WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. Domains By Proxy, LLC / Rodney Dunlap

Case No. D2013-0034

1. The Parties

The Complainant is Virgin Enterprises Limited of United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Ipulse, UK.

The Respondents are Domains By Proxy of Scottsdale, Arizona, United States of America (“US”); and Rodney Dunlap of Spring, Texas, US.

2. The Domain Name and Registrar

The disputed domain name <virginapps.com> is registered with GoDaddy.com, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2013. On January 8, 2013, the Center transmitted by email to GoDaddy.com, LLC a request for registrar verification in connection with the disputed domain name. On January 9, 2013, GoDaddy.com, LLC. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 17, 2013 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 18, 2013.

On January 18, 2013 the Center received an informal e-mail communication from the Respondent Rodney Dunlap before the notification of the Complaint.

The Center verified that the Complaint together with the amended 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 January 21, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 10, 2013. On January 24, 2013 the Center received an informal e-mail communication from the Respondent Rodney Dunlap. On February 11, 2013, after the Response due date, the Respondent sent an e-mail communication to the Center requiring an extension of the deadline to submit a Response.

The Center appointed Kaya Köklü as the sole panelist in this matter on February 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.

The Respondent Rodney Dunlap submitted a supplement filing on March 05, 2013, however, pursuant to its powers under paragraphs 10 and 12 of the Rules, and absent any exceptional circumstances, the Panel declines to consider the submission for purposes of its decision.

In accordance with paragraph 11(a) of the Rules, and since the parties have not agreed otherwise, the Panel finds that the language of the administrative proceedings is the language of the Registration Agreement (i.e. English).

4. Factual Background

The Complainant is a member of the well-known Virgin group, which was originally established in the UK in 1970.

The Complainant is the registered owner of a large number of trademarks incorporating the mark VIRGIN, such as the United States Trademark Registration Nos. 1469618, filed on March 3, 1986 and registered on December 22, 1987, in class 9; 1597386, filed on March 18, 1988 and registered on May 22, 1990, in classes 16 and 25; 3174388, filed on December 16, 1999 and registered on November 21, 2006, in class 3.

The Complainant further owns several thousands of domain names incorporating the trademark VIRGIN, such as <virgin.com>, <virginradio.com> and <virginmobiles.com>.

The Respondent is apparently an individual from Spring, Texas, US.

The disputed domain name was registered on October 28, 2011.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain name.

First, the Complainant argues that the disputed domain name is confusingly similar to the Complainant’s well-known VIRGIN trademarks.

Second, the Complainant is of the opinion that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant in particular alleges that it has not licensed or otherwise permitted the Respondent to use any of its trademarks and has not permitted the Respondent to register or use any domain name incorporating its VIRGIN trademarks. The Complainant further asserts that the Respondent has never used the disputed domain name, nor made any demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services.

Third, the Complainant is convinced that the Respondent has registered and is using the disputed domain name in bad faith. It is argued that the VIRGIN trademarks were already well-known many years prior to the date of registration of the disputed domain name by the Respondent. It is argued that “it is impossible to envisage any legitimate purpose of registering the disputed domain name, other than to capitalize or gain from the Complainant’s reputation some way”. The Complainant particularly argues that it is a “major player in the telecoms and media field being extremely well known as offering services in this field”.

B. Respondent

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

However, the Center received two emails on February 11, 2013, and, hence, one day after expiry of the deadline to submit any Response, as well as the aforementioned communication of March 05, 2013.

In its email communications of February 11, 2013, the Respondent asked for an extension of the deadline to submit a Response and provided a new mail address.

The Respondent did not address any issues on the merits of the case. Furthermore, a particular request concerning the remedies in these administrative proceedings has also not been filed by the Respondent.

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the assertions made in the Complaint where no Response has been submitted.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

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

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint (see Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228).

In this context, the Panel finds that the informal email communication received by the Center on December 30, 2012 does not qualify to be a formal response to the Complaint, in particular as it does not contain any reference on the merits of the case.

Further, although the Panel does not consider the Respondent’s communication of March 05, 2013 for purposes of rendering its decision, it notes that such communication was procedural in nature and did not address any substantive element under consideration.

With regard to the uncontested information provided by the Complainant, the Panel may as appropriately accept the provided reasonable factual allegations in the Complaint as true (see Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110).

Finally, it is noted that the Panel has taken note of the WIPO Overview of Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) and, where appropriate, will decide consistent with the WIPO Overview 2.0.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the VIRGIN trademarks of the Complainant.

First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights regarding the sign “virgin”. As evidenced in the Complaint, the Complainant is the owner of a large number of VIRGIN trademarks, not only in the US but also worldwide, covering protection for a broad scope of services and products.

Although not identical, the disputed domain name fully incorporates the Complainant’s VIRGIN trademark.

The disputed domain name differs from the VIRGIN trademarks only by the addition of the generic term “apps” (short form for “application” or “mobile application”). In the Panel’s view, the addition of a generic term like “apps” does not negate the confusing similarity between the Complainant’s trademarks and the disputed domain name. The Panel finds that this incorporation is purely descriptive and does not create a new distinctiveness separate from the Complainant’s VIRGIN trademarks. On the contrary, the full inclusion of the Complainant’s trademark in combination with this generic term may even enhance the false impression that the website linked to the disputed domain name is somehow officially related to the Complainant and its provided goods and services in the field of telecommunication and media.

Bearing in mind the notoriety of the VIRGIN trademarks, the Panel concludes that the disputed domain name is likely to confuse Internet users in their believing that the disputed domain name is affiliated or endorsed by the Complainant or that the use of the disputed domain name is at least authorized by the Complainant.

In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Panel further finds that the Respondent has no rights or legitimate interests in the disputed domain name.

While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees in line with prior UDRP panels that the Complainant is required to make out a prima facie case before the responsibility shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements in paragraph 4(a)(ii) of the Policy (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or convincing argument to demonstrate a right or legitimate interest in the disputed domain name according to paragraph 4(a)(ii) and 4(c) of the Policy.

With its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no trademark, valid license or any similar right to use any of the Complainant’s VIRGING trademarks in the disputed domain name.

In the absence of a proper Response by the Respondent, there is also no indication in the current record that the Respondent is commonly known by the disputed domain name. Furthermore, the Respondent has failed to demonstrate any of the other nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or any other evidence of a right or legitimate interest in the disputed domain name. Especially, the Respondent has failed to show that the disputed domain name has been used in connection with a bona fide offering of goods or services. Although it is difficult to assess what exactly the Respondent offers on the website linked to the disputed domain name, there is at least no indication that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without the intent to tarnish the Complainant’s VIRGIN trademarks. The use appears to be in connection with the production of applications in connection with mobile technology.

Due to the notoriety of the Complainant’s VIRGIN trademarks, the Panel believes that in the present case any use of the VIRGIN trademarks by the Respondent needs to be assessed as an unauthorized and illegitimate use.

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

C. Registered and Used in Bad Faith

The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.

First, the Panel believes that the Respondent was well aware of the VIRGIN trademarks when it registered the disputed domain name in October 2011. At the date of registration, the VIRGIN trademarks were already established and well-known for many years worldwide, especially in the US, where the Respondent is apparently located.

In the Panel’s view, it is quite obvious that the Respondent tries to gain commercial benefit from the Complainant’s well-known VIRGIN trademarks and to intentionally mislead Internet users. The Panel shares the view of the Complainant that the Respondent’s main purpose is to create a likelihood of confusion among customers and/or to tarnish the Complainant’s VIRGIN trademarks, likely for commercial gain.

In light of the above, the Panel cannot conceive of any good faith use of the disputed domain name by the Respondent.

The Panel therefore concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.

7. Decision

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

Kaya Köklü
Sole Panelist
Date: March 5, 2013