End of the line for theorientexpress.nl: train-themed restaurant must transfer domain name to our client ORIENT EXPRESS®

Few trains capture the imagination quite like the Orient Express. It is easy to understand, then, why a restaurant owner with a passion for the train chose to name his business after it. Yet this can backfire legally, as a recent domain name case shows, in which de Merkplaats represented the owner of the ORIENT EXPRESS trademark.

The case concerned a small restaurant in the Netherlands with two rooms styled as dining cars. Its website ran under the domain name theorientexpress.nl, and the restaurant was originally called "The Oriënt Express Dining Experience". Orient Express is now part of the hotel group ACCOR and still offers luxury train journeys. The name is protected as a trademark throughout the European Union. When Orient Express came across the website, it sent the owner a letter asking him to stop using the name and to transfer the domain name.

The restaurant owner changed the name of his business to "The Oriënt Dining Experience". He wanted to keep the domain name, however, unless he received something in return: two tickets on the Venice Simplon-Orient-Express from Amsterdam to Vienna or Venice. A creative counteroffer, but Orient Express declined.

The case was therefore brought under the dispute resolution procedure of SIDN, the organisation that manages .nl domain names. This procedure is largely based on the international UDRP procedure, which applies to domain names such as .com. An independent panelist of WIPO, the UN organisation for intellectual property, decided the case. To have a domain name transferred in this way, the trademark owner must show that three requirements are met: the domain name is identical to the trademark or so similar that confusion may arise; the current holder has no right to or legitimate interest in the domain name; and the domain name was registered or is being used in bad faith.

The first requirement was quickly settled. The word "the" in front of the trademark and the missing hyphen make no difference: the ORIENT EXPRESS trademark is clearly recognisable in the domain name. The restaurant owner put forward his main defence under the second requirement. In his view, the Orient Express is a historical and cultural phenomenon that existed long before the current owner held the trademark. Moreover, he offered a restaurant, not train journeys, so no one would be confused.

The panelist acknowledged that you are free to refer to something. Anyone running a restaurant inspired by the famous train may say so, as long as it goes no further than necessary. Here, however, the panelist found that it did go too far. The domain name was virtually identical to the trademark, with only "the" added in front. Nothing indicated that this was an independent restaurant with no connection to Orient Express. In addition, the website used the name prominently and even showed an image of a carriage of the Venice Simplon-Orient-Express.

It is also notable that the restaurant owner had already changed the name of his restaurant himself. According to the panelist, this removed the last reason to keep "Orient Express" in the domain name. A restaurant that no longer bears that name has no good reason to use a domain name that does. This also settled the third requirement. By continuing to use the domain name while the restaurant had a different name, the owner created the impression of a connection with Orient Express. That is use in bad faith. Since all three requirements were met, the panelist ruled that the domain name must be transferred to Orient Express.

Are you about to choose a new name or domain name? At de Merkplaats, we first check whether the coast is clear, so you won't be caught off guard by surprises like this. Is someone else using your trademark? Then we make sure you get what you are entitled to, just as Orient Express got its domain name back. Feel free to get in touch. We are happy to think along with you, so your brand stays on the right track.