Two UDRP decided days apart by the Czech Arbitration Court (CAC) on two very similar domains got completely results.
Both UDRP’s were brought by the same Complainant BGL Group Limited which has a trademark on the term “COMPARETHEMARKET”
In on case the panel held for the trademark holder in the other case the panel held for the domain holder.
The domains are:
COMPARE-THE-MARKET-CAR-INSURANCE.COM
COMPARETHEMARKETCARINSURANCEUK.COM
As you can see one domain has hyphens the other one does not but adds UK on the end of the term.
Otherwise the domains are identical.
If you think the different decisions were due to different panelists you would be incorrect as both UDRP’s were decided by the same panelist Lada Válková.
In one case the panel in holding for the domain holder noted that the term was generic saying:
The words ‘compare’ and ‘market’ are common descriptive English words and lack any inherent distinctiveness even together. Where descriptive elements are added together, the overall mark will be descriptive unless the combination creates an entirely new impression which bestows a distinctive character on the whole which is not descriptive.
Here, although the Complainant’s word marks have been registered, they are extremely descriptive.
Even once registered, owners of highly descriptive marks must be able to establish acquired distinctiveness. The UDRP also recognizes this and that rights may in some cases subsist in descriptive registered terms–only if they have acquired a secondary meaning and that a similar showing for these registered marks may be required as for unregistered marks–see the WIPO overview at 1.7 “..a conclusory allegation of common law or unregistered rights (even if undisputed) would not normally suffice; specific assertions of relevant use of the claimed mark supported by evidence as appropriate would be required.
Both parties in this case are UK resident and offer competing services to the UK public. Under §15(a) of the UDRP Rules, a panel is to “decide a complaint on the basis of . . . any rules and principles of law that it deems applicable.” This is the choice of law provision and it is therefore possible to apply English law in this case.
No evidence was submitted in this case going to secondary meaning or acquired distinctiveness. We have only mere assertion and the fact of the registered marks.
While the Complainant has registered rights these are not strong due to the highly descriptive nature of the marks.
The Respondent has offered no evidence here but the Respondent registered the Disputed Domain Name on 24 December 2012.…
