When Carphone Warehouse registered the domain names easiermobile.com, easiermobile.co.uk and ezeemobile.co.uk, it must have been no surprise to them at all that EasyGroup were down on their necks immediately.
Topic: Domain names
Who: Carphone Warehouse and EasyGroup
Where: The Nominet Dispute Resolution Panel
When: August 2005
What happened:
The Nominet Dispute Resolution Panel grappled with the question of whether, in the teeth of opposition by EasyGroup, Carphone Warehouse should be allowed to register the domain names easiermobile.co.uk and ezeemobile.co.uk.
This occurred at around the same time that EasyGroup launched its mobile phone service, EasyMobile.com.
Each of the Carphone Warehouse sites had just one page, this had an image of a jet in the same green and white colourways as that of the Carphone Warehouse mobile phone service. Under the image was the message "The Carphone Warehouse doesn't try to run airlines, it sells mobile phones. Fresh, the mobile phone service from the Carphone Warehouse, offers calls to any network for 15p and any text for 5p – how easy is that?" the page was then linked to the sales pages of the Carphone Warehouse website.
WIPO challenge to easiermobile.com
In July 2005 EasyGroup successfully challenged a Carphone Warehouse "easiermobile.com" domain name registration in front of WIPO. WIPO found that EasyGroup had clear trademark rights in easymobile.com and felt that the Carphone Warehouse site was "an obvious referral" to EasyGroup's EasyJet business. It therefore determined that the name had been registered by Carphone Warehouse primarily to disrupt a rival's business and ordered its transfer to EasyGroup.
Different result for co.uk domains
In the Nominet case, dealing with the co.uk domain names, however, there was a completely different result.
The evidence in front of Nominet was unclear as to who exactly was the operator of the EasyMobile business, whilst so far as Nominet was concerned, EasyGroup did not have clear registered trademark rights, having only a pending application to register "EasyMobile" as a CTM.
"Passing off" test
EasyGroup was therefore left with having to show that Carphone Warehouse's use of the easiermobile and ezeemobile domain names was a passing off, and here EasyGroup was severely challenged.
This was because to establish a case in passing off, the claimant has to show that it has built up substantial goodwill in the trading style in question, before the defendant starts using it.
Here Carphone Warehouse had registered the domain names in question on 9 and 10 March 2005, and it was only on that day, 10 March, that EasyGroup launched its EasyMobile business. EasyGroup referred to pre-launch publicity as building up goodwill, but the Nominet panel had no evidence in front of it that by 9 March significant numbers of people including potential customers would already associate the easiermobile and ezeemobile names with EasyGroup.
Accordingly the EasyGroup challenge to these domain names was thrown out.
Why this matters:
Domain names continue to be the subject of hot dispute and this case shows the different approaches that can be taken in respect of ".com" and ".co.uk" domain names by the respective panels that handle their allocation and relevant disputes. The case also shows that competitors who are quick off the mark can still steal a march on those who might otherwise have been expected to have a more entrenched right in the relevant branding.
