WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Easygroup Ltd v. Saber Chowdhury, Saber Hossain Chowdhury and Easy Fly Express Limited

Case No. D2019-1275

1. The Parties

The Complainant is Easygroup Ltd, United Kingdom, represented by Shoosmiths LLP, United Kingdom.

The Respondent is Saber Chowdhury, Saber Hossain Chowdhury, Bangladesh, and Easy Fly Express Limited, Bangladesh, internally-represented.

2. The Domain Name and Registrar

The disputed domain name <easyfly-express.com> (the “Domain Name”) is registered with Register.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 4, 2019, 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 together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2019. On July 23, 2019, the Respondent requested an extension of the Response due date. The Center granted the Respondent an additional four calendar days to respond and confirmed that the new Response due date was July 28, 2019. The Response was filed with the Center on July 28, 2019.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on August 12, 2019. 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 is a private limited company registered in the United Kingdom since 1998. It manages the “Easy” family of brands and operates a portal at “www.easy.com” (the “Complainant’s portal website”). One of the oldest companies in the group is EasyJet plc, a British low-cost airline launched in 1995, which is listed on the London Stock Exchange, with a website at “www.easyjet.com”. Other “easyBrands”, with corresponding affiliates and websites, include easyHotel (“www.easyhotel.com”), easyCar (“www.easycar.com”), easyBus (“www.easybus.com”), easyFoodstore (“www.easyfoodstore.com”), easyGym (“www.easygym.com”), easyProperty (“www.easyproperty.com”), easyEnergy (“www.easyenergy.com”), easyCurrency (“www.easycurrency.com”), easyAir (“www.easyair.com”), easyTransport (“www.easytransport.com”), easyCoffee (“www.easycoffee.eu”), easyVan (“www.easyvan.com”), easyPizza (“www.easypizza.com”), easyMoney (“www.easymoney.com”), easyNetworks (“www.easynetworks.co.uk”), easyMobile (“www.easymobile.com”), easyBookings (“www.easybookings.com”), easyLimousines (“www.easylimousines.com”), easyFlights (“www.easyflights.co.uk”), easyFly (“www.easyfly.co.uk”), easySky (“www.easysky.co.uk”), easyFood (“www.easyfood.co.uk”), and easyDogwalker (“www.easydogwalker.co.uk”). These businesses are typically focused on the UK market, although the EasyJet website is available in multiple languages and quotes prices in Euro and United States Dollars as well as in British Pounds.

The Complainant reports that it has built a reputation associated with displaying its brands in what it terms the “easyHouseStyle”, which combines orange and white letters in the Cooper Black font. The Panel notes as well that the Complainant’s design logos are typically formed with the word “easy” all in lower case letters, followed by no space and the initial letter of the following word capitalized, as in “easyJet”.

The Complainant holds registered trademarks for EASYJET and several other “Easy” marks as standard character marks or as design marks, as shown in an attachment to the Complaint. The following trademark registrations are particularly relevant in this proceeding because of their similarity to the Domain Name:

The Complainant applied for the earliest of these registrations, the European Union trademark, on November 5, 2015.

The Registrar confirms that the Domain Name was created on January 16, 2014, and is registered in the name of the Respondent Saber Chowdhury, Saber Hossain Chowdhury of Dhaka, Bangladesh. The registration does not mention Easy Fly Express Limited (“Easy Fly”) as a registrant organization. Easy Fly is a joint stock company formed in Bangladesh in August 2007, commencing operations as a cargo airline from Dhaka in July 2008. It was acquired in February 2014 by the Karnaphuli Group, a diversified trading group that is one of the oldest companies in Bangladesh, designating Mr. Chowdhury as chairman of Easy Fly.

The Domain Name resolves to the English-language website (the “Respondent’s website”) operated by Easy Fly. The website displays a logo with “Easy Fly” in orange letters in a similar font to the Complainant’s marks and over “Express” in smaller blue letters, as well as the circular, red-and-white figurative logo of the Karnaphuli Group with the numbers “1954”, which represents the year the parent company was incorporated in Bangladesh. The logos appear on the livery of the aircraft pictured on the Respondent’s website, all of which prominently carry as well the label “Cargo”. The Respondent’s website advertises air cargo services, limited to certain cities in Asia and the Middle East.

The Response states that the Respondent has applied for registration of “Easy Fly Express” as a trademark, presumably in Bangladesh, without further details.

The Complainant mentions that an English court dismissed “proceedings” for lack of jurisdiction, evidently agreeing with the Respondent’s argument that it did not offer services under the name “Easy Fly Express” to customers in the United Kingdom or the European Union. The Complaint does not provide further detail about this litigation. The Respondent similarly reports as follows:

“Earlier, English proceedings have been filed by the Complainant. The Respondent successfully argued that the Complainant does not have real prospect of success in the proceedings on the ground, amongst other, that the services provided by the Respondent under the sign ‘Easy Fly EXPRESS’ were not targeting UK or EU consumers. Upon hearing both parties, the English Courts were pleased to decide in favour of the Respondent and declined jurisdiction.”

Thus, it appears that there are no pending legal proceedings between the Parties.

5. Parties’ Contentions

A. Complainant

The Complainant suggests that the Domain Name is confusingly similar to its trademarks because (a) it comprises the Complainant’s EASYFLY mark plus the “sub-brand or laudatory element ‘express’”, (b) it begins with the word “easy” as its “dominant feature”, like the Complainant’s numerous marks, (c) it uses the “easyBrands” style of “easy” followed by a word describing the offered service, and (d) it is “conceptually identical” to the Complainant’s EASYJET marks.

The Complainant argues that from the time of the Domain Name registration to the present date, the Respondent has had no trademark rights or other legitimate interests in the Domain Name. The Complainant concludes that the Respondent has registered and used the Domain Name in bad faith, attempting to misdirect Internet users for commercial gain. The Complainant cites that facts that the Respondent is in the aviation business, like the Complainant’s well-known “easyJet brand”, and uses a logo with a similar font and colors.

B. Respondent

The Respondent contends that the Domain Name differs from the Complainant’s various “easy” marks and does not engender confusion as a domain name or on the Respondent’s website or signage, which clearly refer to an express air cargo service in Bangladesh.

The Respondent claims a legitimate interest in the Domain Name based on the Respondent’s corresponding company name and the goodwill it has established in doing air cargo business under that name since July 2008. The Respondent observes that it registered the Domain Name years before the Complainant registered an EASYFLY trademark in Europe. The Respondent observes as well that the Complainant’s EASYJET marks are not well known in Asia, where it has no operations, and that there is, accordingly, little value to be presumed in emulating the Complainant’s marks for the Respondent’s business. The Respondent denies any such intent.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(i) the domain name 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 in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

Under paragraph 15(a) of the Rules, “A Panel shall 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”.

6.1 Preliminary Matter: Consolidation of Multiple Respondents

Although Easy Fly Express Limited (“Easy Fly”) is not listed as the registrant organization for the Domain Name in the Registrar’s WhoIs database, the Panel finds it appropriate to name the company as a Respondent. The registrant Mr. Chowdhury is an officer of Easy Fly, and it appears that the Domain Name has been used from the beginning as the company’s website. The Response in this proceeding was submitted by Easy Fly, signed by its managing director. The Response explains that the Domain Name was selected and used for the company’s purposes.

The Panel concludes that Easy Fly should be included as a named Respondent in this proceeding and refers hereafter to Easy Fly and Mr. Chowdhury collectively as the “Respondent”.

6.2 Substantive Matters

A. Identical or Confusingly Similar

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant indisputably holds registered EASYFLY and EASYJET standard character trademarks among a host of other easy-formative marks. The Domain Name incorporates the EASYFLY mark in its entirety and adds a hyphen and the dictionary word “express”, which does not avoid confusion, as it could refer generically to a speedy aviation service or speedy online access to information about such services. As in most cases, the generic Top-Level Domain (“gTLD”) “.com” is disregarded. Id.

The Panel finds that the Domain Name is confusingly similar to the Complainant’s EASYFLY trademark for Policy purposes, and concludes that the Complainant has established the first element of the Policy.

The Panel notes that for the first element of the Policy, the priority of these marks in time compared to the Domain Name registration is not an issue, as it may be for the second and third elements; the only question is the Complainant’s standing to challenge the Domain Name.

As this finding is based on confusing similarity with the Complainant’s EASYFLY mark, the Panel defers discussion relating to the EASYJET and other “easy” marks to the issues surrounding legitimate interests and bad faith, below.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondents may establish rights or legitimate interests in the 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) that 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 states that it has applied for trademark registration of “Easy Fly Express” presumably in Bangladesh but without giving any particulars, and also refers to its figurative mark including the red-and-white circular logo of the Karnaphuli Group. It is not clear whether the Respondent claims rights in “Easy Fly Express”, or a design logo including those words, as an unregistered mark in Bangladesh under the common law doctrine of passing off, but the Response does not include sufficient evidence to prove that assertion. See, e.g., WIPO Overview 3.0, section 1.3. What is well established is that the Domain Name corresponds to the name of the Respondent’s incorporated business, which had been in operation for five and a half years before the Respondent registered the Domain Name, and then used for the Respondent’s website. On its face, this meets the criteria of paragraphs 4(i) and (ii), although circumstances are conceivable where a respondent’s name and commercial offering could not be considered bona fide because they exploited a complainant’s trademark. For example, it is entirely conceivable, looking at the Respondent’s website (i.e., especially the portion of its logo which has a similar font and color to the Complainant’s) that the Respondent in 2008 sought to trade on the Complainant’s name recognition, as the Complainant contends, which would undermine the Respondent’s claims for legitimate interests under the Policy. In view of the Panel’s finding under the third element however, it is not necessary to make a finding under this element.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following suggested by the Complainant (in which “you” refers to the registrant of the domain name):

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

The Respondent denies an intent to exploit the Complainant’s EASYFLY, EASYJET, or other “easy-formative” trademarks, and the Panel finds this denial credible for the following reasons:

1. The Complainant did not obtain EASYFLY as a registered trademark until years after the Respondent registered the Domain Name. The Complainant’s first application for trademark registration was almost two years after the Domain Name registration, and the Complainant furnishes no evidence of use before that time.

2. The Respondent incorporated a business under the Easy Fly name in 2007 and operated a growing, capital-intensive air cargo business since 2008, in other parts of the world from the Complainant’s EASYJET and other “Easy” brands of consumer businesses. It is possible but not proven that the Respondent’s business model was to attract business clients in Bangladesh by making them assume a connection with the Complainant.

3. There are some similarities in the Parties’ names and logos. The common English words “easy”, “fly”, and “express” are used by many companies, however. The Respondent’s website itself is clearly associated with an air cargo service in Bangladesh and is not designed to mislead consumers interested in the Complainant’s passenger services.

4. While the Complainant’s EASYJET business is well known for passenger service in Europe, and while it may have global customers, it does not operate in Bangladesh or, indeed, in Asia. The Respondent operates only an air cargo service, chiefly within Bangladesh, and also to a handful of Asian and Middle Eastern cities. It is not evident from the evidence presented that the Respondent would attract Internet users and ultimately gain business by mimicking the Complainant’s “easy” trademark style that is chiefly known in the United Kingdom and throughout Europe.

The Complainant has the burden of proof, and the Panel finds that the Complainant on balance has not established bad faith in the registration and use of the Domain Name on this record. Essentially, this appears to be a trademark dispute better addressed by a Court, and not a clear case of cybersquatting. The Panel concludes, therefore, that the Complainant fails on the third element of the Complaint.

7. Decision

For the foregoing reasons, the Complaint is denied.

W. Scott Blackmer
Sole Panelist
Date: August 28, 2019