EasyGroup Limited of London which owns Easy Jet, was just found guilty of Reverse Domain Name Hijacking (RNDH) on the domain name easygroup.com from Easy Group Holdings Limited of Kowloon, Hong Kong,
The three member UDRP panel split in its decision as panelist Jane Lambert did not agree in the finding of RDNH
Here are the highlights:
Its EasyJet company was founded in 1995.
Complainant does not state when its various other uses of EASY as all or part of a mark began.
It does state that 1995 was the year that it “founded its ‘easyGroup’ brand”, but Complainant does not clarify what exactly is meant by that statement nor does it provide evidentiary support for ownership of any particular trademarks with the EASY prefix other than EASYJET prior to the Domain Name registration in 1998.
Complainant does provide copies of trademark registrations for EASYGROUP and related marks dating from 2001 or later.
Complainant owns the EASYGROUP and EASY brands and licenses its EASY marks to other EASY-branded businesses.
The Domain Name is identical to Complainant’s name and brand.
Complainant wrote to Respondent in October 2014 requesting transfer of the Domain Name but received no response.
Complainant further alleges that the Domain Name does not resolve to any web site and acts as a holding page, and that in the past it was used to redirect users to foodeasy.com.
Complainant states that Respondent is not currently using the Domain Name for any purpose and that it has not resolved to a web site since 2012, but that in 2003 it resolved to a web site which described the mission of Respondent “to provide comprehensive and EASY web sites to cater to the leisure needs of our customers” and that the site would be dedicated to “major sectors in the leisure industry”. Complainant contends that it is “clear” that Respondent knew of the EASY brand because of the existence of EasyJet, a “brand which is firmly focused on leisure and travel”.
B. Respondent
Respondent states that its 1998 registration of the Domain Name predates any trademark registrations cited by Complainant. Citing the registrations annexed to the Complaint, Respondent points out that the earliest registration of EASYGROUP was in 2003, while the earliest registration of any other “EASY-mark” cited by Complainant was in 2001. Respondent notes that Complainant neglects to mention that all these registrations post-date Respondent’s registration of the Domain Name.
Respondent further characterizes as “misleading” Complainant’s suggestion that, because EasyJet was founded in 1995, it therefore owned the mark EASYGROUP as of that date.
In fact, Respondent states, EasyGroup was not founded until 2000, nearly two years after the Domain Name was registered.
Likewise, the domain name easygroup.co.uk, owned by Complainant, was not registered until seven months after the Domain Name in question
Respondent notes that ownership of rights in EASYJET does not automatically equate with ownership of EASYGROUP, particularly since that entity did not come into existence until several years later.
Specifically, it has used “Easy Group Holdings Limited” as its trade name since November 6, 1998. As evidence, Respondent attaches its business registration certificate of that date, which reflects the said trade name.
Since that date, Respondent has been providing food guide and restaurant directory services under the brand “Food Easy” in Hong Kong, China.
It provides an online platform for information about menus to restaurants and enables them to be in online contact with customers. It has also licensed its content to the Yahoo Hong Kong search engine (as evidenced by an agreement attached to the Response).
It provides as further evidence of its ongoing trade name usage several promotional leaflets reflecting such use over time, as well as annual records of its business incorporation from 1998 through 2014.
Respondent notes that using the Domain Name to redirect users to its primary web site is a permissible use of a domain name, as indeed Complainant does with certain of its own registered domain names.
For the same reasons set forth above, Respondent argues that it did not register or use the Domain Name in bad faith.
In particular, it notes that it cannot have registered the Domain Name in bad faith since Complainant’s alleged rights in EASYGROUP did not even come into existence until after Respondent’s Domain Name registration. In any event, it denies any knowledge, prior to its Domain Name registration, of Complainant’s EasyJet company or of any claim to the EASYGROUP mark, which it notes was not famous in Hong Kong, China in 1998.
Lastly, Respondent alleges Reverse Domain Name Hijacking, claiming that this is the third time Complainant has demanded a transfer of the Domain Name. In 2001 and again in 2004, Complainant made essentially the same allegations set forth herein, and Respondent provided essentially the same information in response that it has been incorporated in Hong Kong, China under the name Easy Group Holdings Limited since 1998.
Complainant took no further action after the 2001 or 2004 correspondence, up until the present proceeding. Respondent states that it no longer has written evidence of those two rounds of negotiations but is prepared to testify to them. It argues that Complainant’s failure to disclose the prior two rounds of negotiations evidences Reverse Domain Name Hijacking, akin to failure to disclose that a complaint has been previously filed, and withdrawn or failed, under the Policy.
6. Discussion and Findings
For the reasons set forth above, the Panel Majority finds that Respondent has plausibly contended, and supported with ample plausible evidence, that it has been registered to do business in Hong Kong, China and has in fact conducted such business, continually since November 1998 under the corporate and trade name “Easy Group Holdings Limited”. Accordingly, the Panel Majority finds that Respondent has rights or legitimate interests in the Domain Name which incorporates in its entirety the dominant portion of Respondent’s trade name.
To be sure, the above conclusion might fail if Complainant had established that, as of November 1998, Respondent could not properly build up any legitimate rights in the said business or trade name due to a clear priority of right held by Complainant. But Complainant has not established any such case. Indeed, Complainant’s only claim of right pre-dating Respondent’s is its EASYJET corporate name and mark. From the evidence of record, it did not incorporate or begin to build up trademark rights in the EASYGROUP mark until years after Respondent’s Domain Name registration. Mere ownership of a single mark – here, EASYJET – does not inherently establish ownership of a family of EASY-marks.
Particularly in view of the fact that “easy” is an English dictionary word with a wide variety of uses and business appeal in numerous contexts, it is implausible for Complainant to suggest that it can monopolize all uses of that term alone merely by establishing an airline called EasyJet. Nor, indeed, does Complainant argue (or cite any law holding) that it does have such rights as a result of that single use. Instead, in its Complaint, Complainant chooses to say nothing about the relevant dates of any of its EASYGROUP registrations, perhaps hoping (as Respondent suggests) that the Panel would not take notice of the discrepancy or that Respondent would fail to provide a timely response. Indeed, the record reflects the fact that, notwithstanding having filed its present claim some sixteen years after the initial registration of the Domain Name, Complainant refused to assent to Respondent’s counsel’s request for a fourteen-day extension of its response deadline that would otherwise have fallen due around a holiday period.
C. Registered and Used in Bad Faith
The consensus view of panelists is that a party cannot have registered a domain name in bad faith if the complainant’s rights had not even come into existence as of the date of the domain name registration. See paragraph 3.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). Accordingly, for the reasons discussed above, the Panel Majority finds that Respondent did not register the Domain Name in bad faith. Separately, there is no evidence suggesting that its use of the Domain Name in connection with its online food services business was intended to, or did, in any way interfere with Complainant’s business. Accordingly, the Panel Majority finds that Complainant likewise fails to show bad-faith use.
7. Reverse Domain Name Hijacking
The Panel Majority is troubled by Complainant’s conduct in this case.
Complainant does not appear to have been entirely up-front about the relevant facts – notably, that it did not establish rights in the mark at issue until a few years after the Domain Name registration by Respondent.
A finding of Reverse Domain Name Hijacking is warranted when a complainant knew or should have known that, at the time it filed its complaint, it could not prove one of the essential elements required by the Policy. Futureworld Consultancy (Pty) Ltd v. On-Line Advice, WIPO Case No. D2003-0297.
Here, it is difficult to see how Complainant could have expected to prevail given that it did not acquire rights in the mark at issue until after the Domain Name was registered.
If Complainant’s case were based on the theory that ownership of one mark establishes rights in a family of marks, it might have been expected to cite authority for such a position. Instead, it appears to have used this proceeding in an effort to obtain a domain name in a manner not warranted by the Policy.
The Panel Majority therefore finds this to be a case of Reverse Domain Name Hijacking.
8. Decision
For the foregoing reasons, the Complaint is denied.
Michael A. Albert
Presiding Panelist
Douglas Clark
Panelist
Jane Lambert
Panelist (Dissenting)
Date: February 19, 2015
Dissenting Opinion
The dissenting panelist respectfully disagrees with the Panel Majority that Respondent has rights or legitimate interests in the Domain Name and that the Domain Name has neither been registered nor used in bad faith. It follows that she would have ordered the transfer of the Domain Name to Complainant. Accordingly, she also disagrees with the Panel Majority’s finding of Reverse Domain Name Hijacking.
The only ground upon which Respondent claims to a right or legitimate interest is that it is incorporated in the name Easy Group Holdings Limited. Paragraph 4(c)(ii) of the Policy provides:
“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.”
The name by which a company is incorporated is irrelevant unless that is also the name by which it is commonly known. It would appear from the materials in Annex 4 to the Complaint and Annex 7 to the Response that Respondent, if it runs any kind of business at all, does so under the signs “Food Easy” and “FE”. These signs rather than the Respondent’s corporate name appear to be the name by which Respondent is commonly known.
Though its corporate name includes the word “group” and “holdings” Respondent does not seem to have any subsidiaries or associates that would incline it to describe itself a group holding company. A more natural name for a publisher of a restaurant guide called “Food Easy” would be Food Easy Ltd or at least a name that incorporated the noun “food” before the adjective “easy”. The dissenting panelist cannot think of any good reason for incorporating a company in the name of Easy Group Holdings Limited other than insinuating a connection with EasyJet which had been founded three years earlier.
For these reasons, the dissenting panelist is not persuaded that Respondent has rights or legitimate interests in the Domain Name.
Every time a registered proprietor applies to renew his or her domain name he or she enters an agreement with the registrar that incorporates the Policy. Paragraph 2 of the Policy provides as follows:
“Your Representations. By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”
Even if it was possible to represent that the registration of the Domain Name would not infringe upon or otherwise violate the rights of Complainant or its subsidiary companies in 1998 it would not be possible to make such a representation now. As Complainant has averred in paragraph 2 of the Complaint it is a substantial undertaking and it has registered trademarks that incorporate the “easy” sign in relation to a wide range of goods and services throughout the world. Hong Kong, China continues to apply the common law of England including the law of passing off. It has been held by the Court of Appeal of England and Wales in British Telecommunications Plc and Others v. One In A Million Ltd and Others that the registration of a domain name in the name of a well-known company with which the registrant has no connection is an act of passing off and that authority would almost certainly be followed in Hong Kong, China.
Paragraph 4(b) of the Policy lists a number of circumstances which are to be evidence of registration and use in bad faith but they are not exhaustive and above all they do not constitute bad faith in themselves. The bad faith to which the Policy is directed is the misrepresentation of one or more of the sub-paragraphs of paragraph 2. If the registration of a domain name and its use is actionable at least in the jurisdiction of the registrant then the representation cannot be made and the renewal of the registration is at best an inaccuracy and at worse an untruth. In either case, it is registration and use in bad faith.
Accordingly, the dissenting panelist finds that the Domain Name was registered and is being used in bad faith and that the Domain Name should be transferred to Complainant.
It follows that Respondent’s application for a finding of Reverse Domain Name Hijacking fails.
Jane Lambert
Panelist (Dissenting)
Date: February 19, 2015
