WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. D Jones
Case No. D2016-0943
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 D Jones of Bucks, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <virginemedia.com> is registered with eNom, Inc. (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 11, 2016. On May 12, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 12, 2016, 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 Complainant filed an amended Complaint on May 27, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 27, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 17, 2016.
The Center appointed Anthony R. Connerty as the sole panelist in this matter on June 22, 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 a member and brand owner of a group of companies known collectively as the Virgin group of companies (the "Virgin Group"), which now comprises over 200 companies worldwide operating in 32 countries. The first business in the Virgin Group was started in 1970. The Virgin Group began operating the website "www.virgin.com" in June 1996., The Complainant owns extensive rights in the VIRGIN and VIRGIN MEDIA marks, registered as early as April 11, 1973, and May 18, 2007, respectively. The Complainant is also the registered proprietor of over 4,500 domain names incorporating the VIRGIN name.
The disputed domain name was registered on April 6, 2007.
5. Parties' Contentions
The Complainant is the brand owner for the Virgin Group. The Virgin Group originated in 1970 when Richard Branson began selling music records under the Virgin name and 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 Europe and the United States of America. The number of employees employed by the Virgin Group is in excess of 40,000, generating an annual group turnover in excess of 4.6 billion GBP.
A witness statement filed by a trade mark attorney employed by the Complainant outlines the wide ranging activities of the Virgin Group and the extent of its operations, and sets out information showing "the well known nature of the VIRGIN mark and the extent of its use of the VIRGIN mark. The Complainant has developed a significant reputation in relation to the VIRGIN mark [. . .]. [T]he 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. [. . .] When VIRGIN is coupled with MEDIA [the Complainant] submit[s] it can have no other meaning for the public other than as a reference to [the Complainant]'s brand."
In relation to the letter "e" inserted into the disputed domain name <virginemedia.com>, the Complainant says that "the only difference is the inclusion of the letter in the Respondent's registration, this would go unnoticed by the average internet user."
The Complainant states that disputed domain name resolves to a Sedo parking page which displays a number of adverts; an annex to the Complaint shows a screen shot stating "Buy this domain. The domain virginemedia.com may be for sale by its owner!"
The Complainant adds that the Respondent "is the owner of 34,063 domain names, providing further evidence in support of the fact that they have no legitimate interest in this domain name."
The Complainant's contentions are that:
a) The disputed domain name is confusingly similar to a trade mark or service mark in which the Complainant has rights;
b) The Respondent has no rights or legitimate interests in the disputed domain name;
c) The Respondent registered and is using the disputed domain names in bad faith.
The Complainant seeks the transfer of the disputed domain name to itself.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 15 of the Rules states that the Panel is required to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate. Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements in order to be entitled to the relief sought:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Paragraph 4(c) of the Policy sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights or legitimate interests in the disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy. The list of circumstances is non-exhaustive.
For the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy sets out a non-exhaustive list of circumstances that shall be evidence of the registration and use of a domain name in bad faith (with "you" referring to the Respondent):
(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 that 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 web site 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 web site or location or of a product or service on your web site or location.
A. Identical or Confusingly Similar
The Complainant contends that "[w]hen VIRGIN is coupled with MEDIA […] it can have no other meaning for the public other than as a reference to [the Complainant]'s brand", and that the addition of the letter "e" between "virgin" and "media" does nothing to "change the overall impression of the domain name."
In Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, the panel stated that, "As numerous prior panels have held, the fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks."
In this case, the disputed domain name wholly incorporates the Complainant's registered mark with the addition of the one letter "e".
As to the insertion of that one letter, the panel in ACCOR v. Eduardo Marchiori Leite, WIPO Case No. D2004–0680, stated that "[t]he deletion or addition of one letter is an insignificant change for the purposes of the Policy paragraph 4(a)(i)."
The Panel finds the disputed domain name to be confusingly similar to the Complainant's mark, and is satisfied that the Complainant has brought itself within the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant contends that "[t]he Respondent has no rights in relation to the Virgin Media elements which form the domain name. Bearing in mind the massive reputation of the VIRGIN and VIRGIN MEDIA brand and [the Complainant]'s operations in a wide range of activities since as early as 1970, there is no believable or realistic reason for registration or use of the domain name other than to take advantage of [the Complainant]'s rights. In view of [the Complainant]'s massive reputation in the VIRGIN and VIRGIN MEDIA brands we cannot possibly believe that the Respondent legitimately registered this domain."
The Complainant adds that the Respondent is not commonly known by the name VIRGIN or VIRGIN MEDIA, has no trade mark registrations for either mark, and has no rights or legitimate interests in the disputed domain name.
The Respondent was entitled to deal with the Complainant's allegations, and was entitled to demonstrate any rights or interests in the disputed domain name by way of the circumstances listed in paragraph 4(c) of the Policy. The Respondent has not done so. It is for the Complainant to prove the three elements of paragraph 4(a) of the Policy. However, it is established that, once the Complainant has made out a prima facie case, it is then a matter for the Respondent to answer that case; whether or not a respondent has rights or legitimate interests in a domain name is a question which a respondent can answer better than a complainant.
The Panel is therefore satisfied that the Complainant has proved the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As stated earlier, the Complainant says that the disputed domain name resolves to a Sedo parking page which displays a number of adverts, and an annex to the Complaint shows a screen shot stating "Buy this domain. The domain virginemedia.com may be for sale by its owner!"
The Complainant submits that the registration of the disputed domain name is a classic example of a bad faith registration in accordance with paragraph 4(b) of the Policy: "It is clear that this is an example of a typo-squatting domain. The fact that the domain is so close to the VIRGIN MEDIA brand suggests that the Respondent is looking to profit from the domain name by selling it to [the Complainant] for a high sum, significantly in excess of their documented out of pocket expenses. We see no other justification for the registration of a domain name which is so close to [the Complainant's] famous brand, the only difference is the inclusion of the letter in the Respondents [sic] registration, this would go unnoticed by the average internet user."
The Complainant refers again to typo-squatting: the Respondent is "engaged in a pattern of typo squatting behavior, we know that he is the owner of 34,063 domain names including a number of other domains containing the VIRGIN element."
Dealing with a misspelling of "auto trader", the panel in TPI HOLDINGS, INC. v. Nadeem Qadir, WIPO Case No. D2008-1398, stated that, in the absence of any evidence to the contrary, "the only conclusion open to the Panel is that the Respondent's registering of the contested domain name was for the purpose of 'cybersquatting',ie. to profit from the close resemblance with the Complainant's trade marks by misdirecting internet users to the Respondent's own unconnected website. Furthermore, the fact that the domain name resolves to a portal site with numerous hyperlinks, indicates that the Respondent has engaged in a deliberate scheme to derive some financial gain from the misdirection of Internet users."
The Complainant contends in this case - in a series of alternative allegations based on the list of circumstances set out in paragraph 4(b) of the Policy - that the disputed domain name was registered and is being used in bad faith.
It was open to the Respondent to file a Response. He has not done so. The Panel is satisfied that the Complainant has brought itself within the requirements of 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 name <virginemedia.com> be transferred to the Complainant.
Anthony R. Connerty
Date: July 4, 2016