WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Ltd. v. Virginfree
Case No. D2000-1715
1. The Parties
The Complainant is Virgin Enterprises Ltd of 120 Campden Hill Road, London W8 7AR UK
The Respondent is Virginfree of 26 Beech Avenue, Sherwood Place, Nottingham, Nottinghamshire NG7 7LL UK
2. The Domain Name(s) and Registrar(s)
<Virginfree.com>, registered with Easyspace Ltd, the administrative contact details for the Respondent registrant being given as "Michael-Parvinder White-Gangotra." This formulation must be taken to refer to a Mr Michael White and a Mr Parvinder Gangotra, the latter being the signatory of correspondence from the Respondent's address to the Complainant.
3. Procedural History
(1) The Complaint in Case D2000-1715 was filed on December 8, 2000 and was notified to the Respondent on December 29, 2000.
(2) The WIPO Arbitration and Mediation Center has found that:
- the Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy;
- payment for filing was properly made;
- the Complaint complies with the formal requirements;
- the Complaint was properly notified in accordance with the Rules, paragraph 2(a);
- a Response to the Complaint was filed in due time; and that
- the Administrative Panel was properly constituted.
As Panelist, I accept these findings.
(3) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
(4) The Respondent has subsequently drawn my attention to decisions in Case No. D2000-0295, North American Die Casting Association v. Genick Bar Meir; and D2000-0482, Sair Group v. Pat Reinhardt. These cases being a matter of public record, it is proper for a party to draw the Panel's attention to them at any stage before submission of the Panel's Decision. The remainder of the Complainant's further submissions go to the factual circumstances of the case and are admissible only in my discretion. I do not find it necessary to take them into account in order to decide the case.
(5) The date scheduled for issuance of a decision is: February 12, 2001.
(6) No extensions have been granted or orders issued in advance of this decision.
(7) The language of the proceedings is English.
4. Factual Background
(1) The Complainant has registered trade marks in or for a great many countries of the world comprising the word "Virgin" as such or "Virgin" in a distinctive script form, and holds further registrations for "Virgin" in combination with other words or logos. It has made numerous further applications which have yet to be registered. The Complainant is also registrant of many hundreds of domain names. In the United Kingdom, where the headquarters of the Complainant are situate, there are 31 registrations of marks for "Virgin" without special form, covering a wide range of goods and services across numerous classes of the Register, plus many others in special form or with additional material.
(2) Around the world these marks and domain names establish the joint brand name used by the Virgin Group of companies and are licensed to them by their owner, the Complainant company (which also licenses them to certain enterprises outside the Virgin Group), for use in a wide range of commercial activities. These include airways, railways, cinemas, hotels, records, publishing, entertainment, internet business, mobile telecommunications and soft drinks. One Virgin Group company is Virgin Net Ltd which is the UK's third largest Internet service provider. The founder of the Virgin Group is Sir Richard Branson.
(3) The Respondent has identified ten domain names which begin with "virgin" but which are not associated with the Complainant.
(4) The respondent's registration of the domain name in dispute occurred on
March 28 2000. Its presence was brought to the Complainant's attention by an email sent to its virgin.com website on July 4 2000. It stated: "SIR RICHARD WE HAVE A SITE FREEE333.COM AND LIKE TO DO BUSSENISS WITH YOU ALSO COME SOON VIRGINFREE,COM from PK Gangotra (M.A.)" To this the Complainant responded by a letter of July 6 2000 claiming that use of the domain name would constitute passing off and infringement of its "Virgin" marks and requesting that the Respondent reply by July 20 with "a written business proposal along with your confirmation that you will transfer the domain name to Virgin Enterprises Limited." This was followed by further letters from the Complainant and its solicitors requiring a response before certain dates if the pursuit of its complaint were to be avoided.
(5) In August 2000 the Respondent established a website at the domain name in suit which comprised links to a portal page to "Free" sites. The Complainant has found most of these to be non-active, but some to give links to commercial organisations unconnected with the Virgin Group which are not providing free goods or services. The Respondent has not sought to deny this evidence. While the logo version of "Virgin" in the website name used the same form of "V" as in the Complainant's logo mark, it was also stated in small letters, "Virgin Free.com is in no way associated with Virgin enterprises or Virgin.com". A communication from Mr Gangotra to Sir Richard Branson, dated August 23 2000, appears to state that any court proceedings to prevent passing off or infringement will be defended and to invite the submission of the dispute to arbitration. The letter ends with the statement "In the meantime we have informed the hosting company of virginfree.com to temporary suspended. The web page until this matter is consolidated". The Complainant alleges that no such suspension in fact occurred. The Respondent has not denied this.
(6) A further Communication, also addressed to Sir Richard, refers to the Complainant's original response of July 6 2000, quoting the phrase set out above; but it contains no direct answer to the Complainant's demands beyond the statements, "Again to you under the cercumstances we feel that we are now matched to fight you in court…We would be greatfully to give from Free333.com = virginfree.com to Sir Richard Branson only".
5. Parties’ Contentions
The Complainant asserts that
- the Respondent's domain name <virginfree.com> is confusingly similar to the Complainant's internationally known trade mark, "Virgin," which is protected by registered and common law rights accumulated since the early 1970s. The addition of "free" does not provide distinguishing matter but rather adds to the potential for confusion.
- the Respondent has no rights or legitimate interests in respect of this domain name. The website which it has established under the domain name does not provide links to free goods and services, despite purporting to do so. Moreover, the Respondent is not commonly known by the domain name or is it making legitimate non-commercial or fair use of the domain name or without intent for commercial gain. Rather any use by the Respondent of the domain name is likely to misleadingly divert consumers or to tarnish or otherwise dilute the Complainant's well-known registered mark.
- evidence that the Respondent was acting in bad faith is shown by the approaches by Mr Gangothra to Sir Richard Branson; by the form of "Virgin" used on the website; by the failure to provide any evidence of a formal business plan, there being nothing more than a mere concept coupled with a web page providing links to other commercial websites.
- in addition, the domain name was registered to attract internet users for financial gain or otherwise by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website, notwithstanding the disassociation on the home page in very small type.
The respondent asserts that
- the domain name in suit is not identical or confusingly similar with the word "virgin" used in conjunction with several of Sir Richard Branson's businesses, because of the suffix "free" and because the word itself has other meanings and because others have used it in domain name combinations.
- the Respondent had rights or legitimate interests in the domain name because it had made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services. These are shown by the establishment of the Respondent's website on or about July 31, 2000, a date which preceded notice of this dispute or any objection by the Complainant or any contact between Respondent and Complainant.
- the Respondent has been commonly known as Virginfree from registration of the domain name on March 28, 2000, or at least from establishment of the website.
- the Respondent can fairly claim that it had no intention of misleadingly diverting customers or tarnishing the trademark or service mark, "Virgin".
- the Respondent acted in good faith because its intention was always to develop and operate a website under the name virginfree, not to transfer the name to anyone; because the Complainant has shown no intention to operate a website under the virginfree name; because the Respondent and Complainant are not competitors, the Complainant being engaged in no business remotely similar to the provision of free goods and services to the public via a website; because there is no reasonable likelihood of an Internet user going to the Respondent's site in mistake for the Complainant's; and because the Complainant concedes that the Respondent demonstrated an intention to launch virginfree as a website before any notice of a dispute.
- the Respondent has not attempted to "hold Sir Richard Branson to ransom".
6. Discussion and Findings
A. Applicable dispute
(1) The Complainant has filed ample evidence of its trade mark registrations and the associated businesses in the Virgin Group to substantiate its claim that "Virgin" has become very well-known internationally over the last thirty years as the brand by which they are known. The admiration for Sir Richard Branson's personality and achievements in Mr Gangotra's letters substantiates his acknowledgment of this.
(2) In order to pass the threshold establishing an applicable dispute under the UDRP, the Complainant must also show that the domain name at issue is identical or confusingly similar to any of the various "Virgin" trade marks. This the Respondent denies, by seeking an analogy to one of the "Easy-suffix" cases, D2000-0950, Easygroup (UK) Ltd v. Rencross Technology Ltd/Michael King, where the dispute was dismissed. The Response, however, exhibited Case D2000-0024, Easyjet Airline Co Ltd v. Andrew Steggles, where the dispute was upheld. The contrast thus presented serves to demonstrate that the question of confusing similarity is a matter of impression arising on the particular linguistic and other usages in question. It is always difficult to draw conclusions from one case to another where the words are different.
(3) Here the domain name is compounded of exactly the Complainant's well-known trade mark and the suffix "free". "Free" is a word variously and frequently used in the digital context. As advocates of Free Software point out, it can mean without paying a price and it can mean without consequent restriction on use after purchase. The nub of the Respondent's submission on this aspect is that "free" must necessarily dissociate the domain name in dispute from any Virgin Group branding or domain name because the Group does not supply goods or services for free. In my view the word does not have any such clearly defined meaning in the Internet context. An Internet user will probably be struck first by "virgin" and in all likelihood expect a linkage to the Virgin Group. The addition of "free" will by no means lead that person to believe that there cannot be any linkage.
(4) The Complainant has accordingly established the first basis of an applicable dispute, which is an objective assessment not related to the Respondent's motive. However, the Complainant must also show bad faith on the Respondent's part; and it is open to the Respondent, on the contrary, to demonstrate rights or legitimate interests which justify retention of the domain name.
B. Bad faith
(1) The Response insists that <virginfree.com>, was conceived and has, to-date operated exclusively as a web portal for users to research and locate goods and services which were available 'for free' on the World Wide Web". By way of substantiation it has been claimed that the use established in August 2000 was made before any dispute arose with the Complainant. However, already on 4 July Mr Gangothra had approached Sir Richard Branson to do business, announcing that "virginfree" would "come soon." The Complainant's response of July 6 then made perfectly plain that the Respondent's entitlement to the domain name was contested. The only sense which I can make of the Response on this matter is accordingly that the expression of intent implied by the words "come soon" must be treated as governing everything which ensued. In other words they are to be read as showing that substantial preparations for a bona fide web site had already been made and it was later launched in accordance with the part-executed plans. A mere expression of intent, however heartfelt, is not, in my opinion, evidence of actual preparations.
(2) The issue is compounded by the Respondent's failure, even in the Response, to give any further indication of what it meant by use to research and local goods and services which were available for free. The Complainant has asserted, and the Respondent has not sought to deny, that on the actual website the various portals either lead nowhere or to commercial businesses. It has laid stress on the small notice of disassociation on that site and ignored the allegation that Virgin was written with a 'V' similar to the Complainant's format. I can only conclude that while some who arrive at the site will be disabused of the connection with the Complainant, others will have their expectation that the connection exists confirmed.
(3) It is true that at no stage has the Respondent put any offer to transfer the domain name to the Complainant for a profit. But the contorted constructions which the Response seeks to put upon the events which have occurred and the refusal to offer explanations for the actions just mentioned make it impossible to find that the Respondent has been acting in good faith.
C. Rights or Legitimate Interest
(1) The factors which make an overall implication of bad faith inescapable equally serve to show that the Respondent had no sufficient justification for its course of action. As I have held, it has not shown demonstrable preparations for using the domain name bona fide before the dispute arose. I cannot accept that the Respondent has become commonly known by the domain name. Nor did its conduct amount to legitimate noncommercial or fair use of that name. I would point out that the burden of establishing countervailing rights or legitimate interest lies with the Respondent.
The Panel decides, in accordance with the Uniform Domain Name Dispute Resolution Policy, Paragraph 4:
- that the domain in dispute is identical to or confusingly similar with the trade mark comprising the Complainant's given name;
- that the Respondent has no right or legitimate interest in respect of that domain name; and
- that it has been registered and is being used in bad faith.
The Panel accordingly requires that the domain name,<virginfree.com>, be transferred forthwith to the Complainant.
William R Cornish
Dated: 1 March, 2001