WIPO rejects trade mark claim
By OUT-LAW.COM
Published Monday 12th December 2005 15:40 GMT
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EasyGroup has lost an attempt to eject the resident of easyhotel.ch, the director of a Swiss technology firm who was using the domain name to promote his firm's services to Swiss hotels. EasyGroup was accused of trying to monopolise the word "easy".
EasyGroup IP Licensing Ltd, the brand police for Stelios Haji-Ioannou's easyGroup empire, argued that the name infringes its easyHotel trade marks. It took action before the World Intellectual Property Organisation (WIPO), arguing that Pascal de Vries of Basel-based Dexion AG should be stripped of the domain name. It cited trade mark and unfair competition laws to support its claim.
De Vries registered easyhotel.ch in June 2005. His company applied for the Swiss trade mark EASYHOTEL the same month in classes relevant to telecoms and IT services. There are 45 trade mark classes in total, and easyGroup said it had applied for the same mark in the class relevant to hotel accommodation.
But easyGroup had not secured a trade mark registration – and Swiss trade mark law does not recognise rights in pending applications. Accordingly, easyGroup failed to convince the panellist that it has any rights in Switzerland over the marks EASY HOTEL and EASYHOTEL.
Even if it had established trade mark rights, easyGroup's claim was doomed because De Vries convinced the panellist that he was acting in good faith when he registered the domain name. At the time, easyhotel was not a well-known trade mark in Switzerland and De Vries said he did not know that an easyHotel was opening in Basel.
The panellist also felt that confusion among customers was unlikely, given the different nature of the services on offer and the appearance of Dexion AG's website – which makes no mention of easyGroup and does not use its distinctive orange and white colouring.
De Vries accused easyGroup of trying to monopolise the name "easy" in the same way as a cybersquatter, by registering a high number of "easy" domain names without using them. He also criticised easyGroup for not trying to resolve the matter amicably.
In another WIPO decision announced today, easyGroup had more success: it won a transfer of the domain name easyhote.com from an apparent typo-squatter in the Republic of Korea.
