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 9th and
10th March 2005, with the easyMobile business launching
on 10th 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
