WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

EasyGroup IP Licensing Limited v. PPA Media Services, Ryan G Foo / Fundacion Private Whois

Case No. D2012-1093

1. The Parties

The Complainant is EasyGroup IP Licensing Limited of London, United Kingdom, represented by Clarke Willmott LLP.

The Respondent is PPA Media Services, Ryan G Foo of Santiago, Chile and Fundacion Private Whois, Domain Administrator, Panama.

2. The Domain Name and Registrar

The disputed domain name <myeasyjet.com> is registered with Internet.bs Corp.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 24, 2012. On May 25, 2012, the Center transmitted by email to Internet.bs Corp. a request for registrar verification in connection with the disputed domain name. On May 30, 2012, Internet.bs Corp. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 31, 2012 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint with further annexes 14, 15, 16 on June 2, 2012.

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” or “UDRP”), 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 June 4, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 27, 2012.

The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on July 9, 2012. 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 following summary sets out the uncontested factual submissions made by the Complainant:

4.1 The Complainant owns numerous “easy” prefixed marks such as “easyJet”, “easyCar”, “easyBus”, “easyOffice”, “easyGym” and “easy.com” (“easy Brand”). In particular, the Complainant owns over one thousand trade mark registrations and applications around the world including in the United Kingdom of Great Britain and Northern Ireland (“United Kingdom”),European Union and the United States for the “easy” Brand. Some of these registrations include the following:

(a) US trademark registration no. 3147540 for EASYJET covering, among other things, transportation of goods, passengers and travelers by air; airline transportation services, travel agency services in the nature of making reservations and bookings for cruises, tours, excursions and vacations and providing temporary accommodation on boats and ships.

(b) United Kingdom trade mark registration no. 2260901 for EASYJET covering, among other things, transportation of goods, passengers and travelers by air; airline and shipping services; airport check-in services; arranging of transportation of goods, passengers and travelers by land and sea; airline services; arranging, operating and providing facilities for cruises, tours, excursions and vacations; chartering of aircraft; rental and hire of aircraft, vehicles and boats; travel agency and tourist office services; advisory and information services relating to the aforesaid services; information services relating to transportation services, including information services relating to transportation services, including information services provided on-line from a computer database or the Internet.

(c) Community trade mark registration no. 1232909 for EASYJET covering, among other things, transportation and storage; transportation of goods, passengers and travelers by land, sea and air; airline and shipping services; cargo and freight services; arranging, operating and providing facilities for cruises, tours, excursions and vacations; ambulance services, rental and hire of vehicles, boats and aircraft; travel agency and tourism services; and temporary accommodation.

(d) International trade mark registration no. 751331 which includes China for EASY JET covering, among other things, transportation of goods, passengers and travelers by air; arranging of transportation of goods, passengers and travelers by land and sea; airline and shipping services; cargo handling and freight services; arranging, operating and providing facilities for cruises, tours, excursions and vacations; ambulance services, rental and hire vehicles, boats and aircraft; travel agency and tourist office services; consultancy and advice relating to all the aforesaid services.

4.2 The easyJet brand is licensed to easyJet Airline Company Limited (“easyJet Airline”). easyJet Airline commenced its first flight on November 10, 1995 between Luton and Glasgow and has since carried over 300 million passengers and now flies approximately 600 routes from over 100 destinations in 30 countries. It has had a turnover of approximately GBP 10 billion from launch to date, and has spent approximately GBP 217 to GBP 232 million to date on advertising and promoting its products and services. All of its business is carried on under and by reference to the EASY JET trade mark.

4.3 Shortly after easyJet’s launch in 1995, its website went live at “www.easyjet.com” (“the easyJet Website”). The easyJet website receives large numbers of visits from consumers all over the world. Between January 1, 2010 and October 31, 2010 the number of visits to the easyJet website and flights booked from those visits total approximately 278,081,625 and 12,667,488 respectively.

4.4 easyJet has also won numerous consumer and industry awards including “Best Low Cost Airline”, “Best Interactive Media Campaign”, “Best Travel Website” and “Best Advertiser” from various leading international publications and organisations and many articles have been written about easyJet by third parties.

4.5 There have also been several WIPO UDRP decisions relating to the easyJet brand whereby the panelS recognized the Complainant’s rights thereof. These include disputes involving the domain names <easyjet.co>, <easyjetcharters.com>; <easyjettoutrs.com>; <eazyjet.com>; <easyejt.com>; <easyjets.com>; <wwweasyjet.com>; <easyjetonline.com>; <easyjet.org>; <easyjet.net>.

4.5 The Respondent registered the disputed domain name in secrecy by concealing its identity through Fundacion Private Whois and the content of the website at “www.myeasyjet.com” lists several sponsored links including to Thomson Holidays, easyJet and other holiday companies.

5. Parties’ Contentions

A. Complainant

5.1 The Complainant contends that it has registered and unregistered rights to the EASYJET trademark and that the disputed domain name is identical or confusingly similar to the Complainant’s EASYJET trademark. The disputed domain name comprises of the Complainant’s EASYJEY trademark albeit preceded by the “my”.

5.2 The Complainant further contends that the Respondent does not have any rights or legitimate interests to the disputed domain name because:

(a) the Respondent does not have any trade mark rights in relation to the EASYJET mark.

(b) the Respondent is not known and has never been known as “easyjet”. No other entity uses the terms “easy” and “jet” in such combination except easyJet Airline.

(c) the Respondent is not engaged in the aviation business and so has no need for a domain name consisting of the term “easyjet”.

(d) the Respondent has demonstrated no use of, or preparations to use the disputed domain name for any bona fide offering of goods or service, since it became the registrant of the disputed domain name.

(e) the Respondent has listed the disputed domain name for sale at “www.sedo.com”, a well established domain name brokerage firm. The disputed domain name is also listed for sale on “www.domaintools.com”.

5.3 In relation to the requirement of bad faith registration and use of the domain name, the Complainant contends as follows:

(a) the disputed domain name was registered and/or acquired in order to sell it to the Complainant for more than it’s out of pocket expenses.

(b) the Respondent had made no bona fide use of the disputed domain name.

(c) the Respondent is using a close variant of the Complainant’s website located at “www.easyjet.com”.

(d) the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s EASYJET trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

(e) the Respondent acquired the disputed domain name in order to direct traffic away from the Complainant as the sponsored links include links to competitors of the Complainant.

(f) the Respondent is trying to attract users to its website and earn revenue from the sponsored links and/or pressure the Complainant into purchasing the disputed domain name.

(g) the Respondent registered the disputed domain name in order to disrupt the business of the Complainant and prevent the Complainant from re-registering the disputed domain name.

B. Respondent

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

6. Discussion and Findings

In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:

(a) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(b) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(c) that the disputed domain name has been registered and is being used in bad faith.

6.1. Identical or Confusingly Similar to the Trademark

The Panel is satisfied with the evidence adduced by the Complainant to establish its rights to the EASYJET trademark. The trademark is not only registered by the Complainant in numerous jurisdictions but it has also been used extensively by the Complainant directly or indirectly (through easyJet Airline) on a worldwide basis. The Complainant has acquired substantial goodwill in the use of the mark as evidenced by the high traffic generated through its website located at “www.easyjet.com”, historical recorded sales and the numerous awards and recognition which it has received from the relevant media, tourism and airline industries.

The disputed domain name comprises the EASYJET trademark in its entirety preceded by the descriptive word “my”. The distinctive feature of the disputed domain name remains the EASYJET trademark and the additional descriptive word does not serve to distinguish the disputed domain name from the EASYJET trademark (see Lucasfilm Ltd and Lucas Licensing Ltd. v. Cupcake City and John Zuccarini, WIPO Case No. D2001-0700; Bayer Aktiengesellschaft v. Dangos & Partners, WIPO Case No. D2002-1115).

As such the Panel finds that the disputed domain name is confusingly similar to the Complainant’s EASYJET trademark for the purpose of the Policy.

6.2. Rights or Legitimate Interests in the Disputed Domain Name

The Complainant’s assertions had not been rebutted by the Respondent to indicate whether it has any rights or legitimate interests in the disputed domain name. There is also no evidence to indicate that the Respondent is known by the name “My”, “Easy” or “Jet” or any combinations thereof.

Based on the absence of a response and the absence of any linkage between the disputed domain name and the Respondent’s name, the Panel could not find any justification, rights or legitimate interests on the part of the Respondent to any of the words comprising the disputed domain name. The notoriety of the Complainant’s EASYJET trademark and the distinctiveness of the trademark itself would present a significant hurdle for any other person to justify rights or legitimate interests to the trademark without submitting compelling reasons to this Panel to conclude otherwise. The burden on the Respondent to rebut this prima facie finding is critical if the Respondent regarded it as important to defend its rights or legitimate interests in the disputed domain name.

The failure of the Respondent to reply to the Complainant’s contentions and the evidence adduced by the Complainant leads the Panel to find that the Respondent has no rights or legitimate interests in the disputed domain name. In the circumstances, the Panel is, therefore, satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainant.

6.3. Registration and Use in Bad Faith

The Panel agrees with the contention by the Complainant that the Respondent had knowledge of the Complainant’s EASYJET trademark when it registered and started using the disputed domain name. The factors that were taken into account to arrive at this conclusion include the date of registration of the disputed domain name which was much later than the date the Complainant started using the EASYJET trademark, the widespread use of the EASYJET trademark by the Complainant at an international level and the fact that the Respondent was merely using the disputed domain name to facilitate the advertisement of sponsored links including a link to the Complainant’s website.

The Panel is satisfied that the Respondent had knowledge of the reputation and goodwill of the EASYJET trademark when it sought to register the disputed domain name and that it intended to use and indeed used the disputed domain name in order to misrepresent a connection with the Complainant and its group of companies, when in fact no such connection existed.

The Panel further notes that the Respondent has been involved in at least ten other domain name dispute proceedings, in which all of such proceedings, the panels ordered that the domain names in dispute thereof be transferred to the respective complainants (Petroleo Brasileiro S.A. – Petrobras v PPA Media Services, Ryan G Foo/Private Whois, WIPO Case No. D2012-0655; El Palacio de Hierro S.A. de CV v. Private Whois / PPA Media Services, Ryan G Foo, WIPO Case No. D2012-0185); Univision Communications Inc. v. PPA Media Services, Ryan G Foo/Private Whois, NAF Case No: FA1202001429880; Univision Communications Inc. v. PPA Media Services, Ryan G Foo/Private Whois, NAF Case No: FA1202001429889; American Sports Licensing, Inc. v. PPA Media Services, Ryan G Foo/Private Whois, NAF Case No: FA1201001426016; American Sports Licensing, Inc. v. PPA Media Services, Ryan G Foo/Private Whois, NAF Case No: FA1201001426024; Homer TLC, Inc. v. PPA Media Services, Ryan G Foo/Private Whois, NAF Case No: FA111001416637; AOL Inc. v. PPA Media Services, Ryan G Foo/Private Whois, NAF Case No: FA1203001432688; Strathmore Partners LP v. PPA Media Services, Ryan G Foo/Private Whois, NAF Case No: FA1204001438428; Euromarket Designs, Inc. d/b/a Crate & Barrell v. PPA Media Services, Ryan G Foo/Private, Whois, NAF Case No: FA1204001440326). This record reflects a pattern of conduct on the part of the Respondent in registering other domain names in bad faith.

In light of the above, the Panel finds that bad faith has been demonstrated under paragraph 4(b)(iv) of the Policy and that the third element of paragraph 4(a) of the Policy has been met.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <myeasyjet.com> be transferred to the Complainant.

Syed Naqiz Shahabuddin
Sole Panelist
Dated: July 20, 2012