Easy Mobiles

Firstly, please refer to the DLA Piper Rudnick Gray Cary Cover Letter for the original text.
Let us for the time being forget that the letter itself in its heading refers to a nonexistent entity WW.W.EASY-MOBILES.CO.UK (sic!) instead of easy-mobiles.co.uk as it should. It might or might not make the whole letter or even all of the attached papers legally void. But this is indeed, a very miniscular mistake compare to those bold and much more serious ones made in the legal assessment and the presentation of the case.

Some interesting details concerning the part which refers to the change of address and Nominet Whois records will be published in The Story section. For now we will just go straight to the real core of the claim.
The cover letter explicitly states the following:

our client reserves the right to commence proceedings against you for passing off without further notice

further on the 3rd page of the letter itself we can find this:

we [DLA Piper Rudnick Gray Cary] have advised our client [easyGroup IP Licensing Limited] that you are liable for passing off

and

our client is willing not to commence legal proceedings against you for passing-off, provided you immediately cease trading under or using the name easy-mobiles.co.uk

my emphasis
It is clear now that the notion of passing off is in the centre of their claim. So firstly, what “passing off” actually means in layman’s terms?

In a nutshell it is when one trader passes his/her goods or services as ones of another trader and thus the former gains profit at the expense of the latter.
Certainly this is an extremely primitive interpretation which is given here solely for the sake of briefness. Somewhat more extensive but not by any means complete readings of the term can be found in Wikipedia, UK Government Intellectual Property Web Site or just simply doing a Google search for “passing off” (see also a good explanation at Lawdit Solicitors Web Site).
Generally, we will take the following as our working definition:

In Erven Warnink BV v J Townend & Sons (Hull) Ltd [1979] AC 731, Lord Diplock had identified the five characteristics which must be present in order to create valid cause of action for passing off as:
(1) a misrepresentation (2) made by a trader in the course of trade, (3) to prospective customers of his or ultimate consumers of goods or services supplied by him, (4) which is calculated to injure the business or goodwill of another trader (in the sense that this is a reasonably foreseeable consequence) and (5) which causes actual damage to a business or goodwill of the trader by whom the action is brought or (in a quia timet action) will probably do so.

We shall go through each of these five items required, in order to see if it is at all possible to build a case.

1. Although the whole matter of misrepresentation is rather subjective, it would have been a gross exaggeration to insist that www.easy-mobiles.co.uk looks similar to the EasyMobile Website to such a degree that may potentially cause confusion between the two. One needs to find a really confused expert to state this. If this was not enough, three pages (including the front page) out of 17 total (namely index.html, about_us.html and disclaimer.html) have explicit disclaimer sentence stating that the resource as a whole is not associated with Easy Group and easyMobile. Note: I shall develop the alleged “misrepresentation” subject in my further analysis. Concerning the “confusing” amount of orange colour see my previous post. I shall also add that the colour used on the old version of the website is NOT THE SAME as the one Easy Group claims their rights to (more about this later).
2. What seems to escape the attention of the DLA Piper Rudnick Gray Cary and their client is the fact that http://www.easy-mobiles.co.uk/ is NOT a trading web site and I am not a trader either. The web site in question is an information resource and no goods were ever sold from this web site.
3. If any sort of representation (not misrepresentation!) did occur, it was to prospective customers of easyMobile.com - not to any other prospective customers.
4. What DLA Piper Rudnick Gray Cary do not mention (perhaps intentionally, or perhaps because their client easyMobile failed to disclose this information) is that easyMobile representatives were aware of the existence of the http://www.easy-mobiles.co.uk/ web site as early as September 2005 and that the website itself was shaped up and its content was formed in order to promote easyMobile.com products and services, and its content and design in large part are the result of following recommendations of easyMobile.com representatives. Ultimately the web site even at its current state by no means injures the business or goodwill of easyMobile.com.
   Note: see about_us.html for some additional details. I will provide more information on this soon.
5. In the letter itself DLA Piper Rudnick Gray Cary obviously struggle to provide arguments in support of their statement that the web site is causing damage to the reputation and goodwill of the “EASY” brand hence this claim remaing unsubstantiated. In fact easyMobile.com was only benefiting from the existence of this web site in its former shape as it contained only positive information and only about easyMobile.com products and services.

Now, see for yousef if DLA Piper Rudnick Gray Cary and their client easyGroup IP Licensing Limited have any chance of bringing this matter to court.
I don’t think so.

tags: nominet, whois, domain dispute, easygroup, easymobile, legal, passing off

This entry was posted on Monday, May 29th, 2006 at 5:32 pm and is filed under Legal, Blog. You can follow any responses to this entry through the RSS 2.0 feed. You can leave a response, or trackback from your own site.