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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Direct Line Insurance plc, Direct Line Group Services Limited, Privilege Insurance Company Limited v. Warren Snook

Case No. D2002-0870

 

1. The Parties

The Complainants in this administrative proceeding are Direct Line Insurance plc (First Complainant), Direct Line Group Services Limited (Second Complainant), and Privilege Insurance Company Limited (Third Complainant), all incorporated in England and Wales, and all having a principal place of business at 3 Edridge Road, Croydon, Surrey CR9 1AG, United Kingdom.

The Respondent is Warren Snook of 37 Thirlemere Close, Highfield Chase, Beeston, Leeds LS11 8JH, United Kingdom.

 

2. The Domain Name and Registrar

The domain name in issue is <ihateprivilege.com> ("the Domain Name").

The Registrar is Computer Services Langenbach GMBH, d/b/a joker.com, of Rathausufer 16, 40213 Duesseldorf, Germany ("joker.com").

 

3. Procedural History

The WIPO Arbitration and Mediation Center ("the Center") received on September 17, 2002, an electronic version of the Complaint and on September 19, 2002, a hard copy of the same and accompanying documents. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), and the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules"). The Complainant made the required payment to the Center. On September 20, 2002, the Center formally notified the Respondent that this administrative proceeding had been commenced, and that date is the formal date of the commencement of this administrative proceeding.

On September 18, 2002, the Center transmitted via e-mail a request for registrar verification in connection with this case. On the same day joker.com transmitted via e-mail to the Center its Verification Response, stating that the registrant is Warren Snook, at the above stated address and that the Administrative, Technical and Billing Contact is Get Free Domains From … "www.uk2.net", of Prestons Road, London Docklands, E14 9SB, Great Britain.

A Response was filed on October 3, 2002.

On October 23, 2002, this Panelist was appointed by the Center. The Panelist has filed a Statement of Acceptance and Declaration of Impartiality, and his decision is scheduled to be forwarded to the Center by November 6, 2002.

 

4. Factual Background

(a) The Third Complainant is the owner of the following U.K. registered trademarks:

(i) No. 2155995 – "I’VE HAD THE PRIVILEGE", registered on January 21, 1998;

(ii) No. 2202813 – "PRIVILEGE INSURANCE",. registered on July 12, 1999; and

(iii) No. 2271638 – "IT’S TIME YOU HAD THE PRIVILEGE", registered on May 30, 2001.

(b) The Second Complainant registered the domain name <privilege.com> on July 13, 2000.

(c) The Domain Name was registered with the Registrar in question on September 1, 2001.

 

5. Parties’ Contentions

A. Complainants

The Complainants assert, inter alia, as follows:-

(a) The Complainants use the trademark "PRIVILEGE" in connection with their Privilege insurance products and have developed much goodwill in this trademark. The trademark has become famous in the insurance industry and is associated with the Complainants’ business Privilege, which is one of the UK’s leading insurance companies.

(b) The Complainants have used the "PRIVILEGE" trademark in connection with their Privilege business since 1994. The Domain Name is confusingly similar to the ‘I’ve had the Privilege’, ‘Privilege Insurance’ and ‘It’s time you had the Privilege’ trademarks in which the Complainants have rights in the UK as the trademarks include the word "privilege". As the Domain Name contains the word "privilege", part of the Domain Name is identical to the trademark "privilege".

(c) The Domain Name is also confusingly similar to the domain name "www.privilege.com", which is the central focus of the Complainants’ Privilege business today as many of the Complainants’ insurance products are sold over the site.

(d) The Domain Name is aimed at tarnishing the Privilege trademark and Privilege’s reputation.

(e) The Respondent appears to have registered the Domain Name in an effort to tarnish the Complainants’ reputation because of the Respondent’s grievances over an intellectual property issue.

(f) The Respondent has registered and is using the Domain Name for the purpose of disrupting the business of the Complainants by tarnishing the Complainants’ reputation in the eyes of the public. The Complainants are extremely well known in the United Kingdom and the "privilege" trademark is a name which members of the public associate with the Complainants. As Privilege is a name that the public associate with the Complainants’ Privilege business, the public will associate the words "I hate privilege" with such business. The Domain Name will therefore tarnish the Complainants’ reputation.

(g) It is submitted that the Respondent registered and is using the Domain Name to pressure the Complainants into paying the Respondent Ј60,000 as settlement of the above mentioned intellectual property issue.

B. Respondent

The Respondent asserts, inter alia, as follows:-

(a) The Domain Name is neither identical nor confusingly similar to a trademark or service mark in which the Complainant has rights. "Privilege" is an abstract noun; it appears worldwide in thousands of names of companies, clubs, products, songs etc. It is also in everyday use.

(b) The documents submitted by the Complainant make it clear that I have accused Privilege Insurance of breach of contract, breach of copyright, false claims by the company secretary in respect of intellectual property rights and acceptance of bribes by a named employee.

(c) It is my contention that the website names are not identical or confusingly similar to a registered trademark. I have never offered the websites for sale. They are not being used to blackmail Privilege Insurance. Privilege Insurance has not established any reason why its rights to the sites are greater than my rights or those of the thousands of other users of the word "privilege". I have a legitimate commercial claim against Privilege Insurance that I intend to pursue as outlined in the letters submitted by the Complainants. I do not, however, intend to use the Domain Name for criticism of Privilege Insurance unless in arriving at a judgement on this case, the Panelist determines that I may legitimately do so.

 

6. Discussion

The onus is on the Complainants to prove each of the three elements set out in paragraph 4(a) of the Policy, as follows:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

The fundamental problem for the Complainants in this administrative proceeding lies in establishing that the Domain Name is confusingly similar to a trademark or service mark in which the Complainants, or any of them, have rights (there is plainly no identity in this case).

For confusing similarity to exist between a domain name and a trademark, there must be evidence that some section of the public has been or is likely to be confused into believing that the domain name is in some way linked with a business or goods of the owner of the trademark. Here, as pointed out by the Respondent, the word "privilege" is an abstract noun which is in everyday use and appears worldwide in many different contexts. The Complainants have only succeeded in registering PRIVILEGE as a component of three trademarks, the most distinctive of which would seem to be PRIVILEGE INSURANCE. The Complainants have led no evidence to show that the word "privilege" (other than in association with the word "insurance") has come to be identified with the Complainants. The Panelist does not accept that someone seeing the Domain Name will associate it with the Complainants. Even if someone were to understand the words "I hate privilege" as being directed at the Third Complainant, that person would inevitably assume that the Domain Name had been registered by someone with a grudge against the Third Complainant.

The Panelist concludes therefore that the Domain Name is neither identical nor confusingly similar to any trademark in which the Complainants have rights.

Since the Complainants fail to satisfy paragraph 4(a)(i) of the Policy, it is unnecessary for the Panelist to make any finding in relation to paragraphs 4(a)(ii) and 4(a)(iii). As the main thrust of the Complainants’ case on the latter paragraphs is that the Respondent is threatening to tarnish the Complainants’ reputation, and the Respondent argues that he has a legitimate legal claim against the Complainants, the Panelist concludes that he should make no comment on these issues under the Policy, lest any of the parties might hereafter seek to rely on such comments.

Whilst it follows from the decision in relation to paragraph 4(a)(i) of the Policy that the Respondent is entitled to retain ownership of the Domain Name, the Panelist specifically declines to determine how, if at all, the Respondent may legitimately use the Domain Name.

 

7. Decision

In the light of the findings in paragraph 6 above, the Panelist dismisses the Complaint.

 


 

Christopher Tootal
Sole Panelist

Dated: November 6, 2002

 

Источник информации: https://internet-law.ru/intlaw/udrp/2002/d2002-0870.html

 

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