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Easygroup IP Licensing Limited v. AHN [2005] GENDND 2138 (1 December 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Easygroup IP Licensing Limited v. AHN

Case No. D2005-0949

1. The Parties

The Complainant is Easygroup IP Licensing Limited, London, United Kingdom of Great Britain and Northern Ireland, represented by DLA Piper Rudnick Gray Cary UK LLP, United Kingdom of Great Britain and Northern Ireland.

The Respondent is AHN, Hanam Si, Gyeonggi-Do, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name is <easyhote.com> registered with Cydentity, Inc. d/b/a Cypack.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 5, 2005. On September 7, 2005, the Center transmitted by email to Cydentity, Inc. d/b/a Cypack.com a request for registrar verification in connection with the domain name(s) at issue. On September 9, 2005, Cydentity, Inc. d/b/a Cypack.com 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 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 October 6, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was October 26, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 27, 2005.

The Center appointed Thomas P. Pinansky as the Sole Panelist in this matter on November 10, 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 has used, registered or applied to register the mark EASYHOTEL in many countries around the world. In particular, the Complainant is the proprietor of trademark registrations for EASYHOTEL in the United Kingdom and the United States of America. It is also the proprietor of a Community Trademark for EASYHOTEL. The trademark registrations are predominantly concerned with the provision of travel, hotel and accommodation goods and services. Both the United Kingdom registered trademark (registration No. 2246286) and the Community Trade Mark (CTM) (registration number 1866706) were filed on September 21, 2000.

The Complainant is the owner of a worldwide trademark portfolio and the Complainant’s trademarks have become synonymous with travel, hotel and accommodation services.

The Complainant has extensively used and promoted the EASYHOTEL trademark.

5. Parties’ Contentions

A. Complainant

The only difference between the Respondent’s domain name and the Complainant’s EASYHOTEL trademarks is the omission of the letter “L.” However this difference does not conceal the fact that the Respondent’s domain name and the Complainant’s EASYHOTEL trademarks are similar in sound, appearance and idea. The Respondent’s domain name consists entirely of the distinctive term EASYHOTEL with the deletion of the final character “L.” A casual Internet user might mistakenly omit the “L” character when typing in the Complainant’s domain name <easyhotel.com>.

The Complainant therefore submits that the Respondent registered the domain name <easyhote.com> in order to obtain Internet traffic from would be customers of the Complainant who may erroneously or mistakenly type in the misspelled version of the Complainant’s EASYHOTEL trademark.

The Respondent is engaging in the practice of “typosquatting.”

The domain name <easyhote.com> is confusingly similar to the Complainant’s EASYHOTEL trademark, with the Respondent’s domain name being a slight typographical variant of the Complainant’s trademark. Accordingly the provisions of paragraph 4(a)(i) of the Policy are satisfied.

The Complainant does not believe that the Respondent can demonstrate any circumstances that would evidence rights to and legitimate interests in the domain name for the purpose of paragraph 4(c) of the Policy.

It is submitted that the domain name cannot be used by the Respondent in connection with a bona fide offering of goods or services in view of the Complainant and the Complainant’s trademarks (paragraph 4(c)(i) of the Policy). The domain name could not have been chosen for any reason other than its association with the Complainant’s EASYHOTEL trademark. The Respondent must have been aware of the Complainant’s EASYHOTEL trademark at the time of registration of the domain name on December 24, 2004, sometime after the Complainant’s EASYHOTEL business had been extensively publicised in newspapers across the world.

The Respondent’s website does not reveal any use of the name “easyhote” and the Respondent has not been commonly known by the domain name <easyhote.com> (paragraph 4(c)(ii) of the Policy).

Furthermore, in view of the fame of the Complainant’s EASYHOTEL mark the Respondent cannot make a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark (paragraph 4(c)(iii) of the Policy).

Internet users attempting to access “www.easyhotel.com” may inadvertently access “www.easyhote.com” instead. The links provided on “www.easyhote.com” include links to the Complainant’s competitors and there is a risk that such users will not proceed to the Complainant’s website “www.easyhotel.com,” instead choosing to visit one of the Complainant’s competitor’s websites hence resulting in a lost sales opportunity for the Complainant.

If the Complainant’s mark is distinctive, as is the case with the EASYHOTEL mark and the “EASY” family of marks, bad faith is found if it is unlikely that the Respondent would have selected the domain name without knowing of this reputation

The Complainant submits that the Respondent’s practice of “typosquatting” is evidence of bad faith. The Respondent has made no effort to avoid confusion by posting a disclaimer on its website stating that it is not associated with the Complainant.

The website at “www.sedo.co.uk” further states that Sedo offers “domain parking” services. It is clear from the print out at Annex J to the Complaint that in return for Sedo hosting the “www.easyhote.com” site, the Respondent earns money from each customer who clicks on an advertisement link on “www.easyhote.com.” The Complainant submits that this is evidence of bad faith in accordance with Paragraph 49b)(i)(4) of the Policy.

B. Respondent

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

6. Discussion and Findings

A. Selection of Language

It is noted that the language of the registration agreement for the domain name is Korean.

According to Paragraph 11 of the Rules, the language of the administrative proceeding shall be the language of the registration agreement unless the Panel decided otherwise. The spirit of Paragraph 11 is to ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language, the expenses to be incurred and possibility of delay in the proceeding in the event translations are required and other relevant factors.

In the present case, the registration agreement for the domain name was made in the Korean language. However, as the “www.easyhote.com” website links to ten hotel groups and holiday providers and the links are in English, it may be inferred that the Respondent has sufficient ability communicating in the English language. (See Annex F to the Complaint).

On the other hand, the Complainant is not able to communicate in Korean and therefore, if the Complainant was to submit all documents in Korean, the proceeding will be unduly delayed and the Complainant would have to incur substantial expenses for translation. Therefore, in consideration of the above circumstances and in the interest of fairness to both parties, the Panel decides, under Paragraph 11 of the Rules, that (i) English shall be the language of the administrative proceeding in this case, but on the condition that (ii) to the extent that the Respondent would have submitted any documents or assertions in Korean, such documents or assertions would have been considered by the Panel. The Panel notes that this was not the case here, as the Respondent did not reply to the Complainant’s contentions. See Groupe Industriel Marcel Dassault, Dassault Aviation v. Mr. Minwoo Park, WIPO Case No. D2003-0989.

B. Substantive Elements of the Policy

Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint on the grounds of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

Moreover, under paragraph 14(b) of the Rules, it is established that: “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.”

In light of the above, the Panel may draw such inferences from the Respondent’s failure to comply with the Rules as he considers appropriate (see Paragraph 14(b) of the Rules; see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009).

Under paragraph 4(a) of the Policy, Complainants must prove each of the following:

(i) the domain name is identical or confusingly similar to Complainants’ trademark or service mark;

(ii) 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.

C. Identical or Confusingly Similar

The Complainant’s marks are registered in many countries. The Complainant owns numerous marks using EASYHOTEL. The domain name is identical to the Complainant’s trademarks except for the omission of the letter “L.” The Panel finds that this is a case of “typosquatting” and as such creates sufficient similarity (see paragraph 4(a) of the Policy and Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc., WIPO Case No. D2001-1314; PlayBoy Enterprises v. Movie Name Company, WIPO Case No. D2001-1201; Pfizer Inc v. Phizer’s Antiques ad Robert Phizer, WIPO Case No. D2002-0410; Expedia Inc v. Europen Travel network, WIPO Case No. D2000-0137).

Therefore, the Panel finds that the domain name is confusingly similar to the Complainant’s marks pursuant to the Policy paragraph 4(a)(i).

D. Rights or Legitimate Interests

According to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the domain name. In connection with the burden of proof, several past UDRP decisions have held that “once a Complainant establishes prima facie evidence showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing” (see among others, Universal City Studios, Inc. v. David Burns and Adam-12 Dot Com, WIPO Case No. D2001-0784; see also International Hospitality Management-IHM S.p.A. v. Enrico Callegari Ecostudio, WIPO Case No. D2002-0683).

The Complainant has asserted that the Respondent has no relationship with or authorization from the Complainant to use its marks; the Panel notes that there is nothing in the record to suggest that the Respondent has been commonly known by the domain name; the Panel further notes that the Respondent has not, and has never been, commonly known by the domain name. The Panel’s view is that these facts must be taken as proven provided that they have not been denied by the Respondent.

The Respondent has not submitted a proper response. Therefore, the Respondent has failed to invoke any circumstance that could have demonstrated any rights or legitimate interests in the domain name under paragraph 4(c) of the Policy. Accordingly the Panel holds that the Respondent has no legitimate interests or rights in the domain name pursuant to paragraph 4(b) of the Policy.

E. Registered and Used in Bad Faith

Both under past UDRP decisions (see for instance Nike, Inc. v. B.B. de Boer, WIPO Case No. D2000-1397 and Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806) and under the Policy (see paragraph 2 of the Policy), a well-established principle is that when someone registers a domain name, he represents and warrants to the registrar that, to his knowledge, the registration of the domain name will not infringe the rights of any third party. In the case at issue, the Panel reasonably finds that since the Complainant’s trademark is known worldwide, it is unlikely that the Respondent, at the time of registration of the domain name or thereafter, was not aware that he was infringing the Complainant’s trademarks.

Bad faith can be presumed based on the fame of the Complainant’s marks, such that the Respondent was aware or should have been aware of the Complainant’s well-known marks and claims of rights thereto. Furthermore, any trademark check of the records of the patent and trademark offices of the United Kingdom, the United States of America, or of many other countries would have made the Complainant’s registrations known to the Respondent.

The Respondent has, in using the domain name, likely diverted Internet users to a competing website, via “typosquatting” when any such user inadvertently slightly misspells on mistypes the name or mark of the Complainant (see NetWizards Inc v. Spectrum Enterprises, WIPO Case No. D2000-1768).

The conduct described above falls squarely within paragraph 4(b)(vi) of the Policy and accordingly the Panel concludes that the Respondent registered and used the domain name in bad faith.

In light of the above, the Panel concludes that the Complainant has proven bad faith in registration and use on the part of the Respondent.

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 <easyhote.com> be transferred to the Complainant.

Thomas P. Pinansky
Sole Panelist

Dated: December 1, 2005