WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Syed Hussain
Case No. D2012-2395
1. The Parties
The Complainant is Virgin Enterprises Limited of Brook Green, United Kingdom of Great Britain and Northern Ireland / Geneva, Switzerland, represented by Ipulse, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Syed Hussain of Closter, New Jersey, United States of America.
2. The Domain Name and Registrar
The disputed domain name <virginmoneylounges.com> is registered with Name.com LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2012. On December 5, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 5, 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.
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 December 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was January 1, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 4, 2013.
The Center appointed WiIliam A. Van Caenegem as the sole panelist in this matter on January 18, 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 the Rules, paragraph 7.
4. Factual Background
The Complainant relies on trade mark registrations including but not limited to UK Reg. No. 2,605,872 for the VIRGIN MONEY word mark in Class 9, 36, registered April 13, 2012; UK Reg. No. 2,607,114 for the VIRGIN MONEY trademark in Class 9, 36, registered April 27, 2012; UK Reg. No. 8,473,063 for the VIRGIN MONEY EVERYONE’S BETTER OFF word mark in Class 16, 36, registered March 1, 2010; UK Reg. No. 2,177,329 for the VIRGIN MONEY trademark in Class 36, registered May 21, 1999; UK Reg. No. 2,180,801 for the VIRGIN MONEY MANAGER trademark in Class 36, registered June 18, 1999; and UK Reg. No. 4,769,766 for the VIRGIN MONEY DESIGN mark in Class 36, registered April 13, 2007.
The disputed domain name was registered March 24, 2012.
5. Parties’ Contentions
The Complainant, Virgin Enterprises Limited, supplies an extensive array of goods and services under the trademark VIRGIN, including games, travel services and banking services. The Complainant is based in the United Kingdom but has some 40,000 employees in 32 countries.
The Complainant submits that it has accumulated vast goodwill in the VIRGIN trademark. Further, the Complainant submits evidence establishing the extensive range of businesses it has established under the VIRGIN trademarks, from VIRGIN GAMES to VIRGIN TRAINS and, crucially, VIRGIN MONEY. The Complainant asserts that the VIRGIN mark is used most commonly in conjunction with another business name, and that its customers have become accustomed to this.
The Complainant asserts that VIRGIN MONEY’s predecessor, VIRGIN DIRECT, was established in 1995, before being renamed VIRGIN MONEY in 2002. The Complainant submits that it is now well recognized as a high-street bank with over 4 million customers.
The Complainant asserts that it owns over 4,500 domain names. The Complainant further asserts that a Google search of the keywords “virginmoneylounges”, results only in VIRGIN websites, establishing the close relationship between the Complainant’s well known trademarks and the disputed domain name.
The Complainant further contends that a large number of previous UDRP decisions involving domain names incorporating its trademarks, such as Virgin Enterprises Limited v. Trade Out Investments Ltd/Power Brand Centre Corp., WIPO Case No. D2011-0640, Virgin Enterprises Limited v. Ali Khan, WIPO Case No. DTV2001-0029, Virgin Enterprises Ltd. v. Virginfree, WIPO Case No. D2000-1715, and Virgin Enterprises Limited v. Internet Protocols Limited, WIPO Case No. D2001-0837, support the contention of confusing similarity in the present case.
According to the Complainant, the Respondent is in fact making no legitimate use of any website to which the disputed domain name might resolve. The Complainant is in no way connected to the Respondent. The Complainant submits that considering the extensive reputation of the VIRGIN trademarks, there is no believable or realistic reason for the registration of the disputed domain name by the Respondent, and therefore the Respondent has no legitimate interests in the disputed domain name.
The Complainant contends that this case is a classic example of bad faith registration, the Respondent having deliberately registered a confusing or misleading domain name in order to attract Internet users to the associated 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. It is also submitted by the Complainant that the Respondent has acquired the domain name solely for the purpose of selling it to the Complainant, as is established by the Respondent’s reply to the Complainant’s initial communication, whereby he requested an offer to purchase the disputed domain name in the following terms: “If you are interested to acquire the domain then please make a minimum offer of $500”.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant owns the registered trademarks VIRGIN and VIRGIN MONEY. The disputed domain name is not identical to either of these trademarks. However, the disputed domain name wholly incorporates both the marks VIRGIN and VIRGIN MONEY as its initial and most distinctive part. The addition of the generic term “lounges” does not serve to distinguish the disputed domain name from the Complainant’s trademarks and associated businesses. Previous UDRP panels have regularly decided that the addition of generic terms to a distinctive trademark does not suffice to defeat an allegation of confusing similarity. Furthermore, the term “lounges” is suggestive of airline or airport services, or quality services in general and therefore something the Complainant is associated with in the mind of consumers and Internet users. This further reinforces the false impression that a legitimate connection exists between the Complainant and the disputed domain name.
Therefore the Panel holds that the disputed domain name is confusingly similar to the Complainant’s trademarks VIRGIN and VIRGIN MONEY.
B. Rights or Legitimate Interests
The Complainant has not authorized or licensed the Respondent to use its trademarks or business name. The Respondent is not commonly known by the disputed domain name, nor is there any evidence before the Panel of any legitimate use of the disputed domain name by the Respondent. In fact the Respondent has not established an active website by reference to the disputed domain name. Further, the Complainant has stated and the Respondent has not disputed that, in the course of correspondence between the Complainant and the Respondent the latter requested that the Complainant make a minimum offer of USD 500 to purchase the disputed domain name before contacting it again. This would appear to be an amount beyond ordinary out of pocket expenses, and may be an indication that the disputed domain name was acquired for the illegitimate purpose of selling it back to the owner of the distinctive trademark incorporated within it without authorisation.
In any event, the Panel holds as the record before it that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant’s trademarks are well known, and were so at the time of registration of the disputed domain name. It is manifest that the Respondent must have been aware of the Complainant’s trademarks, most relevantly the mark VIRGIN MONEY, which it chose to incorporate in its entirety in the disputed domain name it adopted for the purpose of registration. Further, the offer to sell the disputed domain name for a sum of not less than USD 500 indicates the bad faith of the Respondent. The Respondent did not establish an active website in relation to the disputed domain name, and there is no evidence before the Panel of any form of good faith use of the disputed domain name.
Therefore the Panel holds that the disputed domain name was registered and used in bad faith.
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 <virginmoneylounges.com> be transferred to the Complainant.
William A. Van Caenegem
Date: January 28, 2013