December 2005
easyGroup Loses Battle but not the War
A recent WIPO administrative panel decision denied Stelios Haji-Ioannou to seize the domain name “easyjethotel.ch” for his easyGroup empire because easyGroup had not secured ownerships of the Swiss trademarks ‘EASY HOTEL’ and ‘EASYHOTEL’.
Swiss-based Pascal de Vries registered the domain name in June 2005, linking it to a website promoting the IT services of his company Dexion AG, a software provider to hotels.
Dexion AG also applied for the Swiss trademark EASYHOTEL the same month in classes relevant to telecoms and IT services, which was later confirmed by the Swiss Trademark Office in September.
The parties failed to settle the dispute amicably not least because de Vries claimed easyGroup was trying to monopolise the name "easy" by registering a high number of "easy" domain names without using them.
According to the easyGroup, it had rights in the name “easyHotel” as he owns several domain names and CTM, UK, US and Swiss trade marks comprising the said name, notably in Switzerland. All these names are currently linked to the website “www.easyhotel.com” on which customers can book rooms in hotels belonging to the easyGroup. The domain name at issue was therefore identical to easyGroup’s domain names and trademarks thus creating confusion for the customers in violation of the Swiss Law on the Unfair Competition. Registration of the domain name at issue also infringed article the Swiss Law on trademarks.
The ruling supported de Vries’ claim that the list given by the easyGroup did not constitute sufficient evidence because no certificate of application and/or registration has been enclosed with the request.
Further, Swiss Trademark Law provides that trade mark rights do not exist on the sole basis of an application, but only on the basis of a registration.
The “easyhotel”, booking service had only been launched the previous year in Switzerland and the easyGroup had not provided any evidence showing that its other foreign trade marks could benefit from the protection in Switzerland of well known marks under Article 6bis of the Paris Convention.
The easyGroup had therefore failed to prove that it has rights in Switzerland over the trademarks “EASY HOTEL” and “EASYHOTEL”.
De Vries provided several relevant arguments of defence supporting that he did not register and use the domain name “easyhotel.ch” in bad faith. In particular, he showed that:
He did not only register “easyhotel.ch”, but his Company, Dexion AG, also used it in connection with an active website: www.easyhotel.ch and live IT business to promote its own services and did not refer at all to the business of the easyGroup or its competitors. The company was also the owner of a Swiss trademark registration for “EASYHOTEL” in international classes 38 and 42.
The content of the website www.easyhotel.ch and its blue and grey interface was very different from the easyGroup brand which is notably known by the public for using the colours white and orange as well as a distinctive writing, particularly for the name “easy”.
The panel concluded that the registration and use of the domain name in dispute did not clearly infringe any rights held by the easyGroup under Swiss law and therefore did not justify the transfer of the “easyhotel.ch” domain name.
Briffa Comment
Although the laws governing intellectual property rights tend to be similar in every country and many nations are party to international treaties designed to harmonise such laws, differences remain.
Having rights in one jurisdiction does not automatically mean having same rights in another. Timing was right for de Vries and its IT firm which got there first.
This is one of the rare cases where the fiercely protective Serial Entrepreneur of the “Easy” brand was defeated. In this case however the domain name was not taken "in bad faith" nor did its owner try to capitalise on the easyGroup brand.
In another WIPO decision announced the day before this one, easyGroup had more success: it won a transfer of the domain name easyhote.com from an apparent typo-squatter in the Republic of Korea.
Sophie Lackowsky
Intellectual Property Solicitor
sophie@briffa.com