EASY win highlights benefits of court action

United Kingdom

In easyGroup Licensing Ltd v Sermbezis ([2003] All ER (D) 25), the UK High Court has ordered the transfer of a domain name containing the word 'easy' to the plaintiff - the licensor of the EASY trademark - on the grounds that the defendant's use of the word amounted to passing off.

easyGroup Licensing acts as an umbrella company that licenses the EASY trademark to a number of commercial ventures of common origin; the best known of which is easyJet. One of the licensed activities is car rental and the EASY trademark has been used for those services over a number of years by easyGroup or its licensee.

Mr Sermbezis, an individual, registered certain domain names incorporating the term 'easy'. He was using them to operate a number of websites, one of which was for car rental services. easyGroup brought a summary judgment action for passing off against Sermbezis.

The High Court followed a long line of cybersquatting summary judgment decisions and specifically cited British Telecommunications plc v One in a Million Limited. It held that as the websites had been set up to deceive the public, easyGroup's summary judgment application must be upheld.

The case highlights that in a domain name dispute, it can often be quicker and more effective to file a court action against a defendant than going through the World Intellectual Property Organization arbitration process. A court can grant all necessary relief, while domain name mediation can only grant limited relief.

Larry Cohen, McDermott Will & Emery, London

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