wiseinsurance.co.uk (2008): A descriptive domain name was found not to be an abusive registration
Background
Wise Insurance Services Limited ("Wise") operated as an insurance agency for various insurance companies such as AXA Insurance. It has traded under the name Wise Insurance Services since 1994. Wise registered the domain name insurancewise.co.uk in April 1999.
Tagnames registered the domain name in dispute - wiseinsurance.co.uk - in November 2003. The registration was part of a series of 'wise' prefixed financial domain names registered on the same date such as wisemortgage.co.uk and wisepension.co.uk. In the past the domain name had resolved to a parking page displaying insurance-related pay per click links.
Wise filed a domain name complaint under the Nominet UK Dispute Resolution Service. Wise subsequently withdrew this and then went on to file a second complaint.
To win the domain name dispute, Wise had to prove it had rights in a name or mark which was identical or similar to the domain name and that on the balance of probabilities, in the hands of Tagnames, the domain name was an abusive registration.
The expert held that the domain name was an abusive registration and Tagnames appealed to a Nominet appeal panel.
The domain name dispute appeal
While Wise had rights in the name "Wise Insurance Services" and this was identical or similar to the domain name in dispute, the appeal panel said that the goodwill relied upon to establish such a right was not extensive. The panel thought that, in the context of Wise's business, the name had 'descriptive and laudatory connotations'. Wise had not provided evidence concerning marketing of its business or that it was well known and its internet presence appeared to be low key. As such, its rights were weak. Despite this, there was enough to pass the first hurdle (proof of "rights").
Abusive acquisition
The panel decided that Tagnames' response to the allegation of abusive registration was perfectly reasonable, namely that the domain name was merely another domain name in pattern of unobjectionable domain names.
Furthermore Wise did not deny Tagnames claim that it had no knowledge of Wise when it registered the domain name.
Descriptive domain name not used abusively
Was the later use of the domain name abusive?
The appeal panel approached this case in a different way to the expert who gave the original decision. The panel referred to paragraph 4a(ii) of the DRS Policy stating that a domain name may not be an abusive registration if " [t]he Domain Name is generic or descriptive and the Respondent is making fair use of it". Here, Wise's name was descriptive and so was the domain name.
Was Tagnames' use fair?
The Panel considered that Tagnames' behaviour in relation to the domain name has been 'unexceptionable'. The very limited reputation which Wise had acquired in its name made the likelihood of confusion very low. Because Wise used a descriptive trading name, it could not complain about a third party using the same descriptive name. Therefore Tagnames had not used the domain name unfairly.
The panel overturned the expert's first instance decision. The domain name was not an abusive registration and so Tagnames retained the domain name in dispute.
"Take home"
If you use a descriptive name for your business, particularly one which has not acquired a very extensive reputation, you should be aware of the difficulty of stopping others using the same or a similar name.
How Adlex Solicitors can you help you...
For a free initial chat and more information call Adam Taylor of Adlex Solicitors on +44 (0) 207 317 8404 or email.