IDENTITY WITH COMPLAINANT'S RIGHTS
The threshold test for identity or confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name. An addition of common, dictionary, or other descriptive terms is typically insufficient to prevent threshold Internet user confusion. Confusing similarity test under the UDRP typically involves a straightforward visual or aural comparison of the trademark with the domain name.
Applying the principles described above, the Panel contends that incorporation of the “COMPARETHEMARKET” element of Complainant’s trademarks into the disputed domain name constitute (i) identity between the disputed domain name and the COMPARETHEMARKET trademark (no. UK00002522721), and (ii) at least confusing similarity between COMPARETHEMARKET.COM trademark (no. UK00002486675) and such domain name.
For sake of completeness, the Panel asserts that the top-level suffix in the domain name (i.e. the ".website") must be disregarded under the identity and confusing similarity tests as it is a necessary technical requirement of registration.
Therefore, the Panel has decided that there is identity as well as confusing similarity in this case, it also concludes that the Complainant has satisfied paragraph 4(a)(i) of the UDRP.
BAD FAITH
It is clear from the terms of paragraph 4(a)(iii) of the UDRP as well as confirmed by numerous decisions under it that the two elements of this third requirement are cumulative; both registration and use in bad faith must be proved for a complaint to succeed. See, for example, World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO D1999-0001, Telstra Computers Ltd v. Nuclear Marshmallows, WIPO D2000-0003 and A. Nattermann & Cie. GmbH and Sanofi-aventis v. Watson Pharmaceuticals, Inc., WIPO D2010-0800.
The Complainant asserts that “… given the distinctiveness of the Complainant's trademark and reputation, it is reasonable to infer that the Respondent has registered the domain name with full knowledge of the Complainant's trademarks The Respondent lives in the UK and at the time the Domain was registered, COMPARETHEMARKET had already established itself as a very well-known brand in the UK”.
The Panel contends that the bad faith element in this particular case is closely connected with the “confusing similarity” and “false association” concepts. In the Panel’s view, the Complainant’s trademarks consisting of the “COMPARETHEMARKET” denomination are prima facie rather non-distinctive.
It is possible that the Respondent has been aware of Complainant’s trademarks, domain names and business in general; however, this does not automatically mean that it has registered its domain name in bad faith in order to “free ride” on the Complainant’s or its trademarks’ reputation, since the domain name is descriptive of the services that the Complainant has been offering.
The Complainant claims that through extended use, promotion and advertising spent by the Complainant, its trademarks have become so well known as to acquire the requisite degree of distinctiveness taking them out of their original generic nature. However, the evidence presented by the Complainant in this regard was very limited and the Complainant should have invested more time and effort for proving the same.
The Panel researched that the Complainant has been running a TV marketing campaign for several years using meerkat characters, which has been particularly popular. Panel therefore concludes that the “COMPARETHEMARKET” brand and trademarks enjoy high level of notoriety in the UK and that they have both acquired enhanced distinctiveness and a reputation in the UK.
With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include cases in which (i) the Complainant has a well-known trademark and (ii) there is no genuine use (e.g. a mere "parking") of the disputed domain name by the Respondent (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals).
For the reasons described above, since (i) there is only a remote chance that the Respondent has registered the disputed domain name just by a chance and without having a knowledge about the existence of the Complainant’s rights and business (ii) there is no real use of the dispute domain name, the Panel contends, on the balance of probabilities, that the disputed domain name has been registered and is being used by the Respondent in bad faith.
Thus, the Panel has taken a view that the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii)of the Policy).
NO RIGHTS OR LEGITIMATE INTEREST
The Complainant’s assertions that the Respondent is not commonly known by the disputed domain name and is not affiliated with nor authorised by the Complainant are sufficient to constitute a prima facie showing of absence of rights or legitimate interest in the disputed domain name on the part of the Respondent. The evidentiary burden therefore shifts to the Respondent to show by concrete evidence that it does have rights or legitimate interests in that name. However, the Respondent failed to provide any information and evidence that it has relevant rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii)of the Policy).
For the reasons as set out above, the Complaint is accepted.
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