WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Mohamed Sabban
Case No. D2013-1620
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 of Great Britain and Northern Ireland.
The Respondent is Mohamed Sabban of Jeddah, Saudi Arabia.
2. The Domain Name and Registrar
The disputed domain name <virginsaudiarabia.com> is registered with Register4Less, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2013. On September 16, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 September 18, 2013 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on September 20, 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 24, 2013. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 14, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 16, 2013.
The Center appointed Reynaldo Urtiaga Escobar as the sole panelist in this matter on November 1, 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 paragraph 7 of the Rules.
The proceedings are conducted in English as this is the language of the disputed domain name’s registration agreement.
4. Factual Background
The Complainant is the intellectual property holding company for the Virgin Group of companies, and is responsible for the ownership, management and protection of all trademarks and intellectual property in the VIRGIN marks.
The Virgin Group was founded in 1970 in the United Kingdom of Great Britain and Northern Ireland and has grown significantly since that time. The Virgin Group has traded under the VIRGIN trademark in a wide variety of activities and now comprises over 200 companies worldwide. It operates in 32 countries, including Saudi Arabia, with more than 40,000 employees and generates an annual group turnover in excess of GBP 4.6 billion.
The VIRGIN trademark was first registered by the Complainant in 1973, and there are now over 3,000 trademark applications and registrations incorporating the Virgin marks in over 125 countries. The applications and registrations cover a wide variety of goods and services that reflect the diversity of the Virgin Group’s worldwide business interests.
The Respondent registered the disputed domain name on March 27, 2006. The disputed domain name resolves to home page showing nothing but the following text: “Coming soon in Saudi Arabia. Contact email: mohamedd@[redacted]”
The Complainant claims to have contacted the Respondent prior to filing the Complaint, but no documentary evidence in that connection was produced.
5. Parties’ Contentions
The Complainant’s factual and legal contentions can be summarized as follows:
i. the Complainant owns very extensive rights in the VIRGIN mark and has built up a significant amount of goodwill in such trademark within and outside of the United Kingdom in relation to a wide range of goods and services;
ii. the disputed domain name is identical and confusingly similar to the trademarks in which the Complainant has rights and the public have become accustomed to seeing VIRGIN;
iii. a significant body of UDRP decisions implicating the Complainant have found that there is likelihood of confusion where a domain name comprises ‘virgin’ and an additional element;
iv. bearing in mind the massive reputation of the VIRGIN mark and the Complainant’s operations in a wide range of activities since as early as 1979, there is no believable or realistic reason for registration or use of the disputed domain name other than to take advantage of the Complainant’s rights;
v. the registration of the disputed domain name is a classic example of bad faith registration under Policy paragraph 4(b);
vi. adding the words “Saudi Arabia” adds nothing from a brand perspective because a member of the public seeing ‘Virgin Saudi Arabia’ would immediately and undoubtedly consider this to be a reference to the Complainant;
vii. considering the Complainant’s global reputation, and the extremely distinctive and unique nature of the VIRGIN trademark, it is impossible to envisage any legitimate purpose for registering the disputed domain name other than to capitalize or gain from the Complainant’s in some way, or to prevent the Complainant from registering the disputed domain name; and
viii. in sum, the Respondent has intentionally attempted to cause confusion and has gained commercially.
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 in this administrative proceeding, the Complainant must prove that:
i. the disputed domain name 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 was registered and is being used in bad faith.
These elements are discussed in turn below. In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
A. Identical or Confusingly Similar
The gateway question under paragraph 4(a)(i) of the Policy is whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark, not whether the website to which the disputed domain name resolve will confuse Internet users. See The Vanguard Group, Inc. v. John Zuccarini, WIPO Case No. D2002-0834 (a complainant need not to establish actual confusion because the test is objective, not subjective).
The Complainant proves to hold registered trademark rights in the United Kingdom since 1973, as well as worldwide reputation in the mark VIRGIN. Having so established, the Complainant goes on to allege that the disputed domain name is confusingly similar to the VIRGIN mark because the Respondent’s domain name incorporates the Complainant’s mark in its entirety. The Complainant also contends that the addition of the term “Saudi Arabia” has no trademark significance because the general public would perceive a domain name associated with such geographical indication as referring to the Complainant’s business in Saudi Arabia.
Paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) states that the test for confusing similarity under the UDRP involves a straightforward visual or aural comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion and that, in order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent Internet user confusion.
In subscribing to the consensus view, the Panel finds that VIRGIN stands out in the disputed domain name as the Complainant’s emblematic trademark and service mark.
Now, in comparing the mark VIRGIN to “virginsaudiarabia”, being the relevant string of the disputed domain name for the purposes of determining likelihood of confusion, the Panel finds that the disputed domain name is confusingly similar to the VIRGIN mark as the latter is embodied in its entirety in the disputed domain name. See Verizon Trademark Services LLC v. The Helard Group, WIPO Case No. D2012-0277 (several UDRP panels have held that incorporating a trademark in its entirety is generally sufficient to establish that a domain name is identical or confusingly similar to the complainant’s mark).
A finding of confusing similarity is all the more warranted where, as here, the mark incorporated in the disputed domain name is famous. See Virgin Enterprises Limited v. Trade Out Investments Ltd/Power Brand Centre Corp., WIPO Case No. D2011-0640 (The mark VIRGIN is very well-known around the world) and Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Ply, Ltd., WIPO Case No. D2001-0110 (the incorporation of a complainant’s well-known trademark in the registered domain name is considered sufficient to find the domain name confusingly similar to the complainant's trademark).
The addition of “saudiarabia” to “virgin” only reinforces the connection between the disputed domain name and the Complainant’s notorious mark, since the Internet users may well intuitively believe that the disputed domain name is associated with the Complainant’s businesses in Saudi Arabia.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s VIRGIN mark.
The Complainant has thus met the first threshold of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that the Respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). Paragraph 4(c) of the Policy provides that “any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the Respondent’s rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
i. before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
ii. you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
iii. you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
As noted in paragraph 2.1 of the WIPO Overview 2.0, the burden is on the Complainant to establish the absence of the Respondent’s rights or legitimate interests in the disputed domain name. However, because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the Respondent to rebut that prima facie case (see also, e.g. World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306.)
The Complainant submits that in view of its global reputation of the VIRGIN mark and the Complainant’s operations in a wide range of activities since as early as 1979, there is no believable or realistic reason for registration or use of the disputed domain name other than to take advantage of the Complainant’s rights; thus, the Respondent cannot have rights or legitimate interests in the disputed domain name.
The Panel infers from the Complainant’s submission that the Respondent lacks authorization to use the Complainant’s VIRGIN mark in a domain name.
Considering the notoriety of the VIRGIN mark on the one hand and the inactivity of the disputed domain name on the other, the Panel finds that the Complainant has established a prima facie case against the Respondent.
The absence of a Response enables this Panel to draw negative inferences from the Respondent’s default. See Pavillion Agency, Inc.,Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221 (finding that the respondent's failure to respond can be construed as an admission that it has no rights or legitimate interests in the disputed domain name); Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc., eResolution Case No. AF-0336 (finding no rights or legitimate interests where no such rights or interests were immediately apparent to the panel and the respondent did not come forward to suggest any right or interest it may have possessed).
Having reviewed the screenshot produced by the Complainant of the website at the disputed domain name, the Panel did not find that the Respondent: i) is known by the name ‘virginsaudiarabia’; ii) is entitled to use the VIRGIN mark by virtue of a Complainant’s license or otherwise; iii) is making a bona fide offering of goods or services even without possessing trademark rights; or iv) is making a legitimate noncommercial or fair use of the disputed domain name.
The Panel therefore concludes that the defenses afforded by paragraph 4(c) of the Policy are of no avail to the defaulting Respondent.
In sum, the Complainant has demonstrated the second element of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires a complainant to show that the disputed domain name has been registered and is being used in bad faith in order to be successful in its complaint. Paragraph 4(b) of the Policy sets forth a number of non-exclusive grounds of bad faith registration and use:
“(i) circumstances indicating that you [the respondent] have 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 your [the respondent’s] documented out-of-pocket costs directly related to the domain name; or
(ii) you [the respondent] 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 [the respondent] have engaged in a pattern of such conduct; or
(iii) you [the respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you [the respondent] have intentionally attempted to attract, for commercial gain, Internet users to your [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your [the respondent’s] website or location or of a product or service on your [the respondent’s] website or location.”
The Complainant alleges that the Respondent has intentionally attempted to cause confusion with its well-known VIRGIN mark and has profited from that confusion.
In light of the global use of the VIRGIN mark in connection with a variety of products and services, it is only reasonable for the Panel to infer that, under the circumstances, the Respondent registered the disputed domain name to cash in on the fame and goodwill of the VIRGIN mark.
This circumstance alone may be sufficient to find bad faith registration of the disputed domain name. See Singapore Airlines Limited v. European Travel Network, WIPO Case No. D2000-0641 (where the selection of the disputed domain name is so obviously connected to the complainant’s well known trademark, their very use by someone with no connection with the complainant suggests opportunistic bad faith.)
Additionally, in the Panel’s view, the Respondent’s lack of rights or legitimate interests under the Policy, the Respondent’s failure to produce evidence of a good faith use of the disputed domain name, and the bad faith registration already found cumulatively establish bad faith use for the purposes of the Policy because the Respondent has been causing confusion for more than seven years now with the Complainant’s iconic mark and has consequently diverted the Complainant’s users and potential customers seeking products or services marketed in Saudi Arabia under the VIRGIN mark.
Based on the above reasoning, the Panel holds that the disputed domain name was both registered and used in bad faith within the meaning of the Policy.
The Complainant has therefore discharged its burden in connection with 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 domain name <virginsaudiarabia.com> be transferred to the Complainant.
Reynaldo Urtiaga Escobar
Date: November 15, 2013