WiseInsurance.co.uk Appeal - Overturned - No Action

[Beasty]

http://www.nominet.org.uk/digitalAssets/27266_wiseinsurance_-_appeal.pdf

Victory for the Registrant (Tagnames) on Appeal - overturning the original decision - which is very good news in my view.

 

[mat]

That was a good read,

I think it helps alot that they registered a bunch of "wise" domains on the same day.

 

[SF]

Great result....................

 

[landlord]

Not sure

I must say I am not sure about this one...

Whilst the registration may well be legitimate this would not protect the registrant from a court action for 'passing off or very close to that an action for gaining revenue from what is a unique name'

Whilst the two words wise and insurance are individually very generic it is very unlikely that together other companies would generally want to use them.....therefore at the point of registration did Wise Insurance Services have a going concern business and therefore an unregistered right to the name Wise Insurance. Could Wise Insurance gain a Trade Mark for the class Insurance? The parking page is clearly an infringement if the advertisers are linked to insurance products ....that is to say if you compare with the myspace decision....

The only difference between myspace and wise insurance is that one has an enormous turnover....the abuse is the same (parking page) but the outcome very different

The argument that one or a million will be confused ishould not be based on how big the company is but more so on the percentage based on the uniqueness of the name. For example if Wise Insurance have 10 customers and all 10 customers try wiseinsurance.co.uk first AND are all confused because the links are insurance related then thats more abusive than:-

For example if Myspace have 1 million customers per a day and only 500,000 goto myspace instead of myspace.com (.com heavily advertised) and then only 10 customers try a link because everyone knows what myspace should be like then....

technically Wise Insurance have more rights to the name than myspace

BUT just to state my opinion...both cases are abusive for having parking pages and therefore damages are due

Lee

 

[Beasty]

I must say I am not sure about this one...

Whilst the registration may well be legitimate this would not protect the registrant from a court action for 'passing off or very close to that an action for gaining revenue from what is a unique name'

Whilst the two words wise and insurance are individually very generic it is very unlikely that together other companies would generally want to use them.....therefore at the point of registration did Wise Insurance Services have a going concern business and therefore an unregistered right to the name Wise Insurance. Could Wise Insurance gain a Trade Mark for the class Insurance? The parking page is clearly an infringement if the advertisers are linked to insurance products ....that is to say if you compare with the myspace decision....

The only difference between myspace and wise insurance is that one has an enormous turnover....the abuse is the same (parking page) but the outcome very different

The argument that one or a million will be confused ishould not be based on how big the company is but more so on the percentage based on the uniqueness of the name. For example if Wise Insurance have 10 customers and all 10 customers try wiseinsurance.co.uk first AND are all confused because the links are insurance related then thats more abusive than:-

For example if Myspace have 1 million customers per a day and only 500,000 goto myspace instead of myspace.com (.com heavily advertised) and then only 10 customers try a link because everyone knows what myspace should be like then....

technically Wise Insurance have more rights to the name than myspace

BUT just to state my opinion...both cases are abusive for having parking pages and therefore damages are due

Lee

Wise + insurance are quite commonly linked - a google.com search throws up about five different companies - wiseinsurance.net, wiseinsuranceagency.net and .com, wiseins.net and .com - all on the first page or so. So pretty common I would say - and for fairly obvious reasons - since at least one of them uses the wise old owl type logo to suggest buying from them is a wise choice!

If you park a page (or indeed pages like the wise + financial product family that were all regd together) and then park them with no knowledge of the complainant, the appeal panel (and common sense) says that is fair use - you have to know about someone to register abusively or use abusively.

For passing off, you need to look up the house of lords decision in Westminster Cleaning to see why "mere confusion" is not only allowed but also expected when you choose a descriptive name that can be legitimately adopted by another. Remember, confusion in passing off does not really mean confusion - it means deception! You need to show that consumers were deceived into thinking that there was (at the very least) an association between the two parties.

 

[landlord]

very good

very good beasty and certainly common sense would say the same but this does not seem to stop large rights holder claiming rights beyond that which appears common sense.

referring to the wise insurance case i still disagree....

wise insurance is not a search term....people look for cheap insurance, car insurance, van insurance but they don't search for 'wise insurance'.

So bearing the above in mind then is parking a legitimate practice.... if the term is not searched then direct navigation isnt likely. The abuse lies in the fact revenue is derived from a 'non' search term that the registrant shows no legitimate interest in i.e. the registrant does not sell insurance. However, on the other side of the coin one could say parking any name as part of a bulk parking program (registering any domain name whatever the name) to derive a click through for whatever reason COULD actually be legitimate on the basis that the registrant is looking for a small number of clicks from web surfers who seem to end up at some bizarre places for no particular reason. IF then one of his names ends up being famous is that his fault??? Indeed as at now one could register a domain name to park....that parking offers advertising from the whole of the business world so if that right is to be protected then one could say, as from that date of registration, later rights holder could not dery the registrant the 'right to park' and advertise any business that it wishes......actually maybe the abuse lies with the advertiser who targets the site or google who offer recommendations to the advertiser on a bulk basis

Lee

 

[Beasty]

very good beasty and certainly common sense would say the same but this does not seem to stop large rights holder claiming rights beyond that which appears common sense.

referring to the wise insurance case i still disagree....

wise insurance is not a search term....people look for cheap insurance, car insurance, van insurance but they don't search for 'wise insurance'.

So bearing the above in mind then is parking a legitimate practice.... if the term is not searched then direct navigation isnt likely. The abuse lies in the fact revenue is derived from a 'non' search term that the registrant shows no legitimate interest in i.e. the registrant does not sell insurance. However, on the other side of the coin one could say parking any name as part of a bulk parking program (registering any domain name whatever the name) to derive a click through for whatever reason COULD actually be legitimate on the basis that the registrant is looking for a small number of clicks from web surfers who seem to end up at some bizarre places for no particular reason. IF then one of his names ends up being famous is that his fault??? Indeed as at now one could register a domain name to park....that parking offers advertising from the whole of the business world so if that right is to be protected then one could say, as from that date of registration, later rights holder could not dery the registrant the 'right to park' and advertise any business that it wishes......actually maybe the abuse lies with the advertiser who targets the site or google who offer recommendations to the advertiser on a bulk basis

Lee

I agree with you Lee that wise + insurance is not as obvious as cheap + insurance or car + insurance - but I still think that there is a descriptive juxtaposition of the words that make sense. Therefore they have value - regardless of any alleged (and unproven) knowledge of the Complainant in this case.

 

[landlord]

Ok

I take your point and this can only reconfirm the theory that the only way one can distinguish between rights is based on the visual appearance (website content).

Deception is caused by the visual misrepresentation taken as a whole and the more generic the logo less the protection i.e. a generic font of the text name.

Lee