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EasyGroup IP Licensing Limited v. Mobiel Group (MG) [2005] GENDND 1623 (14 September 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

EasyGroup IP Licensing Limited v. Mobiel Group (MG)

Case No. D2005-0671

1. The Parties

The Complainant is EasyGroup IP Licensing Limited, London, United Kingdom of Great Britain and Northern Ireland, represented by Collyer-Bristow, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Mobiel Group (MG), Toronto, Canada.

2. The Domain Name and Registrar

The disputed domain name <easymobiel.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 24, 2005. On June 27, 2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On June 30, 2005, eNom transmitted by email to the Center its verification response confirming that it was the Registrar, that English was the language of the registration agreement and details for ascertaining the registrant of the domain name.

In circumstances that are not clear from the record, it would appear that at some point between the preparation and notification of the Complaint and the Center’s request for Registrar verification, the registration of the domain name was transferred from Digi Real Estate Foundation of Panama City to Mobiel Group, the present Respondent.

Accordingly, on July 1, 2005, the Center notified the Complainant that the Complaint was deficient in that the Respondent was incorrectly identified and, in addition, there had been no submission by the Complainant to the jurisdiction of the courts as required by paragraph 3(b)(xiii) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”).

On July 6, 2005, the Complainant submitted an Amended Complaint. The Center verified that the Amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “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 July 12, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was August 1, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 2, 2005.

The Center appointed Warwick, A. Rothnie as the sole panelist in this matter on August 16, 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

According to the Amended Complaint, the Complainant is a member of the easyGroup companies and since December 5, 2000, has acted as the central holder and administrator of the intellectual property rights held by that group.

The Amended Complaint claims that the first easyGroup company was easyJet Airline Company Limited which was founded and commenced operations in 1995. As its name suggests, that company has operated a commercial passenger airline since that date. Since then, the easyGroup has expanded its commercial activities to include a wide range of activities including easyInternetcafe, easyCar, easyMoney, easyCinema, easyBus, easyHotel, easyJobs, easyPizza, easyMusic, easyCruise and easyWatch.

As can be seen, all have adopted the corporate branding format of the prefix “easy” followed by a second word which is capitalized.

In early March 2004, the easyGroup’s website at “www.easy.com” announced that the group was shortly to launch a new line of business to be known as easyMobile. On May 26, 2004, the founder of the group issued a further press release announcing the group’s intention to launch the business under the name easyMobile. Further announcements including details of the proposed telecommunications partner for the venture followed on August 10 and, on November 29, 2004, the formal launch date in March 2005, was announced and, in fact, the business was launched on March 10, 2005.

The announcements in May and August 2004, in particular, were widely reported in the national and international press. Annexure 3 to the Amended Complaint includes a bundle of copies of this press coverage, the majority of which are dated in the first two weeks of August 2004.

Shortly after this, Digi Real Estate Foundation registered the domain name on August 14, 2004. According to the Amended Complaint, the domain name resolved to a website which advertised a number of different mobile telephone and mobile contract providers. Annexure 5 to the Amended Complaint includes illustrations of these including Cingular Wireless, Mobile Nokia, T-Mobile Prepaid Wireless and Three Mobile Video Phone. According to the Amended Complaint, however, the content of these advertisements changed from time to time.

The Complainant has a pending Community trade mark application for easyMobile No. E3784477, filed on April 20, 2004, and published on June 6, 2005. The Complainant has registered and claims to use some 43 domain names based on easyMobile. These include registrations in the gTLDs and many European ccTLDs.

As noted above, at some point in June or July 2005, Digi Real Estate Foundation transferred the domain name to the Respondent. According to the Amended Complaint, following the transfer the domain name resolved for some time to the Complainant’s website, but currently it resolves to a “web directory” page “powered by eNom”.

5. Discussion and Findings

As noted above, the Respondent has defaulted in submitting a Response. As the Center has communicated the Complaint to the contact details which the Registrar for the Domain Name has confirmed are the current contact details for the Respondent, the Panel is satisfied that the Center has taken all reasonable steps to bring the Complaint to the Respondent’s attention.

There being no Response, paragraphs 5(e) and 14(a) of the Rules direct the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the Complaint where the Respondent does not submit a Response. This is not a simple “rubber stamping”, however, as paragraph 15(a) directs the Panel to decide a Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and principles of law that the Panel deems applicable.

Under paragraph 4(a) of the Policy, the Complainant has the burden of proof in respect of the following three elements:

(i) The domain name is identical or confusingly similar to a trade mark 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.

The Panel considers each of these in turn below.

A. Identical or Confusingly Similar

There are two parts to this inquiry: does the Complainant have trademark rights and, if so, is the disputed domain name identical or confusingly similar to those rights.

The announcement of the forthcoming launch of the easyMobile business, generating as it did, very extensive media coverage both nationally and internationally is sufficient to accord the Complainant common law trade mark rights: see e.g. Glaxo plc v. GlaxoWellcome Ltd [1996] FSR 388; 42 IPR 317, Fletcher Challenge Ltd v. Fletcher Challenge Pty Ltd [1981] 1 NSWLR 196; [1982] FSR 1, both approved in British Telecom plc v One in a Million Ltd [1998] EWCA Civ 1272; [1998] 4 All ER 476; 42 IPR 289 (Eng CA).

Given the extent of the press coverage evidenced in the Amended Complaint, the Complainant’s trademark rights may well extend further than the United Kingdom. For the purposes of the Policy, however, it is sufficient that the rights have been demonstrated in at least one jurisdiction as a domain name can be accessed from almost anywhere in the world where connection to the Internet is available. This is not to say that demonstration of rights limited to one or a few jurisdictions only may not have significance as it may be possible for a respondent to show rights to use a confusingly similar trademark in another jurisdiction entirely without breaching the Complainant’s rights. Such matters fall for consideration, however, under other limbs of the requirements of paragraph 4 of the Policy.

The addition of the suffix “.com”, the gTLD, can be disregarded for the purposes of the comparison. The domain name is not identical to the Complainant’s demonstrated trademark rights, however, as it is a simple transcription of the Complainant’s common law trademark: the “l” and the “e” have simply been reversed. It has long been well established that such a simple difference, often referred to as “typosquatting”, cannot escape a finding of confusing similarity. This conclusion is further supported by some of the links on the website to which the domain name resolved while registered by Digi Real Estate Foundation. These included links to Mobiel Telefoon, Mobiel Bellen, and Mobiel Abonnementen.

Accordingly, the Panel finds that the domain name is confusingly similar to the trademark rights demonstrated by the Complainant.

B. Rights or Legitimate Interests

The second factor that the Complainant is required to establish is that the Respondent has no rights or legitimate interests in respect of the domain name.

Paragraph 4(c) sets out three examples of rights or legitimate interests for the purposes of the Policy. They are:

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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 instances are not an exhaustive enumeration of rights or legitimate interests, they are illustrations only.

In view of the difficulty in disproving a negative, the Complainant must adduce sufficient material to raise a prima facie case under this factor and then an evidential burden shifts to the Respondent to rebut that prima facie case.

In this connection, the Complainant denies that it has ever licensed or authorised either Digi Real Estate Foundation or the Respondent to use the domain name. The Complainant points out that “easymobiel” is not the name of Digi Real Estate Foundation, nor from the searches that the Complainant’s representatives undertook was it the name of Digi Real Estate Foundation’s business. It is not a name of any of the services or products promoted on the website pages which are included in Annexure 5 to the Amended Complaint. While more directly relevant to the third requirement – that of registration and use in bad faith, it is relevant also to note that Digi Real Estate Foundation appears to have a history of registering the well-known trade marks of others including Adidas-Salomon AG v. Digi Real Estate Foundation, WIPO Case No. D2004-1079, Medco Health Solutions Inc v. Digi Real Estate Foundation, WIPO Case No. D2005-0216 and Robert Half International v. Digi Real Estate Foundation, Nominet Dispute No 2177. The Complainant also points out that, after Digi Real Estate Foundation had been notified of the dispute (in the circumstances outlined further below) and either shortly before or contemporaneously with the transfer of the domain name to the Respondent, Digi Real Estate Foundation in fact registered <easymobie.com> as a domain name.

These circumstances taken together would be more than sufficient to found a prima facie case that Digi Real Estate Foundation had no rights nor legitimate interests in the domain name were it the Respondent.

The Complainant next alleges (and there is no contradictory statements from either Digi Real Estate Foundation or the Respondent, both of whom have been served) that it first wrote to Digi Real Estate Foundation in April 28, 2005, objecting to Digi Real Estate Foundation’s registration and use of the domain name. No response to that letter being received, a further written challenge was sent by post, fax and email on May 25, 2005. No response was received again. Instead, the domain name was transferred to the present Respondent.

As already noted, the Complainant denies ever licensing or authorising the Respondent to use the domain name. The domain name is not identical to the Respondent’s name. There is, however, some connection. The Complainant claims that an Internet search it undertook disclosed no record of the Respondent as a trading entity. That could not by itself be conclusive. Moreover, the Panel does note that the domain name did resolve to the Complainant’s website after the transfer of the domain name from Digi Real Estate Foundation. It no longer does, however. This raises an inference that the resolution of the domain name to the Complainant’s website was either a mere pretext or done without any contractual or other basis for entitlement. In circumstances where:

(a) the first registrant of the domain name did not on this record have rights to the name or trademark;

(b) there is no evidence that the Respondent was using either its name or a trademark corresponding to the domain name either independently of the Complainant or prior to the Complainant first challenging Digi Real Estate Foundation;

(c) the circumstances surrounding the transfer of the domain from Digi Real Estate Foundation to the Respondent are not clear; and

(d) the transfer was effected in the face of the Complainant’s legal objections,

the inference is open that the Respondent could not claim rights or legitimate interests in the domain name. At the very least, the evidential burden has shifted to the Respondent to put forward an explanation indicating when it first adopted the name or started using the trademark or what other basis it claims entitlement to use the domain name. The failure to put forward such explanatory facts, or any other basis, allows the inference to be drawn that nothing the Respondent could have said would have assisted its claim.

Accordingly, the Panel finds that the Complainant has sufficiently demonstrated that the Respondent does not have rights or legitimate interests in the domain name for the purposes of the Policy.

C. Registered and Used in Bad Faith

The third requirement that the Complainant must demonstrate to succeed is that the domain name has been registered and used in bad faith. In connection with this factor, paragraph 4(b) of the Policy provides:

b. Evidence of Registration and Use in Bad Faith.

For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

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

These are examples of “bad faith” only and not an exhaustive listing as they are listed “without limitation”.

It is clear from the circumstances discussed above that Digi Real Estate Foundation has engaged in a pattern of conduct involving the registration of others’ trademarks as domain names. Moreover, in this case, the domain name is a simple misspelling of the Complainant’s trademark, or possibly a Dutch/Flemish variant of it, and Digi Real Estate Foundation used the domain name to resolve to a website where products and services of the Complainant’s competitors were offered. These circumstances would clearly constitute registration and use of the domain name in bad faith by Digi Real Estate Foundation.

When the domain name has been transferred in the middle of a dispute between the trademark owner and the original registrant, a number of panels have been willing to find that the subsequent transfer has been infected with the original registrant’s bad faith. See e.g. Dixons Group plc v Mr. Abu Adbullaah, WIPO Case No. D2000-1406; National Collegiate Athletic Association v. Dusty Brown WIPO Case No. D2004-0491; Wild West Domains, Inc. v. Neo Jung WIPO Case No. D2004-0243.

This case is arguably different to those cases in that in many of the earlier decisions the transferee/respondent was directly seised with knowledge of the dispute (e.g. Motorola, Inc. v. NewGate Internet, Inc., WIPO Case No. D2000-0079) or was shown to be an associate of the original registrant (e.g. the Dusty Brown case). Evidence of such a direct nature has not always been required and, in any event, such a strict requirement could seriously undermine the efficacy of the Policy.

In this case, the factors referred to at paragraphs (a) to (d) under Rights or Legitimate Interests above need to be borne in mind. Further, the temporary resolution of the domain name to the Complainant’s website shows that the Respondent was aware of the Complainant’s trademark and business under the name easyMobile. That awareness, in the absence of rights or legitimate interests in the domain name, indicates a purpose similar to those struck at by paragraphs (i), (ii) and (iv) of paragraph 4(b) of the Policy. The fact that the website that the domain name resolved to was the Complainant’s indicates that the Respondent did not, and does not, have an independent business under “easymobiel”. The temporary nature of that resolution indicates that the Respondent did not claim some right or authority from the Complainant to use the domain name.

The tainted nature of Digi Real Estate Foundation’s registration and use of the domain name and the circumstances relating specifically to the Respondent outlined above allow the further inference to be drawn that the Respondent has also registered and used the domain name in bad faith or, at the least, is complicit in Digi Real Estate Foundation’s conduct. These inferences can be more confidently drawn as the Respondent, although notified of the Amended Complaint, has not sought to challenge the Complainant’s allegations or otherwise to rebut the inference of bad faith.

Accordingly, on the record in this proceeding, the Panel finds that the Complainant has established that the Respondent has registered and used the domain name in bad faith.

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, <easymobiel.com>, be transferred to the Complainant.

Warwick, A. Rothnie
Sole Panelist

Dated: September 14, 2005