WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Easygroup IP Licensing Limited v. N. Hilton, E
Case No.�D2005-0935
1. The Parties
The Complainant is Easygroup IP Licensing Limited, London, United�Kingdom of Great Britain and Northern Ireland, represented by DLA�Piper�Rudnick�Gray Cary�UK�LLP, United�Kingdom of Great�Britain and Northern�Ireland.
The Respondent is N. Hilton, EasyC, Riverside, United�States�of�America.
2. The Domain Names and Registrars
The disputed domain name is registered with Direct�Information�Pvt Ltd. dba D.
The disputed domain name is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on August�31,�2005. On September�1,�2005, the Center transmitted by email to Direct Information Pvt Ltd. dba D and to Tucows a request for registrar verification in connection with the domain names at issue. On September�3,�2005, Direct Information Pvt Ltd. dba D transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and confirming the contact details for the administrative, billing, and technical contact as set out in the Complaint.
On September�2,�2005, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and confirming the contact details for the administrative, billing, and technical contact as set out in the Complaint.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the�“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the�“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the�“Supplemental�Rules”).
In accordance with the Rules, paragraphs�2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September�7,�2005. In accordance with the Rules, paragraph�5(a), the due date for Response was September�27,�2005. The Response was filed with the Center in electronic form on September�7,�2005, and in hard copy on September�27,�2005.
The Center appointed Warwick�A.�Rothnie as the Sole Panelist in this matter on October�6,�2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph�7.
On October�14,�2005, the Complainant sought to file further material which it claimed had not previously been available to it. The Respondent objected to inclusion of the material and sought to insist on resolution of the dispute in accordance with the usual timetable.
The Center initially took this as an application to include additional domain names in the dispute. The Center subsequently clarified, however, that this was not the Complainant’s intention and the material was being submitted only in support of the dispute over the two domain names, and . These administrative proceedings are intended to be efficient determinations of disputes on the papers and it is important that they do not become bogged down. In the event, it is possible to resolve the dispute without reference to the Complainant’s additional material and the Panel has not viewed the late, additional material in reaching this decision.
In the meantime, on October�28,�2005, the Center received a further submission by email dated October�27,�2005, from the Respondent arguing additional reasons why the Complaint should be rejected. Two matters were sought to be raised: first, that the Complainant’s registered trademark is for words and a device, not just words; and secondly, that the Complainant’s registered trademark was not published until six months after its filing date. These matters are in any event addressed below.
4. Factual Background
According to the Complaint, the Complainant is a member of the easyGroup companies and since December�5,�2000, has acted as the central holder and administrator of the intellectual property rights held by that group.
The Complaint claims that the first easyGroup company was easyJet Airline Company Limited which was founded and commenced operations in 1995. As its name suggests, that company has operated a commercial passenger airline since that date. Since then, the easyGroup has expanded its commercial activities to include a wide range of activities including easyInternetcafe, easyCar, easyMoney, easyCinema, easyBus, easyHotel, easyJobs, easyPizza, easyMusic, easyCruise and easyWatch.
As can be seen, all have adopted the corporate branding format of the prefix “easy” followed by a second word which is capitalized.
The Complainant’s website at “” was launched in November�2000 and acts as a portal to the companies and businesses operated by the group. It also provides a free, web-based email service. The Complaint claims that the website receives over 338,000 visitors per week.
From June�1999 to October�2001, easyInternetcaf� operated as easyEverything. The�Complaint states that it now has 69 stores operating in 9 countries, including the USA. The Complaint also claims that over 58�million people have used its easyInternetcaf�s worldwide since their launch.
The Complainant registered the domain names and on June�23,�2004. It applied to register a UK trademark for “ centre” on August�5,�2004. That application has now been registered with effect from August�5,�2004: Trademark No.�2369952, for a range of business information services and many other services in International class 35. The words “easy”, “.com” and “centre” are arranged vertically, one under the other, with the first two words being enclosed in an ellipse. The evidence of use included in the Annexes to the Complaint, however, shows the words arranged vertically, but with the words “” enclosed in an oblong having rounded corners. In use, as shown on the Complainant’s websites and in the Annexures, the trademark is depicted in white on an orange background.
According to the whois searches included in Annex�A to the Complaint, the Respondent registered the two domain names on September�21,�2004.
The Complainant announced its intention to operate “ centres” at its easyInternetcaf�s in October�2004, but the first such centre did not open until June�2005, in London. The Complainant also registered on August�3,�2005.
The domain names resolve to an active website or websites. While the URLs are different, the content of the websites (as viewed during the preparation of this�decision) appears to be the same. There appears to have been some change in the content of the website(s) over the course of its life.
- the words Easy-Centre are depicted in orange at the top center of the page;
- the example page submitted in the Complaint included what are described as rotating advertisements for bmibaby, East Midlands Quality Airline, , virgin mobile and ;
- on October�14,�2005, the advertisements featured included e – , easiest baby, Speak Easy Centre, Easiest Centre, EasyRent, e-easyfind, EasyVideo, RyanAir, Easier Center, EasyChange, EasyCoke, easyfones, EasyMail, SleepEasy Centre, EasyTrain, The Original EasyPizza, EasyLife, EasyGroup Holdings, #easynet and Monarch, The UK’s Quality low cost Carrier.
A banner appears in the browser menu bar stating “Easy-centre – For everything easy, easy wash, easy rent, easy …ge, easy jet, easy airlines, ryan air, monach, bbc, cnn, etc”.
5. Discussion and Findings
Under paragraph�4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
The Panel considers each of these in turn below.
A. Identical or Confusingly Similar
There are two parts to this inquiry: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to those rights.
The Respondent denies that the Complainant has any trademark rights. In support of this denial, the Respondent relies on various uses of Easy Centre by third parties, unrelated to both the Complainant and the Respondent. These uses include The Easy Center at Ottawa Hospital, an Easy Centre operated since 1998 by ASP Medical in Australia, a Speak Easy Centre used by Zeal in India and the use in varying contexts by many companies as revealed by MSN, Yahoo and Google searches.
The existence of these uses, however, does not preclude the Complainant’s claim to trademark rights. As already noted, the Complainant has established ownership of the registered trademark in the United Kingdom, No.�2369952, for EASY.COM CENTRE and device.
The Complainant also advances its claim based on common law rights arising from the use of “easy” in conjunction with a range of other businesses such easyInternetcaf�, easyCar and a number of others and from its use and reputation in . The Ottawa Hospital and ASP Medical uses relied on by the Respondent are in quite different fields to those the Complainant operates in. The link to the Speak Easy Centre by Zeal provided by the Respondent (“”) did not resolve to an active web page when visited by the Panelist. Nor did the URL amended to include “www.”. Nor did the link on the Respondent’s website using the domain names in dispute.
The Respondent also relies on the rejection of the Complainant’s claims in EasyGroup (UK) Ltd v. E Limited, WIPO Case No.�D2000-0711, and Easygroup (UK) Limited, Easyjet Airline Company Limited, Easyeverything Limited, Easy Rentacar (UK) Limited v. Rencross Technology Limited/Michael Kong, WIPO Case No.�D2000-0950 which concerned disputes about and similar names and EasyGroup (UK) Ltd v. Rencross Technology Limited WIPO Case No.�D2000-0950 (, , and ). In the first of those cases, the learned panelist stated:
“The Respondent has drawn attention to the existence of so many ‘easy-’ prefixed domain names and corporate names in use in the UK that the Panel is not persuaded that the Complainant has a monopoly in such names. ‘Jet’, ‘Everything’ and ‘Rentacar’ are manifestly different from ‘Material(s)’. In the result the Panel finds that none of the Domain Names is confusingly similar to any of the ‘easy-’ prefixed names used by the Complainant, in which the Complainant indubitably has rights.
The Complainant relies upon the announced plans to trade under the name ‘’. The Panel is not persuaded that the announcements (or any preparatory work behind those announcements) give rise to any relevant rights. Even if they did, the Panel takes the view that no trader could monopolise the use of that word as part of a trading style or domain name without very impressive evidence of long and exclusive use. No such evidence was put before the Panel.”
Easygroup (UK) Limited, Easyjet Airline Company Limited, Easyeverything Limited, Easy Rentacar (UK) Limited v. Rencross Technology Limited/Michael Kong, WIPO Case No.�D2000-0950, was decided for essentially the same reasons.
All the points made by the learned panelist are, with respect, apposite today. However, that decision was made in 2000 when the Complainant’s “” website/portal was either still in contemplation or the early stages of use. In�2005, there has been almost five years of use, evidence of over 338,000 visitors each week to the website portal at “” and more than 58 million visitors to the Complainant’s easyInternetcaf�s. This is very significant use and puts the Complainant’s claims on quite a different footing. Accordingly, the Panel finds that the Complainant has proved common law rights in , easyInternetcaf� and a range of other businesses identified on its website.
The second part of this inquiry is whether the domain names are confusingly similar to the trademark rights proved by the Complainant. This requires a comparison of the domain names. Considerations about the scope of the rights (whether in terms of goods or services or geography) are not relevant at this stage although they can be relevant to the inquiry under the other limbs of the test.
The domain names differ from the verbal component of the Complainant’s registered trademark, primarily in the swapping of the order of “centre” and the gTLD and, in the case of the second domain name, the substitution of “.info” for “.com”. Confusing similarity is not just a side by side comparison, but must also take into account the imperfections of recollection which may arise when someone who is aware of the trademark encounters the domain name independently of the trademark. The registered trademark does, of course, have a relatively simple device component. However, it seems likely that the public would remember the trademark by the verbal element. Accordingly, the Panel has little doubt that many users of the Internet familiar with the Complainant’s registered trademark would mistakenly think that the domain names were associated with the Complainant.
EasyCentre is also a natural extension of the branding pattern adopted by the Complainant so that the Panel also considers it highly likely that internet users familiar with the Complainant’s “” portal and its range of other business would think that or was an extension of the Complainant’s business.
Annex A to the Response contains the Respondent’s summaries of three decisions by the UK Patents Office in which the Respondent states that the UK Patents Office concluded that the Complainant did not have a monopoly in the word ‘easy’. At the outset, as the Panel notes above, the issues in a trademark opposition are rather different to those arising under the Policy. In particular, in the Office decisions relied on by the Respondent, the issue was whether the applicants’ particular respective trademarks were identical or similar to the trademark rights relied on by the Complainant as opponent and involve the familiar trademark law comparison including reference to the goods and/or services in issue.
The Respondent’s summaries do not give details of the trademarks in question in those disputes or identify the relevant priority dates in any cases. The Response did include URLs which provided links to online texts of the decisions.
In the course of reviewing the UK Trademarks Registry decisions identified by the Respondent, it became apparent that evidence on behalf of the Complainant (the opponent in those proceedings) was given by an individual with the same surname as the Panel. So far as the Panel is aware, we are not related. The Panel does not know the individual concerned and has never met him.
The first decision relied on by the Respondent concerned the Complainant’s opposition to the registration of EASYCOACH / EASY COACH. The application was filed on June�21,�2000, and the grounds of the opposition fell to be determined on that date. On that basis alone, the decision is distinguishable from the present case for the same reasons as outlined in respect of EasyGroup (UK) Ltd v. E Limited, WIPO Case No.�D2000-0711 and Easygroup (UK) Limited, Easyjet Airline Company Limited, Easyeverything Limited, Easy Rentacar (UK) Limited v. Rencross Technology Limited/Michael Kong, WIPO Case No.�D2000-0950 above.
In the second decision, the trademarks opposed by the Complainant in this matter were EASYBROKER.CO.UK and EASYBROKER.COM, which were applied for on January�11,�2001. As with the first decision, this decision is also distinguishable on the basis of the very substantial reputation now propounded some years later by the Complainant.
The third decision was an opposition to the registration of the trademark with a strong visual device element. This application was filed on September�15,�2001.
In each decision, the decision maker essentially found that, on a global appreciation, the respective marks were not confusing as to trade origin having regard to the characteristics of the marks and the goods and services concerned. Those holdings in relation to those specific marks in relation to the particular goods and services in question are not determinative of the issues under the Policy particularly as, the use and reputation aspects of the Complainant’s marks, especially , are of a quite different order now as already noted above in relation to EasyGroup (UK) Ltd v. E Limited, WIPO Case No.�D2000-0711 and Easygroup (UK) Limited, Easyjet Airline Company Limited, Easyeverything Limited, Easy Rentacar (UK) Limited v. Rencross Technology Limited/Michael Kong, WIPO Case No.�D2000-0950.
The Respondent also seeks to analogise his case to EasyGroup IP Licensing Ltd v. The Carphone Warehouse Ltd WIPO Case No.�D2005-0477, concerning the domain name . In that case, the learned panelist found:
“However, that leaves the question of whether there is in fact confusing similarity. There can be little doubt that the trademark EASYMOBILE and the Domain Name are similar – they are almost phonetically identical and are capable of conveying the same conceptual meaning. But this Panel does not find that they are ‘confusingly similar’. They do not look visually similar and, given the strength and recognition of the EASY brand, not least the fact that the Complainant never varies the spelling of the ever present prefix EASY, it is unlikely that a user would associate a Domain Name beginning with EZEE (as opposed to EASY) with the Complainant’s mark or family of marks. It should also be noted that of all the possible misspellings of EASYMOBILE, a user is unlikely to mistype EZEEMOBILE. In all the circumstances, this Panel decides that the Domain Name is not confusingly similar to the trademark EASYMOBILE.”
The domain names in this dispute are quite different to the domain name in that case and have a much closer resemblance than that domain name to the Complainant’s trademark rights.
The confusing similarity of the domain names to the Complainant’s trademark rights is reinforced by the Respondent’s complaint that he was forced to increase the bandwidth for his websites from 512Kb/s to 2Mb/s and to upgrade his servers to handle the increased traffic following the launch of the Complainant’s centres in August�2005.
Accordingly, the Panel finds that the domain names are confusingly similar to the Complainant’s trademark rights.
B. Rights or Legitimate Interests
The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name.
Paragraph�4(c) sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The instances are not an exhaustive enumeration of rights or legitimate interests, they are illustrations only.
In view of the difficulty in disproving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor and then an evidential burden shifts to the Respondent to rebut that prima facie case.
The Complainant has not authorised or licensed the Respondent to use the domain names. Nor are the domain names derived from the Respondent’s name. The Respondent was not carrying on business as Easy Centre or Easy-Centre prior to registering the domain names.
The Respondent does not dispute these matters. The Response advances two arguments.
First, in Annex B, the Response includes evidence that and were registered before 2004. The evidence, however, is that the two registrations expired on July�18,�2004 and then the Respondent registered them. The Respondent does not advance any claim that he acquired the rights to the earlier registrations from the previous registrant(s). The earlier registrations are not relevant to this issue, therefore, as they are not the Respondent’s registrations – he registered them on July�21,�2004, the earlier registrations having expired. Whether or not the previous registrant(s) had rights or legitimate interests (or, for that matter, could have been objected to as registered and used in bad faith) is not relevant under this inquiry: the question is whether or not the Respondent had rights or legitimate interests.
Secondly, the Respondent’s position is that he registered the domain names before the Complainant acquired trademark rights or started using centre. The Response also takes the position that no licence or permission is required for his use of the domain names either generally or in the United States in particular.
The Respondent does not dispute the accuracy of the whois information which states that the domain names were registered on September�21,�2004. The rights in the registered trademark, however, date from August�5,�2004: Trademarks Act 1994 (UK) ss 9(3) and 40(3). In addition, the Respondent’s position is further undermined by the common law rights associated with and the other “easy” formats.
There is some suggestion in the materials submitted by the Complainant and the Respondent that the Respondent has some sort of grievance with either the easyGroup or its founder. This does not support a finding of legitimate non-commercial or fair use in this case, however, as the domain names do not resolve to a “comments” type website where legitimate points of view or grievance are being aired. On the contrary, the websites actively promote a range of commercial enterprises which, in the materials submitted with the Complaint, heavily promote a number of the Complainant’s competitors in the United Kingdom. The content of the website has changed, as noted above, since the Complaint was notified but that cannot be allowed to obscure the nature of the use being made by the sites previously.
The Respondent contends that he does not derive revenues from the service provided from his websites and so, presumably, contends that they are legitimate non-commercial use. Redirection of traffic to websites of trade competitors of complainant, even if fees are not generated does not seem to be the type of non-commercial use contemplated by this ground. Moreoever, there is in evidence a voluminous exchange of correspondence between the parties, it would appear at the instigation of the Respondent, since at least July�1,�2004:
For example, on July�1,�2004 Nicky Hilton sent an email to the Complainant:
“Subject: Brand thieves
Are you aware of the web site:-
?
I searched on the web and found their web site. I must admit I was a little concerned with the information displayed there.
Is it true that Easyjet has lost so much share value, and ships are used to smuggle drugs?
As a regular traveller, I would appreciate a rapid response.”
Also on that date, Nicky Hilton sent an email to the EasyGroup’s founder:
“Subject: Re: Re Stelmar
I am an interested party.
I and a group of friends have a vested interest in various companies and we wish to expose specific details and inform anyone who cares to listen to what we have to say.
We own shares in some companies you either own, or were the founder and we are not happy with the continued loss of value.
As a means of gaining a forum for discussion, we have purchased various Internet Web Address’s, with the word ‘easy’ within the domain name, and we plan to publish and expose details in the coming weeks.”
Also on that date, Nicky Hilton sent an email to EasyGroup’s founder:
“Subject: & brand to launch 1st�August�2004
On the 1st of August 2004, our Drinks company, easycola will launch, and we will be proving (sic) in-flight refreshments FREE of charge on various leading airlines.
The easycola brand has already been registered and we have already started the production run for 100,000 tins of bright Orange cola. Each tin will carry the ‘easycola’ trademark.
The tins will clearly state that we are no way (sic) associated with the’Easy’Group of companies.
As we have registed (sic) the companies in the United States, you cannot attempt to stop our operation, as the UK’s ‘PASSING OFF’ law does not apply to free enterprise.
As your ‘easy’ brand does not sell ‘Cola’ or other ‘soft drinks’ we are not attempting to ‘STEAL CUSTOMERS’ from the easy group of companies.
It’s been a pleasure having these email conversations with you, but I always prefer talking face face (sic) or on the telephone. ….”
On July�26,�2004, Nicky Hilton emailed the founder of the EasyGroup to advise:
“Dear Sir or Madam
We are launching our new soft drink EasyCoke on the 1st�of�October�2004 and have entered into agreements with various airlines to sell our product on their flights.
We write to ask if you are interested in selling our beverage on your flights?
Our EasyCoke soft drink is available for US$0.12 per can (150ml), when purchasing quantities in excess of 40,000 cans, and we believe this is an exceptional offer. ….”
On October�14,�2004, N Hilton emailed the founder of the EasyGroup to advise:
“I note that a number of ‘easy*.com’ domains expired in the last 48 hours and your ‘Technical Expert’ has either forgotton (sic) to re-register then, or you don’t want them.
We have registered a number of expired ‘easy*.com’ domains this afternoon.
When are you going to set a date for our meeting???????????????????????????”
The correspondence – of which these are only examples – gives the lie to any suggestion that the Respondent was unaware of the Complainant before registering the domain names. There is also a very strong commercial or trading character to the assertions made and, as already noted, the websites which the domain names resolve to are not limited to complaints about the management or operations of the easyGroup. On the contrary, there is no discussion of such matters.
As in the case of redirection of visitors to his websites to competitors of the Complainant, the Respondent initially claimed he intended giving away his “easyCola” product for free on airline flights. As the correspondence developed, however, that plan changed to, or was revealed as one of, sales for financial gain, assuming that in fact the plan to make and sell orange cola, whether or not under a “Coke” or “cola” brand had substance.
All of these considerations indicate that the facts of this dispute are quite different to those in Manga Films S.L. v. Name Administration Inc. WIPO Case No.�D2005-0730.
In light of these considerations, therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the domain names and the Complainant has established the second limb under the Policy.
C. Registered and Used in Bad Faith
The third requirement that the Complainant must demonstrate to succeed is that the domain name has been registered and used in bad faith. In connection with this factor, paragraph�4(b) of the Policy provides:
b. Evidence of Registration and Use in Bad Faith.
For the purposes of paragraph�4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
These are examples of “bad faith” only and not an exhaustive listing as they are listed “without limitation”.
On this aspect, the Complainant relies on its contention that the Respondent knew, or should have known, of the Complainant’s registration and use of its trademark, the redirection of visitors to the websites to which the domain names resolve to competitors of the Complainant, references to the Complainant’s trademarks in the source code for those websites, an offer to sell the domain names to the Complainant for US$15,000 made on July�28,�2005, and the provision of false or fictitious details for administrative and other contacts.
The Respondent denies any intention of trading on the Complainant’s trademark rights or goodwill and points to being known by the domain names prior to the opening of the Complainant’s first centre.
As already discussed, many of the Respondent’s arguments are predicated on the mistaken position that he was using the domain names before the Complainant had acquired relevant trademark rights. It is also very clear, as indicated in the correspondence referred to above, that the Respondent was well aware of the Complainant’s business activities and branding strategy before he registered the domain names.
The Respondent does not otherwise seek to justify the heavy usage of the Complainant’s names and trademarks on the Respondent’s websites in, for example, the source code or meta tags other than to point to the many other businesses it links to from its site. Many of these, however, are competitors of the Complainant. These considerations and the voluminous correspondence between the parties prior to the filing of the Complaint are inconsistent with the claim that there was no intention to trade on the Complainant’s trademarks and goodwill or otherwise obstruct its business activities. The registration and use of the domain names in this fashion clearly falls within the requirements of bad faith under the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs�4(i) of the Policy and 15�of the Rules, the Panel orders that the domain names, and , be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Dated: October�31,�2005
Full & Egal Universal Law Academy