Rights
1. 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.
2. Trade marks are badges of origin and must indicate the undertaking/business responsible for the quality of the goods or services. Therefore marks cannot lack either inherent or acquired distinctiveness or be descriptive of the goods and services. Marks must signal commercial origin. Acquired distinctiveness (or secondary meaning) is a question of fact and market share, extent of use, investment and promotion and the relevant public must be proved. There is also a public interest value underlying these rules, as no trader should be able to acquire exclusive rights to words other traders might wish to use, such as terms with purely informational values or the names of products or services.
3. Here, although the Complainant's word marks have been registered, they are extremely descriptive. In this regard, it is notable that in 2010 the word mark #2522721 was granted only in the capitalized version --this reflects a very significant limit to the Complainant's rights in those words and reflects descriptiveness. The other word mark with the added .com (#2486675) is granted in various cases and due to the addition of the .com is more likely to indicate commercial origin. The device marks do not add to the analysis.
4. 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. Some panels have also noted that in cases involving claimed common law or unregistered trademarks that are comprised of descriptive or dictionary words, and therefore not inherently distinctive, there may be a greater onus on the complainant to present compelling evidence of secondary meaning or distinctiveness(emphasis added)." The following evidence is required, "Relevant evidence of such "secondary meaning" includes length and amount of sales under the trademark, the nature and extent of advertising, consumer surveys and media recognition."
5. 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.
6. English law of passing off (protecting common law or unregistered marks) tolerates confusingly similar marks where the marks are descriptive and discourages the monopolization of descriptive words, see Office Cleaning Services v Westminster Window [1946] 63 RPC 39, (the differences between Office Cleaning Services Ltd and Office Cleaning Association were sufficient to prevent passing-off). This remains good law. The Trade Marks Act 1994 §11(2)(b) based on Art. 6 of the Trade Marks Directive (2008/95) also protects descriptive and informational uses, subject to the important proviso that such use must be in accordance with honest practices. Some recent cases apply the passing-off analysis first and find it also determinative of the issues in relation to registered marks, see See A & E Television Networks LLC & Anor v Discovery Communications Europe Ltd [2013] EWHC 109 (Ch) (Discovery History did not infringe History marks based on the authority in Office Cleaning Services(above)).
7. 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. That is, no evidence whatsoever was submitted as to turnover, revenue, marketing and advertising spend, industry position and activities or indeed any of the sort of evidence that one would expect in a DRS case. While the Panel has personal recall of the Complainant's television advertisements, the evidential showing is entirely unsatisfactory.
8. While the Complainant has registered rights these are not strong due to the highly descriptive nature of the marks.
Legitimate rights and interests
9. Turning now to legitimate interests, in relation to the burden of proof, even in cases of default, this remains with the Complainant which is required to make out a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of proof shifts to the Respondent. The panel then weighs all the evidence, with the burden of proof always remaining on the Complainant.
10. Under 4(c) of the UDRP the following are enumerated grounds that may evidence legitimate rights and interests, although this list is not exhaustive:
"(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."
11. 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."
12. 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). Many panels also consider descriptive use as legitimate or fair under factor (iii), even where used in commercial contexts. See for example CAC Case 100421 (dealt with further below). However, as the Complainant has not made submissions on this issue, this is considered as part of the analysis of bad faith below.
13. The Complainant has not made its prima facie case here and merely asserts that the factors are not met without adequately addressing them.
Bad Faith
14. As to bad faith, of the non-exhaustive factors in §4(b) of the UDRP, the Complainant relies on the following grounds:
"(iii) the domain was registered primarily to disrupt the business of a competitor; or
(iv) by using the domain, the registrant has intentionally attempted to attract users for commercial gain by creating a likelihood of confusion as to source or affiliation."
15. 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.
16. 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.
17. The Complainant says that the use of the additional descriptive terms 'car insurance uk' with its mark does not change the fact that its mark is being used and its reputation leveraged. This does not address the fact that the whole is descriptive, including the mark.
18. 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.
19. The Complainant has made complaints against other third parties before and those panels have found both ways based on the descriptiveness of the marks and legitimate use/bad faith. I refer to the following decisions:
(a)100324 <comperthemarket.com > Transfer
(b)100421 <comparethemarket.xxx> Complaint Rejected
(c)100458 <comparethemarket.xxx> Rejected (re-filed)
(d)100599 <compare-the-market-car-insurance.com> Transfer
This contributes to the complexity of this case and influenced the need for a full decision this time. The Panel in 100421 found the descriptiveness of the mark meant it could legitimately have many uses and also found a lack of bad faith in an inactive domain noting "Trademark rights are defined in scope, and do not give rise to transfer of generic or descriptive domains via the UDRP unless bad faith use of the domain is proved".
20. 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.
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