ADMINISTRATIVE PANEL DECISION
Easygroup (UK) Limited, Easyeverything Limited, Easyrentacar (UK) Limited, Easyjet Airline Company Limited v. Easymaterial.com Limited
Case No. D 2000-0711
1. The Parties
Complainant: (1) Easygroup (UK) Limited
(2) Easyeverything Limited
(3) Easyrentacar (UK) Limited
all of The Rotunda, 42/43 Gloucester Crescent, London NW1 7DL, United Kingdom
(4) Easyjet Airline Company Limited of Easyland, Luton Airport, Luton, Bedfordshire LU2 9LY, United Kingdom
Represented by Neville Cordell, Five Chancery Lane, Clifford’s Inn, London EC4A 1BU, United Kingdom
Respondent: Easymaterial.com Limited of Meares House, 194-196 Finchley Road, London NW3 6BX, United Kingdom
Represented by: Kingsford Stacey Blackwell, Solicitors, 14 Old Square, Lincoln’s Inn, London WC2A 3UB, United Kingdom
2. The Domain Name(s) and Registrar(s)
Domain Names: easymaterial.com
3. Procedural History
The Complaint was received by WIPO by e-mail on June 30 2000 and in hard copy on July 7 2000. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel (“the Panel”) is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph 2(a). The Registrar has confirmed that the disputed Domain Names were registered through Register.com and that Kamran Amin of easyMaterial.com Limited is the current registrant of easymaterial.com and that Majid Jahanshahi of easyMaterial.com Limited is the current registrant of easymaterials.com, easymaterial.net and easymaterials.net. The Registrar has further confirmed that the Policy is applicable to these Domain Names.
On August 1 2000 WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its reponse to the Complainants and to WIPO was August 20, 2000. On August 18 2000 the Response was lodged with WIPO by lawyers representing the Respondent.
The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO or the Panel as a consequence of which the date scheduled for the issuance of the Panel’s Decision is September 8, 2000.
4. Factual Background
The Complaint does not establish precisely how the various Complainants inter relate, the Complaint treats them as members of a group of companies and the Panel will do the same.
The Second Complainant has since November 1995 operated a low cost airline, which trades under the name “easyJet”. The business sells tickets primarily via its website at www.easyjet.com. The Respondent recognises that the Second Complainant has a very substantial goodwill and reputation in the trade mark it actually uses, that is to say “easyJet”, when used in connection with the provision of airline flights.
Since June 1999, the Third Complainant has operated the business of a chain of internet shops which trade under the name “easyEverything”. These services are advertised at www.easyeverything.com. The Third Complainant has five shops in London and shops in Edinburgh, Amsterdam, Rotterdam and Barcelona. The Third Complainant is currently setting up a shop in New York. Further shops are planned in Manchester, Glasgow, Dublin, Antwerp, Brussels, Paris, Madrid and Rome. The Respondent recognises that the Third Complainant has goodwill and reputation in the trade mark it actually uses, that is to say “easyEverything”, when used in respect of the sale of general goods of the types in which it trades (not including building or construction materials or supplies). The Third Complainant’s turnover in the United Kingdom in the period June to 31 September 1999 was £392,000. £1.6 million has been spent on advertising Easy Everything services to date. easyEverything owns the largest internet café in the world, being its 600 PC internet café in Amsterdam.
Since February 2000 the Fourth Complainant has operated a low cost car rental business which trades under the name “easyRentacar” via its website at www.easyrentacar.com. The Respondent recognises that the Fourth Complainant has goodwill and reputation in the trade mark it actually uses, that is to say “easyRentacar”, when used in respect of the business of vehicle rental.
The First Complainant primarily operates as an investment vehicle for the founder of the Complainant’s Group of Companies. In January 2000 there were press reports to the effect that the First Complainant will be launching later this year a net shopping venture under the name easy.com.
On March 30, 2000, Mr Majid Jahanshahi applied to register easymaterial.com. On April 16, 2000 the other three domain names in issue were registered. Together all four domain names in issue are hereinafter referred to as “the Domain Names”.
On April 20, 2000 the Respondent was incorporated under the name EASYMATERIAL.COM LIMITED.
At some stage in May (the Complainants’ witness says May 19, 2000 and this is not disputed in the Response) Mr Majid Jahanshahi of the Respondent visited the Complainants’ premises at 42-43 Gloucester Crescent with a view to enquiring about office space to let in that building.
On May 24, 2000 the Complainants’ lawyers wrote to the Respondent claiming on behalf of the Respondent “a substantial collective reputation and goodwill in the ‘easy’ brand in the UK in relation to low-cost internet related consumer services”. They asserted that the Respondent had deliberately set out to pass itself off as being associated with the business of the Complainants. They demanded inter alia transfer of the Domain Names to the Complainant without compensation.
On May 30, 2000 the Respondent’s lawyers replied denying passing off, taking issue with the complainants’ claims generally and refusing to comply with the Complainants’ demands.
5. Parties’ Contentions
The Complainants do not rely upon any registered rights. They contend that their collective reputation and goodwill in their ‘easy-’ prefixed trading names and the announced plans to trade under the name ‘easy.com’ are such that they are the proprietors of what they term the ‘easy’ brand for low-cost internet related consumer services.
They contend that the Respondent’s corporate name (as used by the Respondent) reproduces their style in that it commences with a lower case “e” and the second part of the name commences with an upper case letter, all forming part of one word.
They say that the combination of the ‘easy-’ prefix, the style of the corporate name and the fact that the Respondent is planning to trade in discount materials on-line will inevitably lead people to believe that the respondent’s business is in some way associated with the Complainants’ business i.e. passing off.
They say that the Respondent has no rights or legitimate interests in respect of the Domain Names. They point to the fact that the Respondent only registered the first of the Domain Names on March 30, 2000 and that the company was only incorporated on April 20, 2000 and has not traded yet. They say that the Respondent is not commonly known by the name ‘easyMaterial(s)’. They allege that the Respondent only registered the Domain Names in an attempt after the event to justify selection of the Domain Names.
They assert that the Domain Names have been registered and are intended to be used in bad faith. They refer to Mr Jahanshahi’s visit to their premises on May 19, 2000, which they say was not a bona fide check on the availability of office space, but in order to prompt an offer from the Complainants for the purchase of the Domain Names. They also refer to the Respondent’s website which shows the manner of the Respondent’s use of its name comprising not just the lower case initial letter and the capital “M”, but also a ‘fat font’ for the initial “e”, all three elements being elements of their house style.
They say that the Respondent was aware of them and their manner of use of their name and selected its name and style in full knowledge of the similarities and the Complainants’ rights and cannot deny that there is a likelihood of confusion. They say that the Respondent intends that confusion should result between its goods and services and the Complainants’ goods and services.
They conclude by saying that the evidence merits findings in their favour under subparagraphs (i), (iii) and (iv) of paragraph 4(b) of the Policy.
The Respondent contends that none of the Domain Names is similar to any trade mark or service mark actually used by any of the Complainants. The Respondent claims that ‘easy’ is an inherently descriptive prefix which honest traders may wish to use and have in fact used. The Respondent draws attention to 10 other websites with ‘easy-’ prefixed names (including www.easyNeeds.com and www.easyCareer.com) and well over 100 companies registered at the UK companies registry with names incorporating the ‘easy-’ prefix.
The Respondent denies that the Complainants have any rights in the name ‘easy’ per se. It says that it is not apt to perform a trade mark function, being a common descriptive word of the English language, suitable to be adopted by any business as part of a business name for the purpose of indicating that there is some element of easiness in trading with that business. It was for that reason that the Respondent adopted the prefix as part of its trading style.
The Respondent produces a copy of its business plan covering the provision of an independent exchange to be used by contractors and retail customers for the procurement of construction and building materials within the UK. It claims that its trading style was chosen to connote easy procurement of materials over the internet and was selected because it was available in the .com domain.
It claims that it has all those rights and legitimate interests in its domain names, which derive from its preparation for trade under its corporate name. It produces letters from third parties such as architects, consultants and potential suppliers purporting to confirm bona fide meetings, discussions etc in March/April/May 2000 in preparation for trade under the easyMaterial.com Limited name.
The Respondent denies that any of the sub paragraphs of paragraph 4(b) of the Policy apply.
Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
1. The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
2. The Respondent has no rights or legitimate interest in respect of the Domain Name; and
3. The Domain Name has been registered and is being used in bad faith.
6.1 Identical or confusing similarity
The Respondent has drawn attention to the existence of so many ‘easy-’ prefixed domain names and corporate names in use in the UK that the Panel is not persuaded that the Complainant has a monopoly in such names. ‘Jet’, ‘Everything’ and ‘Rentacar’ are manifestly different from ‘Material(s)’. In the result the Panel finds that none of the Domain Names is confusingly similar to any of the ‘easy-’ prefixed names used by the Complainant, in which the Complainant indubitably has rights.
The Complainant relies upon the announced plans to trade under the name ‘easy.com’. The Panel is not persuaded that the announcements (or any preparatory work behind those announcements) give rise to any relevant rights. Even if they did, the Panel takes the view that no trader could monopolise the use of that word as part of a trading style or domain name without very impressive evidence of long and exclusive use. No such evidence was put before the Panel.
The Panel finds that the Complaint fails under this head.
6.2 Rights or legitimate interest of the Respondent
The Respondent contends that at the time it acquired the Domain Names it was planning to start a business under the Domain Names.
Paragraph 4(c)(i) of the Policy provides that a Respondent’s rights or legitimate interest in respect of the Domain Names shall be demonstrated if the Respondent is able to prove, for example, that before it was notified of the dispute it had made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services.
The Respondent has produced a business plan and, more significantly, 5 letters from apparently independent parties (including the Director General of the Federation of Master Builders) confirming that, prior to any notice of the dispute being given to the Respondent, demonstrable preparations were being made to use the Domain Names in connection with a bona fide offering of goods or services.
Having no reason to doubt the independence and integrity of any of the writers of the letters exhibited, the Panel finds that the Respondent has and at the relevant time had rights and legitimate interests in respect of the Domain Names.
The Panel finds that the Complaint fails under this head too.
6.3 Bad Faith
In light of the findings under the two previous heads and in particular in light of the third party letters referred to above, it is not open to the Panel to come to a bad faith finding.
Accordingly, the Complaint fails under this head too.
The Complaint is dismissed
Dated: September 7, 2000