WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Steve Peter H S Kok and James Tan
Case No. DCC2002-0001
1. The Parties
The Complainant is Virgin Enterprises Limited of London, United Kingdom. Complainant is represented by Harbottle & Lewis Solicitors of London, United Kingdom.
The Respondents are Mr. Steve Peter H S Kok ("First Respondent") whose address is not known and Mr. James Tan ("Second Respondent") of Petaling Jaya Selangor, Malaysia. Respondents have no authorised representative for this proceeding and have not filed a Response.
2. The Domain Name and Registrar
The domain names in dispute ("Domain Names") are: <virgincosmetics.cc>, <virginmoney.cc>, <virginmobile.cc>.
The Domain Names were first registered on April 4, 2002.
The Registrar with which the Domain Names are registered is DotCC Ltd, Mezzanine Floor, IRIS Smart Technology Complex, Technology Park, Malaysia.
3. Procedural History
(a) Filing and Procedure
The Complaint was filed in electronic format on April 18, 2002, and hard copies were filed on April 23, 2002. On April 20, 2002, the WIPO Arbitration and Mediation Center ("the Center") transmitted acknowledgment of receipt of Complaint. On April 22, 2002, the Center transmitted a request for register verification to eNIC Corporation in connection with this case.
It was established that in fact the Registrar was DotCC Limited rather than eNIC Corporation and that the registrant was Mr. James Tan and not Mr. Steve Kok. On May 7, 2002, the Center notified the Complainant of the deficiency in the Complaint.
Accordingly, the Complaint was amended and filed in electronic format on May 10, 2002, and hard copies were filed on May 16, 2002. Mr. James Tan was added as a Respondent to the Complaint and the Registrar's details in the Complaint were amended.
On May 13, 2002, the Center verified the Complaint satisfied the requirements of the ICANN Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules).
On May 13, 2002, the Center formally commenced this proceeding and sought to notify Respondents that their responses would be due by June 2, 2002. The Center notified Respondents of default on June 3, 2002.
On June 14, 2002, the Center notified the parties that an Administrative Panel had been appointed consisting of a single member: Professor Michael Charles Pryles, who had submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
(b) Due Process
Where, as in this case, Respondents do not submit Responses, the rules of due process require the Panel to verify, to the extent possible, that Respondents were aware of the present proceedings. The panel is satisfied, on the basis of the file documents, that this is the case. There has been direct communications with the First Respondent via email.
A hard copy of the Complaint was sent by the Center to the each of the Respondents addresses by courier and an electronic version was sent via email. The Center has discharged its responsibility under paragraph 2(a) of the Rules which provide that 'when forwarding a Complaint to the Respondent, it shall be the Provider’s [the Center’s] responsibility to employ reasonably available means calculated to achieve actual notice to [the] Respondent'.
4. Factual Background
(a) The Registered Trademark
Complainant owns the registered trademark and service mark 'virgin' ('Registered Mark') in over 123 countries around the world and approximately 1400 Registered Mark applications. The Registered Mark was first registered on April 11, 1973, by Complainant. A stylised form of the Registered Mark was first registered as a trademark on September 18, 1979.
Complainant licenses the Registered Mark to companies both within and outside the Virgin group of companies. The Virgin group of companies comprises several hundred companies, most of which are organised into a number of corporate groups. Complainant licenses, amongst others, the following companies within the Virgin group to use the Registered Mark:
- Virgin Rail Group Limited
- irgin Money Group Limited
- Virgin Retail Limited
- Virgin Hotels Group Limited
- Virgin Entertainment Group Limited
- Virgin Net Limited
- Virgin Books Limited
- Virgin Trading Company Limited
- Virgin Mobile Telecoms Limited
- Virgin Drinks Limited
- Virgin Active Limited
- Virgin Bride Limited
- Virgin Cars Limited
- Virgin Atlantic Airways Limited
- Virgin Holidays Limited
Complainant has not licensed Respondents to use the Registered Mark and the Respondents do not have any relationship with the Complainant that would entitle them to use the Registered Mark.
(b) Factual background
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, United Kingdom.
The Virgin Group, Complainant being a member and owner of the Registered Mark, is engaged in a diverse range of businesses, such as: airlines, retailing, publishing, beverages, funds management, internet service provider, rail operator, telecommunications and fitness / health clubs.
The Virgin Group is one of the United Kingdom's largest private corporate groups with sales turnover in 1998 of approximately 2.5 billion pounds. As a group, Virgin currently employs over 30,000 staff and operates in over 20 countries across the world.
Complainant has authorised the use of the Registered Mark in relation to the domain name <virgin.com> to the Virgin group of companies. The domain name links to the various divisions of the Virgin group. Complainant asserts that the domain name receives 3 million hits per month.
According to the Registrar's WhoIs database, the Respondent in this administrative proceeding is Mr. James Tan. Complainant initially filed the Complaint against Mr. Steve Kok but subsequently amended the Complaint to include Mr. James Tan. The Respondents have not filed a response.
Communications between the Parties
First Respondent communicated via email to the Virgin group on April 4, 2002, offering to sell the Domain Names. First Respondent also sent subsequent emails on April 11, 2002 stating that two other buyers were interested in one or more of the Domain Names. First Respondent then indicated on April 16, 2002, that he had agreed to sell one or more of the Domain Names to a purchaser in Hong Kong for US$21,500.
Representatives for Complainant via email dated April 22, 2002, offered to accept First Respondent's offer to sell. First Respondent indicated via return email that he was prepared to sell the Domain Names for US$12,000, despite apparently selling the Domain Names to another prospective buyer in Hong Kong. There is no indication in the file that Complainant responded to the offer put by First Respondent.
On May 13, 2002, upon receipt of Complaint via email, First Respondent alleged that he no longer owned the Domain Names. He claimed that he had sold the Domain Names to Second Respondent. The Registrar confirmed that as of May 13, 2002, Second Respondent was the registrant and the Domain Names had been 'frozen' pending the outcome of this proceeding.
5. Complainant's Contentions
Domain Names and Registered Trade Mark Confusingly Similar (paragraph 4(a)(i) of the Policy)
In relation to <virginmobile.cc> Complainant contends that it has established a reputation in the mobile phone industry through the Virgin Mobile Telecoms business. It claims that there is potential for confusion amongst the public who have become accustomed to seeing the Registered Mark in association with the generic suffixes 'mobile' and 'mobile telecom'. Complainant contends that <virginmobile.cc> is, therefore, confusingly similar to the Registered Mark.
In relation to <virgincosmetics.cc> Complainant contends that it has established a reputation in the cosmetics industry through the 'Virgin Vie' brand which was launched in 1997, when the Virgin Cosmetics Company Limited started trading. The brand is now sold through consultants who can purchase their stock through Complainant's website at <virgin.com> and <virgincosmetics.com>.
The cosmetics brand was launched in Malaysia in 2001 (although no evidence is provided) and Complainant contends that there is potential confusion amongst the public who have been accustomed to seeing the Registered Mark used in connection with 'cosmetics'. Complainant contends that <virgincosmetics.cc> is, therefore, confusingly similar to the Registered Mark.
In relation to <virginmoney.cc> Complainant contends it has established a reputation in the financial services industry through the Virgin Money business. Complainant contends that there is therefore potential for confusion amongst the public who have become accustomed to seeing the Registered Mark.
Legitimate Interests or Rights in the Domain Names (paragraph 4(a)(ii) of the Policy)
Complainant contends that neither Respondent has any rights or legitimate interests in respect of the Domain Names. Complainant asserts that:
- neither Respondent has any relationship with or permission from Complainant to use the Registered Mark, nor has Complainant consented to either Respondent's application for registration of, or use of, any domain name incorporating the Registered Mark;
- the Domain Names were registered by First Respondent on April 4, 2002. At the time Complainant and the Virgin group had a considerable reputation in the Registered Mark. At that time Complainant had ownership of the Registered Mark which dates back as early as 1973;
- neither Respondent used or made demonstrable preparations to use any of the Domain Names in connection with a bona fide activity;
- neither Respondent is commonly known by any of the Domain Names;
- neither Respondent is making a legitimate non-commercial or fair use of any of the Domain Names or without intent for commercial gain and Complainant asserts that the Domain Names are likely to mislead consumers or to tarnish or otherwise dilute the value of Complainant's Registered Mark.
Registration and Use in Bad Faith (paragraph 4(a)(iii) of the Policy)
Complainant contends that one or other or both Respondents have registered and used the Domain Names in bad faith because:
- at the time of the registration of the Domain Names by First Respondent and/or Second Respondent, the Registered Mark had been well known both in the United Kingdom and overseas as it had been registered as early as 1973;
- it is beyond all reasonable belief that First Respondent and/or Second Respondent registered the Domain Names without Complainant's Registered Mark in mind;
- the intent of the Respondents was to sell the Domain Names at a price above the cost of the registration.
The Respondents have not filed a response.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:
- The Domain Names are identical or confusingly similar to the trade marks in which the Complainant has rights; and
- The Respondents have no rights or legitimate interests in respect of the Domain Names; and
- The Domain Names have been registered and are being used in bad faith.
Paragraph 4(b) of the Policy sets out four illustrative circumstances that, if proved, constitute evidence of bad faith as required by paragraph 4(a)(iii) referred to above.
Paragraph 4(c) of the Policy sets out three illustrative circumstances that, if proved, constitute evidence of a right or legitimate interest as described in paragraph 4(a)(ii) referred to above.
First Respondent by an email dated May 13, 2002, denied any interest in the Domain Names. The Registrar verified that the First Respondent is not the registrant. It is therefore only necessary to consider the position of the Second Respondent.
Identical or Confusingly Similar Domain Name
The Domain Names are not identical to the Registered Mark. They all contain the Registered Mark and in addition the Domain Names have non-distinctive words added. Another panel in Yahoo Inc v Jorge O Kirovsky, WIPO Case No. D2000-0428 held that the addition of a non-distinctive word to a registered mark renders the domain name confusingly similar.
It is to be noted in this case that the non-distinctive words are: "cosmetics", "money" and "mobile". They all relate to fields of business conducted by companies associated with the Complainant. This serves to render the Domain Names even more confusingly similar to the Registered Mark.
The Panel concludes that the non-distinctive words added to the Domain Names will likely create confusion with the Registered Mark particularly as the Complainant is part of a group operating businesses in those industries.
No Right or Legitimate Interest
Second Respondent has not filed a Response and Complainant denies having conferred any rights whatsoever on the Second Respondent. Second Respondent is not generally known by the Registered Mark and there is no evidence of a bona fide use by Second Respondent. The Panel finds Second Respondent has no right or legitimate interest in the Domain Names.
Domain Name Registered and used in Bad Faith
In order to make a finding that paragraph 4(c) of the Policy is satisfied the Panel must find that Second Respondent registered and used the Domain Names in bad faith. There are two limbs to this test.
The Panel refers to the decision in GA Modefine SA v AES Optics, WIPO Case No. D2000-0306 as authority for the proposition that 'bad faith can be presumed in the registration and use of a domain name [if] that domain name consists wholly or partly of a notorious trademark of a third party'. The Panel finds the Registered Mark is indeed a recognised all over the world and is likely to be identified by many customers. The Panel finds that Second Respondent registered and used the Domain Names in bad faith as each of the Domain Names incorporates a 'highly recognisable' Registered Mark.
The Administrative Panel decides that Complainant has proven each of the three elements in paragraph 4(a) of the Policy. Accordingly, the Administrative Panel requires that the Domain Names be transferred to Complainant.
Professor Michael Charles Pryles
Dated: 25 June 2002