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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Family Assurance Friendly Society Ltd -v- Active Multimedia [2003] DRS 980 (17 June 2003) URL: http://www.bailii.org/uk/cases/DRS/2003/980.html Cite as: [2003] DRS 980 |
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Nominet UK Dispute Resolution Service
DRS 00980
Family Assurance Friendly Society Limited –v– Active Multimedia
Decision of Independent Expert
1 Parties
Complainant:
Family Assurance Friendly Society Limited
Respondent:
Active Multimedia
2 Domain Name
FAMILYASSURANCE.CO.UK
3 Procedural Background
A Complaint in respect of familyassurance.co.uk (the “Domain Name”) under Nominet UK's Dispute Resolution Service Policy (the “Policy”) was received from the Complainant on 29 April 2003. Nominet forwarded the Complaint to the Respondent on that date. No response was received from the Respondent. On 27 May 2003 Nominet notified the parties that it would appoint an Expert to determine the dispute on receipt from the Complainant of the applicable fees in accordance with paragraph 5d of Nominet's Procedure for the conduct of proceedings under the Dispute Resolution Service (the “Procedure”). The applicable fees were received from the Complainant on 29 May 2003. I was appointed as Independent Expert as of 5 June 2003 and confirmed to Nominet that I was independent of the parties and knew of no facts or circumstances that might call into question my independence in the eyes of the parties.
4 Formal/procedural issues
Paragraph 15b of the Procedure provides that if, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in the Policy or Procedure, the Expert will proceed to a Decision on the Complaint. Nominet has taken the appropriate steps to serve the Complaint in accordance with the terms of the Procedure and I find that there are no exceptional circumstances. Under Paragraph 15c of the Procedure, I am entitled to draw such inferences from the Respondent's non?compliance with the Procedure as I consider appropriate.
5 The Facts
The Complainant is incorporated as a Friendly Society under the Friendly Societies Act 1992. It provides a range of savings bonds and investment products including tax-free savings bonds, ISA’s, Unit Trusts and children's savings bonds. It operates a web site at www.family.co.uk. According to the Nominet WhoIs database, the Respondent registered the Domain Name on 2 September 1999. The Domain Name does not currently resolve to any web site.
The Parties’ Contentions
Complainant
(a) The Complainant, Family Assurance Friendly Society Limited was originally established in 1975. It is now incorporated under the Friendly Societies Act 1992 and is authorised and regulated by the Financial Services Authority. It has over 500,000 members who have invested over £1.5 billion with it.
(b) The Complainant is the registered proprietor of UK trade mark number 2221421 FAMILY ASSURANCE registered as of 4 February 2000 in Class 36 in respect of endowment savings plans, investment policy plans, personal equity plans, individual savings accounts, insurance, assurance and unit trusts.
(c) Although the Complainant uses the domain name family.co.uk, it would like the option of using familyassurance.co.uk.
(d) In February 2000 the Respondent was offering the Domain Name for sale. At that time the Complainant’s solicitors wrote to the Respondent complaining of passing off and infringement of trade mark and requiring it to cease using the trade mark FAMILY ASSURANCE. No reply was forthcoming.
(e) Prior to and as at 8 April 2003 the Domain Name resolved to a web page at www.familyassurance.co.uk. The Complainant has provided a copy on which the <title> meta tag comprises the words “family assurance, family insurance, family protection” The web page is headed “family assurance” and goes on to announce:
“family assurance is currently for sale” and
“family assurance; familyassurance.co.uk is currently for sale.”
The page continues by stating that the domain is a valuable resource for the insurance industry and has vast potential as a portal for the prospective use of an Insurance Company. It invites any assurance or insurance company with an interest in owning familyassurance.co.uk, “the definitive web site on family assurance” to contact the Respondent.
The web page ends with the disclaimer that “The Internet Domain familyassurance.co.uk and this web site are not connected in any way with ‘Family Assurance Friendly Society’ of Brighton, England.”
The Complainant is concerned that the web page suggested that the Family Assurance Friendly Society is for sale when it most certainly is not and that this is misleading and potentially damaging.
(f) On 7 March 2003, the General Manager of the Complainant sent an email to the Respondent asking “Please let me know your price for acquiring the [Domain Name]. On 8 March the Respondent replied “Thank you for your interest, £10,000 should secure it for you.”
(g) A further cease and desist letter was sent to the Respondent by email from the solicitors for the Complainant on 8 April 2003 but no response was received.
(h) The Complainant believes that the Respondent has made an abusive registration in that the Domain Name has been registered and used in a way which has taken unfair advantage of, and is detrimental to, the Society’s rights. Furthermore, the Society has suffered, and continues to suffer, serious and unquantifiable damage to its reputation.
In support of its complaint, the Complainant has also provided documentary evidence of its incorporation, a copy of the trade mark registration certificate and correspondence.
Respondent
The Respondent has not filed any response to the Complaint.
6 Discussion and Findings
The Complainant is required under Clause 2b of the Policy to prove to the Expert on the balance of probabilities that:
i the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
ii the Domain Name, in the hands of the Respondent, is an Abusive Registration.
Complainant’s Rights
“Rights” are defined in the Policy and in the Procedure. Rights “includes, but is not limited to, rights enforceable under English law.” The Complainant is the registered proprietor of UK trade mark FAMILY ASSURANCE. In this case, ignoring the suffix “.co.uk” the Domain Name is identical to that trade mark. Given the Complainant’s use of its name since 1975, it may well also have common law rights in the name Family Assurance. I find that the Complainant does have Rights in respect of a name or mark which is identical or similar to the Domain Name.
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.
A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration, is set out in paragraph 3 of the Policy. Although the Complainant does not rely on any specific elements, it seems to me that the potentially relevant factors in this case are as follows:
i Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
A primarily for the purposes of selling, renting, or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly associated with acquiring or using the Domain Name;
B as a blocking registration against a name or mark in which the Complainant has rights;
C primarily for the purpose of unfairly disrupting the business of the Complainant.
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.
The Respondent has not responded either to the Complainant’s cease and desist letters or to the Complaint. There is therefore no explanation from it as to the circumstances in which the Domain Name was registered or explaining how it has been used. There is evidence that at least for some time prior to 8 April 2003 the Respondent was advertising the Domain Name for sale on the web site and emphasising the potential value of the Domain Name to any assurance or insurance company. In response to the enquiry from the Complainant, the Respondent offered the Domain Name for the sum of £10,000, clearly well in excess of the Respondent’s out-of-pocket expenses in acquiring the Domain Name.
In the absence of any justification from the Respondent, it is difficult to envisage any legitimate explanation for the Respondent registering the Domain Name. The obvious inference, both from the wording of the web page that was previously available at www.familyassurance.co.uk and from the Respondent’s offer to sell the Domain Name to the Complainant for £10,000, is that the Respondent registered the Domain Name primarily for the purposes of selling the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs.
It also seems to me that the statement “family assurance is for sale” was potentially damaging and I do not believe that the disclaimer on the offending web page had any ameliorating effect given its position and wording.
In all the circumstances, I consider that the Domain Name was registered and has been used by the Respondent in a manner which takes unfair advantage of or is unfairly detrimental to the Complainant’s Rights in the name Family Assurance and that the Domain Name, in the hands of the Respondent, is therefore an Abusive Registration.
7 Decision
Accordingly, I find that the Complainant has Rights in respect of a name or mark which is identical to the Domain Name and that the Domain Name in the hands of the Respondent is an Abusive Registration. I therefore determine that the Domain Name be transferred to the Complainant Family Assurance Friendly Society Limited.
Ian Lowe
17 June 2003