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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Easyjet Airline Company Limited v. Mahmoud Panjehshahi
Case No. D2000-0384
1. The Parties
The Complainant is Easyjet Airline Company Limited, a private company incorporated under the laws of England, having its principal place of business at Easyland, Luton Airport, Luton, Bedfordshire LU2 9LY, England.
The Respondent is Mahmoud Panjehshahi of 3 More Close, Purley, Surrey CR8 2JN, England.
2. The Domain Name and Registrar
The domain name at issue is
and the Registrar is Melbourne IT Ltd doing business as Internet Names Worldwide.
2. Procedural History
The WIPO Arbitration and Mediation Center [the Center] received the Complaint on May 4, 2000, [electronic version] and May 8, 2000, [hard copy]. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], the Rules of Uniform Domain Name Dispute Resolution Policy [the Rules] and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy [the Supplemental Rules]. The Complainant made the required payment to the Center.
The formal date of the commencement of this administrative proceeding is May 16, 2000.
On May 15, 2000, the Center transmitted via email to Melbourne IT Ltd a request for registration verification in connection with this case and on May 16, 2000, Melbourne IT Ltd transmitted via email to the Center, Melbourne IT's verification response confirming that the registrant and administrative contact is Mahmoud Panjehshahi and the contact for technical purposes is Evan Weatherup.
Having verified that the Complainant satisfied the formal requirements of the Policy and the Rules, the Center transmitted on May 16, 2000, to email@example.com and firstname.lastname@example.org the Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by June 4, 2000. On the same day the Center transmitted by fax and by mail copies of the foregoing documents to:
3 More Close
Surrey CR8 2JN
The Response dated June 2, 2000, was received by the Center on June 6, 2000. On June 9, 2000, the Center received Supplementary Submissions from the Complainant and on June 14, 2000, the Center received the Respondent's Response to the Complainant's Supplementary Submissions. The Panel has discretion to admit these Supplementary Submissions from the parties and pursuant to paragraphs 10(a) and (b) of the Rules, the Panel in its discretion rules that both submissions should be admitted. This provides equality of treatment to the parties, it gives the parties a fair opportunity to present their respective cases and, on the facts of this Case, it has not led to any delay in this administrative proceeding.
Having received on June 19, 2000, Mr. David Perkins' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. David Perkins was formally appointed as the Sole Panellist. The Projected Decision Date was July 4, 2000. The Sole Panellist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
Having received the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under paragraph 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Response, the Complainant's Supplementary Submissions, the Respondent's Response to those Supplementary Submissions, the Policy, the Rules and the Supplemental Rules.
4. Factual Background
4.1 The Complainant, Easyjet Airline Company Limited, was incorporated under that name in March 1995 and began trading as a scheduled airline business in October 1995. The Complainant is widely advertised and promoted and is a well known low cost airline in the United Kingdom and Europe. Its turnover for the year to September 30, 1999 was Ј77 million. The Complainant states that it relies on its EASYJET domain names [see, paragraph 4.4 below] to attract business to its website [exhibited as Annex 3 to the Complaint] through which some 60% of its ticket sales are made. It operates some 1,000 flights per week across a network of 28 services serving 18 popular business and leisure destinations in Europe.
The Respondent, Mahmoud Panjehshahi, is a businessman in London who specialises in property investment and Internet ventures. The Respondent claims to be a major backer of gochemist.com, an Internet company which is in the process of raising Ј1.4M with the intention of making an Initial Public Offering [IPO] of its shares in mid 2001.
4.2 The Respondent is the owner of all the shares in St. James's Property Company (UK) Ltd. and 50% shareholder in Haymarket Properties Limited. The Respondent states that he owns shares in 12 companies, four of which are Internet companies. It appears that St. James's Properties (UK) Ltd., a company of which the Respondent is a director, was incorporated on February 8, 2000, [per Annex 8 of the Complaint, a report from .com investigations].
The Complainant's Trade Marks
4.3 The Complainant is the registered proprietor of the following trade marks:
16 & 39
Filed February 3, 1997
Registered October 20, 1998
395 39 526
Filed September 27, 1995
Registered May 7, 1996
95 590 523
Filed October 2, 1995
Registered October 2, 1995
Filed September 29, 1995
Registered July 31, 1997
Filed September 29, 1995
Registered December 9, 1996
16:39: & 42
Filed March 5, 1996
Registered March 5, 1996
Filed October 3, 1995
Registered June 14, 1996
16:39 & 42
Filed April 5, 1995
Registered October 4, 1996
4.4 The Complainant is also registrant of the domain names:
4.5 As stated in paragraph 4.1 above, the Complainant states that some 60% of its ticket sales are sold through its website, which uses the domain name easyjet.com.
4.6 Sale of the domain name in issue
The Complainant states that it sent an email to the Respondent in, inter alia, the following terms:
"We own the web domains www.easyJet.com and www.easyJet.co.uk and have had a few customers mistakenly accessing your site www.xxxxx.com, when attempting to type in our web address.
We would therefore be interested in buying your web domain for Ј1000 sterling plus any transfer costs."
The Respondent denies ever having received that email [Response paragraph 9]. The Panel notes that the email at Annex 7 of the Complaint is not dated, neither does it identify the domain name in issue. The Panel finds that there is no evidence that the Respondent has ever offered to sell the domain name in issue to the Complainant.
Use of the domain name in issue
4.7 The domain name in issue was registered on February 19, 2000. As at May 4, 2000, the domain name was not in use in connection with an active website. It resolved to a temporary holding page maintained by Virtual Internet [Annex 6 to the Complaint].
An investigator's report of April 17, 2000, by .com investigations [Annex 8 to the Complaint] reported:
· that the investigator spoke to the Respondent by telephone;
· that the Respondent told the investigator that he was involved in legitimate Internet businesses, for example gochemist.com;
· that the Respondent was as yet undecided about what business to set up under the domain name in issue; and
· that, if the investigator wished to purchase the domain, the Respondent "… would not put anything in writing … until the last minute in case there were any legal problems."
4.8 The Respondent states that before notice to him of the dispute - here, the Center's Notification of Complaint etc. on May 16, 2000 - he had made demonstrable preparations to use the domain name in issue in connection with a bona fide offering of goods or services. In this connection, the Respondent relies upon:
· An exchange of correspondence in January and February 2000 [before the domain name in issue was registered] with Risk Free (UK) Ltd seeking an estimate for:
"the costs involved in designing the website for the Jet.com or a similar name."
· An exchange of correspondence in February 2000 [again, before the domain name in issue was registered] relating to plans
"to set up a website, which will give the customers the capability of viewing different makes of Aircraft, Boats, Jet Skis and all related parts and necessary leasing packages to go with it.
I am hoping that I will bring on board Nigel Cowen of Triton Capital, who already has the necessary experience in Aircraft Leasing. I have also asked Anthony to give me a quote on the Web Design and Timetable, for its creation."
The reference to "Anthony" is to Risk Free (UK) Ltd.
4.9 The Respondent states that;
· the proposed web site for which the domain name in issue is proposed to be used will carry disclaimers, indicating that it has no connection with the Complainant;
· the Respondent has no intention of selling the domain name in issue to any party; and that
· the goods and services proposed to be offered on the Respondent's website - which include, aircraft - are completely different to the services offered by the Complainant and there is no likelihood that the public would confuse the Respondent's proposed services for those of the Complainant.
5. The Parties' Contentions
(A) The Complainant
The Complainant contends that the Respondent has registered as a domain name a mark which is identical to or confusingly similar to the Complainant's EASYJET mark, that the Respondent has no rights or legitimate interests in respect of that domain name and that the Respondent has registered and is using that domain name in bad faith.
(B) The Respondent
The Respondent admits that the domain name in issue is identical or confusingly similar to the Complainant's EASYJET mark but asserts that it has both rights and a legitimate interest in respect of the domain name in issue and that such domain name was registered and will be used in good faith. For those reasons, the Complaint should be rejected as not meeting the requirements of paragraph 4(a) of the Policy.
6. Discussion and Findings
6.1 The Policy paragraph 4 provides that the Complainant must prove each of the following:
· that the Respondent's domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
· the Respondent has no right or legitimate interests in respect of the domain name; and
· the domain name has been registered and is being used in good faith.
Identical or Confusingly Similar
6.2 The Complainant's EASYJET registered trademarks and its EASYJET and EASYJET prefixed domain names are to all intents and purposes identical to the domain name in issue. This appears to be admitted by the Respondent [Response, paragraph 6]. Whether it is or is not admitted, the Panel finds that the Complaint satisfies the first limb of paragraph 4(a) of the Policy.
Rights or Legitimate Interests
6.3 Paragraph 4(c) of the Policy identifies circumstances which, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate the Respondent's rights or legitimate interest for the purposes of paragraph 4(a)(iii). Those circumstances are that:
i) before any notice to the Respondent of the dispute, the Respondent's use of, or demonstrable preparations to use the domain name or a domain name corresponding to the domain name, in connection with a bona fide offering of goods or services; or
ii) the Respondent (as an individual, business or other organisation) has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
iii) the Respondent is making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert customers or to tarnish the trade mark or service mark in issue.
6.4 Paragraph 4(c)(ii) and (iii) cannot apply since the Respondent is not actually using the domain name in issue in relation to an active website.
6.5 Can the Respondent bring himself within paragraph 4(c)(i)? Given the well-known status of the Complainant's EASYJET mark in the United Kingdom and its growing reputation in Europe generally, the offering of goods or services under or by reference to that mark through the domain name in issue cannot, in the Panel's view, be bona fide. This is the more so, since the Respondent's projected use - headed "The Jet Leasing Business" and "The Internet Venture in Jet related goods" - involves air related services, namely aircraft leasing. Indeed, that would seem from the correspondence exhibited at Annex 5 to the Response to be the primary intended business. Although the Complainant's business is stated to be that of a commercial airline, the specification of its Class 39 UK registered service mark includes "rental and hire of vehicles, boats and aircraft".
6.6 The Rules give the Panel discretion as to how it conducts administrative proceedings in accordance with the Policy and the Rules [Rules, paragraph 10(a)] and enable the Panel to have regard to the principles of law that it deems applicable [Rules, paragraph 15(a)]. Here, both parties are based in the United Kingdom and the Panel considers it appropriate to have regard, inter alia, to principles of English law. In this respect, the Panel has in mind the decision of Lightman J. in the GlaxoWellcome case 1996 FSR 388 and the Court of Appeal in the One in a Million case 1999 FSR1 (C.A.). It is not necessary that the goods and/or services be identical for passing off to be found. [See, for example, the Lego Lemelstrich case 1983 FSR 155 and others].
6.7 Further, although this is not a case of trade mark infringement either, it is material to have regard to the criteria prescribed by the European Court of Justice in its recent decisions. See, for example, the attitude taken by the Court of Justice to a well known mark in Canon .v. MGM (1999) RPC 117 @ para. 18:
"Furthermore, according to the case-law of the Court, the more distinctive the earlier mark the greater the risk of confusion [Sabel, para. 24]. Since protection of a trade mark depends, in accordance with Art. 4(1)(b) of the Directive, on there being a likelihood of confusion, marks with a highly distinctive character, either per se or because of the reputation they possess on the market enjoy broader protection than marks with less distinctive character."
6.8 The Respondent's proposal to use the domain name in issue with a disclaimer is not persuasive nor is the suggestion that a .org domain name will not be associated with a .com domain name where the prefixes are identical. The Complainant's EASYJET mark is well known at least in the United Kingdom and the Respondent must have known of this when in February 2000, he registered the domain name in issue. This is confirmed by the general tenor of the investigator's report of his conversation with the Respondent [Annex 8 to the Complaint]. It is just not credible, in the Panel's opinion, that by registering the domain name in issue the Respondent did not intend to benefit from the reputation of the Complainant in its EASYJET mark. That aircraft leasing should be one of the proposed businesses for the Respondent's web site using the domain name in issue serves to support that opinion.
6.9 The Complainant has not consented to the Respondent's use of the domain name in issue. On the evidence before it and having regard to applicable principles of law, the Panel rules that the Respondent has not demonstrated any right to or legitimate interest in the domain in issue and that, consequently, the Complaint satisfies the second limb of paragraph 4a of the Policy.
6.10 Paragraph 4(a)(iii) of the Policy requires that the Respondent's domain name must both have been registered and be being used in bad faith. Both requirements must be met.
Paragraph 4(b) of the Policy sets out circumstances which, if found by the Panel to be present, "… shall be evidence of the registration and use of the domain name in bad faith." The Policy goes on to state that those circumstances are not exhaustive of the circumstances indicating registration and use in bad faith.
Registered in Bad Faith
6.11 The Respondent registered the domain name in February 2000 by which time the Complainant had been trading under the EASYJET name and mark for almost four and a half years and had established itself as a well-known operator in the budget airline market. Had the Respondent attempted to register either easyjet.com or easyjet.co.uk, he would have been blocked by the existing domain names registered by the Complainant. Similarly, if the Respondent applies to register EASYJET for airline/aircraft related service in Class 39, he is likely, in the Panel's opinion, to be blocked by the existing registrations held by the Complainant.
Bad faith on the part of the Respondent is to be inferred from registering a domain name which is, in material respects, identical to the Complainant's EASYJET service mark and earlier registered domain name. Paragraph 2 of the Policy provides that by applying to register a domain name the applicant is representing and warranting that to his knowledge the registration of the domain name will not infringe upon or otherwise violate the rights of any third party. In the light of the Panel's findings (above), it holds the Respondent to be in breach of that representation and, consequently, that the Complainant succeeds in establishing the first part of the requirement of paragraph 4(a)(iii) of the Policy.
Used in Bad Faith
6.12 The domain name in issue is not being used in relation to an active website. But, the concept of a domain name being used in bad faith is not limited to positive action: inaction is within the concept [see, Decision D2000-0003].
Although the Panel finds that the Respondent has not attempted to sell the domain name in issue to the Complainant for consideration in excess of its documented out-of-pocket costs directly related to that domain name [see, paragraph 4.6 above] and although the Respondent proposes to use a disclaimer, neither will avoid use of the domain name in violation of applicable laws. In other words, violation of the Complainant's prior rights in the name and mark EASYJET. The Panel finds that the Complainant also succeeds in establishing the second part of the requirement of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, the Panel decides that the Complainant has proved each of the three elements of paragraph 4(a) of the Policy. Accordingly, the Panel requires that the registration of the domain name easyjet.org be transferred to the Complainant.
Dated: June 28, 2000