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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

EasyGroup IP Licensing Limited v. Philip Thornton

Case No. D2004-0826

 

1. The Parties

The Complainant is EasyGroup IP Licensing Limited, The Rotunda, London, United Kingdom of Great Britain and Northern Ireland, represented by DLA Solicitors, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Philip Thornton, Auckland, New Zealand.

 

2. The Domain Name and Registrar

The disputed domain name <eazyjet.com> is registered with Korea Information Certificate Authority Inc. d/b/a DomainCa.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2004. On October 11, 2004, the Center transmitted by email to Korea Information Certificate Authority Inc. d/b/a DomainCa.com a request for registrar verification in connection with the domain name at issue. On October 12, 2004, Korea Information Certificate Authority Inc. d/b/a DomainCa.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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 October 26, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was November 15, 2004. The Response was filed with the Center on November 8, 2004.

The Center appointed Knud Wallberg as the Sole Panelist in this matter on November 22, 2004. 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.

The registration agreement is in Korean, but since both parties are knowledgeable in the English language and are based in English speaking countries, since they have communicated in English prior to the filing of this complaint, and since Respondent has not objected to continue the proceedings in English, the Panel uses its discretion under Rules Paragraph 11(a) to decide that the language of the proceedings shall be English.

 

4. Factual Background

The Complainant

The Complainant is one of a number of EasyGroup companies which share the same ownership, business ethos and branding style and identity. The first EasyGroup company was founded in 1995, as EasyJet Airline Company Limited. This company has been an operator of a commercial passenger airline since 1995, and trades under and by reference to the trademark EASYJET.

By an agreement dated December 5, 2000, EasyJet Airline Company Limited assigned all its trademarks including registered trademarks and applications for registered trademarks to the Complainant. On this date, the Complainant granted EasyJet Airline Company Limited an exclusive licence to use the trademark EASYJET. Since December 5, 2000, the Complainant has acted as the central holder and administrator of all the intellectual property rights owned by the EasyGroup of companies.

The Complainant has used, registered or applied to register the mark EASYJET in many countries around the world. In particular the Complainant is the proprietor of trademark registrations for EASYJET in 51 countries. The trademark registrations are predominantly concerned with the provision of air travel and transportation and related travel goods and services.

The Complainant has registered and uses various domain names which incorporate its trademarks including <easyjet.net>, <easyjet.co.uk>, <easyjet.com>, <easyjet.plc.uk>, <easyjet.org.uk>, <easyjet.info>, <easyjet.org> and operates its airline business online by means of websites at “www.easyjet.com” and “www.easyjet.co.uk”. The Complainant has taken the precaution of registering more than 1774 domain names in total relating to EasyJet’s business.

 

5. Parties’ Contentions

A. Complainant

1. The domain name is identical or confusingly similar to the trademarks in which the Complainant has rights

The only difference between the Respondent’s domain name and the Complainant’s EASYJET trademarks is the substitution of the letter “s” with “z”. However this difference does not conceal the fact that the Respondent’s domain name and the Complainant’s EASYJET trademarks are phonetically identical.

The Panel is referred to Pfizer Inc v. Phizer’s Antiques and Robert Phizer, WIPO Case No. D2002-0410 to Expedia Inc v. European Travel Network, WIPO Case No. D2000-0137

Therefore, the domain name <eazyjet.com> is confusingly similar to the Complainant’s EASYJET trademark. Accordingly the provisions of Paragraph 4(a)(i) of the Policy are satisfied.

2. The Respondent has no legitimate interests in the domain name

The Complainant does not believe that the Respondent can demonstrate any circumstances that would evidence rights to and legitimate interests in the domain name for the purpose of Paragraph 4(c) of the Policy.

It is submitted that the domain name cannot be used by the Respondent in connection with a bona fide offering of goods or services in view of the Complainant and the Complainant’s trademarks (Paragraph 4(c)(i) of the Policy). The domain name could not have been chosen for any reason other than its association with the Complainant’s trademarks and the Respondent must have been aware of the Complainant at the time of registration of the domain name.

Confirmation of the reputation of the Complainant and the EASYJET mark may be found from previous WIPO Decisions, such as EasyGroup IP Licensing Limited v. Amjad Kausar WIPO Case No. D2003-0012 and Easyjet Airline Company Limited v. Andrew Steggles WIPO Case No. D2000-0024.

The Respondent’s website does not reveal any use of the name eazyjet and the Respondent has not been commonly known by the domain name <eazyjet.com> (Paragraph 4(c)(ii) of the Policy).

Furthermore, in view of the fame of the Complainant’s EASYJET mark the Respondent cannot make a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark (Paragraph 4(c)(iii) of the Policy).

The administrative contact stated in his email correspondence with the Complainant that “we would consider selling the domain name eazyjet.com at a fair market price”.

In email correspondence the administrative, technical and billing contact for the domain name also stated that “we were attracted to this domain name as it is catchy, memorable, easy to spell, a dot com and it relates well to the travel industry”.

Accordingly the grounds set out in Paragraph 4(c) of the Policy are satisfied.

3. The domain names have been registered and are being used in bad faith

The Complainant submits that the Respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant who is the owner of the well-known EASYJET trademark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain names (Paragraph 4(b)(i) of the Policy).

As stated in Paragraph 37 above, the administrative contact stated in his email correspondence with the Complainant that “we would consider selling the domain name <eazyjet.com> at a fair market price”. In addition it was stated that “we would rather that you made a reasonable offer, in confidence, taking into account the traffic level that the site attracts, recent domain name sales and the potential cost to EasyGroup of any legal action”. Although no specific amount of money was asked for the domain name at issue in this email, the purpose of the email is apparently to offer the domain name for a consideration which exceeds the out-of-pocket registration costs. The Panel is referred to Sonera Ojy and Telia AB v. Daungsoo Ghim, WIPO Case No. D2002-0403.

The commercial impression conveyed to Internet users by the webpages previously used by the Respondent is that the Respondent’s services were sponsored, endorsed or affiliated with the Complainant. Accordingly, the Respondent’s domain name suggests a false sense of origin or sponsorship for any associated products, goods or services and was undoubtedly chosen by the Respondent in an effort to free-ride off the goodwill associated with the EASYJET marks, in which the Complainant enjoys exclusive rights. It is of note that the Respondent registered the domain name many years after the establishment of substantial goodwill in the EASYJET trademark and after the registrations of the EASYJET trademarks.

If the Complainant’s mark is distinctive, as is the case with the EASYJET mark, bad faith is found if it is unlikely that the respondent would have selected the domain name without knowing of this reputation, cf. Veuve Cliquot Ponsardin, Maison Fondйe en 1772 v. The Polygenix Group Co. WIPO Case No. D2000-0163 and Harrods Limited v. Walter Wieczorek, WIPO Case No. DTV2001-0024.

Paragraph 4(b) of the Policy sets out a non-exclusive list of factors that evidence bad faith. Previous Panel decisions have explicitly held that bad faith is not limited to the factors set out in Paragraph 4(b) of the Policy. The address details given for the Respondent are either incomplete or inaccurate and the Complainant is unable to send any correspondence to the Respondent directly, instead having to rely on the details given for the administrative contact. Submitting incomplete WHOIS information is a further indication of the Respondent’s bad faith in registering the domain name. Reference is made to series of decision under the UDRP to that effect.

The Complainant considers that the Respondent has both registered and used the domain names in bad faith. The Complainant also considers that the Respondent has no rights or legitimate interests in the domain names, which are confusingly similar to trademarks in which the Complainant has rights.

B. Respondent

The Respondent contests the allegations and arguments of the Complainant. The Respondent thus claims that

- no bad faith was involved with the registration of <eazyjet.com>. He was not aware of EasyJet at the time of registration and therefore the domain name was not registered in order to prevent the Complainant from using the domain name;

- no bad faith was involved with the operation of the “www.eazyjet.com” website since he did not attempt to pass off the website as being associated with any website operated by the Complainant;

- Respondent did not direct users of the <eazyjet.com> to any company that operated in opposition the Complainant;

- Respondent did not attempt to sell the domain name <eazyjet.com> to the Complainant for a high price;

- Respondent has never been involved in any previous domain name disputes and therefore has not been engaged in “a pattern of such conduct”.

Also the Respondent requests the panel to consider a finding of reverse domain name hijacking.

1. Background and further arguments of the Respondent

The domain name <eazyjet.com> was previously registered to another owner. The previous registrant decided not to continue with the registration and let the registration lapse. As the domain name <eazyjet.com> was freely available to be registered by any interested party, Respondent exercised the option to register it on March 30, 2004.

If the Complainant was concerned about this domain name they also had the opportunity to register it at this time, when it was available to be registered on the open market by any party. By taking administrative action against other domain name holders prior to March 30, 2004, the Complainant has already demonstrated that they have a strong desire to own and control a large number of domain names. The Complainant states that they have registered 1774 domain names so they are obviously very familiar with the domain name registration process and therefore they should have been aware that the registration for the domain name <eazyjet.com> was due to expire. As the Complainant missed out on registering <eazyjet.com> when it was freely available, Respondent believe that they are now attempting a reverse domain name hijacking.

2. Whether the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

Respondent notes that while he has not extensively searched worldwide for any trademarks including the word “eazyjet” there are no trademarks registered for the word “eazyjet” in the United Kingdom, New Zealand or in the United States of America.

3. Whether the Respondent has rights or legitimate interests in respect of the domain name

There has been no bad faith involved with the operation of the website “www.eazyjet.com”. Respondent has not attempted to attract Internet users to the website for commercial gain or used the domain name to tarnish the trademarks of the Complainant. The website located at the “www.eazyjet.com” was a single page, free web directory consisting of over 180 links, separated into different categories, including Travel, Finance, Health, Home, Business, Computers, Education, Legal, Insurance, Marketing, Education etc. As the domain name <eazyjet.com> contained the word “jet” it was a reasonable decision to highlight air travel related links. The Complainant has omitted to disclose is that all of these links, when clicked on, transferred the user to a page of Internet search engine results for the various terms in the link text e.g. the link “cheap air ticket” took users to an Internet search results page containing results of an Internet search using the term “cheap air ticket”. The Complainant also specifically highlighted use of the search term “Cheap Air Ticket Europe”. This was a single link out of 181 different links, and the theme of the page was not targeting air travel in Europe. There were also links for air travel in different parts of the world, including  “Air Cheap Japan Ticket “, “Cheap Air Ticket to India”, “Cheap Air Ticket Canada”, “Cheap Las Vegas Air Ticket”, all destinations that are not served by EasyJet. Respondent did not pass any user of the “eazyjet.com” website to any company that operated in competition to EasyJet or EasyGroup.

4. Whether the domain name has been registered and is being used in bad faith

There was no bad faith involved with the registration of <eazyjet.com>, as Respondent was not aware at the time the domain name was registered that an airline named EasyJet operated in Europe. Respondent lives in New Zealand and EasyJet do not operate in New Zealand, Australia or the Asia-Pacific region.

Respondent did not register the domain name for the purpose of selling it to EasyGroup. At the time he registered the domain name he was not aware of the existence of EasyJet or EasyGroup. The Complainant has not provided any evidence whatsoever of the allegation made in Paragraph 40 that “the Respondent has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant who is the owner of the well-known EASYJET trademark or to a competitor of the Complainant, for valuable consideration…”.

Respondent states that the domain name was only offered for sale after having received a “threatening” email from Complainant, indicating that EasyGroup were possibly going to pursue legal claims for damages. It was only at this point, in response to possible legal action and significant costs, that Respondent decided that an amicable solution was to allow the Complainant to purchase the domain name <eazyjet.com> and he offered it for sale in an attempt to avoid any conflict. Respondent did not ask for a specific price for the domain name but indicated that he would accept an offer at a fair market price.

EasyGroup and EasyJet are not globally recognized trademarks such as Xerox or Coca-Cola, and the Complainants argument that “the domain name in question is so obviously connected with the Complainant and its services that their very use by someone with no connection with the Complainant suggests ‘opportunistic bad faith’“ is not valid.

When Respondent was made aware of the existence of EasyJet, he removed the web directory page and replaced it with a single page stating that the domain name <eazyjet.com> was not associated with EasyJet or EasyGroup.

In support of his case the Respondent makes reference to the following UDRP decisions: Japan Airlines Company Limited v. TransHost Associates, JAL Systems, WIPO Case No. D2000–0573, Woolworths plc. v. David Anderson, WIPO Case No. D2000-1113, Tchin-Tchin Holdings v. David Aussei, WIPO Case No. D2000-0426, Crystallize, Inc. v. James Eixenberger, WIPO Case No. D2000-0528 and K2r Produkte AG v. Jeremie Trigano, WIPO Case No. D2000-0622.

 

6. Discussion and Findings

Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In accordance with Paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements are satisfied:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(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.

Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences there from, as it considers appropriate.

A. Identical or Confusingly Similar

Complainant has acquired registered trademark rights in the name EASYJET in many jurisdictions around the world including in the country of residence of the Respondent, New Zealand.

The name Eazyjet only differs from the registered mark by the letter “z”. Both from a visual, an oral and a conceptual point of view the domain name <eazyjet.com> must be considered to be confusingly similar to the Complainant’s mark.

Consequently the requirement of Paragraph 4(a)(i) is met.

B. Rights or Legitimate Interests

The Complainant alleges that the Respondent has no rights or legitimate interest in the domain name. The Respondent denies this allegation.

Prior to this dispute Respondent used the domain name for “a single page, free web directory consisting of over 180 links, separated into different categories, including Travel, Finance, Health, Home, Business, Computers, Education, Legal, Insurance, Marketing, Education etc”. Further, a representative for the Respondent has, in the correspondence with the Complainant, explained that they were attracted to the domain since it is “catchy, memorable, easy to spell, a dot com and it relates well to the travel industry”.

In view of the Panel “easyjet” or “eazyjet” is however not a natural, descriptive word to use for services related to the travel industry or for services connected to any of the other areas of activities mentioned above. The respondent has not given a credible explanation for choosing the domain name and has thus not been able to demonstrate any rights or legitimate interests in it.

Therefore, the requirement of Paragraph 4(a)(ii) is also met.

C. Registered and Used in Bad Faith

Complainant and Complainant’s marks must be considered to be well known in many parts of the world. This is particularly true within the travel sector. Although the Complainant has not furnished evidence that the mark is well known in New Zealand as such, it seems highly unlikely that any person engaged in the travel sector in this country would not be familiar with the name.

As explained above, the domain name has been used actively by the Respondent for a web page that inter alia contained links to (cheap) air travel tickets. The Panel notes that the collection of links within the travel sector was highlighted and framed at the very top of the said web page. Although the Respondent claims that these links did not point to companies that operate in competition with Complainant, it nevertheless is a clear indication that Respondent was familiar with the travel industry.

On the basis of this and of the lack of legitimate rights by the Respondent in the domain name the Panel finds that it is inconceivable that the respondent registered and used the domain name without prior knowledge of Complainants mark.

The Panel therefore finds that the registration and use of the contested domain name was done in bad faith, and that the requirements of Paragraph 4(a)(iii) are met.

D. Reverse domain name hijacking

According to the Rules para. 1, reverse domain name hijacking means using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name. In view of the Panel filing the complaint was legitimate and there is no indication whatsoever that this filing was done in bad faith. The Panel thus dismiss the claim of reverse domain name hijacking.

 

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 name <eazyjet.com> be transferred to the Complainant.


Knud Wallberg
Sole Panelist

Dated: December 1, 2004

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2004/d2004-0826.html

 

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