WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Myriad Resources
Case No. D2013-0976
1. The Parties
The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Stobbs IP Limited, United Kingdom.
The Respondent is Myriad Resources of Dunstable, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <virginmoneyjobs.com> (the “Disputed Domain Name”) is registered with Register.it S.p.A. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2013. On May 31, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 3, 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 June 11, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was July 1, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 2, 2013.
The Center appointed Michael D. Cover as the sole panelist in this matter on July 8, 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.
On July 18, 2013, the Center notified the Parties of the extension of the due date for the Decision to August 1, 2013.
4. Factual Background
The Disputed Domain Name was registered on July 5, 2005. It was due to expire on July 5, 2013, which is during the period of this Panel’s decision. By virtue of paragraph 18.104.22.168 of the ICANN Expired Domain Deletion Policy, the Complainant will have the option to renew the Disputed Domain Name. This need not concern the Panel further therefore. The Disputed Domain Name currently resolves to a parking website, listing job opportunities.
The Complainant is responsible for the ownership, management and protection of what the Panel will call the VIRGIN trademarks. These include the trademarks VIRGIN and VIRGIN MONEY, which are at issue in this decision. The business carried on under the VIRGIN trademarks was started by Sir Richard Branson in 1970 and has grown from then to the point that, in 2009, what might be described as global branded revenues were of the order of USD 18 billion. The Complainant is also responsible for the licensing of the various VIRGIN trademarks to the businesses which now use these trademarks.
The Complainant also owns over 4,000 domain names and there is a website at “www.virgin.com”. Other useful and uncontroversial background includes the fact that Virgin Atlantic was launched in 1984. Virgin Direct, as it was named at launch, was renamed Virgin Money in 2002 and this business provides a range of financial services, such that, in 2008, it had an annual turnover of approximately GBP 98 million. Virgin Money acquired certain of the assets of Northern Rock plc in 2011 and is also active in Australia and South Africa.
The businesses operated under the various VIRGIN trademarks are supported by a substantial annual advertising budget and certain surveys put the VIRGIN brand as a so-called “superbrand”.
5. Parties’ Contentions
The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant submits that it has extensive rights in the trademarks VIRGIN and VIRGIN MONEY. It lists the registrations of these trademarks in Annex 3 and Annex 3b to the Complaint. The registrations extend to many countries throughout the world, including the United Kingdom and the United States of America. The first registered trademark in the United Kingdom dates back to its filing date in 1973. The Complainant also submits that it has built up a vast amount of goodwill and reputation in the trademark VIRGIN in the United Kingdom and elsewhere. In support of these contentions, the Complainant has filed a witness statement of Victoria Wisener, who is an in-house trademark attorney for the Complainant.
The Complainant goes on to submit that the Disputed Domain Name is confusingly similar to the VIRGIN trademarks and the words of the Disputed Domain Name, “Virgin Money Jobs”, would be associated with the Complainant’s VIRGIN brand. It points to a number of previous UDRP decisions, where the panels in question have found that domain names comprising the word “virgin” followed by another element are confusingly similar to the VIRGIN trademarks. This is because the panels in question have found that the distinctive element of the domain names in question, “Virgin”, is identical to the Complainant’s trademarks and that the Complainant’s trademarks are very well-known.
The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
The Disputed Domain Name was registered and is being used in bad faith.
The Complainant submits that there are circumstances indicating that the Respondent has acquired the Disputed Domain Name solely for the purpose of selling, renting or otherwise transferring it to the Complainant, and that this constitutes evidence of bad faith in accordance with paragraph 4(b)(i) of the Policy. The Complainant also seeks to rely on Paragraph 4(b)(iii) of the Policy, in that the Disputed Domain Name was registered primarily for the purpose of disrupting the business of a competitor.
The Complainant contends that the Respondent has intentionally attempted to attract, for commercial gain, internet users to the website of the Respondent by creating confusion with Complainant’s trademarks. It says that the addition of the word “jobs” does not alter that.
The Complainant requests that the Panel decide that the Disputed Domain Name should be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Complainant is required to demonstrate on the balance of probabilities that the Disputed Domain Name is identical or confusingly similar to its trademarks VIRGIN and/or VIRGIN MONEY, that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The panel accepts the submissions of the Complainant that the Disputed Domain Name is confusingly similar to the trademarks VIRGIN and VIRGIN MONEY, in which the Complainant has rights. The Complainant has demonstrated that it has rights in the trademarks VIRGIN and VIRGIN MONEY, which, in the case of VIRGIN in the United Kingdom, it first registered in 1994. With regard to confusing similarity, the dominant feature of the Disputed Domain Name is the name “virgin” and the Complainant’s trademarks have been incorporated into the Disputed Domain Name in their entirety. The addition of the dictionary word “jobs” does not detract from this. It is the consensus view of panels that the addition of a merely descriptive word, such as, in this case “jobs”, to a trademark in a domain name is insufficient to avoid a finding of confusing similarity, as in, amongst other cases, Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434.
B. Rights or Legitimate Interests
The Panel also accepts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not been licensed or authorized by the Complainant to use the Complainant’s trademarks VIRGIN and VIRGIN MONEY.
Whilst the Respondent has not filed a Response, there is no evidence to suggest that it has, before notice of this dispute, used or prepared to use the Disputed Domain Name in connection with a bona fide offering of goods or services or has been commonly known by the Disputed Domain Name or that the Respondent has been making legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain misleadingly to divert consumers or to tarnish the Complainant’s trademarks. The evidence of the Complainant and the current site to which the Disputed Domain Name resolves, which is a parking website listing links to jobs, provides compelling evidence in the other direction.
C. Registered and Used in Bad Faith
The Panel has noted the submission of the Complainant that the Respondent has registered and used the Disputed Domain Name in bad faith. The Panel accepts the submission of the Complainant that the use of the Disputed Domain Name in connection with a parking website under these circumstances, as already described in this decision, falls within paragraph 4(b)(iv) of the Policy, in that the Respondent has intentionally been attempting to attract for commercial gain Internet users to that website with the intention of creating a likelihood of confusion with the Complainant’s trademarks.
The Panel finds that the Disputed Domain Name has been registered and is being 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 <virginmoneyjobs.com> be transferred to the Complainant.
Michael D. Cover
Date: July 31, 2013