WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
easyGroup IP Licensing Limited v. Shane Tonks
Case No. DME2011-0003
1. The Parties
The Complainant is easyGroup IP Licensing Limited of London, the United Kingdom of Great Britain and Northern Ireland (the “United Kingdom” or “UK”), represented by Clarke Willmott LLP, United Kingdom.
The Respondent is Shane Tonks of Alicante, Spain, appearing per se.
2. The Domain Name and Registrar
The disputed domain name <easycar.me> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2011. On March 4, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On March 7, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Complainant filed an amended Complaint on March 14, 2011.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy, approved by the doMEn d.o.o (“doMEn”) (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy approved by doMEn(the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 22, 2011. In accordance with paragraph 5(a) of the Rules, the due date for Response was April 11, 2011. The Response was filed with the Center on April 5, 2011. The Center received further email communications from the Respondent on March 22, 2011, April 19, 2011 and April 20, 2011.
The Center appointed Brigitte Joppich as the sole panelist in this matter on April 27, 2011. 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 paragraph 7 of the Rules.
4. Factual Background
The Complainant owns numerous “easy” prefixed marks such as EASYJET, EASYBUS, EASYOFFICE, EASYGYM and EASYCAR. It is making profits by either selling shares in the businesses or by licensing or franchising the brand to partners. The easy brand currently operates more than a dozen industries mainly in travel, leisure, hotel, and office accommodation.
The Complainant is registered owner of numerous trademark registrations for EASYCAR, inter alia, European Community registration 2168714 EASYCAR registered in May 10, 2002 (hereinafter referred to as the “EASYCAR Mark”). The Complainant’s trademark mainly covers goods and services in international classes 16, 39 and 42, and has been licensed to a third party. The Complainant’s licensee has provided a low cost vehicle rental service and other related services since 2004, using, inter alia, <easycar.com>, <easycar.fr> and <easycar.es> to promote its services, allowing customers to hire a vehicle on its website for use in over 4,000 locations in 60 countries including all states of the European Union, amongst them 375 locations in Spain. The annual turnover of the Complainant’s licensee in 2009 amounted to GBP 26.2 million with advertising expenses of over GBP 2 million.
The Respondent operates several car rental websites including “www.car-for-hire.info”, “www.carrentalcarrental.com” and “cheapest-worldwide-car-hire-easy-auto-rentals-care-for-hire.com”. The disputed domain name has been registered on August 15, 2010 and is being used to redirect Internet users to the website available at the domain name <cheapest-worldwide-car-hire-easy-auto-rentals-care-for-hire.com>, offering car rental services.
On November 12, 2010, the Complainant sent a cease and desist letter to the Respondent. In his reply, the Respondent offered to transfer the disputed domain name against refund of his costs. In reply to this email, the Complainant offered GBP 200 on November 18, 2010 and GBP 500 on December 14, 2010. After further exchange of emails, the Respondent offered to transfer the disputed domain name for GBP 2,000 on February 8, 2011.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is confusingly similar to the Complainant’s EASYCAR Mark as it consists of the term “easycar”.
(2) The Respondent has no rights or legitimate interests in the disputed domain name as he is not known as “easycar”, as he has no reason to use “easycar”, which is evidenced by the fact that he immediately ceased using the disputed domain name and the website at the disputed domain name after receiving a cease and desist letter, and as he does not have any trade mark rights in “easycar”.
(3) The disputed domain name was registered and is being used in bad faith. The Complainant contends that the disputed domain name has been registered in order to sell it to the Complainant for more than the Respondent’s out of pocket expenses, that the Respondent intentionally attempted to attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark by emphasizing the term “easy” on his website and by using the orange livery closely associated with the Complainant, that the Respondent was trying to cause confusion and to attract users to its website, that the Respondent registered the domain name in order to disrupt the business of the Complainant, and that the Respondent must have been heard of “easyCar” before he registered the disputed domain because he operates in the car hire market, while the easyCar business is a leading car rental company in Spain, where the Respondent is located.
In his response, the Respondent stated that he stopped using the domain name after being contacted by the Complainant and that he would be willing to sell the domain name for the price of GBP 500 as offered by the Complainant.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trade mark; 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.
A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant’s EASYCAR Mark and is therefore identical to such mark. It is well established that the specific top level domain name generally is not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. 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).
Therefore, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.,
(i) before any notice to the respondent of the dispute, the use by the respondent 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 (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent 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 customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of production that the respondent has rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way.
Based on the evidence before the Panel, the Panel cannot find any rights or legitimate interests of the Respondent either. In particular, the Complainant provided evidence that the Respondent used the disputed domain name in connection with car rental services, which constitutes an infringement of the Complainant’s EASYCAR Mark. It is well established that there is no bona fide offering of goods and services where the use of the disputed domain name for such offering constitutes a trademark infringement (cf Serta, Inc. v. Maximum Investment Corporation, WIPO Case No. D2000-0123).
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or 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 trade mark 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) the respondent has registered the domain name in order to prevent the owner of the trade mark 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) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.
The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and its rights in the EASYCAR Mark. The Complainant provided evidence that Easycar is having substantial business activities in the Respondent’s home country Spain and that the Respondent operates in the car rental market, as well. Based on these circumstances, it is inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant and its rights in the EASYCAR Mark.
As to bad faith use, by fully incorporating the EASYCAR Mark into the disputed domain name and by using such domain name in connection with a website offering car rental services, which constitutes an infringement of the Complainant’s right in its EASYCAR Mark, the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant’s website to its own for commercial gain. Such use and exploitation of trademarks to obtain commercial profit from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy.
Furthermore, the evidence submitted indicates that the Respondent tried to sell the disputed domain name to the Complainant for valuable consideration in excess of his out-of-pocket costs directly related to the disputed domain name. Having received the Complainant’s cease and desist letter, the Respondent offered the disputed domain name for an amount of GBP 2,000, which is in all likelihood in excess of the Respondent’s out-of pocket-costs directly related to the disputed domain name. (The Panel notes that the Respondent offered subsequently GBP 500 in his responses of April 5, 2011 and April 19, 2011.) The Panel is therefore satisfied that the Respondent has also acted in bad faith under paragraph 4(b)(i) of the Policy. Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For all 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 <easycar.me> be transferred to the Complainant.
Brigitte JoppichSole Panelist
Dated: May 10, 2011