WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION BGL Group Limited v. Mobilise Me Inc Case No. D2009-0669 1. The Parties
The Complainant is BGL Group Limited of Peterborough Cambridgeshire, United Kingdom of Great Britain and Northern Ireland, represented by Urquhart-Dykes & Lord, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Mobilise Me Inc of New Delhi, India. 2. The Domain Name and Registrar
The disputed domain name is registered with N LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2009. On May 22, 2009, the Center transmitted by email to N LLC a request for registrar verification in connection with the disputed domain name. On May 26, 2009, N LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 27, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on May 29, 2009. The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 5, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 25, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 26, 2009.
The Center appointed John Swinson as the sole panelist in this matter on June 30, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. The Proper Respondent
There are two Respondents listed on the amended Complaint. The Panel is satisfied that the first Respondent, Protected Domain Services, is simply a privacy domain name registration service. The Registrar has confirmed that the registered owner of the disputed domain name is Mobilise Me Inc. Accordingly, the Panel will treat the second Respondent, Mobilise Me Inc, as the sole Respondent. (See e.g. Xtraplus Corporation v. Flawless Computers, WIPO Case No. D2007-0070 and Bayerische Motoren Werke AG v. bmwrider llc, WIPO Case No. D2008-0610). 5. Factual Background
The Complainant is based in the United Kingdom (“UK”) and provides a personal insurance broking service. As part of its business, the Complainant operates an insurance price comparison website (which compares various products, including motor insurance, other vehicle insurance, travel and life insurance as well as other financial services) at .
The Respondent, Mobilise Me Inc, is based in New Delhi, India and did not participate in this proceeding.
The Respondent registered the domain name on January 5, 2009 and the website at the disputed domain name is not currently operational. 6. Parties' Contentions A. Complainant
The Complainant makes the following contentions:
The Complainant is the owner of a number of registered UK trade marks which incorporate the term “compare the market”, including the following:
UK Registration no. 2486675 (COMPARETHEMARKET.COM), registered in May 2008;
UK Registration no. 2456693D (COMPARETHEMARKET stylised words and device), registered in May 2007;
UK Registration no. 2456693C (COMPARETHEMARKET stylised words and device), registered in May 2007;
UK Registration no. 2456693B (COMPARETHEMARKET stylised words and device), registered in May 2007;
UK Registration no. 2456693A (COMPARETHEMARKET.COM stylised words and device), registered in May 2007; and
UK Registration no. 2437604 (COMPARETHEMARKET.COM stylised words and device), registered in November 2006.
The Complainant registered the domain name in 2004.
The Complainant has actively promoted its “www.” website (launched in 2006), including by investing a considerable amount of money in television, national press and outdoor advertisements, as well as in a recent media campaign, which involved various medium, including the youtube and facebook websites. In recent times, the Complainant's website has attracted more than 12,000 hits per day. More than 8,000 quotes are given, and 868 policies purchased, via the Complainant's website each day.
The disputed domain name is identical or confusingly similar to the Complainant's various COMPARETHEMARKET trade marks.
The Respondent is not making a legitimate non-commercial use or fair use of the disputed domain name without intent for commercial gain to misleading divert customers. The Respondent has not been authorised by the Complainant to use its trademark.
The disputed domain name has been registered primarily for the purpose of obstructing the business of the Complainant within the meaning of paragraph 4(b)(iii) of the Policy. B. Respondent
The Respondent did not reply to the Complainant's contentions. 7. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is on the Complainant. A. Identical or Confusingly Similar
The Complainant is the registered owner of UK Trade Mark Registration no. 2486675 (COMPARETHEMARKET.COM), registered in May 2008, UK Trade Mark Registrations no. 2456693B, 2456693C, and 2456693D (COMPARETHEMARKET stylised words and device), all registered in May 2007, UK Trade Mark Registration no. 2456693A (COMPARETHEMARKET.COM stylised words and device), registered in May 2007 and UK Trade Mark Registration no. 2437604 (COMPARETHEMARKET.COM stylised words and device), registered in November 2006.
For the purpose of assessing whether a domain name is identical or confusingly similar to a trademark or service mark, the suffix “mobi” must be disregarded as being simply a necessary component of a generic top level domain name.
It is clear that the Complainant has registered trade mark rights for COMPARETHEMARKET and COMPARETHEMARKET.COM, and the disputed domain name in this case is identical to the first mark (COMPARETHEMARKET), and confusingly similar to the second (COMPARETHEMARKET.COM).
Accordingly, the first element has been met. B. Rights or Legitimate Interests
To succeed on this element, a Complainant must make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. If such a prima facie case is established, the Respondent then has the burden of demonstrating rights or legitimate interests in the domain name. Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
In this case, in accordance with paragraph 14(b) of the Rules, the Panel can draw certain inferences from the Respondent's failure to submit a response.
The Panel is satisfied, based on the case record before it, that the Respondent is not commonly known by the disputed domain name, and has no trade mark or other rights in the term “comparethemarket”. Nor has the Respondent been authorised or licensed by the Complainant to use this term, or the Complainant's trade mark.
There is no website operating from the disputed domain name, and therefore there is no evidence available to the Panel of any legitimate non-commercial or fair use of the domain name (or any intentions of legitimate or fair use on the part of the Respondent). Similarly, there is no evidence of any offering of goods or services from the disputed domain name (bona fide or otherwise).
The Complainant has established a strong prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and as the Respondent did not submit a Response, it has been unable to rebut the prima facie case established by the Complainant.
The Panel therefore finds that the second element has been met. C. Registered and Used in Bad Faith
The final element to determine is whether the Respondent registered and used the disputed domain name in bad faith.
Under paragraph 4(b) of the Policy, the Complainant may demonstrate that the domain name was registered and is being used in bad faith by showing any of the following circumstances, in particular but without limitation:
(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.
The Panel notes that the Complainant has provided little direct evidence to satisfy any of the above four criteria, and that the website is not actually in use so it is difficult to know what the Respondent's intentions were at the time of registration, or currently are, in relation to the disputed domain name. However, in a number of cases, and in certain circumstances, mere passive holding has been held to constitute use of the domain name in bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall,WIPO Case No. D2000-0574).
The Panel has considered whether, in the circumstances of this particular case, the passive holding of the domain name by the Respondent would amount to the Respondent acting in bad faith. The Panel concludes that it does. The particular circumstances of this case which lead to this conclusion are:
(i) The Complainant has provided evidence that its trademark is widely known in the UK (for example, through prime time television advertisements), and has been marketed more widely than the UK via a campaign which involved the use of the youtube and facebook websites. The Respondent registered the disputed domain name some years after the Complainant's first trade mark registration.
(ii) The Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the domain name, and is not currently using the domain name to operate any functional website. Registration of a widely-known trademark by a party with no connection to the owner of the trademark, and without any authorization or legitimate purpose to use the mark is an indication of bad faith.
(iii) The Respondent did not reply to the Complainant's allegations.
(iv) The Respondent used a privacy service in respect of the disputed domain name.
Taking into account all of the above, it is difficult to conceive of a plausible actual or contemplated active use of the disputed domain name by the Respondent that would not be illegitimate and constitute an infringement of the Complainant's rights.
In light of these particular circumstances, the Panel concludes that Respondent's registration and passive holding of the domain name, in this particular case, satisfies the requirements of paragraph 4(b) of the Policy, in that the disputed domain name has been registered and used in bad faith by the Respondent.
The Panel therefore concludes that the third element of the Policy has been met. 8. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
John Swinson
Sole Panelist
Dated: July 14, 2009
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