WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Internet Domains
Case No. D2001-1008
1. The Parties
1.1 The Complainant is Virgin Enterprises Limited of 120 Campden Hill Road, London, W8 7AR, United Kingdom.
1.2 The Respondent is Internet Domains of 419 Main Street #277, Huntingdon Beach, California 92648, USA.
2. The Domain Name and Registrar
2.1 The domain name upon which this Complaint is based is <virginmail.com>. The registrar of the domain name as at the date of the Complaint is BulkRegister.com ("BRC").
3. Procedural History
3.1 The Complaint was made pursuant to the Uniform Domain Name Dispute Resolution Policy approved by the Internet Corporation for Assigned Names and Numbers ("ICANN") on October 24, 1999 (the "Policy"), in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, also approved by ICANN on October 24, 1999 (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in effect as of December 1, 1999 (the "Supplemental Rules").
3.2 The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email on August 8, 2001, and in hard copy on August 10, 2001. The fees prescribed under the Supplemental Rules have been paid by the Complainant. The Complaint stated that a copy of the Complaint had been sent or transmitted to the Respondent and that a copy of the Complaint had been sent or transmitted to the Registrar of the domain name in dispute, BRC, by first class post and by email.
3.3 On August 10, 2001, the Center sent the Complainant an "Acknowledgment of Receipt of Complaint".
3.4 The Center sent a "Request for Registrar Verification" to BRC on August 10, 2001, by email. BRC responded to the Centerís request by email on August 15, 2001, stating:
(a) that BRC was in receipt of a copy of the Complaint sent to it by the Complainant;
(b) that BRC was the registrar for the domain name in dispute;
(c) that Internet Domains was the current registrant of the domain name in dispute;
(d) that the current status of the domain name in dispute was Registrar LOCK;
(e) Internet Domainsí contact details; and
(f) that the Policy applied to the domain name in dispute.
3.6 The Center sent the Complainantís representative a "Complaint Deficiency Notification" on August 17, 2001, stating that the Center had still not received proof of payment of the relevant fees. The Complainantís representative responded on the same date stating that this deficiency was made up by electronic transfer on August 17, 2001.
3.7 The Center sent a "Notification of Complaint and Commencement of Administrative Proceeding" on August 17, 2001, to the Respondent by post/courier, facsimile and email, and to the Complainantís representative by email.
3.7 The Respondent contacted the Center by email on September 10, 2001, to request an extension to the 20-day deadline for filing a Response. The Center contacted the Complainantís representative by email on September 11, 2001, requesting a comment on the Respondentís request. The Complainantís representative confirmed by email on the same date that it was happy to extend the time for the Respondent to file a Response to September 17, 2001.
3.8 The Center received a Response from the Respondent by email on September 13, 2001, and in hard copy on September 19, 2001.
3.9 The Center emailed the Respondent on September 14, 2001, stating that it was in receipt of the Response but that it did not indicate a panel election. The Center again emailed the Respondent on September 18, 2001, stating that it would proceed with appointing a single panelist as the Complainant designated.
3.10 The Center received an email from the Complainantís representative on September 26, 2001, making further submissions in response to the Respondentís Response. The Center emailed the Respondent and the Complainantís representative on September 26, 2001, stating that the Rules only provide for a single submission by each party and that it is at the Administrative Panelís sole discretion whether additional filings will be considered in arriving at a decision.
3.11 The Center sent the Complainantís representative and the Respondent a "Notification of Appointment of Administrative Panel" by email on October 4, 2001.
3.12 The Center sent a transmission of case file to the Panel by email on October 4, 2001. The documentation was received in hard copy by the Panel on October 8, 2001, in Sydney, Australia.
3.13 All other procedural requirements appear to have been satisfied.
4. Factual Background
4.1 Activities of the Complainant
The following information is asserted as fact in the Complaint.
The Virgin group comprises several hundred companies, most of which are organized into corporate groups. The Complainant licenses, amongst others, the following companies within the Virgin group to use the VIRGIN name: Virgin Rail Group Limited, Virgin Direct Limited, Virgin Retail Limited, Virgin Hotels Group Limited, Virgin Entertainment Group Limited, Virgin Net Limited, Virgin Publishing Limited, Virgin Trading Company Limited, Virgin Mobile Telecoms Limited, Virgin Cola Holdings BV Limited, Virgin Active Limited, Virgin Bride Limited, Virgin Atlantic Airways Limited and Virgin Holidays Limited.
Within the Virgin group most companies are trading companies whose names begin with the word Virgin. In 1971 the first Virgin record shop was opened on Oxford Street in London. The Virgin group has used the name VIRGIN and has depended on public approval for its success ever since.
Virgin is one of the UKís largest private corporate groups and has achieved growth from a sales turnover in 1983 totaling 50 million pounds to a turnover in 1994 exceeding 1.4 billion pounds.
In June 1996, Virgin began operation of its own Internet Web site, identified by the domain name <virgin.com>. As well as providing general corporate information on the group, the site has specific links to Web pages for many of the companies in the Virgin group. Currently, the <virgin.com> website received around 3 million hits per month. On April 25, 2001, the Complainant revised its website at www.virgin.com to include information on the planned launch of an Internet based email system, "v.mail". The Complainant is the registrant of many hundreds of domain names, the majority of which include the VIRGIN name.
The Virgin group is an entity which deals with, and depends upon, the general public for its business. In doing so, it trades very much upon the VIRGIN name, which has enormous goodwill with the public and is associated with an extremely wide variety of products and services. A survey conducted by the UK Public Relations magazine PR Week in 1995 showed that over 90% of the public recognized the VIRGIN name.
4.2 The Complainantís Trade Marks
The Complainant also states the following in the Complaint:
The Complainant is the owner of all worldwide VIRGIN trade mark applications and registrations attributable to the Virgin group of companies. The Complainant licenses the VIRGIN Trade Mark to companies both within and outside the Virgin group of companies.
The word VIRGIN was first registered by the Virgin Group as a trade mark on April 11, 1973. Since the late 1970s the Virgin group has also used a stylized form of the VIRGIN name. This was first registered as a trade mark in 1979 and is known as the VIRGIN Signature logo.
The Complainant owns approximately 1400 trade and service mark applications and registrations for the VIRGIN trade mark in over 123 countries for a wide variety of goods and services. In the UK alone the Complainant owns over 30 trade mark registrations for the VIRGIN word on its own.
4.3 Activities of the Respondent
The Respondent states the following in the Response:
"Internet Domains" registers domain names for use with our advertising portals and adult sites and has a strict policy to only register generic domain names and never trademarks. We are a small privately owned company that owns many domain names. We have been involved in the generic domain name business since 1996 and have never had a single dispute regarding any domain name. We are not cyber squatters and we go out of our way to make sure our registrations do not conflict with trademarks.
5. The Complainantís Contentions
5.1 The Complaint asserts that each of the elements specified in paragraph 4(a) of the Policy have been satisfied.
5.2 In reference to the element in paragraph 4(a)(i) of the Policy, the Complainant alleges that it is incontestable that the domain name in dispute contains a word identical to the Complainantís trade mark VIRGIN with no relevant distinguishing matter. The Complainant alleges that the domain name is therefore confusingly similar to the trade mark VIRGIN in which the Complainant has registered and unregistered/common law trade mark rights.
5.3 In reference to the element in paragraph 4(a)(ii) of the Policy, the Complainant alleges that the Respondent has no rights or legitimate interest in respect of the domain name in dispute, as evidenced by the fact that:
(i) the Respondent has no relationship with or permission from the Complainant for the use of the mark VIRGIN MAIL nor has the Complainant consented to the Respondentís application for registration of, or use of, any domain name incorporating that mark;
(ii) the domain name was registered by the Respondent on March 7, 1999. At this time the Complainant and the Virgin group had a very considerable reputation in the VIRGIN name in the UK and elsewhere. At that time the Complainant had both UK and overseas registered trade mark rights in the VIRGIN name and had common law trade mark rights in the name which it had been accruing since the early 1970s;
(iii) as far as the Complainant is aware there is no evidence of the Respondentís use of or demonstrable preparations to use the domain name in connection with a bona fide activity. As at the date of the offer to sell the domain name, the domain name pointed to an active web site containing adult pornographic material, and selling adult sex toys and products. The Complainant also contends that any commercial activity under the VIRGIN name without licence or authority from the Complainant is not bona fide due to the strength of its common law and registered trade mark rights;
(iv) as far as the Complainant is aware the Respondent is not commonly known by the domain name and submits that this is highly unlikely bearing in mind the substantial goodwill established by the Complainant in the trade mark to date and its rigorous policing of the VIRGIN mark; and
(v) the Complainant is not aware that the Respondent is making a legitimate non-commercial or fair use of the domain name or without intent for commercial gain and the Complainant submits that the use made of the domain name by the Respondent prior to filing this complaint and any further use of the domain name is likely to misleadingly divert consumers or to tarnish or otherwise dilute the Complainantís well known registered trade mark. Until at least July 26, 2001, the domain name resolved to an adult pornographic website. As previously stated, the Virgin Group depends on public approval for its success. Any use of the VIRGIN name in relation to pornographic material can only tarnish the groupís reputation in the eyes of the public. Furthermore, in the email of Junior Isbell of Internet Domains dated July 17, 2001 (at Annex 7), the Respondent has offered to sell the domain name to the Complainant.
5.4 In reference to the requirements of paragraph 4(a)(iii) of the Policy, the Complainant contends that the Respondent has registered and is using the domain name in bad faith on the following grounds:
(i) At the time of the registration of the domain name by the Respondent the mark VIRGIN was well known both in the UK and overseas. The Complainant had created substantial goodwill in the mark and had trade mark rights which were first registered in the early 1970ís;
(ii) It is beyond reasonable belief that the Respondent registered the domain name without the Complainant or the Virgin group in mind. In particular, at the time Junior Isbellís email was received offering the domain name for sale, the Respondent was aware that the Virgin group are in the process of setting up a "v.mail" system allowing users to send emails online;
(iii) From the evidence, the Complainant has reason to believe that the domain name has been pointed to an adult site in order either to hold the Complainant to ransom by forcing them to buy the domain name at an inflated price or to attract users for commercial gain to a pornographic website; and
(iv) The "This Domain is For Sale" notice to which the domain name was pointing at the date of filing this Complaint clearly indicates that the Respondent wishes to sell the domain name for a substantial amount of profit.
5.5 The Complaint also refers to a number of Administrative Panel decisions in support of the contentions made by the Complainant that the elements of paragraph 4 (a) of the discussed above.
6. The Respondentís Contentions
6.1 In response to the Complainantís contentions, the Respondent states that it believes that it is the victim of an attempted reverse domain name hijacking. In defense of its domain name registration, the Respondent states as follows:
(i) Virgin Enterprises Limited does not own a company "Virgin Mail" and does not have a carte blanche ownership on everything with the word Ďvirginí in it. There are over 4000 .com domain names registered with virgin as the first word. Virgin Enterprises Ltd does not have the right to decide it wants to use a particular domain name and try to reverse domain name hijack the domains;
(ii) Virgin Enterprises Ltd has chosen their name "Virgin" with full knowledge that it has an adult meaning. They could have named their company something else besides Virgin, therefore they must also accept that there will be uses for the word "Virgin" other than their own;
(iii) Virgin Enterprises Ltd was contacted by a non-employee, independent domain name broker Junior Isbel without the knowledge of Internet Domains. We did not offer to sell Virgin Enterprises Ltd our domain and it is in fact not for sale;
(iv) VirginMail.com was not registered to be resold to Virgin Enterprises Ltd or to infringe on Virgin Enterprises Ltd in any way. The name was registered to become one of our adult sites (as the name implies);
(v) Our domain name had previously shown a registration that included the words Ďthis domain name is for saleí. This was inaccurate and was immediately changed once we became aware of the problem. The reason for this is simple, because of the limitations on doing global changes to a large number of domain names in the BulkRegister.com system (the registrar). The name is in fact not for sale and has since been modified;
(vi) There was also a short period of time when a for sale page was displayed instead of the correct web page. This is because of an emergency move of our websites to another internet connection. The domain name had not been set up yet and because of this the name defaulted to this page which fills in the domain name automatically. Once the domain names were properly configured the name was pointed to the correct page; and
(vii) Virgin Enterprises Ltd is a non-US based company and is attempting to hijack a US domain name (.com) from a US based company. Considering the generic nature of the word VIRGIN and the fact that Virgin Enterprises Ltd does not have a Virgin Mail company, it is quite absurd.
7. Discussion and Panel Findings
7.1 This section is structured by reference to the elements required by paragraph 4(a) of the Policy. In order to be successful, the Complainant has the burden of proving, on the balance of probabilities, that all three elements are present.
7.2 Domain Name Identical or Confusingly Similar to Complainantís Trade Mark
The domain name in dispute is <virginmail.com>. The Complainant has registered trade marks of the word "Virgin" in numerous countries around the world and holds further registrations for a stylized form of the word "Virgin" and the word "Virgin" in combination with other words or logos. The Complainant does not have a trade mark registration of the words "Virgin Mail" or "virginmail". The domain name in dispute and the Complainantís "Virgin" trade marks are not identical, and the issue is therefore whether the domain names and the "Virgin" trade marks are confusingly similar.
The Panel accepts the Complainantís assertion that the domain name in dispute contains a word identical to the Complainantís trade mark VIRGIN. However, in the Panelís opinion, this is not sufficient to make the domain name <virginmail.com> confusingly similar to the Complainantís trade mark.
First, as noted above, the Complainant does not have a trade mark registration of the words "Virgin Mail" and the email service set up on the Complainantís www.virgin.com web site in April 2001 (over two years after the domain name in dispute was registered by the Respondent) is not called "virgin mail" but rather "v. mail". The word "virgin" is a generic English word which, when combined with another generic word such as "mail", takes the resulting combination outside the scope of the Complainantís trade marks, provided that the domain name holder is not using the word "virgin" to attempt to pass itself off as being in some way connected to or endorsed by the Complainant, which is not self evident in relation to the disputed domain name. For example, the list of 4,000 domain names with the word "virgin" as the first part of the domain name annexed to the Response contains several domain names resolving to active web sites which would not infringe the Complainantís trade marks (for example <virginyachts.com> and <virginleather.com>).
Secondly, the word "virgin" is a common noun. It has a number of meanings essentially connoting a sexually inexperienced female. The word "mail" is another common noun. This Panel would be slow indeed to accord trademark status to a common noun combined with another common noun to form a quasi-descriptive combination in which the Complainant does not have any trade mark registration. Given the nature of the Internet, when "virginmail" appears in a domain name a user would be unreasonable in assuming that it must resolve to one of the Complainantís web sites, despite its fame. In any event, a user seeing the explicit nature of the www.virginmail.com web site would very quickly realize that it was in no way connected to the Complainant.
Accordingly, the Panel finds that Complainant has not proven paragraph 4(a)(i) of the Policy.
7.3 Respondentís Rights or Legitimate Interests in the Domain Name
As noted, above, the Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name because, inter alia, the Respondent has no relationship with or permission from the Complainant for the use of the mark VIRGIN MAIL nor has the Complainant consented to the Respondentís application for registration of, or use of, any domain name incorporating that mark.
As previously noted, the Complainant does not have any trade mark registration for "Virgin Mail" and the email system set up by the Complainant on its www.virgin.com web site in April 2001, is called "v. mail" not "Virgin mail". Furthermore, the Respondentís registration of the <virginmail.com> domain name on March 7, 1999, pre-dates the launch of the Complainantís "v. mail" service by over two years.
Paragraph 4 (c) of the Policy lists certain ways in which a Respondent can demonstrate its rights and legitimate interests in a disputed domain name, and sub-paragraph (i) states:
"before any notice of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;".
The Complainant alleges that as far as the Complainant is aware there is no evidence of the Respondentís use of or demonstrable preparations to use the domain name in connection with a bona fide activity. However, the Response states that VirginMail.com has been successfully in operation since March 1999, with no complaints until that of the Complainant.
On the balance of probabilities, and absent any objective evidence to damage the Respondentís credibility, the Panel accepts that the Respondent did use or prepare to use the disputed domain name in connection with a bona fide offering of services, albeit adult and pornographic services, before it received any notice of this dispute. The Panel considers that the Respondent has the right to use the word "virginmail" as the domain name of an adult website featuring (amongst other pornography) sexually inexperienced females.
The www.virginmail.com web site is not dedicated to email or any other kind of mail, although there appears to be an offering of free pictures by email. However, the domain name was registered before the Complainant set up its "v. mail" service, which does not in any event benefit from any trade mark protection, and "virginmail" is simply not a sufficiently distinctive term in this Panelís view for the Complainant to be able to assert that the Respondent could have no legitimate interest in using it as part of a domain name.
The Panel is not persuaded that the Respondent has no rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has not proven paragraph 4(a)(ii) of the Policy.
7.4 Domain Name Registered and Used in Bad Faith
The Panel accepts the Complainantís assertions that at the time of the registration of the domain name by the Respondent the mark VIRGIN was well known both in the UK and overseas, and that the Complainant had created substantial goodwill in the mark and had trade mark rights which were first registered in the early 1970ís. However, the Panel does not accept the Complainantís assertion that it is beyond reasonable belief that the Respondent registered the domain name without the Complainant or the Virgin group in mind.
In the Panelís opinion, on the balance of probabilities, the Respondent could plausibly have had in mind, when it registered the disputed domain name, that a domain name containing the words "virgin", and "mail" would be a suitable name for a pornographic web site of the kind the Respondent was planning. The Complainant bears the onus of proving otherwise.
Paragraph 4(b) of the Policy provides a number of circumstances which can constitute evidence of the registration and use of a domain name in bad faith. In the Panelís opinion, the only sub-paragraph of paragraph 4(b) of the Policy which could apply to the present case is (i), which states:
"circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name;".
On July 16, 2001, Junior Isbell of the Respondent, Internet Domains, sent an email to firstname.lastname@example.org, the subject line of which was the disputed domain name, and which stated:
"I am trying to get in contact with the person in charge of your v.mail program. Could you please send me their contact information. We have a domain that we are sure Virgin will be very interested in."
Upon receiving a response from the www.virgin.com "Webmaster", Junior Isbell stated in a second email sent the following day:
"The name we have virginmail.com
I just happened to notice that you have a v. mail program that is in the works and thought this might be perfect for you. It is currently being pointed to an adult site.".
The Complaint states that at the date of filing these proceedings, the disputed domain name resolved to a web page indicating that it was for sale for a minimum price of $3,500.
In the Panelís opinion, the above actions are consistent with opportunistic bad faith on the part of the Respondent, notwithstanding the Respondentís explanation of these events discussed at paragraph 6.1 of this decision. However, these actions do not prove that the domain name in dispute was registered for the purposes discussed in paragraph 4 (b) (i) of the Policy, because the domain name does resolve to an active adult web site, and according to the Respondent, has done so since March 1999. In the Panelís view, because it is inherently plausible, the Respondent is entitled to the benefit of the doubt in asserting that a primary purpose in choosing and registering the domain name in dispute was to set up an adult web site.
In asserting that the domain name has been pointed to an adult site in order either to hold the Complainant to ransom by forcing them to buy the domain name at an inflated price or to attract users for commercial gain to a pornographic website, the Complainant appears to suggest that sub-paragraph 4 (b) (iv) of the Policy applies to the Respondent. This sub-paragraph states:
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of your web site or location of a product o service on your web site or location."
The Panel does not accept this assertion because of the multitude of adult web sites containing the word "virgin" and the fact that the Complainant does not have a trade mark registration of the words "virgin mail" (and its email service is called "v. mail").
7.7 The Panel is not persuaded that the domain name in dispute was registered and is being used in bad faith by the Respondent. Accordingly, the Panel finds that the Complainant has not proven paragraph 4(a) (iii) of the Policy.
8.1 The Panel, having found that none of the requirements of paragraph 4 (a) of the Policy has been proven by the Complainant, dismisses the Complaint.
Philip N. Argy
Dated: October 16, 2001