WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

easyGroup IP Licensing Limited v. John Lane

Case No. D2011-0383

1. The Parties

The Complainant is easyGroup IP Licensing Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Clarke Willmott LLP, United Kingdom.

The Respondent is John Lane of Seattle, Washington, United States of America.

2. The Domain Name and Registrar

The disputed domain name <easyjetcharters.com> is registered with GoDaddy.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2011. On March 1, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 1, 2011, 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. In response to an email seeking correction from the Center on March 8, 2011, the Complainant filed an amended Complaint on March 10, 2011.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 11, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was March 31, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 1, 2011. Thereafter, on the same date, the Center received an email communication from the Respondent. On April 4, 2011, the Centre acknowledged receipt of this communication.

The Center appointed John Swinson as the sole panelist in this matter on April 12, 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 the Rules, paragraph 7.

4. Factual Background

The Complainant is the owner of numerous “easy” branded businesses and related trade mark rights. The Complainant licenses the easyJet brand to easyJet Airline Company Limited. The Complainant has many registered trade marks for EASYJET. These trade marks have been registered in various jurisdictions on various dates, including United States registered trade marks that were registered prior to 2009.

Limited information is known about the Respondent. The Respondent is John Lane who operates a yacht charter business. It appears the Respondent has an affiliation with the website found at “www.boatle.com”, and this domain name is currently listed for sale.

The disputed domain name was created on July 7, 2009.

5. Parties’ Contentions

A. Complainant

The Complainant owns numerous “easy” prefixed marks including easyJet. The Complainant licenses the easyJet brand to easyJet Airline Company Limited.

easyJet Airline is a very successful and famous airline. It has carried over 270 million passengers since its first flight on November 10, 1995 and now flies approximately 422 routes from 114 destinations in 27 countries. It has had a turnover of approximately 8,066 million pounds from launch to date and has spent approximately 256 million pounds to date advertising and promoting its products and services. All of its business is carried on under and by reference to the EASYJET trade mark.

easyJet Airline’s website can be found at “www.easyjet.com”. Customers are able to book various travel related products through the website located at this domain name such as cars and hotels. easyjet Airline also charters its aircrafts to third parties. Shortly after easyJet Airline’s launch in 1995, its website went live. The website routinely receives large numbers of visits and many bookings are made through this site from numerous countries.

easyJet has won numerous consumer and industry awards and has had significant media attention including in the United States. As such, easyJet has a strong reputation, particularly in Europe.

The Complainant first discovered that the Respondent had registered the disputed domain name on or around August 25, 2010. The Complainant’s legal representative sent several letters to the Respondent, and the Respondent only replied once.

The Complainant owns all rights in and to the EASY brand. The Complainant owns over one thousand trade mark registrations around the world for the EASY brand, with 546 trade mark registrations and applications relating to the EASYJET mark. The Complainant owns a United States, European Community and United Kingdom trade mark registrations for EASYJET.

The Complainant also owns unregistered trade mark rights in and to the easyJet brand which are protected through the laws of unfair competition and passing off in Europe.

The disputed domain name consists of the term “easyjet” and “charters”. “Easyjet” is the most dominant term in the disputed domain name. The term “easyjet” is distinctive.

Numerous WIPO UDRP decisions have recognized the Complainant’s rights in the easyJet brand. The addition of generic terms, such as “charters”, does little if anything to diminish the confusing similarity between the disputed domain name and the Complainant’s trade marks. (See e.g., easyGroup IP Licensing Limited v. American Systems USA Inc, WIPO Case No. D2005-1101).

Therefore, the disputed domain name is confusingly similar to the Complainant’s trade marks.

The Respondent does not have any rights or legitimate interests in the disputed domain name because:

- the Respondent is not known, and has never been known, as “easyjet” or “easyjet charters”;

- the Respondent is not engaged in the aviation business and has no need for a domain name consisting of the words “easyjet charters”. The fact that the Respondent initially used the disputed domain name to post sponsored links, presumably for revenue, and then immediately ceased using the disputed domain name and website it resolved to after receiving a cease and desist letter from the Complainant’s legal representative is indicative of bad faith;

- the Respondent did not refute any claims in the cease and desist letter, and instead his agent offered to sell the disputed domain name to the Complainant;

- the website “www.boatle.com”, which the Complainant assumes the Respondent is associated with, does not contain any references to “easyjet” or “easyjet charters”, nor any reference to chartering planes;

- the Respondent does not have any trade mark rights in the term “easyjet charters”.

The Respondent has been using the disputed domain name in bad faith for the following reasons:

- the Respondent registered the disputed domain name in order to sell it to the Complainant for more than his out-of-pocket expenses. This is clear from Mr. D. Rent’s response of October 20, 2010 to the Complainant’s cease and desist letter where he offered to sell the disputed domain name to the Complainant. The Complainant assumes that Mr. Rent was acting as agent for the Respondent;

- the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website 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 the Respondent’s website or location. The Respondent initially posted sponsored links (presumably for revenue) on the website that the disputed domain resolved to and later forwarded users to another website;

- the Respondent registered the disputed domain name in order to disrupt the business of the Complainant and prevent the Complainant from registering the disputed domain name;

- the Respondent is no longer using the disputed domain name and has never used it for chartering planes.

The Complainant requests that the disputed domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

However, the Respondent transmitted an email communication to the Center setting out the following information:

- the Respondent was not aware of the need to file a response;

- the Respondent registered the disputed domain name as he is in the yacht charter business. Some other yacht charter companies also offer jet charters and at the time, the Respondent was looking into adding jet charters into his business model;

- the Respondent did not think of easyJet at the time of registering the disputed domain name;

the Respondent submits that easyJet should not have rights to every domain name that includes the term “easyjet”;

- the Respondent claims that had the Complainant been more civil, he would have transferred the disputed domain name to them at a price sufficient to cover the Respondent’s time and opportunity costs; and

- if the Panel decides in favor of the Complainant, an untenable precedent may be set in which the Complainant may claim rights in all domain names containing the term “easy”.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed 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 disputed domain name; and

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

The onus of proving these elements is on the Complainant.

A. Procedural Issues

The Respondent did not file a response. However, the Respondent did transmit an email communication setting out limited arguments in response to the Complaint.

The Respondent presented no evidence setting out exceptional circumstances why this email communication should be considered. He merely stated that he was not aware of the obligation to respond. The Written Notice sent by the Centre to the Respondent on March 11, 2011 clearly set out that the due date for any response the Respondent may have wished to file was March 31, 2011.

There is no express provision under the Policy or Rules for a supplemental filing and it is at the discretion of the Panel whether to consider a supplementary or late filing.

In this case, the Panel will consider the Respondent’s email communication in order to properly assess the merits of this case. As it turns out, doing so does not change the ultimate outcome.

Further, the fact that the Respondent did not file a formal Response does not automatically result in a decision in favor of the Complainant. (See e.g., Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, WIPO Case No. D2010-1413; M. Corentin Benoit Thiercelin v. CyberDeal, Inc., WIPO Case No. D2010-0941; Mancini's Sleepworld v. LAKSH INTERNET SOLUTIONS PRIVATE LIMITED, WIPO Case No. D2008-1036; Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383). However, the Panel may draw appropriate inferences from a respondent’s default. Nonetheless, paragraph 4 of the Policy requires a complainant to support its assertions with actual evidence in order to succeed.

B. Identical or Confusingly Similar

The Complainant owns numerous registered trade marks in various jurisdictions, including in the United States of America where the Respondent is resident, for “EASYJET”. Many of these trade marks were registered prior to the disputed domain name being registered.

Further, the Complainant has put forward extensive evidence to suggest that it has common law rights in the term “easyJet”. In order to establish common law trade mark rights, the Complainant must show that the name has become a distinctive identifier associated with the Complainant or its goods and services. The decision in Fairview Commercial Lending, Inc. v. Aleksandra Pesalj, WIPO Case No. D2007-0123, is instructive when considering whether “secondary meaning” has been established and sets out the factors to consider such as, inter alia, length and amount of sales under the trade mark, nature and extent of advertising and media recognition. The Panel finds that the Complainant does have common law trade mark rights in the term, “easyJet”, given its extensive and comprehensive use of the term over a lengthy period of time, its strong reputation evidenced by consumer and industry awards and its rigorous advertising and media campaigns.

For the Complainant to succeed in this element, it must show that the disputed domain name is identical or confusingly similar to the Complainant’s trade marks.

The disputed domain name contains the term “easyjet” and as such it is confusingly similar to the Complainant’s registered and common law trade marks. The inclusion of the word “charters” does nothing to alleviate this confusion, given the distinctive nature of the term “easyjet”. The Panel agrees with the comments of the Panel in easyGroup IP Licensing Limited v. American Systems USA Inc, WIPO Case No. D2005-1101 set out in the Complaint.

Therefore, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s EASYJET trade marks and as such, paragraph 4(a)(i) of the Policy is satisfied.

C. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, there are a number of ways in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. The Complainant is required to make out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Panel has carefully considered the Complainant’s submissions (summarised in section 5A above) and considers that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has submitted that he intended to use the disputed domain name as part of his yacht chartering business and specifically for the purpose of offering jet charters. However, the Respondent has submitted no evidence in support of this and as such it is insufficient to displace the prima facie case established by the Complainant that the Respondent lacks rights and legitimate interests in the disputed domain name.

The only instance of rights or legitimate interests in the disputed domain name the Respondent may have satisfied is that set out in paragraph 4(c)(i) of the Policy which provides that a respondent may demonstrate rights or legitimate interests in a domain name by 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, before any notice to it of the dispute.

However, as is set out in the Complainant’s submission, the Respondent only ever used the disputed domain name to host a website with pay-per-click or sponsored links, and the Respondent ceased using the disputed domain name upon receiving correspondence from the Complainant.

In the absence of any evidence demonstrating preparations to use the disputed domain name in connection with a bona fide offering of goods or services, namely jet charters, the Panel concludes that the Respondent does not have any rights or legitimate interests in the disputed domain name.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy enumerates several circumstances that are evidence of registration and use of a domain name in bad faith.

Relevantly, paragraph 4(b)(iv) of the Policy provides that bad faith registration and use will be made out where the respondent has used the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the respondent’s website or product or service on the website.

Here, the Panel finds that the disputed domain name has been used and registered in bad faith by the Respondent.

The Panel does find that the Complainant’s trade marks are sufficiently well-known that the Respondent, most likely, purposefully registered the disputed domain name for the purposes of attracting customers by creating a likelihood of confusion in their minds with the Complainant’s trade marks. The Panel refers to Asian World of Martial Arts Inc. v. Texas International Property Associates, supra and finds here, as there, that “[i]t defies common sense to believe that Respondent coincidentally selected [the] precise domain [name] without any knowledge of Complainant and its […] Trademarks”. (See also, F. Hoffmann-La Roche AG v. MFS Holdings, WIPO Case No. D2010-0307.)

The Panel finds that there is no evidence that the Respondent intended to use the disputed domain name for any purpose other than for establishing a pay-per-click (“PPC”) website to generate revenue. While a PPC website is not use in bad faith in and of itself, here, given the strong reputation of the EASYJET brand, trade marks and company, it appears that the Respondent intentionally selected the disputed domain name in order to create confusion in the mind of Internet users as to the association between the disputed domain name and the Complainant’s trade marks and thereby generate PPC revenue. The Panel finds that the Respondent is attempting to divert Internet traffic to its website in order to generate “pay-per-click revenue” (see e.g., BAB, Inc. v. Eighty Business Names, WIPO Case No. D2010-0478; mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141; Hayward Industries, Inc. v. WebQuest.com, Inc., WIPO Case No. D2009-1493).

While it does appear that the Respondent was willing to sell the disputed domain name to the Complainant, it is unnecessary to record a finding here as to whether that fact alone would be sufficient to satisfy paragraph 4(b)(i) of the Policy requirement of registration primarily for the purpose of selling the disputed domain name to the Complainant for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name.

Nor is it necessary for the Panel to record a finding as to whether it has been established that the Respondent registered the disputed domain name in order to disrupt the business of the Complainant and prevent the Complainant from registering the disputed domain name.

The Panel finds that the Respondent registered and used the disputed domain name in bad faith for the purpose of paragraph 4(b)(iv) of the Policy and that is sufficient to enable the Complainant’s case to prevail here.

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 <easyjetcharters.com> be transferred to the Complainant.

John Swinson
Sole Panelist
Dated: April 27, 2011