Transfer of 'eurailpass.biz' and 'eurailpasses.biz' passed up by WIPO panellist

In Eurail Group GIE v Epasses, World Intellectual Property Organization (WIPO) panellist Jonathan Turner has ordered the transfer of 'eurail.biz' to the complainant. However, Turner refused to order the transfer of 'eurailpass.biz' and 'eurailpasses.biz' holding that the respondent has a legitimate right to use the domain names to sell rail passes issued by the complainant.

Eurail Group, a company based in the Netherlands that has sold European rail tickets under the names Eurailticket and Eurail Pass since 1959, owns trademark registrations for the marks EURAIL and EURAILPASS in the United States and other countries. It filed a complaint with WIPO requesting the transfer of 'eurailpass.biz', 'eurailpasses.biz' and 'eurail.biz'. The three domain names had been registered by Epasses, a US company, which was using them as portals to a website hosted at the domain name 'eurailpasses.net' for the purpose of selling Eurail Passes and other tickets.

Turner found that Eurail Group had met the first requirement set out in Paragraph 4 of the Uniform Domain Name Dispute Resolution Policy for all of the disputed domain names because it had demonstrated that (i) it owns rights in the registered or unregistered marks EURAIL, EURAILPASS and EURAIL PASSES, and (ii) the disputed domain names are confusingly similar to these marks. However, Turner held that Eurail Group had only met the second and third requirements, namely proving that Epasses had no legitimate interest in the domain names and had registered and/or used them in bad faith, in respect of the 'eurail.biz' domain name.

Turner reasoned that Epasses does have legitimate rights or interests in 'eurailpass.biz' and 'eurailpasses.biz'. He recognized that a person other than the trademark owner may lawfully use the mark for the purposes of selling products placed on the market by the trademark owner itself, as long as no confusion is caused in the process. Here, Epasses was using the website hosted at the domain names to sell primarily Eurail Passes issued by Eurail Group. He noted that Epasses also sells other rail passes on its site, creating the possibility that consumers might believe Eurail Group provided those tickets as well. However, Turner concluded that Eurail Group had not presented sufficient evidence to prove that confusion was likely, relying on evidence that (i) Epasses had operated its site for some time, and (ii) third parties also sell Eurail Passes on sites with similar names.

As Epasses appeared to have legitimately used the 'eurailpasses.net' domain name for its website, it followed that it had neither registered nor used the similar domain names 'eurailpasses.biz' and 'eurailpass.biz' in bad faith. Thus, Turner refused to order the transfer of these domain names.

With respect to 'eurail.biz', Turner concluded that the evidence did support transfer. Epasses could not show a legitimate interest in 'eurail.biz' as it did not correspond to the domain name that Epasses had been using legitimately ('eurailpasses.net'). He decided that Epasses registered 'eurail.biz' with the intention of attracting internet users by misleading them into believing that its website was sponsored by Eurail Group.

David Fleming, Brinks Hofer Gilson & Lione, Chicago