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Easygroup IP Licensing Limited v. The Carphone Warehouse Limited [2005] GENDND 1307 (13 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Easygroup IP Licensing Limited v. The Carphone Warehouse Limited

Case No. D2005-0477

1. The Parties

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

The Respondent is The Carphone Warehouse Limited, London, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed Domain Name <ezeemobile.com> is registered with Namebay.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2005. On May 3, 2005, the Center transmitted by email to Namebay a request for registrar verification in connection with the Domain Name at issue. On May 5, 2005, Namebay transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contacts. The Center verified that the Complaint together with the amendment to 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 May 19, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 8, 2005. The Response was filed with the Center on June 8, 2005. On July 8, 2005, the Complainant submitted a supplemental filing being a decision in a related Domain Name case concerning EASIERMOBILE which, by Panel decision dated June 28, 2005, in WIPO Case No. D2005-0421, has been ordered to be transferred to the Complainant.

The Center appointed Jon Lang as the sole panelist in this matter on June 24, 2005. 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 member of a group of companies referred to collectively as the “easyGroup”. The core easyGroup businesses include: easyMobile, easyJet, easyCar to name but a few. Since November 2000, the Complainant has operated as the proprietor of the intellectual property rights owned by the easyGroup companies and core businesses. The trade marks licensed to and used by the easyGroup businesses possess distinctive features including the prefix ‘easy’ together with another word or words that alludes to the service being offered so as to form one new word. The word ‘easy’ is always in lower case type and the first letter of the second word is always in upper case type. The Complainant has several trade mark registrations incorporating these features and has applied for Community Trade Mark E3784477 for easyMobile in classes 9 and 38 which has not yet been granted. The Complainant has licensed the use of the easyMobile mark and the easyMobile business is operated through a partnership between TDC and the Complainant which was completed in August 2004. The easyMobile business was launched on March 10, 2005, and offers a mobile telephony service with sales made through the website “www.easymobile.com”. The launch of the easyMobile business was preceded and accompanied by various announcements and reports in the press from May 2004, onwards, and from at least March 2004, “www.easymobile.com” resolved to a ‘holding page’.

The Respondent operates a mobile phone service under the name ‘Fresh’. The Complainant and the Respondent are competitors for present purposes. At some point until very recently, a google search using the words ‘easyMobile’ would produce, in addition to search results, a number of sponsored links (appearing to the right of the search results) one being to the Respondent’s site at “www.carphonewarehouse.com” and another to the Respondent’s Fresh business at “www.easiermobile.com” (a Domain Name which, by Panel decision dated June 28, 2005, in WIPO Case No. D2005-0421, which this Panel exercises its discretion to consider as a supplemental filing by the Complainant, has been ordered to be transferred to the Complainant). The latter link no longer appears and the former link appears to be inoperative.

5. Parties’ Contentions

A. Complainant

The Complainant says that it and easyMobile are the proprietors of substantial goodwill and reputation in the EASYMOBILE mark in the field of telecommunications, in services offered and delivered in particular by means of the internet. It says it is the proprietor of approximately 500 registered trade marks and 300 unregistered trade marks and trade mark applications which comprise the prefix EASY. It says the EASYMOBILE mark is already well known in the UK, Europe and internationally as denoting services provided by easyMobile. The Complainant says that the Domain Name <ezeemobile.com> is confusingly similar to the Complainant’s mark EASYMOBILE, that the Respondent has no rights or legitimate interest in the Domain Name <ezeemobile.com>, that it was registered and is being used in bad faith and that it should, in all the circumstances, be transferred to the Complainant.

B. Respondent

The Respondent’s position is that the Complainant does not own rights in the names EASY or EASYMOBILE, that its Domain Name is not confusingly similar to the mark EASYMOBILE, that it has rights and legitimate interests in the Domain Name and that it was not registered or being used in bad faith.

6. Discussion and Findings

The Complainant must show, for the purposes of Paragraph 4(a) of the Policy, that the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; that the Respondent has no rights to or legitimate interests in the Domain Name and that it was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant relies on the following assertions in support of its claim that the Domain Name is confusingly similar:

a) the Domain Name conveys the same conceptual meaning as EASYMOBILE

b) it is visually similar and phonetically identical

c) the Respondent chose the Domain Name because it was confusingly similar

d) traders and the public will immediately associate the Domain Name with the Complainant’s family of marks with which they are familiar

e) the replacing of EASY with EZEE is an obvious attempt to take advantage of internet users attempting to reach the Complainant’s website leading to confusion between the Respondent’s website and the easyMobile site and such confusion is likely to result in lost sales

The Respondent’s position can be summarised as follows:

a) the Complainant does not own common law rights in the words EASY or EASYMOBILE and cannot have common law rights to exclusivity because there exists some 1700 third party companies using the term EASY alone or associated with another word;

b) the name “EASY”, either alone or associated with another word, has been registered as a trademark by numerous third parties;

c) the public does not immediately associate the use of the word “EASY”, either alone or associated with another descriptive term, with the Complainant or the business of the Complainant;

d) the evidence submitted by the Complainant demonstrates that it has previously applied for, but does not own a registered trademark in the word “EASY”. The first trade mark application (2253872) was refused, the second (2247942) was applied for in 2000 but its registration process is being delayed and the last application (2325850) is a figurative trade mark applied for in 2003 that has not yet been registered. The Respondent also says that the Complainant has applied for the registration of a Community trade mark “EASYMOBILE” (E3784477), but that it has not yet been registered, has not been published for opposition purposes and that the Respondent reserves its right to oppose such registration;

e) the words “EASY MOBILE” (used together) are used by a number of other companies and to the Respondent’s knowledge companies such as “Easy Mobile Limited” or “Easy Mobile (UK) Limited” are not associated with the Complainant and further, Domain Names such as “easymobile.fr” or “easymobile.de” are registered by third parties;

f) a Google search for “EASY MOBILE” shows 55,000,000 results of third parties using the terms “EASY MOBILE” to describe their services or product offerings;

g) it is unfounded that the trade mark “EASYMOBILE” is already well known in the UK, Europe and internationally because the service branded “EASYMOBILE” by the Complainant is only offered in the UK and moreover, Domain Names such as <easymobile.fr> or <easymobile.de> are already registered by third parties;

h) the Complainant’s reference to its other trade marks is irrelevant in demonstrating goodwill in the names “EASY” and “EASYMOBILE”. The fact that the Complainant has been using trademarks or names such as “EASYJET” or “EASYCAR” does not prove that it owns or has established any substantial goodwill in the names “EASY” or “EASYMOBILE”.

The Respondent also makes a number of general assertions in relation to descriptive marks. It says that rights in a descriptive trademark are very limited – that the Complainant’s trade mark is composed of two words which are very descriptive of the products and services in respect of which it is being applied for. The words “EASY” and “MOBILE” both encapsulate characteristics of the service proposed by the Complainant which is the provision of a mobile telecommunications service. These words clearly designate the service offered and that if the Complainant succeeds in registering EASYMOBILE, it will be in stylized form (in ‘fancy’ type font, as a single word mark in lower case type font apart from the ‘M’ in mobile, which will be in upper case). The Respondent says that the Complainant will not be permitted to monopolise these descriptive words such that the scope of protection the Complainant will achieve if its trade mark is registered will be very narrow - protection will only be offered against reproduction of the features of the trade mark (the fancy type font, the upper and lower cases and the connection of the words “EASY” and “MOBILE”). Thus, the Complainant’s trademark application, if successful, will only give it rights limited to the stylized elements that make the trade mark distinctive.

In short, the Respondent maintains that the differences between the Domain Name and EASYMOBILE are enough to make them sufficiently distinct so as to avoid any confusion. It also makes the point that mistyping by a user intending to type EASYMOBILE is unlikely to result in the typing of EZEEMOBILE and that there are other more likely mistypings.

Findings

The Complainant does not need to establish that it has exclusive rights in the word EASY or EASYMOBILE; it simply needs to establish it has rights of some kind in the trademark to which the Domain Name is confusingly similar. It is clear that in so far as the word ‘EASY’ alone is concerned, the Complainant cannot claim any rights (see EASYJET AIRLINE V DAINTY [2002] FSR 116, in which it was said ‘ ….the Claimants are not entitled to appropriate the word ‘easy’ and prevent any businessman from using any name which includes the word ‘easy’). However, the Claimant did succeed in that case because a likelihood of deception had been made out, largely because the judge found that the Defendant did have the Claimant’s ‘get-up’ in mind when designing its own website which led on to a number of other findings against the Defendant. Here, it is common ground that, at least so far as the Respondent’s website is concerned, it does not make use of the mark EASYMOBILE to sell its goods and services and, apart from a reference to airlines in the sentence “The Carphone Warehouse doesn’t try to run airlines,….”, a picture of an airplane and use of the word ‘easy’ in the sentence “How easy is that?”, there is not much to associate it with the Complainant’s business. It certainly cannot be said, as was the case in EASYJET AIRLINES V DAINTY, that the website ‘..was calculated to take advantage of as close an association with easyJet, as the defendant could devise’. Here, if anything, the Respondent seeks to distinguish its offering from that of the Complainant.

However, Panels must be conscious of (but not bound by) emerging consensus and majority views in decisions made under the Policy and there does seem to be a consensus view concerning the extent to which the content of a Domain Name owner’s website (in terms of similarity to the business of a trade mark owner) can be taken into account for the purposes of determining confusing similarity. The consensus view is that the content of a website should not be taken into account. The rationale for this view is perhaps best illustrated by the decision in Arthur Guinness Son & Co. (Dublin) Limited v Dejan Macesic, WIPO Case No. D2000–1698, in which it was said:

‘The Respondent does not deny that the disputed Domain Name is confusingly similar to the GUINNESS trademark. Rather he says there is no trade marks infringement because his site does not sell similar wares in the same geographical sphere as the Complainant. But there is an important distinction between the Domain Name on the one hand and the Website on the other. The use to which the site is put has no bearing upon the issue whether the Domain Name is confusingly similar to the trade mark, because by the time Internet users arrive at the Website, they have already been confused by the similarity between the Domain Name and the Complainant’s mark into thinking they are on their way to the Complainant’s Website.’

This Panel agrees with the consensus view on this issue and shall disregard the Respondent’s website from its further consideration.

The Panel notes that the Complainant is not yet the proprietor of the registered trade mark ‘EASYMOBILE’ and also that its easyMobile business was not launched until a day after the Domain Name was registered. However, the Panel accepts the submissions of the Complainant that there was pre-launch activity such that it is satisfied that the Complainant has unregistered trade mark rights in ‘EASYMOBILE’ and possessed such rights at the time the Domain Name was registered. However, such rights are unlikely to be regarded as absolute but rather limited in some way by reference to the Complainant’s distinctive style, font etc. Thus, this Panel finds that the Complainant does have rights for the purposes of paragraph 4(a) of the Policy and given the emerging jurisprudence, disregards the Respondent’s website and its possible ameliorating effect on the likelihood of ‘confusing similarity’.

However, that leaves the question of whether there is in fact confusing similarity. There can be little doubt that the trademark EASYMOBILE and the Domain Name <ezeemobile.com> are similar – they are almost phonetically identical and are capable of conveying the same conceptual meaning. But this Panel does not find that they are ‘confusingly similar’. They do not look visually similar and, given the strength and recognition of the EASY brand, not least the fact that the Complainant never varies the spelling of the ever present prefix EASY, it is unlikely that a user would associate a Domain Name beginning with EZEE (as opposed to EASY) with the Complainant’s mark or family of marks. It should also be noted that of all the possible misspellings of EASYMOBILE, a user is unlikely to mistype EZEEMOBILE. In all the circumstances, this Panel decides that the Domain Name <ezeemobile.com> is not confusingly similar to the trademark EASYMOBILE.

A Complainant must show that each of the three elements of paragraph 4(a) of the Policy are present, namely that the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it was registered and is being used in bad faith. Given the Panel’s finding in relation to confusing similarity it does not need to go on to consider the existence or otherwise of rights or legitimate interests in the Domain Name or bad faith registration and use of it but, for the sake of completeness, it will recite the parties’ contentions.

B. Rights or Legitimate Interests

The Complainant submits that the Respondent has no rights or legitimate interests in the Domain Name because:

a) it is not authorised to use the Complainant’s trademark EASYMOBILE

b) the Respondent is not known by the Domain Name – it offers goods and services on its website to which the Domain Name resolves under the brand FRESH, not EZEEMOBILE

c) THE Respondent’s website displays a picture of an aircraft under which it is stated, “The Carphone Warehouse doesn’t try and run airlines,…...” The caption goes on to describe a low cost mobile phone service, ending with the words, “How easy is that?” and the Complainant says that the reference to ‘airlines’ and ‘easy’ is clearly a reference to it. The Complainant also says that these references are intended to persuade customers to purchase the Respondent’s services resulting in lost sales to the Respondent

d) the Respondent could not claim to be known by a mark which is virtually identical or confusingly similar to EASYMOBILE given the fame of the Complainant’s marks comprising the prefix EASY

e) the Respondent has not been known by the mark EZEEMOBILE and even if it had accrued any rights, such rights would be pre-dated by the Complainant’s rights

The Respondent says that:

a) any third party, competitor or otherwise, of the Complainant is free to use the descriptive words of the Complainant’s trade mark as long as it does not reproduce the specific elements of the trade mark in an identical fashion or in any similar way which is likely to cause confusion to the public (and such would be the case if competitors were using the Complainant’s unique type and colours, orange and blue, or font). The Respondent has exhibited evidence it says shows that there exists numerous companies using the descriptive name “EASY MOBILE”

b) the Respondent submits that it has a legitimate interest in using the words “EZEE” and “MOBILE” together in its Domain Name. The Respondent’s intention in registering the Domain Name was to use a terminology (“EZEE”) commonly used among young people in their text messages or on the Internet, and to associate it with its service and product offering “MOBILE”. The Respondent also submits that the word “EZEE” is already used by numerous other companies and exhibits evidence in support

c) in relation to the use of the word ‘airlines’ and ‘easy’, the Respondent states that comparative advertising is allowed under English law.

In view of the finding that the Domain Name <ezeemobile.com> is not confusingly similar to the trademark EASYMOBILE, the Panel need not and does not make any finding on the issue of rights to or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

The Complainant states as follows:

a) that the Respondent has also registered <ezeemobile.co.uk> and <easiermobile.co.uk> and its internet service provider has registered <easiermobile.com> in which a decision has just been made in its favour (WIPO Case No. D2005-0421).

b) that the Respondent has purchased the following keywords – ‘easymobile’ and ‘easiermobile’ on Google and Yahoo and that some users will believe that such sponsored links are connected to the Complainant and once at the Respondent’s site, a number of users will remain confused and end up purchasing the Respondent’s goods and services believing them to be connected to, authorised by or otherwise affiliated with the Complainant, and others will simply purchase from the Respondent because they will not wish to carry out a further search. The Complainant says that this is clearly an attempt to damage the commercialisation of easyMobile’s business and to divert business away from it. There is some doubt over whether the sponsored link(s) has been terminated – the Complainant says it has, the Respondent says that it has not

c) the Respondent has also displayed posters in its shop windows, depicting the home page of “www.ezeemobile” allegedly in a further attempt to disrupt the business of the Complainant

The Respondent states as follows:

a) the Respondent denies knowing about the Complainant’s planned launch and states that the Complainant has provided no proof of its advertising material to illustrate that the Respondent ought reasonably to have known about the launch.

b) that even if it had been aware of pre-launch advertising and publicity, such advertising and publicity cannot in itself constitute proof of goodwill and that on the 9th March 2005, the date when the Domain Name was registered, it is denied that the Complainant could have had the requisite goodwill in “EASYMOBILE” as it only launched its service on March 10, 2005.

c) the Respondent further submits that even if it had previously been aware of the Complainant’s launch, the Respondent had no reason to believe that the registration of the descriptive Domain Name <ezeemobile.com> would constitute bad faith.

d) the Respondent denies that it is using the Domain Name in an intentional attempt to make any commercial gain by attracting Internet users to the Respondent’s web site through creating a likelihood of confusion with the Complainant’s mark and maintains that there is no confusion or likelihood of confusion for the following reasons:

- any third party is entitled to purchase keywords with Google or Yahoo as long as these keywords are not infringing a third party’s trade mark and the purchase of descriptive terms such as “EASY” or “EASIER MOBILE” does not per se amount to bad faith

- an Internet user carrying out a search through a search engine such as Google and using the words “easiermobile” or “easymobile” will be presented with a results page which may include advertisements on the right hand side which are known as “sponsored links”. The Respondent’s Domain Name and website are not the only Domain Name and website using the words “EASY” and “MOBILE” which appear in such sponsored links. In any event, the Respondent’s sponsored link(s) clearly states that the website is the Respondent’s website

- the Respondent also says that Internet users know that the results of a search are not completely ‘accurate’ and that once at its website, a user cannot be confused as to the origin of the goods and services. None of the names or colours of the Complainant are used. Instead, the website uses different names and clearly and visibly uses the brand names “THE CARPHONE WAREHOUSE” and “FRESH” with the distinctive green colour that has been associated with the “FRESH” brand since it was launched a few years ago. The design, the get up and the layout of the Respondent’s website is also very different from that of the Complainant.

In view of the finding that the Domain Name <ezeemobile.com> is not confusingly similar to the trademark EASYMOBILE, the Panel need not and does not make any finding on the issue of bad faith registration and use.

7. Decision

For all the foregoing reasons, the Complaint is denied.

Jon Lang
Sole Panelist

Dated: July 13, 2005