The domain name eHotel.com was transferred pursuant to a WIPO complaint filed by “ehotel” owned by AG of Berlin (“AG”).
The panel found that “AG” possessed “both German and Community trademarks that comprise the terms “eHotel Services” and “eHotel” respectively.”
“Each is in respect of services that cover the making of travel arrangements.
“The Domain Name can only be sensibly understood as the English word “hotel” prefixed with the letter “e”, together with the “.com” TLD. In the circumstances, the Panel finds that the Domain Name is confusingly similar (as that term is understood under the Policy) to the Complainant’s German registered trade mark and is virtually identical to the Complainant’s community trade mark.”
However it should be noted that the facts of this case are pretty complicated and the owner of the domain pointed the domain to AG site for a number of years:
“””If a respondent has registered a domain name for a legitimate business purpose, and another business comes along that chooses to use the same name, should he not be allowed to take advantage of that fact? The answer to that question depends upon how exactly the domain name is used. If he merely intends to continue to do what he has always legitimately done, then it is difficult to see how that continued use could be characterized as use in bad faith.””
“”The problem is that the Mr. Lutoborski did not do this. Instead, he effectively abandoned his own prior use and actively sought to associate the Domain Name with the Complainant’s business. This combined with the subsequent transfer of the Domain Name proved fatal to his case.””
“”In other words, the term “eHotel” is not so inherently distinctive that the only plausible explanation for its initial registration was with the Complainant’s business in mind. Therefore, if bad faith registration were to be assessed as at 2003, then on the basis of the material before the Panel the Complainant’s Complaint would be likely to fail.”””
It’s an interesting case and you should check it out.
First – No organization should have issued a broad-based trademark for ehotel.anything. anywhere.
Second – AG of Berlin should have registered the .com to protect their interest when they registered ehotel.de . duh.
Third – it may appear that AG Berlin “tricked” the registrant into redirecting the site to analyze traffic. Although 3 years is a long time to redirect, it’s a sleazy move when they later try and take the domain from the registrant. They were obviously complacent because at no time over those years did they say “stop the redirect”.
Fourth – registrant transfer being considered a new registration is a bad decision. If for technical reasons or whatever if a domain is transferred it should not eliminate the original valid registration date.
imho.
A better lawyer and 3 arbitrators (judges) may prevent these messy domain issues. ouch. nice domain.
Mike, the name of the complainant is “ehotel”.
AG is a form of company in Germany, much like a US corporation.
ehotel AG is based in Berlin, but Berlin isn’t part of its company name.
The company’s main website is ehotel.de, and it services an international clientele. So I can understand why they would try to secure ehotel.com, given that they have a trademark on “eHotel” and that the domain was (judging from the WIPO decision) used in bad faith.
Dominik
I understand why the company would want the domain, but many (see the first comment) would believe the domain is too generic to have received trademark protection in the first place and too generic to grab a domain.
How the domain was used seems to be a complicated story.
Dominik
I understand why they would want to secure the .com of their company name, but many here (see the first comment) believe “ehotel’ like “advertising” is too generic of a term.
Another fcuked up decision.
Another REALLY fucked up decision, the WIPO panel is a disgrace. I truly believe they are corrupted scumbags, and anyone that thinks they serve a legitimate purpose is simply fooled.
Neither do I support the WIPO decision nor do I disagree with it, because I haven’t had any insight into this case yet, which indeed seems a bit complicated.
However, is “ehotel” really a generic term? “Hotel” obviously is, but adding an “e” or “i” can have a great impact because this actually turns the term into a brand, I would think.
By your reasoning, “etrade” and “eHow” would be generic terms as well. In no way is this comparable to the Advertising.com case, which is about an undoubtedly generic word (and AOL going nuts).
Dominik
I’m with you.
You will see in my post I did not opine on the ruling.
The major problem I have with these cases and trademark law as it applies to domains, is that there is no requirement of fame anymore.
Have you ever heard of ehotel as a brand before this case?
Me neither.
Why did the Respondent point the domain to the Complainant’s website for “a couple of years”? That’s essentially begging for the domain to be taken away. No wonder the Respondent lost this one. These WIPO decisions have been terrible lately but this one was a no-brainer.
Respondent
The facts are complicated and there is no way of knowing from the decision why the domain was pointed.
Could they have done it as some sort of affiliate deal, maybe.
Remember its the panel that decided against the domainholder that is laying out the facts as well.
You would have to look at the domain holders actual pleadings to get insight into what went on.
The shocking part of this ruling is that they considered the change in whois as a “new registration” even though the original owner is the respondent.
I’m with Cartoonz. That was the worst part of the ruling. It doesn’t take a lot of intelligence to get that right.