WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. PrivacyProtect.org / Kim Bum (Kim Bum LLC)
Case No. D2013-0979
1. The Parties
The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland (the “United Kingdom” or the “UK), represented by Stobbs IP Limited, United Kingdom.
The Respondent is PrivacyProtect.org / Kim Bum (Kim Bum LLC) of United States of America / Seoul, Republic of Korea, respectively.
2. The Domain Name and Registrar
The disputed domain name <virgingmoneygiving.com> is registered with Media Elite Holdings Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2013. On June 3, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 6, 2013, the Registrar 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 June 7, 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 June 10, 2013.
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 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 J. Nelson Landry 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 12, 2013, the Center transmitted to the parties the Administrative Panel Procedural Order No. 1 requesting additional information and documentary evidence in respect of five representations by the Complainant in its Complaint. The Complainant was provided five working days to submit a response which it did by an email communication on July 17, 2013. A copy of the email was forwarded to the Panel. The Respondent was provided with a delay of five working days after reception the Complainant’s submission to comment on said response. The Respondent did not submit any comment.
4. Factual Background
The following facts are the highlights of the very elaborate evidence in the Complaint, mainly in a witness statement of the trademark attorney of the Complainant, 49 pages cumulating 266 paragraphs along with five annexes, two of which providing lists of over 100 trademark registrations and domain name registrations.
The Complainant is the leading member of more than 200 companies (herein the “Virgin Group”) active in 32 countries throughout Europe, Unites States, Canada, South Africa and certain countries in Asia. The Virgin Group employs over 40,000 employees and the annual Virgin Group turnover exceeds 4.6 billions pounds.
The Complainant was established in 1970 by its founder and chairman, Sir Richard Branson, in United Kingdom and started a business selling of music records by mail order under the VIRGIN trademark
The Complainant is the owner of several registrations of the trademarks VIRGIN, VIRGIN (Signature) and VIRGIN MONEY. As stated in the trademark review herein, its use was expanded to cover various fields of activities, in association with at least 35 classes of goods and services of the International classification:
a) There are 36 registrations in the United States. The earliest VIRGIN trademark registration was applied for in 1974 and obtained in 1976. The Complainant is also the registered owner of the registered Trademark VIRGIN MONEY and of numerous other brand names such as VIRGIN ATLANTIC, VIRGIN TRAINS, VIRGIN HOLIDAYS, VIRGIN MEDIA and VIRGIN MOBILE
b) There are 67 registrations of the same trademarks in the United Kingdom where the earliest one, the trademark VIRGIN was registered in 1973. The trademark VIRGIN MONEY was registered in the United Kingdom in 1999.
c) The trademarks VIRGIN, VIRGIN Signature and VIRGIN MONEY are also registered as a European community trademark, where the trademark VIRGIN MONEY was registered in 2002.
d) The trademark VIRGIN MONEY was applied for in Australia and New Zealand in 2003, South Africa and European community trademark in 2005 and Canada and USA in 2009 (all of the above mentioned trademarks are herein called collectively “VIRGIN Trademark” or “VIRGIN MONEY Trademark”).
While the VIRGIN Trademark was first used in about 1974, the Trademark VIRGIN MONEY was first used in 2002 when the company Virgin Direct, in operation since 1995, was renamed and continued under the said Trademark its financial services including banking, insurance, credit cards, mortgages, share dealing, personal loans, pension, savings and investments. At the present time, there are approximately 2.7 million customers for the VIRGIN MONEY financial services and in 2010, the United Kingdom turnover exceeded GBP 109.500,000.
The Complainant is also the registered owner of more than 4,500 domain names, each incorporating the VIRGIN Trademark, about 750 domain names, seven of which incorporate VIRGIN MONEY with other descriptive terms, are listed as evidence (Annex 5 of the Complaint).
The VIRGIN Trademark of the Complainant has been the base of at least eight domain name disputes identified in the Complaint.
The disputed domain name was registered by the Respondent on April 18, 2011, under a privacy name, PrivacyProtect.org. The identity of the Respondent was subsequently disclosed as Kim Bum from Seoul, Republic of Korea.
The disputed domain name resolved to a website containing links provided by the DomainSponsor (Annex 1 of the Complaint).
On May 22, 2013, the Complainant sent two email communications: one to the DomainSponsor, informing it of its VIRGIN Trademark rights, registrations and reputation and their violation by the disputed domain name and requesting compliance with their Trademark Dispute Policy and another similar to the Respondent also informing same of its Trademark rights and their infringement as well as asking for the suspension of the website, transfer of the disputed domain name and stating modalities to implement compliance with the request. The DomainSponsor responded and blocked the domain name within days of the reception of the said communication. The Respondent did not answer.
In its witness statement, the Complainant provided an elaborate and detailed review of the expansion of its various sectors of activities, products and services, regularly introduced, as well as the various locations of said activities, many of these locations, in addition to Europe and North America, being in Asia, such as in Hong Kong, Shanghai (China), Tokyo and others mentioned hereafter.
The VIRGIN megastore was open in 1978 and at the beginning of 1980 decade, the VIRGIN records went international and by 1985, films and videos were distributed in Australia, Europe, United States and Asia. In 1987, the Group launched VIRGIN Record America and VIRGIN Record Japan.
In the 1990 decade, the activities were expanded in the distribution of books under the name “Virgin Books”, airline passengers’ transportation under the name “Virgin Atlantic Airways” and numerous additional spheres of activities were added, such as communications, with television operations in Mexico, products trading, such as vodka and cola, and mobile telecoms. In the 2000 decade, the expansion in products, services and countries continued with cars, wines and student community websites. The financial services under the Trademark VIRGIN MONEY started in 2001 and the expansion of VIRGIN MOBILE in China and France in 2006 and then in India, in 2008.
The brand VIRGIN MONEY GIVING was created as a non profit activity and is used in relation to its not-for-profit sponsorship website seeking and assisting in ways donations and gift aids are collected.
The Complainant, as owner and user of its VIRGIN Trademarks portfolio, also grants licenses in relation with various goods and services to approximately 60 companies which constitute its Group of VIRGIN licensees which VIRGIN Trademarks’ use and activities, are strictly controlled by the Complainant. These licensees are trading under a name that comprises the VIRGIN Trademark with a descriptor such as money for VIRGIN MONEY and similarly VIRGIN MEDIA, VIRGIN HOLIDAYS and VIRGIN MOBILE to name a few. These Complainant’s licensees include a diversity of industries such as media, mobile, money, music, retail and leisure and their locations are in several countries over the world including Australia, India and South Africa, in addition to United Kingdom, United States and Canada.
The Complainant’s website, “www.virgin.com”, set by the Complainant which presents the primary activities of the VIRGIN Group began its operation in June 1996 and by 2011, it was visited by numerous visitors in European Union but also in numerous countries with almost seven million visits in 2008 to over 22 million visits in 2011, from over 230 countries, including China, Hong Kong (China), Indonesia, Japan, Philippines and India.
The VIRGIN Group has spent substantial sums of money in relation to the promotion of the VIRGIN Trademarks and, since 2005 throughout 2009, these sums have varied annually from about 160,000 to GBP 232,000.
The reputation of the VIRGIN Trademark has been acknowledged in several surveys where it was ranked as one of the top 10 most successful, innovative, admired and respected brands and the Complainant has won 20 awards from 2002 to 2007 in respect of its VIRGIN Trademark.
5. Parties’ Contentions
The Complainant submits the following representations:
It has rights in the Trademarks VIRGIN and VIRGIN MONEY which by their extensive worldwide and diversified use have contributed to a significant reputation for the Complainant and substantial goodwill in the VIRGIN Trademark in the United Kingdom and other countries in association with a wide range of goods and services.
By reason of such use, the public has become accustomed to seeing the VIRGIN Trademark used in conjunction with additional elements such as Atlantic, trains, holidays, mobile, media, money and money giving. Such renown and distinctive character of the VIRGIN Trademark have been acknowledged by UDRP panels in their numerous UDRP decisions, cited in the Complaint.
The Complainant therefore, has significant rights in the Trademarks VIRGIN and VIRGIN MONEY and each of said trademarks is entirely incorporated in the disputed domain name and it is clear that the said domain name is confusingly similar to these two VIRGIN Trademarks.
By reason of the massive reputation of the VIRGIN and VIRGIN MONEY Trademarks and the Complainant’s operations in a wide range of activities including financial services, the Complainant does not see any believable and realistic reason for the registration or the use of the disputed domain name by the Respondent. The Respondent is not a licensee nor authorized user of the VIRGIN Trademarks. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
As illustrated by the incorporation of the two Trademarks cited above, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other online locations by creating a likelihood of confusion with the Complainant’s VIRGIN and VIRGIN MONEY Trademarks as to the source, sponsorship, affiliation or endorsement of the website.
Since the public is much used to seeing the VIRGIN Trademark used in relation of broad range of businesses and furthermore being very familiar with the VIRGIN MONEY business and the VIRGIN MONEY GIVING brand, the public in seeing the disputed domain name would assume that it is referring to the VIRGIN businesses. The Complainant submits that the disputed domain name was registered and used in bad faith
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove each of the following three elements in order for the disputed domain name to be cancelled or transferred:
(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark 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.
A. Identical or Confusingly Similar
The evidence is very elaborate and most convincing that the Complainant has rights in the Trademarks VIRGIN and VIRGIN MONEY not only in the United Kingdom but in several countries in the world and furthermore that there is a considerable reputation and fame associated therewith. The Panel finds that the Complainant has rights in the Trademarks VIRGIN and VIRGIN MONEY.
The disputed domain name incorporates the whole of the said two Trademarks, the letter “g” after “virgin” and the descriptive term “giving” with the suffix “.com”. It is well established in UDRP decisions that the addition of a generic or descriptive term and of a generic Top-Level Domain (“gTLD”) suffix to such trademark does not alter or diminish the confusing similarity therewith. The Panel concurs with the views expressed by the Panel in Virgin Enterprises Limited v. Duygu Mert, WIPO Case No. D2011-0632 that “the addition of generic or descriptive terms to a trademark is not a distinctive feature”, said the relevant UDRP panel relying on several UDRP decisions and illustrations cited in said decision.
The Panel finds that the disputed domain name is confusingly similar to the VIRGIN and VIRGIN MONEY Trademarks of the Complainant.
The first criterion of the Policy has been met.
B. Rights or Legitimate Interests
The Respondent has not filed any response in this proceeding. Therefore, the Panel may accept all reasonable inferences and allegations included in the Complaint as true. The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name by stating that the Respondent’s website and activities are not corresponding to making a legitimate noncommercial or fair use of the disputed domain name. Furthermore, the Complainant has never given a license nor in any way authorized the Respondent to make use of the Complainant’s VIRGIN and VIRGIN MONEY Trademarks or to register the disputed domain name.
By reason of the highly distinctive character and unique nature of the VIRGIN Trademark and the complete integration of the VIRGIN and VIRGIN MONEY Trademarks in the disputed domain name, the Panel concludes that it is unconceivable to envisage any legitimate interests or rights for registering the disputed domain name, other than to capitalize or gain on the Complainant’s reputation in some way.
The Panel finds the Respondent has no rights or legitimate interests in the disputed domain name.
The second criterion of the Policy has been met.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of the registration and use of the domain name in bad faith:
“(i) circumstances indicating that you have registered or you have 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 the complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”
It should be noted that circumstances evidencing bad faith registration and use are not limited to the above.
The elaborate factual evidence adduced by the Complainant clearly demonstrates to this Panel that the VIRGIN Trademark by its extensive worldwide use, promotion, business success and incorporation in thousands of the Complainant’s domain names has achieved the status of a famous trademark. Although there is no evidence of registration or use of the VIRGIN Trademark in the Republic of Korea where the Respondent is located in Seoul, this Panel is convinced that, by reason of the worldwide use, including Asia, of the VIRGIN Trademark in association with so many products and services and the hundreds of domain names, seven of which incorporate VIRGIN MONEY, on the one hand, and the association of the terms “virgin and money” in the disputed domain name, on the other hand, is not a mere exceptional circumstance but is the deliberate choice and intention of the Respondent. The Complainant has made some strong representations of bad faith by the Respondent in the registration and use of the disputed domain name, it is not surprising to this Panel that the Respondent, upon being notified of the rights of the Complainant, did not try to show and explain that it had rights and legitimate interests in the disputed domain name and that its actions were not in bad faith as appropriately alleged by the Complainant.
The Panel finds that the disputed domain name was registered in bad faith.
Again, as illustrated in the evidence, in particular by the screenshot of the original website as taken by the Complainant on May 21, 2013, there are several financial headings such as “Charitable Donation, Charitable Sponsorship, Virgin Money, Grant Money and Fundraising Charity” to mention only a few. In the Panel’s view, the website content with its numerous activities analogous to those of the Complainant shows a deliberate attempt by the Respondent to capitalize on the reputation and fame of the VIRGIN Trademark.
Under the present factual situation, the Panel sees a further corroboration of bad faith by the Respondent in using a privacy system to register the disputed domain name and cannot see or imagine any other justification in using a privacy system.
As represented by the Complainant, with whom the Panel agrees, the disputed domain name was registered to intentionally attract, for commercial gain, Internet users to the website associated with said domain name by creating a likelihood of confusion with the VIRGIN Trademark and capitalize or gain from the Complainant’s reputation in some way, as per paragraph 4(b)(iv) of the Policy.
The Panel finds that the disputed domain was used in bad faith.
The third criterion of the Policy has been met.
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 <virgingmoneygiving.com> be transferred to the Complainant.
J. Nelson Landry
Date: July 26, 2013