WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Kook Sung
Case No. DBIZ2002-00028
1. The Parties
The Complainant in this administrative proceeding is Virgin Enterprises Limited, a company incorporated in England and Wales. The Respondent in this administrative proceeding is Kook Sung of Seoul, 138-220, Republic of Korea.
2. The Domain Name and Registrar
The disputed domain name is <virgin.biz>. The Registrar of the domain name is OnlineNIC, Inc. D/B/A China-Channel.com, San Francisco.
3. Procedural History
This is a mandatory administrative proceeding submitted for decision in accordance with the Start-up Trademark Opposition Policy for ".biz", adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, (the "STOP"), the Rules for Start-up Trademark Opposition Policy for ".biz", adopted by NeuLevel, Inc. and approved by ICANN on May 11, 2001, (the "STOP Rules") and the WIPO Supplemental Rules for Start-up Trademark Opposition Policy for ".biz" (the "WIPO Supplemental STOP Rules").
The Administrative Panel consisting of one member was appointed on June 13, 2002, by the WIPO Arbitration and Mediation Center ("the Center").
Complainant filed its STOP Complaint with the Center on April 24, 2002. On April 27, 2002, having verified that the STOP Complaint satisfied the formal requirements of STOP and the STOP Rules, the Center formally commenced this proceeding. The Respondent filed his Response with the Center on May 15, 2002. The Complainant filed Further Statements on May 28, 2002 and the Respondent filed his Further Statements on June 13, 2002.
An examination of this material confirms that all technical requirements for the prosecution of this proceeding were met.
The Administrative Panel has considered all of the material filed by the parties.
By registering the subject domain name with the Registrar, the Respondent agreed to the resolution of disputes pursuant to STOP and STOP Rules.
4. Factual Background
The following information is derived from the Complaint.
The Complainant is the owner of all worldwide VIRGIN trademark applications and registrations attributable to the Virgin group of companies. The Complainant licenses the VIRGIN trademark to companies both within and outside the Virgin group of companies.
The Virgin group is comprised of several hundred companies, most of which are organised into a number of corporate groups. The Complainant licenses, among others, the following companies within the Virgin group to use the VIRGIN name:
Virgin Rail Group Limited
Virgin Direct Limited
Virgin Cinemas Group 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
Virgin Holidays Limited
A further group, Virgin Music Group Limited, was sold to Thorn EMI Plc in June 1992 for £560 million although the companies within the Virgin Music Group continue to use the VIRGIN name under licence from the Complainant. The EMI Korea website at emi.co.kr advertises compact discs for sale by artists who are signed to the Virgin Music Group which uses the VIRGIN trademark.
Virgin Interactive Entertainment, a further licensee which is no longer owned by the Virgin group, continues to use the VIRGIN name under licence from the Complainant.
Within the Virgin group most companies are trading companies whose names begin with the word Virgin.
The Virgin group was originally established by Sir Richard Branson in 1970 as a mail order company selling popular music records. 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. The word VIRGIN was first registered by the Virgin Group as a trademark on April 11, 1973. Since the late 1970ís the Virgin group has also used a stylised form of the VIRGIN name. This was first registered as a trademark in 1979 and is known as the VIRGIN Signature logo.
The release of the biggest selling album of the 1970s, Mike Oldfieldís "Tubular Bells", on the newly formed Virgin record label in 1973 and signing the Sex Pistols in 1977 kept the VIRGIN name firmly in the public eye during its first decade of operation.
The Virgin group expanded from its successful retail base to form a film and video distribution company to establish nightclubs and to form commercial and residential property development companies, while at the same time expanding into computer games and software publishing with the formation of Virgin Games Limited and Virgin Mastertronic Limited.
In 1984, Virgin Atlantic Airways Limited was launched ("VAA"). In the same year, Virgin Vision Limited began "The Music Channel", a 24 hour music station transmitted by satellite It produced the award-winning film "1984", starring Richard Burton and John Hurt.
In November 1986, 35% of the equity in the Virgin group (excluding the airline and travel companies) was floated on the London Stock Exchange. At the time 87,000 shareholders acquired a stake in what had up to then been the highest profile privately owned company in the United Kingdom. The equity was bought back by the Virgin group in November 1988. The Virgin groupís interests extended beyond the United Kingdom to the Far East where Virgin Vision Limited was distributing films and videos; the various holiday destinations to which customers of Virgin Holidays Limited (formed in 1985) traveled; Australia, Europe and the United States where Virgin Records (America) Inc was launched in 1987 and in particular, New York and Miami where VAAís aircraft were flying under the distinctive VIRGIN name for an expanding customer base.
In 1985 the Virgin group won the Business Enterprise Award for company of the year. A biography of Sir. Richard Branson was published in 1988, written by the Sunday Times newspaper journalist Mick Brown and his autobiography, "Losing My Virginity" was first published in 1998. A second biography of Sir Richard Branson, "Virgin King" by Tim Jackson, also has been published.
The Virgin record shop in Oxford Street developed and experimented with various "entertainment superstore" features and subsequently launched the now familiar "Virgin Megastore" concept in 1979. In 1991, Virgin Retail Limited and WH Smith entered into a joint venture to develop the Virgin Megastore business in the United Kingdom with plans to open up over 20 new large stores, in addition to its then existing 12 stores, by the end of 1997. There are now over 30 Virgin Megastores in the United Kingdom and Ireland selling tapes, records, CD mini discs, DVDís and a wide range of computer games software. Turnover for the Megastore business in the United Kingdom in 1998 was in excess of £250 million.
In 1992, the Complainant entered into a joint venture agreement with Blockbuster Music Holdings Corporation of Florida, the worldís largest video retailer, to expand Virginís continental European chains. A separate joint venture company with Blockbuster was set up to open a chain of Virgin Megastores in the United States. Twenty-one Virgin Megastores currently operate in the United States and over 70 Virgin Megastores have now been opened worldwide in countries including Japan, Australia, and Canada.
Virgin Publishing was formed in 1991, combining WH Allen Plc, Allison and Busby and Virgin Books. The name has been changed to Virgin Books and in 1997 the worldwide turnover was in excess of £8 million. In the same year Virgin Communications Limited sold Virgin Mastertronic Limited, its European computer games distributor, to Sega of Japan. Virgin Communications Limited retained the publishing division and began to expand Virgin Games Limited, a company publishing and marketing computer games. Virgin Games Limited changed its name to Virgin Interactive Entertainment Limited, a majority stake of which was sold to Blockbuster Entertainment Corporation in July 1994.
In 1992 the Virgin Group acquired a 100% shareholding in Euro-Magnetic Products Limited, which is engaged in the personal computer business. Euro-Magnetic Products began to trade as Virgin Euromagnetics, although retaining the original company name.
The majority of Virgin group companies which do not include VIRGIN in their company name do, nevertheless, either trade under the name VIRGIN or use the VIRGIN name in relation to their products or services.
The VIRGIN name was applied to another new venture in 1993 when the Virgin 1215 radio station was launched as only the second independent nationwide radio station in the United Kingdom and the first nationwide independent adult, contemporary music station. The appeal and perception of the VIRGIN name in the eyes of the public was an essential element in the decision to go ahead with this plan. Virgin Radio Holdings Limited and its subsidiary Virgin Radio Limited were sold to the Ginger Media Group in 1998 although the Virgin Group retained a 20% stake. The entire Ginger Media Group was sold to the Scottish Media Group in early 2000. Virgin Radio still uses the name under licence from the Complainant.
VAA has been voted Executive Travelís airline of the year for the last four years. It currently carries over one million passengers per year from the United Kingdom to destinations in the United States including New York, Washington DC, Boston, Miami, Orlando, Las Vegas, Los Angeles and San Francisco; the Far East including Hong Kong, Japan, Singapore and China; South Africa and the Caribbean. VAAís worldwide turnover in 1998 was over £820 million. The VIRGIN name is also used in relation to the provision of customer services in VAAís lounges in Heathrow airport in London, Logan airport in Boston and Newark airport in New York. Virgin Holidays Limited, formed in 1985, offers package holidays in the United States, the Caribbean and other prime destinations in conjunction with VAA scheduled services. Virgin Holidaysí turnover in 1998 was over £166 million. In excess of 150,000 holidays are sold each year.
The Virgin Cola business, now renamed Virgin Drinks, wholly owned by the Virgin Group operates as a franchise business around the world, in particular in Europe, North America, North Africa, the Middle East and Far East including Japan, Singapore and Taiwan. The business has produced and distributed soft drinks under the VIRGIN name in the UK since 1994 and has a portfolio of over twenty drinks.
The Virgin Group, in association with William Grant of Scotland, has produced and distributed Virgin Vodka in the United Kingdom since 1994.
In March 1995, Virgin Direct was launched to sell financial services by telephone at a significantly lower cost than traditional finance services companies. In 1998 it had in excess of £1 billion of funds under management and a United Kingdom turnover of over £550 million. The name has now been changed to Virgin Money.
The Virgin Group has interests in the operation of airships and hot air balloons through Virgin Balloon Flights Limited which started business in 1994. In 1998, its worldwide turnover was nearly £2 million.
Virgin Cinemas Limited, a joint venture between the Virgin Group, a major U.S. investment fund called TPG Partners and Hotel Properties Limited, was sold to the French Cinema Group UCG at the end of 1999. At that time there were 20 cinemas throughout the United Kingdom trading under the VIRGIN name. Virgin Cinemas also operate elsewhere in the world including Japan.
Virgin Net was launched at the end of 1996 as an Internet service provider to enable new and experienced users to get the most out of the Internet and to explore the World Wide Web. At present there are over 500,000 subscribers to Virgin Net, which is currently the United Kingdomís third largest ISP. In 1997, its first full year of business, Virgin Netís turnover was almost £1 million.
Also in 1996, Virgin Bride opened in London and is now one of the largest bridal retail outlets in Europe. U.K. turnover in 1998 was nearly £700,000.
Virgin Travel Group acquired Euro Belgian Airlines early in 1998 and has renamed the business Virgin Express. Virgin Express is a short haul airline based in Belgium, which offers a low cost, no frills service and flies from Brussels to Madrid, Barcelona, Rome, Milan, Vienna and Nice.
Virgin Rail Group Limited, established in early 1997, controls two domestic rail franchises, West Coast Trains which runs trains from London to Glasgow via Birmingham and Manchester and Cross Country Trains which runs trains throughout the United Kingdom and carries over 30 million passengers a year.
In 1999, the Complainant entered a joint venture with the telecommunications business One 2 One to provide Virgin branded mobile telecommunications services through Virgin Mobile Telecoms. By October 2001, Virgin Mobile had over 1.2 million customers throughout the world including Singapore.
A fitness and health club business, Virgin Active, was launched in the United Kingdom towards the end of 1999 and its first premises opened in Preston and a subsequent centre opened in Leeds in 2000. Eighty clubs were acquired in South Africa and by the end of 2001, there were 17 Virgin Active health and fitness centres in the United Kingdom. Further expansion is planned during 2002.
The Complainant is one of the United Kingdomís largest private corporate groups and has achieved growth from a sales turnover in 1983 totaling £50 million to a turnover in 2001 exceeding £3.7 billion. These figures do not include all the turnover of goods and services provided under the VIRGIN trademark under licence to others and specifically exclude the substantial turnover figures of Virgin Records and Virgin Interactive Entertainment. As a group, Virgin currently employs over 16,000 staff and operates in over 20 countries across the world.
In June 1996, the Complainant 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, including Virgin Megastore, VAA, Virgin Net, Virgin Hotels, Virgin Radio and Virgin Balloon Flights. Currently, the <virgin.com> web site receives around 3 million hits every month.
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. Public recognition of both the VIRGIN name and that of Sir. Richard Branson is at an extraordinarily high level. A survey conducted by the UK Public Relations magazine PR Week in 1995 showed that over 90% of the public recognised the VIRGIN name.
The Virgin groupís reputation is not limited to any particular area or activity. The history of the Virgin group shows that it has always been interested in developing new products and services and expanding its market place, while relying on the VIRGIN name to rally support to the particular new enterprise or market place.
All types of media are used by the various Virgin companies within the markets in which they operate. For example, VAA uses television and print media in the UK, US, Japan, South Africa, China and Hong Kong. Every Virgin Company, particularly those in the retail field, makes extensive use of print media in every country in which the Complainant trades. The same is also true with regard to the Complainantís activities in the electronic, entertainment, mobile telecommunications, personal finance and computer games markets. Smaller Virgin operations predominantly use specialist print media in the markets in which they operate.
The Complainant owns approximately 1,400 trade and service mark applications and registrations for the VIRGIN Trademark in over 123 countries for a wide variety of goods and services. These include plain and stylised VIRGIN names. In Korea alone the Complainant owns 15 trademark registrations for the VIRGIN word on its own and a further 14 for the stylised VIRGIN name.
The Complainant is registrant of many hundreds of domain names, the majority of which include the VIRGIN name.
On March 27, 2002, the Respondent registered the subject domain name.
The Complainant first heard of the Respondent on April 6, 2002, when it was notified by the Registry Operator that the Respondent had registered the subject domain name.
The Complainant has not given any licence, implied or express, to the Respondent for the use of the VIRGIN mark.
The Complainantís authorised representatives have carried out various searches, none of which reveal the Respondent to have any legitimate right to the domain name. Web searching across a wide variety of different search engines returned no relevant results.
The URL http://www.virgin.biz does not point to a website. The Complainant acknowledges that this may be due to the fact that the Registry Operator has placed the website on hold.
The following information derives from the Response.
The ĎVIRGINí trademarks licenced are not the trademarks of the noun virgin, but the trademarks of goods like a sportswear and services.
About 1.2 billion people of world population are and were virgin. The Complainantís trademarks ĎVIRGINí did not license above virgins.
The EMI Korea website at emi.co.kr advertises EMI compact discs. ĎLike a Virginí sung by Madonna is not under licence by EMI.
Leonarde da Vinci used the word "virgin" in Ď The Virgin of the Rocksí one of his works.
The word also was used in the ĎVirgin stripped bare by her Bachelorsí by a French painter.
The term "Virgin Queen" is used to describe Her Majesty, Queen Elizabeth I of the United Kingdom.
The virgin of the subject domain is not the 'VIRGIN' of the Complainant's trademark, but the noun that almost all people of the world use on a daily basis.
Almost all Koreans know that the word "virgin" is a noun and they do not know the trademark ĎVIRGINí.
The Respondent is one of the leading companies in the field of middleware solution including the ORBIX E2A of IONA Technology for Enterprise Application Integration and the online multimedia system cooperated with The Korean Economic Daily News.
The Respondent plans to develop the website to which the subject domain name resolves to explore virgin lands and technologies for about 1.2 billion people of the world who are or were virgin.
The following is derived from the Complainantís further submission.
The Complainant acknowledges that Madonnaís song ĎLike a Virginí is not licensed by EMI, but contends that the Respondent has misunderstood paragraph 17 of the Complaint which refers to the fact that the emi.co.kr website advertises compact discs for sale by artists who are signed to Virgin Records. Examples of bands signed to Virgin Records whose music is available through the emi.co.kr website are the Spice Girls, Atomic Kitten and Blue, thus demonstrating use of the VIRGIN trademark in Korea. The Respondentís point would be irrelevant even if Madonnaís song were licensed by EMI.
Annex 1 to the Response shows that the Respondentís business is concerned with trade, advertisement and computer services. This is not related to the alleged use which the Respondent states will be made of the subject domain name. The Respondent has not produced any evidence of its proposed plans.
The following information derives from the Respondentís further submission.
The Respondent is providing architecture to develop the websites to which the subject domain name resolves in accordance with the STOP Rules, which is unavailable to be presented.
5. Partiesí Contentions
The Complainant relies on its extensive registration and us of the word "virgin" and states that the subject domain name is identical.
This Complainant notes that the Respondentís registration of the subject domain name was many years after both the establishment of the Virgin groupís substantial reputation for a wide variety of goods and services and the registration of numerous Korean and worldwide trademarks incorporating the VIRGIN name.
The Respondent will have been notified by the Registry Operator of the Complainantís IP claim to the subject domain name and the nature of that claim which made specific reference to the first application for registration of the VIRGIN trademark in 1973.
The Complainant has not authorized the Respondent to use the Complainantís mark
and name and the Respondent is not commonly known by it.
There is no activity at the website to which the subject domain name resolves. Even it there were, it would trespass on the Complainantís rights and not be legitimate.
Bad faith is said to be established by the fact that the Respondent clearly must have known of the Complainantís mark and can have no purpose other than to take advantage of the Complainantís reputation to attract customers to the Respondent.
In addition, the Respondent registered the subject domain name in latin script which would not commonly by understood by Koreans, other than by reason of and in association with the Complainantís products.
The Respondent asserts that the Complainant has no right to the noun virgin as a trademark. The subject domain name does not contain the trademark ĎVIRGINí, but contains simply the noun virgin. The Respondent contends that the Complainant has no rights to monopolize the noun virgin in order to get the subject domain name
The Respondent says that it has a legitimate right to the subject domain name because everybody has commonly used and spoken the noun virgin.
The Complainant has registered its trademark and services mark 'VIRGIN' and has applications pending in the countries where people speak English - Angola, Bangladesh, Bhutan, India, Iran, Iraq, Malaysia, Namibia, Oman, Pakistan, Philippines, Qadar, Srilanka, Swaziland, Uganda and The United State Virgin Island. This means that the noun "virgin" is not to be registered as a trademark.
The Respondent says that it is developing architecture to use the website to which the subject domain name resolves, but that it is too soon to be able to provide more detailed information.
The Respondent denies bad faith and accuses the Complainant of improperly seeking to monopolize the word "virgin"
6. Discussion and Findings
Paragraph 4(a) of STOP requires the Complainant to prove that:
(i) the domain name is identical to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no legitimate interest in respect of the domain name;
(iii) the domain name has been registered or is being used in bad faith.
Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:
(i) circumstances that indicate that the Respondent has registered or has 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 the Complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name;
(ii) registration of the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;
(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;
(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondentís web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location or of a product or service on it or a location.
These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.
The Complainant refers to previous domain name dispute and domestic court decisions. While these are neither controlling nor binding on the Administrative Panel, often reference to them is of assistance.
The resolution of this dispute takes place in the context of a consideration of the requirements of paragraph 4(a) of the STOP.
A. Identical to a Trademark or Service Mark
It is clear that the Complainant has rights to the word "virgin". The subject domain differs from it only by the addition of .biz which is irrelevant.
The Respondentís argument related to the noun "virgin" speaks to the legitimacy of registering the word as a trademark or its common-law recognition as such. A STOP proceeding is not an appropriate forum to address such a contention in absolute terms. In this proceeding the questions simply are: does the Complainant have the mark and, if so, is the subject domain name identical. Whether the Respondent has a legitimate interest in the subject domain name because it merely incorporates a noun, is the next issue.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i).
B. Respondents Legitimate Interest
The Respondent states that it is developing architecture to develop the website to which the subject domain name resolves. This, in part, answers a contention of the Complainant that the site is inactive. In addition, in STOP proceedings it is not unusual for their to be little activity underway because the matter is being dealt with at the beginning of potential use.
The Respondent states initially that the subject domain name represents him as a virgin and then that it "Öplans to develop the website to which the subject domain name resolves to explore virgin lands and technologies for about 1.2 billion people of the world who are or were virgin." There is no explanation why it intends to do so or to what end.
At the core of the Respondentís case is the submission that it is entitled to the subject domain name because it merely incorporates the noun "virgin", a word that is in common use. Standing alone, the proposition can be sustainable, but it must be placed into context.
It is clear that the Complainantís mark is well-known around the world including in the Republic of Korea. The Respondent states repeatedly that it wants identification with virgins, but there is no explanation why. No apparent product or marketing link is suggested. All that is said is that many people are or were virgins and that the word is a noun.
The Complainant points to the usual indicia of a lack of legitimate interest: no authorization; no activity: notoriety of a complainantís mark etc. The lack of activity has been addressed, but the allegation of activity in a vacuum is not helpful. Even if a website were developed it is difficult to conceive that its use would not offend the rights of the Complainant. The issue concerns not merely the incorporation of a noun in the subject domain name; it is the purpose of that incorporation that speaks to the legitimacy of the Respondentís interest.
Subject to a satisfactory explanation, the undistinguished use of anotherís mark is not legitimate.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii).
C. Bad Faith
A finding that a respondent has no legitimate interest in the mark of a complainant does not result in a conclusion of bad faith, but the facts that support the finding are relevant to the inquiry.
In this case, the notoriety of the Complainantís mark and activities raise a suspicion that the registration of the subject domain name was for the purpose of attracting custom by trading on the Complainantís mark and reputation.
The main thrust of the Respondentís position is that it is entitled to use the noun "virgin". Even if this were true, it would not be a right unrestricted by the intellectual property rights of the Complainant.
The Respondent asserts that it intends to use the subject domain name and to develop a website associated with it, but there does not appear to be any connection between the Respondent and its wares and the word "virgin". Reference to statistics concerning virgins is not helpful because it leads nowhere.
The information overall leads to the conclusion that, insofar as the subject domain name will be used in commerce, the Respondent intended to take advantage of the Complainantís name, mark and reputation simply to attract customers who might believe that they were dealing with a member of the Virgin Group.
The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii).
Based on the information provided to it and on its findings, the Administrative Panel concludes that the Complainant has established its case.
The Complainant asked that the domain name be transferred to it. The Administrative Panel so orders.
Edward C. Chiasson, Q.C.
Dated: June 30, 2002