World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. Vwonderland

Case No. D2012-1960

1. The Parties

The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Ipulse, United Kingdom.

The Respondent is Vwonderland of Bangkok, Thailand.

2. The Domain Name and Registrar

The disputed domain name <virginworldtours.com> is registered with Web Commerce Communications Limited dba WebNic.cc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2012. On October 4, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 4, 2012, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the disputed domain name.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 24, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was November 13, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 14, 2012.

The Center appointed Christopher J. Pibus as the sole panelist in this matter on December 6, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is the owner of a group of companies which have operated under the “Virgin” name, since 1970 in a variety of fields. The Complainant’s business now comprises over 300 companies operating in 32 countries under the Virgin name. The Complainant employs over 50,000, generating annual revenue of over 11.5 billion pounds.

In connection with the travel industry, in 1984 the Complainant launched “Virgin Atlantic Airways” and “Virgin Atlantic Cargo”. In 1985 the Complainant launched a tour business under the “Virgin Holidays” name. In 1989, the Complainant acquired the management rights to numerous hotels around the world, and announced profits in the amount of 10 million pounds.

From 1990 to 1999 the Complainant expanded its business under the “Virgin” name to “Virgin Publishing” (renamed to Virgin Books), “Virgin Radio”, “Virgin Atlantic Communications”, “Virgin Trading Company”, “Virgin Express”, “Virgin Cola”, “Virgin Clothing”, “Virgin Sun” and “Virgin Mobile Telecoms Limited”. In 1999, the Complainant launched an Australian domestic airline called “Virgin Blue” and a network of health clubs called “Virgin Active”.

In 2000 to 2011 the Complainant launched “Virgin Mobile Australia” and “Virgin Mobile Asia”. The Complainant’s business continued to expand in this decade to include such companies as “Virgin Cars”, “Virgin Wines”, “Virgin Energy”, “Virgin Money” and “Virgin Travelstore”.

The Complainant’s Virgin Holidays division was formed in 1985 and began to offer package holidays to destinations in conjunction with services offered by Virgin Atlantic in January 1996. Virgin Holiday Cruises was formed as an addition to the Complainant’s Virgin Holidays business. The Complainant’s Virgin Limited Edition operates numerous luxury resorts around the world. The Complainant’s Virgin Vacations was established in 1994 to provide Virgin Atlantic Ariways’ US customers inclusive vacation packages to London and around the world.

The Complainant operates a website at “www.virgin.com” featuring numerous Virgin businesses, and is accessed by millions of Internet users every year. The Complainant also owns over 4,500 domain names, incorporating the Virgin name.

The Complainant owns many trademark registrations around the world for the VIRGIN trademark, including the following:

U.S. Registration No. 3174388 – VIRGIN

U.S. Registration No. 1039574 – VIRGIN SIGNATURE

U.S. Registration No. 1469618 – VIRGIN

UK Registration No. 1559467 – VIRGIN

UK Registration No. 1559468 – VIRGIN SIGNATURE

UK Registration No. 1572214 – VIRGIN SIGNATURE

CTM Registration No. 1798560 – VIRGIN

CTM Registration No. 1798537 – VIRGIN SIGNATURE

CTM Registration No. 2424885 – VIRGIN

The Respondent registered the disputed domain name <virginworldtours.com> on May 18, 2012. At the time the Complaint was filed the domain name <virginworldtours.com> reverted to “www.google.co.th”. In August, 2012, the dispute domain name <virginworldtours.com> reverted to a website that featured contact information for a company called Virgin World Tours based out of Bangkok, and indicated that the website was under construction.

5. Parties’ Contentions

A. Complainant

Confusingly Similar

The Complainant submits that it owns many registrations for the trademark VIRGIN, including U.S. Registration No. 3174388; U.S. Registration No. 1469618 – VIRGIN; UK Registration No. 1559467; CTM Registration No. 1798560 – VIRGIN; and CTM Registration No. 2424885.

The Complainant contends that the domain name <virginworldtours.com> is identical to the Complainant’s VIRGIN trademark except for the addition of the words “world” and “tours”. The Complainant submits that the descriptive words add nothing to distinguish the disputed domain name from the Complainant’s registered trademark.

Accordingly, the Complainant contends that the disputed domain name is confusingly similar to the Complainant’s registered VIRGIN trademark.

Rights and Legitimate interests

The Complainant submits that the Respondent does not have any rights or legitimate interests in the <virginworldtours.com> domain name. The Respondent is not commonly known by the name Virgin World Tours, and has never been authorized or licensed by the Complainant. The Complainant further contends that the Respondent has not used the domain name in a bona fide offering of goods and services, and that it is unrealistic to believe that the Respondent was unaware of the Complainant’s reputation in the VIRGIN trademark and its operations around the world.

Registered and Used in Bad Faith

The Complainant submits that the Respondent has registered and is using the domain name <virginworldtours.com> in bad faith, because (i) Respondent must have been aware of the Complainant’s registered trademark rights in VIRGIN, when the Respondent registered the confusingly similar domain name; and (ii) Respondent registered and is using a confusingly similar domain name to trade on the goodwill and reputation of the Complainant’s registered trademark, and thereby interfere with the commercial business of the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements:

(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that the Complainant does have registered trademark rights in the mark VIRGIN by virtue of its many Trademark Registrations; Including the following:

U.S. Registration No. 3174388 – VIRGIN

U.S. Registration No. 1039574 – VIRGIN SIGNATURE

U.S. Registration No. 1469618 – VIRGIN

UK Registration No. 1559467 – VIRGIN

UK Registration No. 1559468 – VIRGIN SIGNATURE

UK Registration No. 1572214 – VIRGIN SIGNATURE

CTM Registration No. 1798560 – VIRGIN

CTM Registration No. 1798537 – VIRGIN SIGNATURE

CTM Registration No. 2424885 – VIRGIN

The Panel further finds that the disputed domain name <virginworldtours.com> is confusingly similar to the Complainant’s registered trademark VIRGIN. The addition of the descriptive worlds “world” and “tours” does not serve to distinguish the domain name from the VIRGIN trademark. In fact, the Panel finds the addition of the words “world tours” actually increases the likelihood of confusion, because the words describe services provided by the Complainant under the VIRGIN trademark.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel notes that the Respondent did not file any responding materials in this proceeding, and therefore did not dispute any of the facts submitted by the Complainant. Accordingly, with the evidence filed in these proceedings, the Panel is prepared to find that the Respondent does not have any rights or legitimate interests in the disputed domain name <virginworldtours.com>. The Respondent is not commonly known by the name VIRGIN, and was clearly never authorized or licensed by the Complainant to use the registered trademark VIRGIN.

Furthermore, the Panel is prepared to find that the Respondent is not using the disputed domain name in a bona fide manner. In light of Complainant’s well-established reputation in its VIRGIN brands, the Panel is prepared to find that the Respondent must have been aware of the Complainant’s rights in VIRGIN trademark, when the disputed domain name <virginworldtours.com> was registered. The Panel finds that the registration and use of a confusingly similar trademark in this manner is not evidence of a bona fide offering of goods and services.

Accordingly, the Panel finds that the Complainant has satisfied the required under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

As stated above, the Panel is prepared to find, on the evidence filed, that the Respondent must have been aware of the Complainant’s registered trademark rights in the mark VIRGIN when it registered the domain name on May 18, 2012. The Panel further concludes that the Respondent acted in bad faith by attempting to trade on the goodwill and reputation of the Complainant’s trademark by developing a website that proposed to offer travel services under the name Virgin World Tours until contacted by the Complainant in August, 2012. The Panel further finds that the Respondent registered a confusingly similar domain name to interfere with the Complainant’s business by diverting unsuspecting Internet users away from the Complainant’s website to the Respondent’s website.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <virginworldtours.com> be transferred to the Complainant.

Christopher J. Pibus
Sole Panelist
Date: December 20, 2012

 

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