• e-TRADE MARKS

    easyPassing off

    A recent case (easyJet Airline Co. Ltd v Tim Dainty) has confirmed the ability of UK trade mark owners to claim the ownership of domain names that conflict with their own trade mark rights.

    Easyjet is one of the UK's most successful airlines. It provides relatively low cost travel out of Luton Airport. Most of its bookings are taken via the Internet. In addition to the airline, other companies in the same group also trade under the easy- prefix, namely easyRentacar for car rental and easyEverything, which promotes Internet cafes. The airline, as well as other members of the group, employ a characteristic white and orange coloured livery. The total turnover of the business has reached £267 million. None of this business, however, is related to the purchase and sale of property.

    Mr Dainty planned to establish a cut price estate agency service on the Internet. To this end, he registered the domain name easyRealestate.co.uk. Having done so, he approached easyJet with a proposal to enter into partnership. This approach was ignored. In response, Mr Dainty began developing his website. Once operational, his website employed colours and other indicators that were at least suggestive of easyJet.

    EasyJet wrote a cease and desist letter to Mr Dainty who replied with a letter which put easyJet on notice that he intended to sell the domain name easyRealestate.co.uk to the highest bidder. The airline sued for passing off and sought the transfer of the domain name to them. The Court (Mr Livesey) reviewed the leading UK cases in the area of passing off and then ruled as follows:

    • The plaintiff was not entitled to appropriate the word easy and prevent any businessman from using any name which included the word easy. However, because the design of Mr Dainty's website was calculated to take advantage of as close an association as possible with easyJet, the necessary elements for success in a passing off action (goodwill/ deception/damage) had been established in relation to his operation of the website.

    • The name easyRealestate.co.uk was not one that would inherently lead to passing off. It did not follow from this, however, that it could not be an instrument of fraud. Given the actual use of the domain name made by the defendant and his expressed intentions in relation to this and similar domain names, it was an appropriate remedy to require the transfer of the domain name to easyJet. Such an order was in accordance with the views expressed by the Court of Appeal in the earlier One in a Million case (1999 FSR1).

     

    This decision shows that the UK Courts still remain a legitimate forum for dealing with cybersquatters. This is particularly the case when the facts are not straightforward and the discovery of documents may well improve the trade mark owner's chances of gaining control of a conflicting domain name. In such cases, an action before the UK court could be more effective than an action brought under the ICANN procedure. The failure of the easyJet group to obtain the transfer of a number of other easy- prefixed domain names (e.g. easyescape.com, easygetaway.com, easymaterial.com, easy-jet.com and easy-jet.net) through the ICANN route illustrates the difficulties that can sometimes be faced by a complainant before WIPO.