Carphone Warehouse gets domain name revenge on Stelios

A Nominet dispute resolution panel found that the easyGroup empire did not have sufficient rights in the name – ignoring an opposite decision by a WIPO panel in July.

EasyMobile.com is a no-frills service run by easyGroup in partnership with Dutch telco TDC. It claimed to have sparked a "mobile war" when it entered the UK market – evidenced by confrontations with Orange and Virgin Mobile.

The Carphone Warhouse provoked Stelios by setting up websites at easiermobile.com, easiermobile.co.uk and ezeemobile.co.uk – domain names that it registered just as easyMobile.com launched.

Each site consists of one page only, showing an image of a jet plane in the green and white livery of 'fresh,' the mobile service from The Carphone Warehouse that takes on easyMobile.com's pricing plan.

Beneath the image is the message: “The Carphone Warehouse doesn't try to run airlines, it sells mobile phones. Fresh, the mobile phone service from The Carphone Warehouse, offer calls to any network for 15p and any text for 5p - How easy is that?”

The pages link to the sales pages of The Carphone Warehouse's website.

In July, easyGroup won its WIPO action in respect of easiermobile.com. The panellist reckoned easyGroup had trade mark rights in easyMobile.com, viewing it in the context of the other 'easy' businesses. He said The Carphone Warehouse had no rights in easiermobile.com, describing the site as "an obvious mocking referral" to easyGroup's "famous easyJet business." Convinced that the name was registered primarily to disrupt a rival's business, he ordered its transfer.

However, in a ruling only just released, Nominet has taken a different view of the two .uk registrations.

According to panellist David Blunt QC, while easyGroup clearly has numerous trade marks incorporating the word “easy”, none of them use the word “mobile” and none of them are identical or similar to “easiermobile” or “ezeemobile”.

And while the company has applied for a Community Trade Mark in “easyMobile,” this has not yet been registered and does not give easyGroup enforceable rights other than as evidence for common law rights in the name.

Mr Blunt also pointed out that, while the easyMobile business is operated at easyMobile.com, the evidence put before him did not make it clear whether easyGroup operated this in partnership or association with Telmore Holding and which of them was the registrant of the domain name. (A simple WHOIS check shows easyGroup IP Licensing Limited as registrant.)

He was therefore unable to say, on the evidence put before him, who had rights to the .com domain, and easyGroup could not therefore rely on it as evidence of having rights to the “easymobile” name.

This left the company trying to rely on its common law rights in the name “easyMobile.” These are rights generated by reputation or goodwill and in the context of domain disputes must relate to rights existing at the dates of registration of the domain names.

In Blunt’s view, the chronology of events was fatal for easyGroup.

The .co.uk domain names were registered on 9^th and 10^th March 2005, with the easyMobile business launching on 10^th March. EasyGroup argued that there had been pre-launch publicity, which meant that the Carphone Warehouse must have been aware of the proposed new business.

The panellist agreed, but did not find that this awareness helped easyGroup in its goodwill argument, requiring “evidence which will support the conclusion that significant numbers of the public including potential customers already associated the name or mark in question with the services intended to be provided”.

In his opinion, easyGroup did not supply this evidence, and was therefore unable to establish “that at the material time there was reputation/goodwill, and that therefore the Complainant enjoyed common law rights, in easyMobile.”

So he rejected the complaint. But he also took the opportunity to make some observations about the similarity of names.

He suggested that, while easymobile and easiermobile were similar, ezeemobile was not similar to easymobile.

He wrote: “Whilst phonetic spelling and ‘sound’ may be regarded as relevant to the issue of ‘similarity’, internet triggers are essentially visual. In my opinion ezeemobile and easymobile are not visually similar, and, notwithstanding the 'phonetic spelling argument', are not