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EasyGroup IP Licensing Limited v. John Sansone [2004] GENDND 1489 (16 November 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

EasyGroup IP Licensing Limited v. John Sansone

Case No. D2004-0763

1. The Parties

The Complainant is EasyGroup IP Licensing Limited, London, United Kingdom of Great Britain and Northern Ireland, represented by Wragge & Co., Birmingham, United Kingdom of Great Britain and Northern Ireland.

The Respondent is John Sansone, Denver, Colorado, United States of America.

2. The Domain Name and Registrar

The disputed domain name <easyejt.com> is registered with eNom, Inc. of Bellevue, Washington, United States of America.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2004. On September 22, 2004, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On September 22, 2004, eNom, Inc. transmitted by email to the Center its verification response, confirmed that the disputed domain name has been placed under a locked status and sent to the Center a Whois lookup download from their website in confirmation that the Respondent is listed as the registrant and providing the contact details for the administrative, billing and technical contact. The Center verified that the Complaint satisfied 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 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 September 27, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was October 17, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2004.

The Center appointed Zoltán Takács as the Sole Panelist in this matter on November 3, 2004. 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.

The language of the proceeding is English, that being the language of the registration agreement.

4. Factual Background

The Complainant is a member of a group of associated companies referred to collectively as “easyGroup”, comprised of the following businesses: easyJet, easyCar, easyInternetcafe, easyCinema, easyValue, easyMoney and easydotcom.

The easyJet business is operated by easyJet Airline Company Limited, incorporated in 1995, which on November 5, 2000 assigned all its trademarks to the Complainant.

easyJet and its business have been extensively advertised and promoted internationally.

The Complainant is, without limitation, the proprietor of the following trademark registrations:

- UK Registration No. 2016785 “EASYJET”, with priority of April 5, 1995, for the goods and services of international classes 16, 39 and 42,

- European Community Registration No. 1232909 “EASYJET”, with priority of July 1, 1999, for variety of goods and services, including services of international class 42.

In the United States of America, which is the country of the Respondent’s domicile, the Complainant owns the following trademark registrations consisting solely or comprising the word “EASYJET”:

	Serial Number	Reg. Number	Word Mark	Check Status	Live/Dead
1	76172996	2863969	EASYJET EASYJET.COM	TARR	LIVE
2	76183799	2857171	EASYJET.COM THE WEB’S FAVOURITE AIRLINE	TARR	LIVE
3	76172990	2694614	EASYJET GIFTS	TARR	LIVE
4	75981918	2831096	EASYJET.COM THE WEB’S FAVOURITE AIRLINE	TARR	LIVE
5	75981910	2818632	EASYJET EASYJET.COM	TARR	LIVE
6	75689872	2807604	EASYJET, THE WEB’S FAVOURITE AIRLINE	TARR	LIVE
7	75235803	2197131	EASYJET	TARR	LIVE

All the above trademark registrations cover the provision of air travel and transportation and related goods and services.

Respondent registered the <easyejt.com> domain name on October 11, 2002, which is later than all the above trademark registrations of the Complainant.

The disputed domain name redirects Internet users to the “www.expedia.co.uk website that offers travel related services in general, and on the most prominent part of the website a flight planner search option.

5. Parties’ Contentions

A. Complainant

The Complainant submits that by reason of the extensive use, promotion and advertising of the easyJet business by reference to the EASYJET mark, easyJet and the Complainant have obtained substantial reputation and goodwill in the EASYJET mark in the field or air travel and transportation, in services offered and delivered in particular by means of the Internet.

The Complainant contends that the disputed domain name is evidently confusingly similar to its highly distinctive and well-reputed trademark EASYJET, and that the Respondent’s registration and use of the domain name is a clear case of typo-squatting, intending to take advantage of easyJet’s reputation and prominent presence on the Internet.

The Complainant asserts that the Respondent has no right or legitimate interest in the domain name, since it has never been licensed or in any other way authorized by the Complainant to use the EASYJET trademark, nor has it been commonly known by the EASYJET or any other confusingly similar variation of the EASYJET trademark.

The Complainant argues that by registering and subsequently using the disputed domain name the Respondent deliberately attempted to attract, for commercial gain, Internet users to another on-line location by creating a likelihood of confusion with the Complainant’s mark EASYJET such that the public is falsely likely to believe that the site to which the disputed domain name resolves is sponsored, endorsed or authorized by or in association with the Complainant, which qualifies as registration and use in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules requires that the Panel’s decision is made “on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements in order to succeed with the Complaint:

(i) the Domain Name is identical of confusingly similar to a trademark or service mark in which the Complainant has rights, and

(ii) the Respondent and registrant of the Domain Name 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 Panel finds that the Complainant has established rights in the EASYJET mark through numerous registrations of the mark and variations thereof in a great number of jurisdictions. Importantly a number of trademarks registered with the United States’ Patent and Trademark Office give to the Complainant rights in and to the EASYJET trademark in the country of the Respondent’s domicile, in United States of America.

The domain name is almost identical to the Complainant’s EASYJET trademark, the difference being in switching two of the letters in the “Jet” suffix, which makes “ejt” instead of “jet”. The Panel is convinced that the Respondent’s attempt falls into the category of typo squatting, referenced in a number of WIPO decisions. The mere misspelling of Complainant’s mark is insufficient to prevent the Panel from finding the <easyejt.com> domain name confusingly similar to the EASYJET trademark.

Domain names that are simply based on misspelling of trademarks or service marks are often regarded as confusingly similar. See Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314, The Nasdaq Stock Market, Inc. v. NSDAQ.COM, NASDQ.COM and NASAQ.COM, WIPO Case No. D2001-1492.

The Panel finds that Paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under Paragraph 4(c) of the Policy, respondents may demonstrate their rights and interests in the disputed domain name by showing any of the following circumstances, in particular but without limitation:

(i) their use of, demonstrable preparations to use, the contested domain names or name corresponding to the contested domain names in connection with a bona fide offering of goods or services before any notice to them of the dispute, or

(ii) they (as individuals, a business, or other organization) have been commonly known by the contested domain names, even if they have acquired no trademark or service mark rights, or

(iii) they are making a legitimate non-commercial or fair use of the contested domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent’s activities do not correspond to any of, or any other circumstances set forth in Paragraph 4(c) that would evidence any rights or legitimate interests with respect to the disputed domain name.

The Complainant argues that the Respondent is not affiliated with the Complainant, does not offer goods or provide services under <easyejt.com>, the Panel accepts the Complainants contentions and finds that Respondent is not known by such name.

The Respondent has chosen not to respond and present any evidence, which the Panel also may consider against the Respondent having rights or legitimate interests in the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., WIPO Case No. D2000-1221.

C. Registered and Used in Bad Faith

There is a reason for this Panel to believe that the Respondent had actual or constructive knowledge of the Complainant’s rights in the EASYJET trademark.

The EASYJET trademark and variations thereof have been registered with the United States’ Patent and Trademark Office, and the domain name construed by the Respondent was in this Panel’s view, for sole purpose of capitalizing on misspelling the EASYJET trademark through the concept of typo squatting, which is commonly and widely recognized as a form of Internet cyber squatting and of itself evidence of bad faith. Typo squatters profit from such a conduct in various ways, but most often through selling advertisements to the original site’s competitors, or by providing redirect pages to related products or services offered by either competitors of the Complainant.

Paragraph 4(b)(iv) of the Policy clearly states that such conduct by stating that it shall be evidence of the registration and use of a domain name in bad faith, if “by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondents’ 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 the Respondents’ website or location.”

The Panel is convinced that the Respondent has intentionally registered the disputed domain name <easyejt.com> for a purpose to intentionally divert Internet users who mistype the trademark EASYJET to a website of a competitor of the Complainant, which is a classic example of typo squatting. The Respondent has a history of engaging in typo squatting (See Staples, Inc., Staples Contract & Commercial, Inc, Staples The Office Superstore, Inc. v. John Sansone, WIPO Case No.D2004-0018), in which case four domain names were involved. There is reason for this Panel to find pattern in the Respondent’s typo squatting attempts, which strengthens the finding that the <easyejt.com> domain name was registered and is being used in bad faith.

The Panel therefore finds that the requirement of Paragraph 4(a)(iii) has been satisfied.

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 <easyejt.com> be transferred to the Complainant easyGroup IP Licensing Limited.

Zoltán Takács
Sole Panelist

Dated: November 16, 2004