Thread: UDRP: Owner of ehotel.com Loses Domain to ehotel AG

In a recent WIPO UDRP decision, the owner of ehotel.com lost the domain to ehotel AG. It's an interesting case. Here's my understanding of it:

The complainant, ehotel AG, owns a 1998 German trademark for EHOTEL SERVICE, plus a 2006 Community trademark for EHOTEL. The disputed domain was registered in 2003 by a Mr. Lutoborski.

Between June 2003 to January 2004, the ehotel.com website purported to promoted "eHotels" in Warsaw, Cracow and Zakopane that were "opening December 2003."

However, after discussions with the complainant, Mr. Lutoborski redirected the domain to the complainant's website ehotel.de (between March 2004 and February 2007).

In February 2007, the redirect stopped.

In March 2007, Mr. Lutoborski transferred the domain to the respondent, Network Technologies Polska Jasinski Lutoborski Sp.J (a company that Mr. Lutoborski is connected to). Even though the panel recognised that Mr. Lutoborski was actually controlling this company, it treated the transfer as a fresh registration.

Therefore, the panel looked at Mr. Lutoborski's intentions in relation to the disputed domain as at March 2007. As Mr. Lutoborski had failed to produce evidence that his original business purpose for the domain still existed at that date, the panel found the domain was registered and used in bad faith.

Even though Mr. Lutoborski may have initially registered the domain name for a legitimate business purpose, he effectively chose to abandon his own prior use and actively sought to associate ehotel.com with the complainant's business.

If Mr. Lutoborski had continued to do what he had legitimately set out to do, then it's unlikely that the domain would have been viewed as being used in bad faith.

What do you think of this decision?

Scary result given this statement made by the panelist:

Further, as has already been explained the Domain Name can only sensibly be understood as the ordinary English word “Hotel” pre-fixed with the letter “e” and the Panel accepts the Respondent’s contention that the letter “e” is commonly used in this fashion to indicate the electronic provision of goods or services. 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.

Okay, I'm a bit confused...

So if the panel viewed "ehotel" as a generic word, does this decision mean it's risky to associate a generic domain with a particular third party business (with their permission), and to then later take away such association?

Also, the complainant obtained a trademark for "ehotel" - ie. a "generic word."

Originally Posted by Ceres

Okay, I'm a bit confused...

So if the panel viewed "ehotel" as a generic word, does this decision mean it's risky to associate a generic domain with a particular third party business (with their permission), and to then later take away such association?

I'm not sure. I suppose it would depend on the individual facts of the case.

Originally Posted by Ceres

Also, the complainant obtained a trademark for "ehotel" - ie. a "generic word."

The panelist specifically said:

Finally, it is worth noting that in coming to its conclusion in this case, the Panel has not given any weight to the Complainant’s claims that the Respondent’s use of the Domain Name involved acts of trade mark infringement

It's definitely a weird case!

The answer is here!

"Even though Mr. Lutoborski may have initially registered the domain name for a legitimate business purpose, he effectively chose to abandon his own prior use and actively sought to associate ehotel.com with the complainant's business.

If Mr. Lutoborski had continued to do what he had legitimately set out to do, then it's unlikely that the domain would have been viewed as being used in bad faith."

@Jeff - thanks!

@wot, thanks a lot - I had seen that part. I suppose what I find confusing is if "ehotel" is a generic term, and the panel didn't even consider the complainant's claim of trademark infringement, why was there a requirement for the respondent to show it had a legitimate business use for this generic name.

My head hurts.

Domain name lawyer Zak Muscovitch has filed an appeal to overturn the ehotel.com UDRP decision. As you can see from this thread, it was not a straightforward case! Let's see what happens...