efax.com Fights efax.co.uk
by Drew Cullen
Efax.com has got a big struggle on its hands to win control of the efax.co.uk domain name, following its failure to secure an injunction against a small British company. In court, efax.com argued before Mr. Justice Jonathan Parker that that the name efax.co.uk was confusingly similar to its own name.
This is cybersquatting with a twist: efax.com, a US company offering fax-to-email conversion services has been trading under this name since February 1999, while efax, a UK company owned by businessman Mark Oglesby offering inter alia fax-to-email conversion services, has been trading under its name since 1997.
Mr. Justice Jonathan Parker disagreed with efax.com, finding "considerable force" in Oglesby's submission that the word efax was highly descriptive of the services being provided: "e" being the universal prefix for Internet services and there being universal familiarity with the word "fax" as a shorthand for facsimile. It was likely that efax would be taken to be a fax over the Internet service.
The ruling effectively scuppers efax.com's chances of bulldozing the .co.uk address away from a triumphant Oglesby. He says he never had any intention of passing himself off as efax.com -- a bit unnecessary that, considering he's been trading a year longer than the US interloper. Now he urges settlement -- shorthand for Efax.com for scrapping further legal action and, we assume, stumping up a lot of cash for the domain. Efax.com is in a bit of a pickle: in Britain, it signed up only 17,000 subscribers, 12,000 of which are dormant accounts, it revealed in court.
As of February 7, efax.com claims 50,000 subscribers, a representative said. The company had launched the legal action prior to launching an advertising campaign in Britain. It said today that it has not put any media campaign on ice.