Lack of evidence insures UK Company loses its .XXX

The first company to lose a cybersquatting case for an XXX domain name is a UK company named BGL Group. The Group, more widely recognized as comparethemarket.com, heard in May that their claim had been rejected; meaning the owner of comparethemarket.xxx may now use the domain name in any way they choose.

The BGL Group is a personal-lines insurance broker founded in 1992; in 2005 it created the brand ‘comparethemarket’ and launched the website comparethemarket.com, a price comparison website allowing users to compare quotes from online insurance companies. BGL also registered comparethemarket.co.uk, operating the sites simultaneously. In 2007 it registered comparethemeerkat.com to support its marketing campaign featuring a Russian meerkat, the idea being that the meerkat is frustrated as people are constantly visiting his website looking for quotes on car insurance.

Apparently, ‘meerkat’ sounds similar to ‘market’ when spoken with a Russian accent! 

BGL loses the right to have .XXX

On December 7, 2011, the second day of the ‘general availability’ period, comparethemarket.xxx was registered by UK resident, Jon Watkins; December 20, 2011, BGL Group became aware of the registered domain name.

BGL filed a UDRP (Uniform Dispute Resolution Policy) complaint with the Czech Arbitration Court (CAC) in April 2012, claiming that the registration was “a clear attempt to take unfair advantage of the reputation which has been developed by BGL.” BGL must have felt confident that their case was strong; they had registered the trademark for the term ‘comparethemarket’ prior to the domain name registration and had been marketing with the phrase for six years.

As the complainant, BGL was required to demonstrate that the domain name was registered in ‘bad faith’, surely, an open and shut case? In May 2012, BGL received the verdict, their claim had been rejected.

The panel from the Czech Arbitration Court wrote, “Claimant fails to prove bad faith registration or use of the domain. Complainant states that the domain is “completely inactive”. Complainant does not show that Respondent tried to sell the domain to Complainant, has registered other infringing names, or otherwise has tried to profit from the domain or cause any other harm to complainant. Respondent is not shown to have had prior UDRP cases in which he has been an unsuccessful Defendant. Clearly, “compare the market” could relate to myriad different types of markets and myriad different comparisons within each one, as demonstrated by a simple web search.”

This is a stark warning to trademark owners, the decision indicating that hard evidence is required to prove a ‘bad faith’ registration, such as offers for sale to the trademark owner, or linking the domain to competitors; creating and owning a trademark for six years, is obviously not enough.

For more information regarding the court decision, please read the case notes.

The jury is still out

Will the BGL Group launch an appeal? Their first argument may highlight the fact that previous inactive websites, involved in similar disputes, have been accepted as examples of bad faith.

Having faith in a system does not insure you are going to win a bad faith case.

 

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