A one member UDRP panel, of William R. Towns seemingly granted EasyGroup Limited of London, the right to all domain names that start with the word “easy” that the company has or will trademark in the future.
EasyGroup is the owner of a Community trademark (“CTM”) for EASYTRAIN in connection with transportation services, which is was registered on October 21, 2011.
I get why the domain holder lost the case.
He didn’t respond.
He parked the domain and had links to travel on the page.
But what I don’t like about the decision is the Complainant lost the domain back in 2009.
This is 2014.
The Complainant does seem to discuss how they lost the domain or why it took them over 5 years to file a UDRP to get the domain back.
The Complainant didn’t own a trademark on the term “Easy Train” until 2011
The panel seems to accept the position of the Complainant position if a domain begins with the word “Easy” it belongs to the Complainant whether or not they have a trademark filed at the time of registration.
Here are the relevant facts and findings by the panel:
“”strong>The Complainant submits that other well-known brands that it owns include EASYCAR, EASYGYM, and EASYHOTEL, among others.
The disputed domain name was registered by the Respondent on April 29, 2009 apparently following the expiry of the Complainant’s prior registration of the domain name.
The Complainant submits that the Respondent’s registration of the disputed domain name immediately upon the expiration of the Complainant’s registration is compelling evidence that the Respondent knew of the Complainant and was aware of the Complainant’s famous EASY brand.
The Complainant maintains that it has a very extensive brand profile and a range of trading activities and related trademarks, including the Community Trademark registrations for EASYTRAIN in 2011, and EASYGYM in 2005, with the subsequent launch of fitness services. The Complainant asserts that it is well known for its global travel brand EASYJET, and operates other travel brands such as EASYBUS, EASYCAR and EASYVAN.
According to the Complainant, the Respondent’s website has not been updated since January 2014, and the Complainant asserts that the Respondent’s passive holding of the disputed domain name since then constitutes bad faith
“The Respondent has not submitted a formal response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true.”
See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
Based on the record in this proceeding, the Panel considers it highly likely that the Respondent was aware of the Complainant and the Complainant’s EASYTRAIN and EASYGYM marks when registering the disputed domain name.
In the absence of any formal reply by the Respondent, the Panel concludes that the Respondent registered the disputed domain name in order to trade on the goodwill and reputation of the Complainant’s marks through the creation of Internet user confusion. Internet users could easily expect that disputed domain name would be linked to the Complainant’s website or another website that is affiliated with, or has the endorsement or sponsorship of, the Complainant.
The record before the Panel does not reflect the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. Nor, in the circumstances of this case, does the Panel consider that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers. As noted above, the Respondent has not been authorized to use the Complainant’s marks, and the Panel finds that the Respondent has not been commonly known by the disputed domain name within the meaning of paragraph 4(c)(ii) of the Policy. In sum, and absent any reply by the Respondent, there is nothing in the record before the Panel to support a claim by the Respondent of rights or legitimate interests in the disputed domain names.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain names within the meaning of paragraph 4(a)(iii) of the Policy. While the Panel notes that the trademark EASYTRAIN was registered after the disputed domain name, the Complainant has conducted business in the UK since 1995 using the EASY brand and had registered the trademark EASYGYM in 2003.
Accordingly, the Panel concludes that the Respondent was aware of the Complainant and the Complainant’s marks when registering the disputed domain name. In the absence of any reply by the Respondent, the Panel considers that the Respondent’s primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights through the creation of Internet user confusion. As the Panel earlier noted in section 4 of this decision, prior to the filing of the Complaint the website to which the disputed domain name resolves featured fitness training and health content, including “Sponsored Links” to other sites related to fitness training and health. In light of the foregoing, the record thus reflects that the Respondent has registered and is using the disputed domain name in bad faith. That the Respondent may be passively holding the disputed domain name at this time does not preclude a finding of bad faith registration and use in the circumstances of this case.””
