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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Easygroup (UK) Limited, Easyjet Airline Company Limited, Easyeverything Limited, Easy Rentacar (UK) Limited v. Rencross Technology Limited/Michael Kong

Case No. D 2000-0950

 

1. The Parties

Complainant:
(1) Easygroup (UK) Limited of The Rotunda, 42/43 Gloucester Crescent, London NW1 7DL, United Kingdom
(2) Easyjet Airline Company Limited of Easyland, Luton Airport, Luton, Bedfordshire LU2 9LY, United Kingdom
(3) Easyeverything Limited of The Rotunda, 42/43 Gloucester Crescent, London NW1 7DL, United Kingdom
(4) Easyrentacar (UK) Limited of The Rotunda, 42/43 Gloucester Crescent, London NW1 7DL, United Kingdom
Represented by Neville Cordell, Five Chancery Lane, Clifford’s Inn, London EC4A 1BU, United Kingdom

Respondent: Rencross Technology Limited/Michael Kong of 43 Angelica Drive, Beckton, London E6 6NS, United Kingdom

 

2. The Domain Name(s) and Registrar(s)

Domain Names:
easyescape.com
easygetaway.com
easycrossing.com
easypeazy.com

Registrar: Register.com, Inc. ("Registrar")

3. Procedural History

The Complaint was received by WIPO by e-mail on August 4, 2000, and in hard copy on August 7, 2000. WIPO has verified that the Complaint satisfies 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 World Intellectual Property Organization Supplemental Rules for Uniform Dispute Resolution Policy ("the Supplemental Rules") and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.

The Complaint was properly notified in accordance with the Rules, paragraph 2(a). The Registrar has confirmed that easyescape.com, easygetaway.com, easycrossing.com and easypeazy.com ("the Domain Names") is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Names.

On August 22, 2000, WIPO notified the Respondent of the Complaint by courier and e-mail and informed the Respondent inter alia that the last day for sending its response to the Complainants and to WIPO was September 10, 2000. The Response was lodged with WIPO by email on September 6, 2000. The hard copy arrived on September 11, 2000.

The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

No further submissions were received by WIPO or the Panel as a consequence of which the date scheduled for the issuance of the Panel’s Decision is October 11, 2000.

 

4. Factual Background

The Complaint does not establish precisely how the various Complainants inter relate, the Complaint treats them as members of a group of companies and the Panel will do the same.

The Second Complainant has since November 1995 operated a low cost airline, which trades under the name "easyJet". The business sells tickets primarily via its website at www.easyjet.com.

Since June 1999, the Third Complainant has operated the business of a chain of internet shops which trade under the name "easyEverything". These services are advertised at www.easyeverything.com. The Third Complainant has five shops in London and shops in Edinburgh, Amsterdam, Rotterdam and Barcelona. The Third Complainant is currently setting up a shop in New York. Further shops are planned in Manchester, Glasgow, Dublin, Antwerp, Brussels, Paris, Madrid and Rome. The Third Complainant’s turnover in the United Kingdom in the period June to September 31, 1999, was Ј392,000. Ј1.6 million has been spent on advertising easyEverything services to date. easyEverything owns the largest internet cafй in the world, being its 600 PC internet cafй in Amsterdam.

On November 8, 1999, the Respondent registered easycrossing.com and easypeazy.com. On November 12, 1999, the Respondent registered easygetaway.com and easyescape.com.

Since February 2000, the Fourth Complainant has operated a low cost car rental business which trades under the name "easyRentacar" via its website at www.easyrentacar.com.

The First Complainant primarily operates as an investment vehicle for the founder of the Complainant’s Group of Companies. In January 2000, there were press reports to the effect that the First Complainant will be launching later this year a net shopping venture under the name easy.com.

On June 14, 2000, one firm of lawyers representing the Complainants wrote to the Respondent claiming on behalf of the Complainants "a substantial goodwill and reputation in its companies and also in the brand name "easy" itself." They asserted that the Respondent had deliberately set out to use the easyescape.com and easygetaway.com domain names in a manner calculated to take unfair and unlawful advantage of the goodwill and reputation of [their] clients." On June 15, 2000, another firm of lawyers representing the First and Second Complainants wrote to the Respondent claiming for the Respondent "a substantial collective reputation and goodwill in the "Easy" brand in the United Kingdom in relation to low cost internet related consumer services, in particular for travel services, such that it denotes the business of [their] clients and no other." The letter accused the Respondent of passing off and demanded, inter alia, transfer of the easyescape.com and easygetaway.com domain names.

 

5. Parties’ Contentions

A. Complainants

The Complainants do not rely upon any registered rights. They contend that their collective reputation and goodwill in their easy pre-fixed trading names and the announced plans to trade under the name easy.com are such that they are the proprietors of what they term the "easy" brand for low cost internet related consumer services.

They claim that they have invested a considerable amount of time, money and effort into presenting a consistent group identity under and by reference to the Easy brand, which comprises the following distinct features:-

(i) the combination of the word "easy" with a word which refers to the services provided by the relevant Complainant so as to form one new word;

(ii) the presentation of the word "easy" in lower case and the second word with an initial capital letter, as in "easyJet", "easyRentacar", "easyEverything" and "easyGroup";

(iii) the use of a fat font for the word "easy"; and

(iv) a distinctive get-up featuring the use of white lettering on an orange background.

They claim a substantial collective reputation and goodwill in both the brand and the distinctive get-up identified above.

They draw attention to the English Court of Appeal decision in Marks & Spencer Plc and Others –v- One In A Million [1999] 1 WLR 903 in which the Court of Appeal held that the registration (alone) of domain names containing well known brand names amounted to false representations that the registered owner was associated with the brand owners and therefore amounted to passing off.

They say that not only do all the domain names contain the brand "Easy" but that the style adopted at the website for two of the domain names (namely easyescape.com and easygetaway.com) copies the distinctive features of the Complainant’s brand identity and get-up as set out above. They say that the confusion that this will cause is compounded by the fact that the Respondent seems to be intent on trading in an area in which the Complainants are well known, the on-line travel industry. They say that a substantial number of internet users would conclude that easyescape.com and easygetaway.com link to the Complainants’ sites and/or that the Respondent is connected with the Complainants’ business.

They say further that anyone conducting a Whois search on easycrossing.com and easypeazy.com for example would discover that the registrant is the Respondent. They say that a substantial number would thus conclude that the Respondent is somehow associated with the Complainants. They say that this amounts to passing off. They go further and say that in addition it is possible that the Respondent may choose to link these two domain names to its online travel site which would add to the public’s confusion. The Complainants contend that in light of the above, each of the Domain Names is confusingly similar to the Complainants’ mark "easy" and that the manner in which the Respondent intends to use the Domain Names is confusingly similar to the Complainants’ use of its mark.

The Complainants refer to two Administrative Panel Decisions, numbers D2000-0384 and D2000-0024, in which the Administrative Panels concerned held that the domain names easyjet.org and easyjet.net were identical or confusingly similar to a trade mark or service mark in which the Complainants have rights.

They say that the Respondent is not a licensee of the Complainants, nor is he authorised to use the mark. They say that the Respondent has no rights either registered or unregistered in respect of the mark "easy" or in any of the Domain Names. The Respondent trades under the company name Rencross Technologies Limited. The Complainants submit that the Respondent has chosen to trade on the internet under and by reference to the names easyEscape and easyGetaway and has registered the domain names easycrossing and easypeazy as a direct result of the considerable success of the Complainants’ easy internet services.

They contend that the Domain Names have been registered and are used in bad faith. They point to the Companies Registry details identifying the Respondent as being involved in the business of the provision of computer programming and consultancy services. They point out that the Respondent has decided to set up a business offering on-line travel services and has adopted a brand identity and get-up confusingly similar to the Complainants’ brand identity and get-up. They say that the Respondent must have been aware of the Complainants’ rights in the mark "easy" and in the get-up referred to above when he registered the Domain Names and when subsequently he set up the website. The Complainants contend that the Respondent deliberately chose to use the Complainant’s mark and get-up for the purposes of his website and says that it is to be inferred that he did so in order to attract custom as a result of the substantial goodwill the Complainants have built up in their mark and get-up.

The Complainants say that the Respondent’s registration and use of the Domain Names will mislead the public into assuming that the Respondent and his services are authorised by, associated or connected with the Complainants when this is not the case. They say it is highly likely because of the mark’s presence on the web and because the mark identifies the services of the Complainants, that the public will visit the Respondent’s site due to the Complainants’ reputation, rather than any goodwill of the Respondent. They say that the Respondent must be aware, not least because of the Complainants’ reaction to the registration and use of the Domain Names that the registrations are likely to disrupt the Complainants’ business. In addition, they say that the Respondent’s activities show that he is intentionally seeking to attract for commercial gain internet users to his website by creating a likelihood of confusion with the Complainants’ mark and business as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and services.

B. Respondent

The Respondent denies that the Complainants are proprietors of the mark "easy" as such. The Respondent produces evidence to show that another apparently unrelated company is proprietor of a trade mark registration for the word "easy". The Respondent seems to accept that the Complainants have rights in the names easyJet, easyEverything, easyGroup and easyRentacar, but denies that easyEscape, easyGetaway, easyCrossing and easyPeazy are confusingly similar. He points out that the spellings are entirely different.

The Respondent claims that easyJet is an airline which provides nothing other than air travel tickets, while easyRentacar provides car rental services only. He goes on to say that the combination of joining two or more different words to form new words is commonplace in modern languages and is free for use by anyone. He says the consumers will associate those new words with the specific products they identify. He says that he would understand the reason for the dispute if the domain names in question were easyGroup.com and easyGroup.net, since they are registered to private companies or individuals not connected with the Complainants.

As to the allegation that the Respondent has no rights or legitimate interests in respect of the Domain Names, the Respondent says that Rencross Technology Limited consists of one employee, namely the Respondent. He says that the website featured is designed and maintained by the Respondent himself. He says that during the process of development, the website has undergone many changes, including the use of colours and layout. He says that none of the pages of the website as a whole are similar to the Complainants’ web pages.

He says that the Respondent’s website indicates a free service offer to travellers to find information on places written by other fellow travellers or settlers to provide an unbiased view. He says "friends of the Respondent whom is a traveller himself and knows the frustration in remembering all the different websites to obtain some basic information inspired the whole idea and often they are written by commercial services, which offer little value to the knowledge of cultures and insights from a foreigner point of view."

As to the allegation that the Domain Names have been registered and are used in bad faith, the Respondent says that they have been registered and are used in good faith. He appears to be saying that what he is doing, he is doing in his own spare time. He says he is providing a free service. He says that the Domain Names are derived from the thought of common phrases such as "easiest way to escape", "easiest way to get away", "easiest way to cross" and the common phrase "easy peazy". He says that they do not have any association with the airline, as is indicated in the disclaimer which he has on his site. The disclaimer reads "please note that easyEscape.com, easyGetaway.com, easyCrossing.com and easyPeazy.com have no connection whatsoever with easyGroup.co.uk, its clients or any other registered domains that are pre-fixed by the word "easy"". The Respondent says that easyCrossing.com and easyPeazy.com are not being used at the moment, simply because no-one can do everything at once. He says that they are simply for future development purposes. He says that the Respondent has no intention of selling or deriving any commercial gain from registration of the Domain Names.

He says that his website does not offer any of the services provided by the Complainant and that accordingly the Domain Names do not and will not disrupt or compete with the services provided by the Complainant in any way.

The Respondent points to the fact that the spelling of the Domain Names are entirely different from the spelling of the Complainants’ names. He says that nobody is likely to be confused. He points to the fact that the Domain Names are not registered in any of the search engines at present, so the only way of getting to his website is to type the name in accurately. He asserts that no spelling error is likely to lead someone intending to go to the Complainants’ sites to arrive at his site.

The Respondent points to the fact that on June 6, 2000, the First Complainant registered easyEscape.co.uk. This was long after he had registered easyEscape.com and only a week or so before the various firms of solicitors wrote to him earlier this year. He says this indicates to the Respondent that the First Complainant is attempting to acquire easyEscape.com for its own commercial purposes. The Respondents points to previous Panel Decisions D2000-0398 and D2000-0645 involving one of the Complainants and the domain names easy-jet.net and easy-jet.com in which the relevant Panels are said by the Respondent to have found that "although the domain name is virtually identical to the Complainants’ trade mark easyJet and the Respondent has no rights or legitimate interest in respect of the domain name, there is no proof that the domain name was registered or used in bad faith." The Respondent observes that in the current dispute "the domain names are not even close to similar". The Respondent concludes by saying that the use by the Respondent of an orange background with white lettering in part of its web pages during a stage of the development was not in any way similar to the layout of the Complainants’ web page. He says that the use of frames in the Respondent’s website is not found in any of the Complainants’ web pages. He asks that the Complaint be dismissed.

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove that:

1. The domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

2. The Respondent has no rights or legitimate interest in respect of the domain names; and

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

Identical or Confusing Similarity

The Panel is the same Panel which decided case number D2000-0711 in which the same Complainants featured and in which the domain names were easymaterial.com, easymaterials.com, easymaterial.net and easymaterials.net. From the papers in that case and the various other "easy-" decisions to which both parties to this dispute have referred the Panel, the Panel is in possession of a wealth of material going beyond the evidence filed in this particular dispute.

The Panel is satisfied that the Complainants have substantial rights in and or relating to the names easyJet, easyEverything and easyRentacar. The Panel is also prepared to accept that in time, the Complainants may well develop a substantial reputation and goodwill in relation to "easy.com" and/or what the Complainants’ term their "easy" brand. The Panel notes that the Domain Names were registered prior to the date of the press announcements relating to easy.com and prior to the launch of easyRentacar.

The question for the Panel is whether the Complainants’ rights are such that they can provide the basis for a Complaint under the Policy. Are the Domain Names identical or confusingly similar to any of those trade marks or service marks in which the Complainants have rights?

On the face of it, the prefix apart, the Domain Names are very different. Accordingly, they are not identical. Are they confusingly similar?

In the Panel’s view, they are so different from the Complainants’ trade marks/service marks that they cannot be regarded as confusingly similar unless the Complainants’ rights extend to all easy prefixed names.

For the reason set out in the Panel’s Decision in case number D2000-0711 (namely the existence of so many other easy prefixed domain names and corporate names in use in the United Kingdom by others unconnected with the Complainants) the Panel is firmly of the view that the Complainants’ rights do not extend that far.

The Panel acknowledges that domain names which are not on their face confusingly similar to the Complainants’ trade marks may nonetheless be used in a manner likely to lead to confusion (eg by way of the content of the website to which they are connected), but that is a matter for the Court in a passing off action, not a complaint under the Policy. The Policy is only concerned with identical or confusingly similar domain names.

The Panel further acknowledges that domain names, which are not similar visually, may nonetheless be regarded as similar because they are synonymous or because they conjure up similar ideas (e.g.easyjet and easyflight perhaps). While the words "escape", "getaway" and "crossing" are all words that can have travel connotations (travel being the area where the Complainants’ goodwill at present primarily resides), the Panel does not believe that even with their "easy" prefix they are close enough to the mark in which the Complainant has rights to be said to be "confusingly similar".

Accordingly, the Panel finds that the Complainants have not proved that the Domain Names or any of them are identical or confusingly similar to any trade mark or service mark in which the Complainants have rights and the Complaint fails under this head.

Rights or Legitimate Interests of the Respondent

In light of the above finding, it is unnecessary for the Panel to address this issue. However, whether or not the Complainants should succeed under this head seems to the Panel to be heavily dependent upon the Complainants’ ability to establish bad faith. If the Complainants are successful in establishing bad faith, it is almost inevitable that the Respondent will have been unable to show that he has any rights or legitimate interests in respect of the Domain Names.

Bad Faith

Again, for the reasons set out above, it is not necessary for the Panel to consider this aspect of the Complaint. However, the Complainants assert bad faith and rely principally upon the facts (and the Panel accepts them as facts) first, that the Respondent must have been well aware of the second Complainant and in particular its trade mark easyJet, when he registered the Domain Names, secondly that the style in which the Domain Names are used on the Respondent’s website is very similar to the style adopted by the Complainants and thirdly that at an earlier stage one page at any rate of the Respondent’s website contained features (white writing on orange background) reminiscent of the Complainant’s style.

The Respondent denies bad faith. While the Panel understands why the Complainants are suspicious and while the Panel accepts that the Respondent’s Response in this regard has been weak, where allegations of bad faith are made, Complainants have to establish their case to a reasonably high standard of proof. This administrative process, which does not allow the Panel to see the demeanour of the parties, is not an appropriate forum for resolving disputed issues as to fact or motive where there is room for reasonable doubt – otherwise, that is, than by resolving the doubt against the party bearing the burden of proof.

Had it been necessary for the Panel to make a finding of bad faith in this case, the Panel would have required further evidence.

 

7. Decision

The Complaint is dismissed.

 


 

 

Tony Willoughby
Sole Panelist

Dated: October 11, 2000

 

Источник информации: https://internet-law.ru/intlaw/udrp/2000/d2000-0950.html

 

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