PARTIES' CONTENTIONS:
COMPLAINANT:
The Complainant contends that:
1. The disputed domain name is confusingly similar to the Complainant's trademark.
The Complainant states that the disputed domain name includes the Complainant’s trademark in its entirety with the addition of the term “BRIT”, which, given the nature of the content displayed at the disputed domain name (namely the website of a company offering consultancy services relating to utility comparisons to a UK audience), is to be seen as a reference to Britain as a geographic region.
Further, the Complainant asserts that the inclusion of a non-distinctive geographical term does not prevent a domain name from being found to be confusingly similar to a trademark in which a complainant has rights.
2. The Respondent does not have any rights or legitimate interest in the disputed domain name.
The Complainant contends that the Respondent is not affiliated with nor authorized by the Complainant in any way. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant does not carry out any activity for, nor has any business with the Respondent.
The activities undertaken through the use of the disputed domain name, i.e. offering business consulting services involving price comparisons in the gas, energy, water, telecoms and broadband sectors to UK clients, fall squarely within the range of services for which the Complainant’s trademark is registered in Nice Classes 35 and 36. The marketing of such services under the disputed domain name and under a website header containing “Uswitch” is thus a prima facie infringement of the Complainant’s trademark under Section 10(1) of the UK’s Trade Marks Act 1994. Consequently, the Complainant submits that this does not qualify as a bona fide use capable of establishing a right or legitimate interest in the domain name to the benefit of the Respondent.
The Complainant further states that owing to the fact that the Complainant’s use of the USWITCH brand predates the registration of the disputed domain by 17 years, and given that the Respondent uses the disputed domain to promote services substantially identical to those offered by the Complainant under its well-known USWITCH trademark, it is, on the balance of probabilities, more likely than not that the Respondent was aware of the Complainant’s business and trademark upon registration of the disputed domain. As a result, the infringement committed by the use of the disputed domain name in a confusing manner is clearly deliberate and cannot be considered a bona fide offering of goods or services.
Finally, the Complainant underlines that while the Respondent appears to have a business registration in the name of Brit U Switch Ltd, that company was first incorporated at around the same time as the registration of the disputed domain name. The Complainant’s rights in their trademark predate the creation of the company by 17 years, and it is more likely than not that the name chosen for the company is intended to ride on the coattails of the Complainant’s reputation. That this is indeed the case is suggested by the fact that the website displayed at the disputed domain name does not use the company name as registered, i.e. “Brit U Switch”, but rather as “Brit Uswitch”, thereby intentionally drawing a link between the website and the Complainant’s well-known price comparison brand.
3. The disputed domain name has been registered and is being used in bad faith.
The Complainant submits that the disputed domain name was registered and is currently used in bad faith.
The Complainant contends that, given the distinctiveness of the Complainant's trademark, its reputation, and the complete overlap between the intended use of the disputed domain name and the Complainant’s business activities carried out under the USWITCH brand, it is inconceivable that the Respondent would not have been aware of the Complainant and of their USWITCH trademark when registering the disputed domain name.
The Complainant further claims that by choosing to include the USWITCH trademark in the disputed domain name, and by using the disputed domain name for the purposes of promoting a competing financial advice service, the Respondent has derived an undue benefit from the reputation enjoyed by the USWITCH brand among UK consumers, who may well assume that the disputed domain name hosts a venture affiliated with the Complainant. As such, the use made of the disputed domain name is well-described by Paragraph 4(b) of the Policy, which specifies that bad faith registration and use may be found where “by using the domain name(s), the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s web site 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 the Respondent’s web site or location or of a product or service on the Respondent’s web site or location.”
The Respondent also failed to respond to the Complainant’s representative’s cease and desist letter.
RESPONDENT:
In his very short response, the Respondent affirmed that Brit U Switch is a company which operates in Pakistan, that there was no intention to confuse customers or to take any other companies‘ customers. The Respondent said (presumably referring to the registration of the disputed domain name) that it was a misunderstanding that had been done in error. The Respondent further stated that he understands the Complainant’s concern, and that for this reason he would cease all activities under the disputed domain name immediately.
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