive of Complainants' name and mark and evidences an abusive registration under the DRS Policy.
    22. Further, Respondent cannot establish any of the situations demonstrating that the Domain Name is not an Abusive Registration. See DRS Policy, Section 4(a). For instance, there is no evidence Respondent has ever used the domain name "privilige.co.uk," or any variants thereof, in connection with a genuine offering of goods or services; has ever been commonly known by the Domain Name; or has ever made a legitimate non-commercial or fair use of the Domain Name. To the contrary, Respondent has registered and is using the Domain Name to profit illegitimately from Complainants' trademark by connecting to a search engine that displays links to competing insurance products and services and presumably generates search revenues.
    23. Accordingly, in light of the foregoing, Complainants respectfully request that the Expert issue an order directing the transfer of the disputed Domain Name to Complainant RBS."
    Response
    As noted above, the Respondent did not file a Response.
  7. Discussion and Findings:

    8. General
    Paragraph 2 of the Policy requires that, in order for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, both that it has Rights in respect of a name or mark which is 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.
    These matters must be affirmatively proven by the Complainant, notwithstanding the failure by the Respondent to file a Response. The effect of the Respondent's default, under paragraph 15(c) of the Procedure, (there being no exceptional circumstances in this case) is that I may draw such inferences from the Respondent's non-compliance as I consider appropriate.
    Complainant's Rights
    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.
    The definition of 'Rights' in the Policy "includes, but is not limited to, rights enforceable under English law." This clearly encompasses United Kingdom and European Community trade mark registrations and unregistered rights in the nature of the goodwill necessary to found a passing off action in England and Wales.
    On the basis of the matters set out in the Complaint and amply substantiated in Annexes A to M thereto, the Complainant has satisfied me that it owned Rights in the mark PRIVILEGE prior to the registration of the Domain Name in 2001. While it is true that the only trade mark registration for the word PRIVILEGE alone dates back only to 17th February 2003: (a) the other registrations, such as PRIVILEGE INSURANCE, date back to 1996; and (b) the business had been trading under and by reference to the mark PRIVILEGE, thereby accruing goodwill in that designation, since the mid-1990s.
    The Policy provides that "a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business"; but I do not consider that the term 'Privilege' is in any sense wholly descriptive of the Complainant's business. True, it is an ordinary English word with laudatory connotations; but I consider that the distinctive character which the term has acquired through the Complainant's abovementioned long-standing use in relation to insurance services will have educated the UK public to regard it as an indication of origin when used in this field rather than a mere generic descriptor.
    I am further satisfied that the name PRIVILEGE is very closely similar to the Domain Name privilige.co.uk (ignoring, as I am required to do, the first and second level suffixes). 'Privilige' is a common misspelling of the word 'privilege'; I suspect this is due to the arrangement of 'i's and 'e's in the correct spelling of the word together with the way in which the first 'e' in 'privilege' is generally pronounced.
    Abusive Registration
    Paragraph 1 of the Policy defines "Abusive Registration" 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.
    The Complainant's case is put under both limbs of paragraph 1: both the initial registration and the subsequent use are alleged to be abusive.
    A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration are set out under paragraph 3(a) of the Policy. The Complainant cites and places specific reliance upon sub-paragraphs 3(a)(i)(C) and 3(a)(ii), which read as follows:
    "3(a)(i)(C) Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily … for the purpose of unfairly disrupting the business of the Complainant"
    "3(a)(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"
    A non-exhaustive list of countervailing factors are set out under paragraph 4(a) of the Policy. I do not regard any of the factors therein set out as being particularly pertinent to the facts of this dispute.
    The ultimate question for my consideration is whether, on the evidence as a whole, the Complainant has discharged the burden of proving that the Domain Name was registered or has been used in a manner which takes unfair advantage of and/or is unfairly detrimental to the Complainant's Rights. For the following reasons I have little hesitation in concluding that, on the basis of the matters set out in the Complaint and its Annexes, the Complainant has discharged that burden.
    - The trade mark PRIVILEGE is well known and was well known in the field of financial services (and in particular motor insurance services) as at the date of registration of the Domain Name in 2001.
    - The Complainant's domain name privilege.co.uk was registered and in use at the time of registration by the Respondent.
    - The Respondent has not availed himself of the opportunity to put forward an innocent explanation for the initial registration; nor has he explained why he has permitted (or perhaps even encouraged) competitors of the Complainant to place advertisements on the website accessible under the Domain Name.
    - No one is suggesting for a moment that the Respondent is involved in 'phishing' or other similar criminal conduct, but I do regard it as particularly important that consumers contracting for financial services are not misled or confused as to the identity of the person they are dealing with. I consider that this is a relevant, albeit not conclusive, factor to take into account in this Decision.
    - In the absence of a compelling alternative, on the balance of probabilities I accept the Complainant's submission that the Respondent's likely purpose in registering the Domain Name and setting up such a website was to generate "click-through" revenues based on the amount of traffic diverted to the listed sites.
    - I cannot definitively conclude that the use that has been made of the Domain Name is disrupting the Complainant's business, but I do accept that the Respondent appears to be profiting from steering the Complainant's current and prospective customers away from the Complainant's genuine website in the direction of the Complainants' competitors, thereby taking unfair advantage of the Complainants' Rights.
    Accordingly I conclude on the evidence before me that the Domain Name, in the hands of the Respondent, is an Abusive Registration.
  8. Decision

    9. Having concluded that the Domain Name is an Abusive Registration, the Expert determines that the Domain Name, privilige.co.uk, should be transferred to the Lead Complainant.
    August 4th, 2006
    Philip Roberts

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