WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. KAP Computer Solutions Pvt. Ltd.

Case No. D2013-0715

1. The Parties

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

The Respondent is KAP Computer Solutions Pvt. Ltd. of Bangalore, Karnataka, India.

2. The Domain Name and Registrar

The disputed domain name <virgincompany.net> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on April 18, 2013. On even date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 19, 2013, 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.

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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 23, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was May 13, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 15, 2013.

The Center appointed Brigitte Joppich as the sole panelist in this matter on June 4, 2013. 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 paragraph 7 of the Rules.

4. Factual Background

The Complainant is the brand owner for, and part of the Virgin Group of companies, which was originated in 1970, when Richard Branson began selling music records under the Virgin name. Since that date, it has expanded into a wide variety of businesses. Today, the Virgin Group of Companies comprises over 200 companies worldwide operating in 32 countries. The number of employees employed by the Virgin Group of Companies is in excess of 40,000, generating an annual group turnover in excess of 4.6 billion pounds. The Virgin brand is commonly used alongside an additional element, for example VIRGIN ATLANTIC, VIRGIN TRAINS, VIRGIN HOLIDAYS, VIRGIN MEDIA, VIRGIN MOBILE, VIRGIN RADIO, and VIRGIN GAMES.

The Complainant owns numerous registered trademarks for VIRGIN, inter alia US trademark registration no. 4325986 VIRGIN, registered on April 23, 2013, US trademark registration no. 3209716 VIRGIN, registered on February 13, 2007, US trademark registration no. 3188282 VIRGIN, registered on December 19, 2006, US trademark registration no. 3398247, registered on March 18, 2008, Community trademark registration no. 000217182 VIRGIN, registered on September 4, 1998, and Community trademark registration no. 001471143 VIRGIN, registered on January 30, 2003 (hereinafter referred to as the VIRGIN Marks). The VIRGIN Marks have already been found to be “very well-known” (i.e. Virgin Enterprises Limited v. Trade Out Investments Ltd/Power Brand Centre Corp., WIPO Case No. D2011-0640; Virgin Enterprises Ltd. v. Virginfree, WIPO Case No. D2000-1715), to enjoy “considerable repute”, and to be “regarded as having the highest integrity and moral standing” (i.e. Virgin Enterprises Limited v. Imran Zafar, WIPO Case No. D2002-0696) in previous proceedings under the UDRP.

The Complainant is also the registered proprietor of over 4,500 domain names, incorporating the VIRGIN name, including <virgin.com>.

The disputed domain name was registered on April 4, 2012.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case.

(1) The disputed domain name is confusingly similar to the VIRGIN Marks as the public have become accustomed to seeing the VIRGIN brand used in conjunction with additional elements, and if used in combination with “company”, they would undoubtedly see such use as being use by the Complainant.

(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name as it does not use the disputed domain name in connection with an active website which illustrates that it is not making any legitimate or fair use of the disputed domain name, and as there is no believable or realistic reason for registration or use of the disputed domain name.

(3) The disputed domain name was registered and used in bad faith. The Complainant submits that the registration of the disputed domain name is a classic example of bad faith registration in accordance with paragraph 4(b) of the Policy. It argues that there are circumstances indicating that the Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant for valuable consideration in excess of documented out-of pocket costs directly related to the disputed domain name and that by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location, creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location. The Complainant argues that the public are very used to seeing the Virgin Group of Companies operating across a wide range of business activities and that the VIRGIN brand is commonly used in conjunction with an additional element. Therefore, a member of the public seeing “Virgin Company” would immediately and undoubtedly consider that this was a reference to Richard Branson’s Virgin Group of Companies. Furthermore, the Complainant states that it was contacted by a member of the public who explained that they had received a text to their mobile telephone from number 668420 which read “congrats, your mobile number has won 1,000,000 US Dollars from int’l Mobile draw VIRGIN COMPANY. To claim email your name & country to infor@virgincompany.net”. The Complainant finally states that it is impossible to envisage any legitimate purpose for registering the disputed domain name, other than to capitalize or gain from the Complainant’s reputation in some way.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(i) the disputed domain name is identical or confusingly similar to the Complainant’s trademark; and

(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 disputed domain name fully incorporates the Complainant’s highly distinctive and well established VIRGIN Marks and is therefore confusingly similar to the VIRGIN Marks under paragraph 4(a)(i) of the Policy.

The additional term “company” does not hinder a finding of confusing similarity. Firstly, the Complainant established a whole group of companies in various business fields. Therefore, the public might assume a relationship to one of the Complainant’s entities when being faced with the disputed domain name. Secondly, the additional term “company” is merely generic. It is well established that a domain name that wholly incorporates a trade mark may be confusingly similar to such trade mark for purposes of the Policy despite the addition of generic terms, such as “company” (cf. Robert Bosch GmbH v. Marketing Total S.A., NAF Claim No. 888552 (<boschcompany.com>); Swarovski Aktiengesellschaft v. women, WIPO Case No. D2012-0748 (<swarovskicompany.com>); Guccio Gucci S.p.A v. Wode, WIPO Case No. D2013-0632 (<guccijapancompany.com> et al.)).

Furthermore, it is well established that the generic top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com, WIPO Case No. D2001-0374).

Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.:

(i) before any notice to the respondent of the dispute, the use by the respondent 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; or

(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.

Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfill the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of coming forward with evidence of the respondent’s rights or legitimate interests in the domain name will then shift to the respondent.

The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.

The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name.

Based on the evidence before the Panel, there is no indication that the Respondent can rely on own rights or legitimate interests in the disputed domain name under paragraph 4(c) of the Policy as the disputed domain name is not actively used in connection with a website or otherwise.

Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the disputed domain name under paragraphs 4(a)(ii) and 4(c) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:

(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has registered 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; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 respondent’s website or location or of a product or service on its website or location.

The Panel is satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant and thus in bad faith under paragraph 4(a)(iii) of the Policy. The VIRGIN Mark is highly distinctive, well-known internationally, and has been used by the Complainant in connection with its services for many decades. Furthermore, nearly all of the results of an Internet search for “Virgin Company” refer to the Complainant, Mr. Richard Branson, or other entities of the Virgin Group of Companies. Under such circumstances, it is almost inconceivable that the Respondent registered the disputed domain name without knowledge of the Complainant.

With regard to bad faith use, the Complainant states that the disputed domain name was used in connection with fraudulent cell phone text messages. However, the Complainant did not provide any evidence with regard to such allegation and therefore failed to prove that the disputed domain name has in fact been used in such way. If such use had been evidenced, this would constitute bad faith use under paragraphs 4(a)(iii) and 4(b) of the Policy. Although scam or phishing scenarios are not literally mentioned in paragraph 4(b) of the Policy, it is well established that the list of circumstances indicating bad faith as found in paragraph 4(b) of the Policy is expressly non-exclusive and that the use of a disputed domain name in connection with the distribution of fraudulent messages is to be considered as bad faith under the Policy (cf. B & H Foto & Electronics Corp. v. Whois Privacy Protection Service, Inc. / Jackie Upton, WIPO Case No. D2010-0841; The Prudential Assurance Company Limited v. Domain Place, domainplace, WIPO Case No. D2009-1014; Bernardo M. Cremades Sanz-Pastor, B. Cremades & Asociados, S.L. v. Patrick Lucas, WIPO Case No. D2009-0566; Capstone Mortgage Co. v. Joshua Shook or J. Shook, Inc., WIPO Case No. D2004-0395; XO Communications Inc. v. XO Network Operations Center Inc., NAF Claim No. 150786; Samsung Electronics Co., Ltd. v. Albert Daniel Carter, WIPO Case No. D2010-1367).

Alternatively, if the disputed domain name was not actively used by the Respondent, the Panel would have to decide whether or not the Respondent’s (non-)use of the disputed domain name is to be considered as bad faith use under the Policy.

It is consensus view that the lack of an active use of a domain name does not as such prevent a finding of bad faith. In such cases the panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include a complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131).

The Complainant provided evidence that the VIRGIN Marks are well established, while the Respondent failed to provide evidence of any actual or contemplated good faith use. Furthermore, given that the Complainant is typically using its VIRGIN Marks in conjunction with additional elements (such as VIRGIN ATLANTIC, VIRGIN TRAINS, VIRGIN HOLIDAYS, VIRGIN MEDIA, VIRGIN MOBILE, VIRGIN RADIO, and VIRGIN GAMES), that the public have become accustomed to such use and that the term “Virgin Company” is predominantly associated with the Complainant or related companies, the fact that the disputed domain name fully incorporates the Complainant’s highly distinctive VIRGIN Marks by merely adding the generic word “company” is rendering the false impression that the domain name is somehow related to the Complainant.

In the view of the Panel, the facts of this case do not allow for any plausible actual or contemplated active use of the disputed domain name by the Respondent in good faith, as it is a domain name Internet users might mistakenly enter when searching for information on the Complainant and goods or services provided under the VIRGIN Marks. The Panel is therefore convinced that, even if the disputed domain name was not actively used, the Respondent’s non-use of the domain name would equal use in bad faith.

Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant satisfied the requirements of 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 <virgincompany.net> be transferred to the Complainant.

Brigitte Joppich
Sole Panelist
Date: June 18, 2013