If you travel, by plane, within Europe you would probably have flown easyJet or at least seen its advertising. The orange colour and font have made the trade mark recognisable within the aviation industry.
So why did the company fail to recover the domain name easyfly-express.com?
We have placed the easyJet and EasyFly marks side-by-side to highlight the blatant infringement.
Getting back to our question the answer is simple as the Panelist stated: “this appears to be a trademark dispute better addressed by a Court, and not a clear case of cybersquatting”.
UDRP complaints should not have an underlying trade mark issue.
In this case, the Respondent (a Bangladeshi Cargo Airline) incorporated its business under the name Easy Fly in 2007 and registered the domain name Easyfly-express.com on 16 January 2014 operating in a different jurisdiction to the Complainant.
The Complainant’s earliest easyfly mark was filed on 5 November 2015.
Before the complaint was filed an English court had dismissed “proceedings” against the Respondent for lack of jurisdiction, agreeing with the Respondent that it did not offer services under the name “Easy Fly Express” to customers in the United Kingdom or the European Union.
To succeed in a UDRP complaint, the complainant has to provide all three elements below.
- the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
- the respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
If all are proved you will be successful, if not then that could be the end of the road or be a significant bump in that road.
The first element is generally straight forward if you have a registered trade mark. The complexity arises with the remaining two elements.
The second and third elements require a thorough investigation to determine whether the Respondent could rebut claims made by the Complainant. If the evidence does exist then the Complainant should determine whether they want to take the risk of filing a complaint.
In this case, there was an underlying trade mark issue, which should have been addressed in a court of competent jurisdiction before approaching WIPO.
The UDRP process is relatively simple and cost-effective when compared to court proceedings and often relied upon for those reasons. This is an erroneous default view to hold as loss of a UDRP complaint could impact the future enforcement of the trade mark.
UDRP complaints should be considered where there is no dispute of fact and/or underlying trade mark dispute. It is designed to recover domain names from squatters and not those that may have rights or a legitimate interest to a mark.