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Société des Hôtels Méridien v. Mr. Richard Kaminskas [2005] GENDND 594 (12 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

EasyGroup IP Licensing Limited v. PSINet UK Limited

Case No. D2005-0421

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 PSINet UK Limited, Cambridge, United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain name <easiermobile.com> is registered with Namebay.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2005. On April 20, 2005, the Center transmitted by email to Namebay a request for registrar verification in connection with the domain name at issue. On April 20, 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 contact. In response to a notification by the Center that the Complaint was administratively deficient (due to the lack of an electronic version of the Complaint), the Complainant filed an electronic version of the Complaint on April 21, 2005. 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 April 26, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 21, 2005. The Response was filed with the Center on May 21, 2005.

The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on June 7, 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 that operates under the name “easyGroup”. The “easyGroup” runs a number of businesses under the name “easy,” followed by a word that is descriptive of the business or service in question. The Complainant’s registered trademarks in the UK include: “EASYJET,” “EASYBUS,” and “EASY EVERYTHING”. On April 20, 2004, the Complainant filed for a Community Trademark registration for “EASYMOBILE.” The “EASYMOBILE” business was launched on March 10, 2005, offering a pre-pay mobile service. The domain name <easymobile.com> was registered on September 26, 2000.

The Respondent is an established company in the United Kingdom in the field of mobile products and services. The Respondent registered the disputed domain name on March 10, 2005.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

1. The Complainant is the proprietor of substantial goodwill and reputation in the trademark “EASYMOBILE,” due to the extensive marketing and promotion of the “EASYMOBILE” business. The Complainant claims that the intention of easyGroup to launch the “EASYMOBILE” business was announced in various press and media reports as of, at least, March 2004. This goodwill is also buttressed, according to the Complainant, by the existence of approximately 500 registered trademarks, and 300 trademark applications worldwide, which comprise the prefix EASY and a word describing the concerned business.

2. The disputed domain name is confusingly similar to its trademark EASYMOBILE phonetically, visually and conceptually. The Complainant claims that the public associates a “family” of marks with the Complainant and, when the public comes across another mark having similar characteristics, the association will be made with the Complainant’s marks. Therefore, the replacing of EASY with EASIER is an attempt to take advantage of internet users trying to reach the website of the Complainant.

3. The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant cites a number of reasons for this claim, including: the Respondent is not known by the disputed domain name, the goods and services offered on the site actually operate under the brand FRESH, the disputed domain name leads to another site which advertises the mobile services of the Respondent, and the site of the disputed domain name makes a reference to “airlines” (in direct reference to the Complainant).

4. The domain name has been registered and used in bad faith. In this regard, the Complainant notes that the Respondent had also registered the keyword “easyMobile” and “easiermobile” on Google and Yahoo, in a further attempt to redirect internet users seeking the Complainant’s site to the Respondent’s site.

B. Respondent

The Respondent submits that:

1. The Complainant does not own any trademark rights in the name “EASYMOBILE”. Firstly, the Respondent points out that the Complainant does not have a registered “EASYMOBILE” trademark (the Community trademark application has not yet matured into a registration). Secondly, the Complainant’s trademark is composed of two descriptive words and rights in such descriptive trademarks are very limited; the Complainant, even if his application is ultimately successful, cannot monopolize those descriptive words. Thirdly, the Complainant has applied for the registration of a figurative mark (with the words “easy” and “mobile” written in fancy type). Fourthly, the Complainant does not own any common law rights in the name “EASYMOBILE”. The Respondent bases this conclusion on a number of claims, including: the Complainant does not present conclusive proof of the alleged goodwill or reputation; most of the Complainant’s registered marks are “figurative marks”; the public does not associate the words “easy” or “easy mobile” with the Complainant’s mobile business; third parties in the UK and elsewhere are also using the words “Easy mobile”; and, a mark related to a service launched as recently as March 2005, cannot be called “well-known”.

2. The disputed domain name is not identical or similar to the trademark of the Complainant.

3. The Respondent has rights and legitimate interests in the disputed domain name. The Respondent claims that the disputed domain name is composed of generic terms that reflect the content of the website (relating to the mobile phone business of the Respondent). The Respondent strongly denies that it is attempting to redirect internet users seeking the Complainant’s products. The Respondent claims that it is using the superlative “easier” in relation to its longstanding advertising strategy of focusing on its ability to deliver “better” and “easier” mobile services. Furthermore, the Respondent addresses the reference on its site to airlines by arguing that comparative advertising is allowed in the United Kingdom.

4. The disputed domain name was not registered or used in bad faith. While the Respondent acknowledges that the disputed domain name was registered on the date on which the Complainant’s “EASYMOBILE” business was launched (March 10, 2005), the Respondent contents that this was due to an honest mistake. The Respondent fully denies having had any knowledge of the planned launch of the Complainant’s mobile business. Furthermore, even if the Respondent had knowledge of the planned launch, there was no goodwill created by Complainant in the words “Easy mobile” on the date of the launch (and registration of the disputed domain name), and the words “easy” and “mobile” are only generic terms. Also, the Respondent denies that there is a likelihood of confusion between the disputed domain name and the Complainant’s domain name on the web.

6. Discussion and Findings

A. Identical or Confusingly Similar

1. Complainant’s Rights in a Trademark

The first question is whether the Complainant has rights in the trademark “EASYMOBILE.” As per the available documentation and claims, the Complainant does not yet have a registered “EASYMOBILE” trademark. The Complainant has filed a Community application for the mark, and has been using it continuously, at least since March 10, 2005. Furthermore, according to the claims of the Complainant, the intention to launch the “EASYMOBILE” business was announced as far back as March 2004.

A Google search could determine whether the launch of the “EASYMOBILE” business was announced in the press prior to March 10, 2005. Such a search leads to a number of news stories dating back to 2004. For example:

- “http://www.webuser.co.uk/news/49281.html” (dated May 27, 2004);

- “http://www.theregister.co.uk/2004/11/29/easyMobile_tdc/” (a story dated November 29, 2004);

- “http://tdc.com/article.php?id=65879&dogtag=tdc_o_english

_press_release” (a story dated November 29, 2004);

- http://www.tiscali.co.uk/news/newswire.php/news/reuters/2004/11/29/

business/easyMobilelaunchsetformarch.html (also dated November 29, 2004);

- “http://itvibe.com/news/3038/” (dated November 24, 2004).

Based on the above search, the Panel is satisfied that the Complainant’s intention to launch its “EASYMOBILE” business was publicized as far back as the summer of 2004.

Upon weighing all relevant factors, the Panel finds that the Complainant had trademark rights in the term “EASYMOBILE.” In reaching this conclusion, the Panel is guided by a number of factors and principles established in previous WIPO UDRP decisions. In particular, the Panel stresses the following:

- As rightly noted in Imperial College v. Christophe Dessimoz, WIPO Case No. D2004-0322, “it is undisputed and accepted practice, that paragraph 4(a)(i) of the Policy refers merely to a ‘trademark or service mark’ in which the Complainant has rights, and does not expressly limit the application of the Policy to a registered trademark or service mark”. This Panel concurs, and holds that the Policy applies to unregistered marks, provided that the Complainant establishes common law or use rights in the mark in question. Consequently, the fact that the Complainant in this case does not yet have a registered “EASYMOBILE” trademark does not preclude the application of the Policy.

- Common law rights exist in a trademark when a Complainant proves use of the mark and the establishment of sufficient goodwill and reputation. This principle is supported by various WIPO UDRP decisions including the above-cited WIPO Case No. D2004-0322, Australian Trade Commission v. Mathew Reader, WIPO Case No. D2002-0786, Freedom Flag, Inc., dba Falls Flag & Banner Co. v. Flags Unlimited, WIPO Case No. D2002-0478, and UITGERVERIJ CRUX v. W. FREDERIC ISLER, WIPO Case No. D2000-0575.

- The Complainant in this case has proven continuous use of the mark since March 10, 2005. It has also been established that the Complainant had announced in the media the launch of the “EASYMOBILE” business, at least as far back as the summer of 2004. While it can be argued that the use in this case was not long, the Panel feels that the overall weight of facts supports the conclusion that the use was sufficiently significant. There are several factors that the Panel considered in this regard. First of all, the mobile industry moves at a very fast pace. A brand that was announced for a year, and then used continuously for approximately four months (as of the date of writing this opinion), can become very well-known to the relevant customer segment. Developments in the mobile and telecom sector move at a faster pace than more traditional business sectors. Secondly, the use of the mark “EASYMOBILE” must be seen in the context of the Complainant’s various developing, and in some cases, well-known businesses that make use of the word “easy”.

- The Complainant established sufficient goodwill and reputation around the word “EASYMOBILE.” In reaching this conclusion, the Panel considered not only the Complainant’s business under the “EASYMOBILE” banner, but also the overall group of trademarks, centered around the word “Easy,” used by the Complainant to run various businesses in the United Kingdom and elsewhere. While the Complainant cannot claim any exclusivity over a descriptive word such as “easy”, the Panel considers that the growing portfolio of the Complainant’s “easy” based trademarks facilitated the acquisition of goodwill and reputation by the “EASYMOBILE” trademark. Once the EASYMOBILE business was launched, consumers quickly associated it with the Complainant and the “easyGroup”.

- The words “easy” and “mobile” are generic and descriptive and, as such, cannot avail of trademark protection when used individually. However, the combination of the two words, as used by the Complainant in a particular figurative design, has, in the Panel’s view, acquired trademark status. Even though the two words per se are generic and descriptive, there is a specific secondary meaning to their combined use by the Complainant. In this regard, the Panel was guided by previous WIPO UDRP decisions. For example, the Panel refers to the above-cited WIPO Case No. D2004-0322, in which such secondary meaning was seen to override the generic nature of the constituting words in the trademark in question (THE IDEA LEAGUE).

2. The Disputed Domain Name is Confusingly Similar to Complainant’s Mark

Having established that the Complainant has valid trademark rights for the purposes of the Policy, the Panel considered whether the disputed domain name was confusingly similar to the Complainant’s mark. The differences between the disputed domain name and the Complainant’s “EASYMOBILE” trademark are minimal. In fact, the only difference lies in three letters only (“ier”). A visual, phonetic or literal comparison between the terms “easymobile” and “easiermobile” reveals instantly the extent of the similarity. The Panel believes this similarity is likely to confuse consumers on the internet to end up on the website of the Respondent while seeking the business of the Complainant.

The Panel finds for the Complainant on the first element of the Policy.

B. Rights or Legitimate Interests

Upon careful review of the arguments and facts presented by both parties, the Panel reached the conclusion that the Respondent does not have rights or legitimate interests in respect of the disputed domain name. The arguments that ultimately swayed the Panel’s opinion were the following:

- The site of the disputed domain name does not offer services under that name. The site in question only refers to the Respondent’s brand FRESH and provides a link to the Respondent’s main website (which offers the necessary details on the Respondent’s mobile services, that are provided under the name FRESH);

- The site of the disputed domain name is obviously created for the purposes of competition with the Complainant’s “EASYMOBILE” business. It is an attempt at comparative advertising. The site’s picture of an airplane with the word “Fresh” written on it - and the statement that “The Carphone Warehouse doesn't try to run airlines, it sells mobile phones” – are an obvious mocking referral to the Complainant and its famous EASYJET business;

- As confirmed by the Respondent, the site of the disputed domain name was actually registered on the day of the launch of the Complainant’s “EASYMOBILE” business;

Based on the above and other factors, the Panel concluded that the Complainant has met the second test of the Policy (paragraph 4(a)(ii) of the Policy). One is guided in this regard by paragraph 4(c) of the Policy which lists three circumstances, each of which could prove the existence of rights or legitimate interests. First of all, it cannot be said that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services; the Respondent’s bona fide offering of goods and services is conducted through its usual website, “www.carphonewarehouse.com” (which offers the FRESH brand of mobile services). The Panel is confident, based on the facts, that the site of the disputed domain name was created solely for the purposes of competition with the Complainant’s EASYMOBILE business. It only serves to redirect consumers who may be looking for EASYMOBILE to the Respondent’s site. There is no direct offering of goods and services on the Respondent’s site.

Secondly, the Respondent cannot make a valid argument that it is commonly known by the disputed domain names. As the record shows, the Respondent is known by its FRESH brand or the name of its company – it is not in any way defined by the term “easiermobile”. Finally, there is no argument that the Respondent is making legitimate noncommercial or fair use of the domain name. Consequently, the Panel is satisfied, beyond reasonable doubt, that none of the circumstances provided for in paragraph 4(c) of the Policy applies in this case.

In reaching this conclusion, the Panel was also guided by previous WIPO UDRP decisions that have reached similar conclusions in cases involving the registration / use of disputed domain names as part of a competitive strategy. For example, the Panel refers to Freedom Flag, Inc., dba Falls Flag & Banner Co. v. Flags Unlimited, WIPO Case No. D2002-0478, where the disputed domain name, as in this case, did not “reflect the name of the Respondent’s corporate identity” and redirected internet users to another site where the Respondent sold products competing with the Complainant’s. The Panel also refers in this regard to Diebold, Incorporated v. Paul Terwilliger, WIPO Case No. D2003-0416 and Aero Products International, Inc. v. Mattress Liquidation Specialists, WIPO Case No. D2002-0921. In the latter case, it was held that the use of a disputed domain name “with the intent of reaping commercial gain … by misleadingly diverting consumers seeking Complainant’s products … does not give rise to a legitimate interest in the Domain name.”

Consequently, the Panel finds for the Complainant on the second element of the Policy.

C. Registered and Used in Bad Faith

The Panel was guided in its review of the applicability of the third test of the Policy by paragraph 4(b) thereof. Paragraph 4(b)(iii) of the Policy states that the following circumstance shall be evidence of registration and use in bad faith: “you have registered the domain name primarily for the purpose of disrupting the business of a competitor.” The Panel holds that this circumstance applies specifically to the case at hand.

As shown above, it is clear to the Panel that the sole purpose of the Respondent in registering the disputed domain name was to compete with the Complainant’s EASYMOBILE business. The site of the disputed domain name includes direct competitive remarks about the Complainant (as mentioned above, it has remarks and a picture of an airline in reference to the Complainant’s EASYJET business). Consequently, the Panel is of the view that the Respondent is only using the disputed domain name in order to attract Internet users to this site. Once there, the Internet users are presented with unsubtle arguments for not using the EASYMOBILE business of the Complainant, and then diverted to the Respondent’s website, which carries the Respondent’s FRESH mobile business.

The Panel also draws attention again to the fact that the disputed domain name was registered on the day on which the Complainant’s EASYMOBILE was launched.

These facts prove to the Panel, beyond reasonable doubt, that the Respondent registered the disputed domain name “primarily for the purpose of disrupting the business of a competitor”.

In reaching this conclusion, the Panel was also guided by previous WIPO UDRP decisions. For example, reference is made to the above-cited Aero Products International, Inc. v. Mattress Liquidation Specialists, WIPO Case No. D2002-0921, and MedTel Outcomes LLC v. IT HealthTrack, Inc., WIPO Case No. D2004-0282. In the latter case, the Panel held that “using the disputed domain name to divert Internet users seeking Complainant’s website to Respondent’s is a bad faith commercial use”.

Consequently, the Panel finds that the third test of the Policy is met, and the disputed domain name was registered and used 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 be transferred to the Complainant.

Nasser A. Khasawneh
Sole Panelist

Dated: June 28, 2005