September 2003

Record Companies, Artists, Mechandisers, Internet

An administrative panel of the World Intellectual Property Organization (WIPO) has recently decided a case under the Uniform Domain Name Dispute Resolution Policy (UDRP) between Eurail (the European joint venture supplying tickets and passes for rail and ship travel in Europe) as Complainant and Epasses of San Francisco as Respondent.
Eurail uses the names “Eurailticket” and “Eurail Pass” for its tickets and passes. It has registered “EURAIL” and “EURAILPASS” as trade-marks in the US and other countries. Epasses has a web site offering Eurail Passes and other tickets for use on railways in Europe. The dispute concerned the domain names www.eurail.biz, www.eurailpass.biz and www.eurailpasses.biz. which the Respondent registered.
The Panel applied the three-part test set out under paragraph 4 of the UDRP.
(1) It ruled that the disputed domain names are confusingly similar to the Complainant’s registered trade-marks.
(2) However, a distinction for the purpose of the second part of the test was made between eurailpass.biz and eurailpasses.biz on the one hand and eurail.biz on the other. In the former case, there was no evidence that Epasses use of the domain names and sites had been illegitimate, especially in view of its legitimate use of the site eurailpasses.net. The Panel decided that the issue of whether Epasses’ activities would constitute trade-mark infringement or unfair competition should be determined in court proceedings.
(3) The position in relation to eurail.biz was different. This domain name was effectively identical to the Complainant’s corporate name, Eurail, rather than designating a product which the Respondent was selling. The Panel concluded on the balance of probabilities that the Respondent did not have a right or legitimate interest in this domain name
As a result, the Panel ordered that only www.eurail.biz (and not the other two domain names) be transferred to Eurail leaving ownership of the two other names to be resolved in the courts.

The WIPO Panel Decision can be found at:http://arbiter.wipo.int/domains/decisions/html/2003/d2003-0393.html


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