Torbjörn Ahlberg of Swedish domain name sellers TBA Media had
challenged McDonald's registration which was sought during an
initial period when the .eu space was open only to trade mark
owners.
McDonald's relied for its .eu
application on a Hungarian trade mark. The mark was a logo in which
two McDonald's 'Golden Arches' (usually used to represent an 'M')
were rotated to represent the 'Z's of the word pizza. A similar
mark (pictured) was registered in the UK in 1994 but expired in
2004.
Although McDonald's does not currently sell pizzas in either
Hungary or the UK, it does sell them at its restaurants in Italy.
In securing the domain name, McDonald's beat applicants from Italy,
France, the Netherlands, each of whom presented evidence of
relevant trade mark rights. Its success was not because of a
stronger claim; it was simply first rights-holder to file.
Sweden's Ahlberg was the only failed applicant to challenge the
award to McDonald's. The challenge will have cost an arbitration
fee of €1,990 plus any legal expenses.
He argued that the 'Golden Arches' trade marks used by
McDonald's were synonymous with the letter 'M' not the letter 'Z',
therefore they represented the word PIMMA rather than PIZZA and
were invalid as a trade mark for the PIZZA domain.
Irish panellist Joseph Dalby accepted that the 'Golden Arches'
logo is widely recognisable and easily identifiable as a symbol of
McDonald's. But he considered the different use of the original
motif was "a deliberate ploy to invite comparisons generally and
perhaps puzzlement in some cases with the original."
He added that "the general impression of the word is apparent in
the mark without any reasonable possibility of misreading the
characters." Thus they disagreed with Mr Ahlberg's hypothesis that
the logo spelt PIMMA and believed it was a valid trade mark with
which to register Pizza.eu.
Hungarian company McDonald's Magyarorszagi Etterem Halozat Kft
remains the owner of Pizza.eu, although it is currently a holding
site, with no McDonald's-related content.
McDonald's has an extensive trade mark portfolio which includes
text or graphical registrations for McPizza, McSoup, McCola,
McFish, McToast, mmmmmmm, Fry Girls and Mayor McCheese.
