The Complainant is EasyGroup Limited of London, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Eversheds, LLP, UK.
The Respondent is Domain Administrator, Whois Watchdog of Shanghai, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 13, 2014. On October 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 13, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), 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 October 21, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 10, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 11, 2014.
The Center appointed William R. Towns as the sole panelist in this matter on November 18, 2014. 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. 4. Factual Background
The Complainant, a company incorporated under the UK law, is the owner of a Community trade mark ("CTM") for EASYTRAIN in connection with transportation services, travel documents and coupons, and the provision of food and drinks. The mark was registered on October 21, 2011. The Complainant also holds CTM and UK registrations for EASYGYM covering a number of goods and services, including sporting and cultural events, fitness instruction and training, gymnasium services, training equipment and apparatus, and other health and fitness related products and services. The earliest registration for EASYGYM reflected in the administrative record in this case is a UK registration on April 11, 2003. The first CTM registration for EASYGYM was issued on January 18, 2005. Additionally, the Complainant owns UK registrations for EASYGROUP, issued on October 17, 2003, and EASY.COM, issued on September 28, 2007.
The disputed domain name was registered by the Respondent on April 29, 2009, apparently following the expiry of the Complainant's prior registration of the domain name. The Respondent appears to be a proxy service provider based in China. The identity of the underlying registrant, if any, has not been disclosed. The disputed domain name resolves to a website featuring fitness training and health related content. Prior to the filing of the Complaint, the website also included "sponsored links" to other sites related to fitness training and health. These sponsored links at present appear to have been disabled.
In March 2014 the Complainant's representatives sent a notice letter to the Respondent, demanding transfer of the disputed domain name, to which the Complainant has received no response. The Complainant also attempted without success to contact the Respondent using the telephone number provided in the WhoIs records. The website to which the disputed domain name resolves provides no company or contact details. The Respondent's recently extended the registration of the disputed domain name through April 2015. As the Respondent appears to be a proxy service and the underlying registrant has not been disclosed, it is unclear whether there has recently been a change in ownership of the disputed domain name. 5. Parties' Contentions A. Complainant
The Complainant states that it is a company incorporated in the UK, and the owner of the EASY brand, under which it holds numerous trademarks and grants licenses to other companies around the world. The Complainant notes the EASYJET mark licensed to EasyJet plc, which was launched in 1995 and according to the Complainant now operates over 600 routes in more than 30 countries. The Complainant submits that other well-known brands that it owns include EASYCAR, EASYGYM, and EASYHOTEL, among others.
The Complainant submits that the disputed domain name is identical to its EASYTRAIN mark, disregarding the generic Top-Level Domain ("gTLD") ".com", and confusingly similar to its EASYGYM mark, which the Complainant notes has been registered in relation to fitness, health, exercise and nutrition, sporting and cultural activities.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant avers that the Respondent is not commonly known by the disputed domain name, and maintains that the Respondent is not using the disputed domain name in connection with any offering of goods or services. According to the Complainant, the Respondent instead is using the disputed domain name to host a very small amount of generic information with the primary purpose of enticing Internet users to access sponsored links to out of date online fitness training and health articles. The Complainant asserts that the lack of original content on the Respondent's website makes it evident that the Respondent is trading on the Complainant's marks in order to generate pay-per-click income from sponsored links.
The Complainant further alleges that the Respondent has not made a legitimate noncommercial or other fair use of the disputed domain name. According to the Complainant, the Respondent registered the disputed domain name immediately after the Complainant's registration of the domain name expired in 2009 in order to divert Internet users looking for the Complainant's products and services to the Respondent's website, in order to generate pay-per-click revenue from sponsored links.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that the Respondent's registration of the disputed domain name immediately upon the expiration of the Complainant's registration is compelling evidence that the Respondent knew of the Complainant and was aware of the Complainant's famous EASY brand. The Complainant maintains that it has a very extensive brand profile and a range of trading activities and related trademarks, including the Community Trademark registrations for EASYTRAIN in 2011, and EASYGYM in 2005, with the subsequent launch of fitness services. The Complainant asserts that it is well known for its global travel brand EASYJET, and operates other travel brands such as EASYBUS, EASYCAR and EASYVAN.
According to the Complainant, the Respondent's website has not been updated since January 2014, and the Complainant asserts that the Respondent's passive holding of the disputed domain name since then constitutes bad faith, relying on Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The Complainant maintains there is no evidence of any actual or contemplated good faith use of the disputed domain name, which the Complainant submits reflects the Respondent's awareness of the value of selling, renting or otherwise transferring the disputed domain name to the Complainant or a competitor of the Complainant at an exorbitant price, in addition to pay-per-click revenues generated from sponsored links on the Respondent's website.
The Complainant concludes that the Respondent has intentionally attempted to attract Internet users to the Respondent's website by creating a likelihood of confusion with the Complainant's EASYTRAIN mark, and further suggesting an affiliation with the Complainant's offering of fitness services under the EASYGYM mark. B. Respondent
The Respondent did not reply to the Complainant's contentions 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of "the abusive registration of domain names", also known as "cybersquatting". See Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See also Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is identical to the Complainant's EASYTRAIN mark and confusingly similar to the Complainant's EASYGYM mark, with respect to which the Complainant has demonstrated rights. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement. 1 The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.
Applying this standard, the disputed domain name is identical to the Complainant's EASYTRAIN mark and similar to the Complainant's EASYGYM mark for purposes of paragraph 4(a)(i) of the Policy. Although the gTLDs may in appropriate circumstances be considered when evaluating identity or confusing similarity, gTLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant's mark and the disputed domain name. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel finds that the Complainant has made a prima facie showing. It is undisputed that the Respondent has not been commonly known by the disputed domain name. The Respondent, without the Complainant's authorization or consent, has registered a domain name that is identical to the Complainant's EASYTRAIN mark, which the Respondent has used with a website featuring fitness training and health related content, respecting which the Complainant has registered its EASYGYM mark.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is 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 Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson,WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent's registration and use of the disputed domain name within any of the "safe harbors" of paragraph 4(c) of the Policy.
Based on the record in this proceeding, the Panel considers it highly likely that the Respondent was aware of the Complainant and the Complainant's EASYTRAIN and EASYGYM marks when registering the disputed domain name. In the absence of any formal reply by the Respondent, the Panel concludes that the Respondent registered the disputed domain name in order to trade on the goodwill and reputation of the Complainant's marks through the creation of Internet user confusion. Internet users could easily expect that disputed domain name would be linked to the Complainant's website or another website that is affiliated with, or has the endorsement or sponsorship of, the Complainant. See Levantur, S.A. v. Media Insight,WIPO Case No. D2008-0774.
The record before the Panel does not reflect the Respondent's use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Nor, in the circumstances of this case, does the Panel consider that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers. As noted above, the Respondent has not been authorized to use the Complainant's marks, and the Panel finds that the Respondent has not been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In sum, and absent any reply by the Respondent, there is nothing in the record before the Panel to support a claim by the Respondent of rights or legitimate interests in the disputed domain names.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. While the Panel notes that the trademark EASYTRAIN was registered after the disputed domain name, the Complainant has conducted business in the UK since 1995 using the EASY brand and had registered the trademark EASYGYM in 2003. Accordingly, the Panel concludes that the Respondent was aware of the Complainant and the Complainant's marks when registering the disputed domain name. In the absence of any reply by the Respondent, the Panel considers that the Respondent's primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant's trademark rights through the creation of Internet user confusion. As the Panel earlier noted in section 4 of this decision, prior to the filing of the Complaint the website to which the disputed domain name resolves featured fitness training and health content, including "Sponsored Links" to other sites related to fitness training and health. In light of the foregoing, the record thus reflects that the Respondent has registered and is using the disputed domain name in bad faith. That the Respondent may be passively holding the disputed domain name at this time does not preclude a finding of bad faith registration and use in the circumstances of this case. See Telstra Corporation Limited v. Nuclear Marshmallows, supra.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
William R. Towns
Sole Panelist
Date: December 2, 2014
1 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (hereinafter "WIPO Overview 2.0"), paragraph 1.2.
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