WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Bill Chronarakis, Vkhv Pty, Ltd.
Case No. D2013-0140
1. The Parties
The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Ipulse, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Bill Chronarakis, Vkhv Pty Ltd of Bexley, New South Wales, Australia.
2. The Domain Names and Registrar
The disputed domain names <virgincarbontrading.com> and <virgincarbontrading.net> are registered with Aust Domains International Pty Ltd dba Aust Domains, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2013. On January 22, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On January 24, 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 25, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was February 14, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 15, 2013.
The Center appointed Pablo A. Palazzi as the sole panelist in this matter on February 26, 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
Factual information about the Complainant is taken from the Complaint and its documents. Virgin Enterprises Limited (“VEL”) is responsible for the ownership, management and protection of the trademarks associated with the Virgin Group. The Virgin Group originated in 1970 when Richard Branson began selling music records under the Virgin label. The Virgin Group now comprises over 200 companies internationally, with an annual group turnover of more than GBP 4.6 billion.
The name Virgin is associated with enterprises in the realms of music, airlines, railway trains, financial services, mobile communications, high altitude aircraft, radio and television, holiday resorts, beverages, wines, clothing, and many other products and services.
The Complainant is the owner of numerous trademarks featuring the name “Virgin”. The Complainant owns some 4,500 domain names incorporating the trademark VIRGIN.
Nothing is known about the Respondent except for the details it provided as registrant of the disputed domain names. The disputed domain names were both registered on December 8, 2011.
5. Parties’ Contentions
The Complainant owns extensive rights in the VIRGIN trademark including but not limited to the trademark applications and registrations attached at Annex 3 to the Complaint.
Complainant attaches as Annex 4 of the Complaint a Witness Statement from Victoria Wisener outlining the wide ranging activities of the Virgin Group and the extent of their operations. This Witness Statement contains information to establish the well-known nature of the VIRGIN trademark and the extent of the use of the VIRGIN trademark. The Complainant has developed a significant reputation in relation to the VIRGIN mark. As can be seen from the Witness Statement, 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.
In addition to this, the Complainant states that it has a reputation for being an environmentally aware organization. As can be seen from the attached statement through the high profile use of the VIRGIN trademark in relation to Virgin Unite, Virgin Green Fund and Virgin Earth Challenge, the VIRGIN brand has received a significant amount of public attention when being used directly in relation to social and environmental issues. In addition to this, a number of VEL’s businesses are quite openly environmentally friendly. For example, this includes VEL’s commitment to invest 100% of all future proceeds from its transportation interests in both its trains and airline business, into tackling global warming. Sir Richard Branson is also a founding member of The Carbon War Room: a tool which enables entrepreneurs to implement market-driven solutions to climate change.
According to the Complaint, VEL is also the registered proprietor of over 4,500 domain names, incorporating the VIRGIN name. Details of some of these domain names are attached at Annex 5. According to the Complaint, this list is another example of the wide scale use of the VIRGIN trademark in conjunction with an additional element.
The Complainant argues that the VIRGIN trademark is seen by the public as being an environmentally caring business and brand. The public have become accustomed to seeing the VIRGIN brand used in conjunction with additional elements and if used in combination with CARBON TRADING they would undoubtedly see such use as being use by the Complainant. Attached to the Complaint at Annex 6 is a copy of the results of a Google search for the words “virgin carbon trading”, which illustrates how use of the words “virgin”, “carbon” and “trading” would be seen as use by the Complainant.
The Complaint states that the disputed domain names complained of consist of the name “Virgin Carbon Trading”. These words would quite clearly be associated with the Complainant’s own VIRGIN brand and businesses. It is clear that the disputed domain names are confusingly similar to trademarks in which the Complainant has rights.
The Complainant also has a significant body of previous UDRP decisions, which are cited in the Complaint.
The Complainant states that the Respondent has no rights or legitimate interests in respect of the disputed domain names. At Annex 7 of the Complaint is a copy of what was shown on the websites to which the disputed domain names resolve in January 2013, consisting of domain parking pages. Those pages are totally unrelated to the Complainant which illustrates that the Respondent is not making any legitimate or fair use of the disputed domain names. Bearing in mind the massive reputation of the VIRGIN brand and VEL’s operations in a wide range of activities including environmental issues, there is no believable or realistic reason for registration or use of the disputed domain names <virgincarbontrading.com> and <virgincarbontrading.net>.
The Complainant submits that the registration of the disputed domain names is a classic example of bad faith registration in accordance with paragraph 4(b) of the Policy. In accordance with paragraph 4(b)(i) of the Policy, the Complainant states that there are circumstances indicating that the Respondent has registered or acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registrations to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of pocket costs directly related to the disputed domain names.
In accordance with paragraph 4(b)(iv) of the Policy, the Complainant states that there are circumstances which indicate that by using the disputed domain names the Registrant has intentionally attempted to attract, for commercial gain, Internet users to its websites or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the websites or location or of a product or service on the websites or location. The Complainant states that the public are very used to seeing VEL operating across a wide range of business activities and that it is considered to be an environmentally aware organization, active in the field of carbon offsetting.
The Complainant states that the VIRGIN trademarks are extremely well-known as offering services in this field. The VIRGIN brand is commonly used in conjunction with an additional element. Adding the words “carbon” or “trading” is absolutely in line with VEL’s internal branding policy. The public are used to seeing this type of brand as being just another Virgin company both from a brand and from a domain name point of view.
The Complainant asserts that it has gone to great lengths to avoid the need to file this Complaint. According to the Complaint, a letter was originally sent to the Respondent on June 29, 2012. During a subsequent telephone conversation, the Respondent asked if the Complainant wanted to buy the disputed domain names. It was explained that the Complainant did not, but after further explanation of the Complainant’s case, during a further telephone conversation the Respondent stated that: “If Virgin wants them, they’ll have to pay for them”. According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain names and is using the disputed domain names in an attempt to benefit financially.
The Complainant concludes that it is impossible to envisage any legitimate purpose for registering the disputed domain names, other than to capitalize or gain from the Complainant’s reputation in some way. The actions (including the request for payment) taken by the Respondent support the Complainant’s claim that the disputed domain names were registered for the purposes of both attracting Internet users to the websites and selling the disputed domain names to the Complainant.
The Complainant requests as a remedy the transfer of the disputed domain names.
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 names are 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 names; and
(iii) The disputed domain names have been registered and are 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.
The Panel further finds that the disputed domain names <virgincarbontrading.com> and <virgincarbontrading.net> are confusingly similar to the Complainant’s registered trademark VIRGIN. The addition of the descriptive words “carbon” and “trading” does not serve to distinguish the disputed domain names from the VIRGIN trademark. In fact, the Panel finds the addition of the words “carbon” and “trading” to the disputed domain names actually increases the confusing similarity, because the words are closely related to the Complainant’s activity and its environmental track record under the VIRGIN trademark.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out in particular, but without limitation, three circumstances which, if proved by the Respondent, shall be evidence of the Respondent's rights or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)(ii) of the Policy, namely:
(i) before any notice of the dispute to the Respondent, the Respondent’s use of, or demonstrable preparation to use, the domain names or a name corresponding to the domain names 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 names, 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 names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Complainant has made a prima facie showing the Respondent has no rights or legitimate interests in the disputed domain names, and that the Respondent has never been licensed or authorized by the Complainant to use the VIRGIN trademark or the disputed domain names. Moreover, it does not appear that the Respondent is commonly known by the disputed domain names or that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names. The Respondent has failed to come forth with any demonstration of rights or legitimate interests in the disputed domain names.
The Panel accordingly determines that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances that constitute evidence of the registration and use of a domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy:
(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 examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The VIRGIN mark is well-known throughout the world. The fame of the mark has been confirmed in numerous previous UDRP decisions (Virgin Enterprises Limited v. Syed Hussain, WIPO Case No. D2012-2395 and Virgin Enterprises Limited v. Duygu Mert, WIPO Case No. D2011-0632 and Virgin Enterprises Limited v. Maine Street Investments, WIPO Case No. D2011-0621).
The registration of a domain name that is practically identical to a well-known trademark by a third party who has no legitimate connection with the trademark or the owner of the trademark, generally constitutes bad faith registration.
The Panel is of the opinion that it is inconceivable that the Respondent was unaware of the VIRGIN trademark when registering the disputed domain names on December 8, 2011. The disputed domain names contain the Complainant’s trademark in its entirety as the dominant part and containing the terms “carbon” and “trading” as suffixes. The words are closely related to the Complainant’s activity and this is evidenced by the Complainant’s environmental track record under the VIRGIN trademark. In addition both of the disputed domain names were registered on the same date.
With respect to bad faith use, the Respondent is using the disputed domain names to resolve to park page websites created by the Registrar with no active use. There are several cases, of which Telstra Corporation Limited v. Nuclear Marshmallows, supra, is an example, where so called “passive holding” of a domain name has been held to constitute use within the meaning of paragraph 4(a)(iii) of the Policy.
According to the consensus view, with comparative reference to the circumstances set out in paragraph 4(b) of the Policy deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, and paragraph 3.2.
The cumulative circumstances found to be indicative of bad faith in this case include the Complainant having a well-known trademark, no response to the Complaint having been filed, the two disputed domain names registered at the same time containing the same famous trademark, and the false information and telephone number available in the WhoIs (according to the report from the international courier). In addition the offer to sell the disputed domain names is another element to value in this list.
The Panel is convinced that the preponderance of the evidence, combined with the inferences drawn due to the Respondent’s failure to respond, shows that the Respondent has registered and is using the disputed domain names in bad faith. Accordingly, it is found that the Complainant has satisfied the requirement under paragraph 4(a)(iii) of the Policy.
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 names <virgincarbontrading.com> and <virgincarbontrading.net> be transferred to the Complainant.
Pablo A. Palazzi
Date: March 12, 2013