WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. WhoisGuard, Inc. / michael ceesar, creations
Case No. D2016-0671
1. The Parties
The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Stobbs IP Limited, United Kingdom.
The Respondent is WhoisGuard, Inc. of Panama, Panama / michael ceesar, creations of London, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <virgintrains.online> is registered with NameCheap, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 6, 2016. On April 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 6, 2016, 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 April 8, 2016 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 April 13, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 4, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 6, 2016.
The Center appointed Clive Duncan Thorne as the sole panelist in this matter on May 11, 2016. 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
The Complainant is the brand owner for the Virgin Group of Companies. The Virgin Group originated in 1970 when Richard Branson began selling music records under the Virgin name. Since that date, it has expanded into a wide variety of businesses. As a result, the Virgin Group now comprises over 200 companies worldwide operating in 32 countries including throughout Europe and the United States of America ("United States"). The number of employees employed by the Virgin Group of Companies is in excess of 40,000. The annual Group turnover is in excess of GBP 4.6 billion.
Annex 6 to the Complaint is a Witness Statement from a trademark attorney employed by the Complainant. The Witness Statement sets out a summary of the Virgin Group history and highlights some but not all of the activities of the Virgin Group Companies since 1970.
The Complainant licenses the Virgin marks in relation to various goods and services to companies both within and outside the Virgin Group.
A website operated at "www.virgin.com" sets out the primary activities of the Virgin Group. It illustrates the significant global presence and breadth of the services provided under the VIRGIN marks. This website began operating in June 1996. As well as providing general corporate information about the Virgin Group, the site has links to specific webpages for most of the companies in the Virgin Group and provides information on the latest news, products and services provided by the Virgin Group.
The Witness Statement also summarises the activities of the Virgin Group in travel and tourism particularly through Virgin Atlantic, Virgin Australia, Virgin America, Virgin Galactic, Virgin Holidays, Virgin Holiday Cruises and Virgin Limited Edition.
In 1996, the Virgin Group established Virgin Trains which operates a domestic rail franchise in the United Kingdom. Virgin Media and Virgin Mobile are concerned with the Group's activities in telecommunications. There are, in addition, other Virgin mobile companies throughout the world. Virgin Connect operates a WiMax network in the Russian Federation. Virgin Radio was launched by the Virgin Group in the United Kingdom in 1993 and this was followed by Virgin Radio International at specific radio stations elsewhere in the world. Virgin has retail interests particularly through Virgin Records and Virgin Megastores.
Virgin Money operates in the United Kingdom in banking and financial services. It subsequently launched in Australia, South Africa and the United States.
Virgin Active is a fitness and health club business launched by the Virgin Group in 1999 in the United Kingdom. Other companies' concerned with leisure and lifestyle include Virgin Games, Virgin Books, Virgin Drinks, Virgin Wines, Virgin Brides, Virgin Clothing, Virgin Cosmetics, Virgin Jewellery, Virgin Spa, Virgin Racing, Virgin Gaming, Virgin Digital Help and Virgin Cinemas.
The Group is also concerned with social environmental issues including through the medium of Virgin Unite which is a not for profit entrepreneurial foundation of the Virgin Group and the Virgin Green Fund.
The Virgin Group has achieved growth from a sales turnover in 1983 totalling GBP 50m to a turnover of nearly GBP 4 billion in 2010 peaking at approximately GBP 4.6 billion in 2006.
The Group's advertising expenditure is significant as is shown in the Witness Statement. It submits that "it is plain that (the Complainant) has developed a massive reputation in its Virgin brand across a very wide range of businesses and business and consumer sectors. The Virgin brand has always carried with it the idea of a high end service but also of a service or product that is slightly different than the run of the mill. However, as well as this reputation for excellence and difference, the Virgin brand has always carried with it a reputation of being ethical whatever business sector is involved and a reputation for solutions that are out of the ordinary or have come from "thinking outside of the box …….".
The Complainant has extensive trademark registrations in inter alia the marks VIRGIN, registered on April 11, 1973 and VIRGIN TRAINS, registered on June 12, 1998.
The Complainant also owns a significant number of domain name registrations including <virgin.com> registered on September 10, 1997 and <virgintrains.com> registered on July 29, 2001. The Complainant points out that it owns in excess of 4,500 other domain names.
The Complainant submits that it has a significant reputation and a "vast amount" of goodwill in the trademark VIRGIN in the United Kingdom and abroad in relation to a wide range of goods and services.
In the absence of evidence to the contrary from the Respondent, the Panel is satisfied that the Complainant's evidence as to its trademark rights and branding is true. Accordingly, it proceeds to determine this dispute on the basis of the evidence submitted by the Complainant.
The disputed domain name was registered on February 27, 2016.
5. Parties' Contentions
1. The Complainant submits that the disputed domain name is confusingly similar to trademarks in which the Complainant has rights. The Complainant submits that when VIRGIN is coupled with TRAINS then it can have no other meaning for the public than as a reference to the Complainant, especially as it has rights in the mark VIRGIN TRAINS.
2. The Respondent has no rights or legitimate interests in respect of the domain name. There is no evidence to support such a contention. Moreover the evidence of the use of the disputed domain name shows that the Respondent had not used the disputed domain name or made preparations to use it in relation to a bona fide offering of goods or services.
3. The disputed domain name was registered and is being used in bad faith. The evidence of the use of the disputed domain name by the Respondent demonstrates that the use of the disputed domain name is deliberately misleading.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
For the reasons set out above and in particular the evidence set out in the Witness Statement referred to above, the Panel is satisfied that the Complainant has trademark rights in the marks VIRGIN and VIRGIN TRAINS which predate the registration of the disputed domain name.
The disputed domain name comprises the entirety of the Complainant's trademark VIRIGN TRAINS with the addition of the generic Top-Level Domain ("gTLD") ".online". Many UDRP panels have found that such gTLDs like ".com", ".net" and ".online" may generally be disregarded when assessing identity of confusing similarity.
It follows, in the Panel's view that the domain name in dispute is identical or confusingly similar to the mark VIRGIN TRAINS in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant submits that given the "massive reputation" of the "Virgin" brand and the Complainant's Group operations there is no "believable or realistic reason for registration or use of the domain name in question other than to take advantage of the Complainant's rights".
The Complainant relies upon the evidence of a screenshot dated March 2, 2016 which is exhibited at Annex 7 to the Complaint. It submits that use being made of the site clearly demonstrates that the Respondent had not used the domain or made preparations to use the disputed domain name in relation to a bona fide offering of goods or services. The Panel notes in particular the use of the Complainant's design marks on said webpage.
Moreover it points out that the disputed domain name does not reflect the Registrant's name in any way not least because the Respondent is not commonly known by the name "Virgin Trains" which is the name of the Complainant.
In the Panel's view and taking the evidence and submissions into account, the Complainant has established that the Respondent has no rights or legitimate interests in relation to the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant submits that in accordance with paragraph 4(b)(i) of the Policy there are circumstances indicating that the Respondent has registered or has acquired the disputed domain name primary for the purpose of selling, renting or otherwise transferring the disputed domain name to the Complainant for a valuable consideration in excess of out of pocket expenses. This is demonstrated by the fact that when the Complainant made initial contact with the Respondent the Respondent offered to sell the disputed domain name and claimed to be an affiliate of "Virgin Trains". Such affiliates are not permitted by the Complainant to register domain names containing the mark VIRGIN. The Complainant submits that this is evidence of bad faith.
The evidence set out in Annex 7 to the Complaint demonstrates that the disputed domain name resolved to a website which stated "hello, we are Virgin Trains". The site contains many references to the "Virgin Trains" brand and has the look and feel of an official "Virgin Trains" website. However, this is not a website authorised by the Complainant.
The Complainant contacted the Respondent pointing out its rights. Despite the Respondent stating that it was allowed to utilise the disputed domain name, this is not the case and would constitute an abuse of the Complainant's affiliate scheme.
It is also apparent that a customer accessing one of the advertisements for "Virgin Trains" maintained by the Respondent is automatically redirected to the Complainant's official site. The Complainant believes that this will result in customer confusion leading customers to believe that the disputed domain name is an official site of the Complainant.
It is true that after the Complainant made contact with the Respondent, the content of the site was amended as is shown by Annex 8 to the Complaint. However, the site still contained advertisements for "Virgin Trains" which are unauthorised.
In the Panel's view, the evidence clearly demonstrates bad faith for the reasons set out above and finds that the disputed domain name was 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 <virgintrains.online> be transferred to the Complainant.
Clive Duncan Thorne
Date: May 23, 2016