WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
easyGroup IP Licensing Limited v. Guido Tagliarini
Case No. D2012-1353
1. The Parties
The Complainant is easyGroup IP Licensing Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Clarke Willmott LLP, United Kingdom.
The Respondent is Guido Tagliarini of Buenos Aires, Argentina.
2. The Domain Name and Registrar
The disputed domain name <easystelios.com> (“the Domain Name”) is registered with GoDaddy.com, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2012. On July 3, 2012, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the Domain Name. On July 5, 2012, GoDaddy.com, LLC 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 Domain Name.
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 July 6, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 26, 2012. On July 27, 2012, the Center received an email communication from Respondent, which is described below. The Respondent did not submit any formal response. Accordingly, on July 27, 2012 the Center notified the parties about the commencement of panel appointment process. On August 1, 2012, the Center received two supplemental filings, being an email from the Respondent, and an email from the Complainant in response to the Respondent’s July 27, 2012 email communication. On the same date, the Center advised the parties that the Complainant’s supplemental filing would be forwarded to the Panel, once appointed, for determination in its discretion whether the supplemental filing should be received and considered.
The Center appointed Warwick Smith as the sole panelist in this matter on August 7, 2012. 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.
By Procedural Order No. 1 the Panel advised on August 20, 2012 that it would accept and consider both the Respondent’s informal email communication and the Complainant’s proposed supplementary filing. The Respondent was given until Wednesday, August 22, 2012 to file a Sur-Reply, limited strictly to the new matter contained in the Complainant’s Supplementary filing. The time for the Panel to give its decision in the case was extended to Monday, August 27, 2012.
The Respondent provided a reply statement by email on August 22, 2012, and it has been considered by the Panel.
4. Factual Background
The Complainant
The Complainant is the private investment vehicle of Sir Stelios Haji-Ioannou (“Stelios”), an entrepreneur and owner of numerous “easy”-branded businesses and related trademark rights. The Complaint was submitted on behalf of both the Complainant and Stelios, and the Complainant advised that, if the Complaint should be successful, Stelios was content that the Domain Name be transferred to the Complainant.
The Complainant was established in 2000. It has licensed numerous companies to use a number of “Easy” brands, including EasyJet, EasyBus, EasyCar, EasyGym, EasyHotel, and EasyOffice. The Complainant contended, and the Respondent has not denied, that the word “easy” alone is highly distinctive of the EasyGroup, and is viewed as a house mark belonging to it.
Stelios has always been closely associated with the “easy” brand, and the Complainant stated that, as the brand has grown in reputation throughout the world, Stelios’ reputation has grown in parallel. The Complainant produced a number of articles about Stelios which contained reference to the Complainant’s EasyGroup and/or the individual “Easy” businesses.
According to the Complainant, Stelios is best known for his EasyJet start-up in 1995. The EasyJet airline is now very successful, and the Complainant says that it has become famous. According to a witness statement provided by the Complainant’s financial director, EasyJet has carried over 270,000,000 passengers, and now flies approximately 422 routes from 114 cities in 27 countries (mostly in Europe). All of its business is carried on under and by reference to the EASYJET trademark. The Complainant’s financial director produced figures showing very substantial advertising expenditure in Europe for EasyJet’s services provided under the EASYJET mark, in each of the years between 2007 and 2011.
The website “www.easyjet.com” was established shortly after the EasyJet Airline was launched in 1995. There has been very substantial Internet traffic to this website over the years, and the August 18, 2006 edition of “Travel Trade Gazette”, UK and Ireland, noted that the website has been named as one of the 15 most influential websites of all time. In January 2008, the Times (London) reported that EasyJet ended the 2007 year as “the most visited airline on the Internet”. The Complainant produced figures showing Internet traffic to the easyJet website from a number of European countries and the United States, but no figures were produced showing site visits from consumers in Argentina.
The Complainant provided details of a number of consumer and industry awards won by EasyJet. For example, EasyJet has won awards for “world’s leading low-cost airline”, and for many years it was voted by readers of Business Traveller Magazine as “the best low-cost airline”.
The Complainant produced evidence of numerous trademarks owned by it or Stelios, which consist of or include one or other of the words “easy” or “stelios”. It is not necessary to mention them all – it is enough for the purposes of this decision to mentionthree of them. First, the Complainant is the proprietor of the Community Trademark EASY in International Classes 35, 36, 39, 41, and 42, that registration having been in force since June 9, 2000. The registration covers, among other services, the transportation of goods, passengers and travellers by air in Class 39. Secondly, the Complainant is the registered proprietor of the mark EASY in the United States, in respect of an extensive range of goods and services. The United States registration has been in force since March 11, 2003. Thirdly, the Complainant is the registered proprietor of the Community Trademark STELIOS for a range of goods and services, in force with effect from March 4, 2002.
The Respondent and the Domain Name
The Domain Name was registered by the Respondent on May 16, 2010.
It resolves to a GoDaddy parking website (“the Respondent’s website”), containing numerous sponsored links to third party websites, many of them concerned with the provision of travel services including cheap flights. The language used on the Respondent’s website is English.
Two of the links on the pages from the Respondent’s website which were produced by the Complainant, were to the Complainant’s “easyJet” and “easybus” websites, and one was to the website at “www.EgyptAir.com”, being a website operated by one of the Complainant’s competitors.
In his July 27, 2012 email to the Center, the Respondent stated that he is the owner of a construction company and distributor of construction materials and products. He said that he registered the Domain Name for a personal project which he has, concerned with the development of a new construction method. He said that when he had enough money he would set the new method up in his business. As for his choice of the Domain Name, the Respondent explained: “Easy is for things easy and Stelios is for Pillar”.
The Respondent said that he could send proof of his company, and the new “easy stelios” project, to the Center. However no such “proof” accompanied his email communications.
The Respondent said that after he registered the Domain Name he showed it to his sister, and she told him about the English company called “Easy” owned by a man called Stelios. The Respondent said that he then sent an email to the Complainant offering the Domain Name to it, but he never received a reply. He said that “I always been opened to transfer the domain.” When he did not receive a reply, the Respondent said that he thought that the Complainant was not interested in the Domain Name, and he continued working on his project.
In an email sent by the Respondent to Stelios on January 17, 2012, headed “check this “www.easystelios.com”, the Respondent invited Stelios to look at the Respondent’s website. The Respondent went on to say:
“My profession is commercial pilot and businessman in Buenos Aires, Argentina. I am ready to make some exchange with you for this domain.
Waiting for your comments.”
In his August 1, 2012 email to the Center (copied to the Complainant’s representative), the Respondent took the Complainant to task for its failure to reply to his emails. He went on to say:
“In Argentina, you don’t have to know EASYJET or STELIOS to become a Commercial Pilot or BUSINESSMAN, so I don’t know why you say I would certain have been awared of this. You never asked me why I have registered the domain, that is why I didn’t tell it to you.”
Pre-Commencement Correspondence
The January 2012 email from the Respondent to Stelios has already been mentioned. It appears that Stelios did not reply to it.
The Complainant’s lawyers sent a cease and desist letter to the Respondent, in English, on March 28, 2012. The Respondent did not reply, so on April 24, 2012 the Complainant’s lawyers sent the Respondent a Spanish translation of their March 28, 2012 letter.
The Respondent did not respond to either of the letters from the Complainant’s lawyers.
5. Parties’ Contentions
A. Complainant
The Complainant says:
1. The Domain Name is identical or confusingly similar to trademarks owned by the Complainant consisting of or containing the word “Easy” or the word “Stelios”. The Complainant relies on its registered marks, and also claims unregistered rights in and to the mark EASY from its use of its “Easy” brand in many parts of the world.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name, for the following reasons:
2.1 The Respondent does not hold any trademark rights in respect of the expression “easy”, or the expression ”stelios”.
2.2 The Respondent is not and has never been known by any of the names “easy”, “stelios”, or “easy stelios”.
2.3 The Respondent is not engaged in the travel business, and has no association with any of the “easy” or “stelios” brands. He has no need for a domain name made up of those two brand names.
2.4 The Respondent has demonstrated no use of or preparations to use the Domain Name for any bona fide offering of goods or services.
3. The Domain Name was registered and is being used in bad faith. The Complainant contends:
3.1 There is only one company or person that can lawfully trade under the Domain Name, and that is the Complainant and/or Stelios.
3.2 The Respondent was clearly aware of the Complainant when he registered the Domain Name.
3.3 The Domain Name was registered in order to sell it to the Complainant for more than the Respondent’s out-of-pocket expenses incurred in registering the Domain Name, or in order to gain financially from advertising revenues.
3.4 The Respondent has made no bona fide use of the Domain Name.
3.5 The Respondent intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the “easy” and “stelios” brands as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.
3.6 The Respondent is using a close variant of the following domain names linked to websites operated by the Complainant or Stelios: <easystelios.co.uk>, <easystelios.org>, <stelios.com>, <easy.com>, and <easyjet.com>.
3.7 The Respondent registered the Domain Name in order to disrupt the business of the Complainant.
B. Respondent
In his email communications to the Center, the Respondent contended:
1. He did not register the Domain Name in bad faith.
2. He has not been using the Complainant’s brand. The Registrar (GoDaddy.com, LLC) has used the Domain Name to publish certain sponsored links, but the Respondent himself has never put any advertisements on the Respondent’s website.
3. The Domain Name belongs to the Respondent because he bought it when it was available for his project. It is really important for him and his project.
4. If the Complainant wanted the Domain Name, why didn’t they respond when he sent his email to them? The Respondent’s email to Stelios dated January 17, 2012 showed the Respondent’s positive intention to transfer the Domain Name at that time.
6. Discussion and Findings
A. What the Complainant must prove under the Policy
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
Where a respondent has not submitted a response, paragraph 5(e) of the Rules requires the panel to “decide the dispute based on the complaint”. Under paragraph 14(b) of the Rules, the panel may draw such inferences from a respondent’s failure to comply with the Rules (e.g. by failing to file a response), as the panel considers appropriate.
B. Identical or Confusingly Similar
It is not disputed that the Complainant holds trademark registrations for the marks EASY and STELIOS.
The Panel concludes that the Domain Name is confusingly similar to these marks. They are incorporated in their entirety within the Domain Name, a factor which has often been regarded by UDRP panels as sufficient in itself to establish confusing similarity, at least where the mark is recognizable as such within the disputed domain name1 (which is the case here in respect of both marks), and any additional characters in the disputed domain name omprise only common or descriptive terms. Quite apart from its secondary meaning as the Complainant’s trademark, the word “easy” is clearly a “common or descriptive term”, so it is not difficult to conclude that the Domain Name is confusingly similar to the Complainant’s STELIOS Community Trademark. The Domain Name is also confusingly similar to the Complainant’s EASY mark - while the name of the Complainant’s founder (Stelios) may not be a common or descriptive term, its inclusion in the Domain Name makes it inevitable that Internet users who have heard of the Complainant’s EASY mark, and know of Stelios, will associate the Domain Name with the Complainant.
The foregoing factors lead inevitably to the conclusion that the Domain Name is confusingly similar to the marks EASY and STELIOS, in which the Complainant has rights.
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of UDRP panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of WIPO Overview, 2.0, as follows:
“… a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. … If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
The Complainant has shown that it is the registered proprietor of a combination of marks which are confusingly similar to the Domain Name, and it has not authorized the Respondent to use these marks, whether in a domain name or otherwise. The Respondent has not suggested that he (or any business or organization operated by him) is commonly known by the Domain Name, and he has not been using the Domain Name in connection with any bona fide offering of goods or services – the Domain Name simply resolves to a GoDaddy parking page.
The Respondent made vague reference to a new method of construction to which the expression “easystelios” was claimed to refer, but he has produced nothing to corroborate this claim, and there is therefore no evidence of “demonstrable preparations” to use the Domain Name in connection with any services in the construction industry (or indeed in any other industry).
The foregoing factors sufficiently establish a prima facie case of “no rights or legitimate interests”, so the burden of production shifts to the Respondent to come forward with appropriate evidence or allegations demonstrating that he has some right or legitimate interest in the Domain Name.
For the reasons which are set out in the next section of this decision, the Panel has formed the view that the Respondent registered the Domain Name in bad faith, and has used the Domain Name in bad faith. In those circumstances the Respondent’s use of the Domain Name has been neither “bona fide” under paragraph 4(c)(i) of the Policy, nor “fair” or “legitimate” under paragraph 4(c)(iii). Therefore, the Panel finds that the Respondent has not brought himself within any of the “safe harbor” provisions set out at paragraph 4(c) of the Policy.
As the Respondent has not suggested any other basis on which he might be regarded as having a right or legitimate interest in the Domain Name,2 the Complainant’s prima facie proof prevails, and it has made out its case on this part of the Complaint.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include:
(i) circumstances indicating that a respondent has registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant 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 disputed domain name.
The Complainant has proved circumstances falling within this paragraph of the Policy, and, in the absence of any credible countervailing evidence from the Respondent, that proof is sufficient proof of bad faith registration and use for the purposes of paragraph 4(a)(iii) of the Policy. The Panel’s reasons for coming to that view are set out below.
First, “easy” and “stelios” are not words which one would normally expect to see together in ordinary English usage; indeed “stelios” does not even appear to be an English word. On that account alone, the Panel considers that the chances of the Respondent coming up with the Domain Name without any knowledge of the Complainant and Stelios, must be exceedingly small. The fact that the Respondent is apparently a commercial pilot makes it even less likely that the Respondent could have registered the Domain Name without any knowledge of the Complainant and Stelios. EasyJet is a well known international airline, which had been operating for approximately 15 years, and with a significant presence on the Internet, by the time the Respondent registered the Domain Name. The chances of someone involved in commercial aviation (even if only in Argentina) not having at least heard of EasyJet by May 2010, must be extremely small.
Secondly, the Respondent’s claimed intentions for the future use of the Domain Name (a project concerned with the development of a new construction method) were vague and not supported by any corroborative evidence. The Panel simply does not find them credible, particularly in circumstances where:
(i) the Respondent has done nothing with the Respondent’s website for over 2 years; and
(ii) although claiming in his response emails that the Domain Name was “really important for him and his project”, the Respondent nevertheless said in his January 2012 email to Stelios that he was “ready to make some exchange with you” for the Domain Name; and
(iii) the Respondent’s explanation for his choice of the Domain Name (“Easy is for things easy and stelios is for pillar”) appears to make little sense – while the Panel can understand the possible significance of the word “pillar” in the construction industry, the Panel has never encountered in ordinary English usage the concept of an “easy” pillar. In the absence of any further details from the Respondent, the explanation seems contrived.
The Respondent claims that he only learned about the Complainant and Stelios from his sister after registering the Domain Name, but he has failed to explain why (if that were so) he has allowed the Respondent’s website to continue to display sponsored links to websites operated either by competitors of the Complainant or by travel agencies who could be expected to sell travel on a number of budget airlines, including some of the Complainant’s competitors. The Respondent must have appreciated that, to the many thousands of Internet users who knew of the Complainant and Stelios, the Domain Name would inevitably convey the false impression that any website at the Domain Name would be likely to be operated or endorsed by the Complainant and Stelios. The Panel did not find this part of the Respondent’s account of events any more credible than his explanation for his choice of the Domain Name.
The Respondent’s January 17, 2012 email to Stelios makes it fairly clear that he was then looking for an “exchange”, under which the Domain Name would be transferred to the Complainant. In the absence of any credible explanation for the Respondent’s choice of the Domain Name, and taking into account (i) his failure to put the Domain Name to any use within the two years following the registration of the Domain Name, and (ii) the unexplained conflict between his apparent willingness in January 2012 to transfer the Domain Name to the Complainant and his later contention that the Domain Name was important to his project, the Panel concludes that the Respondent probably registered the Domain Name for the bad faith purpose of selling it to the Complainant at a profit. That, of course, is evidence of bad faith registration and use under paragraph 4(b)(i) of the Policy.
The Respondent’s failure to reply to the Complainant’s cease and desist letters confirms the Panel’s clear impression that the Respondent registered and has been using the Domain Name in bad faith.
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 Domain Name <easystelios.com> be transferred to the Complainant.
Warwick Smith
Sole Panelist
Dated: August 27, 2012
1 WIPO Overview of WIPO Panel Views on selected UDRP Questions (“WIPO Overview, 2.0”), paragraph 1.2.
2 The Respondent’s suggestion that he registered the Domain Name when it was “free”, and available for registration, clearly cannot provide a defense. If it did, every cybersquatter could run the same argument, and there would be no room for the Policy to operate. Similarly, the Complainant’s failure to respond to the Respondent’s email cannot confer rights on the Respondent which he plainly did not have.