WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Daniel Stracey, Imagination.ph
Case No. D2016-2009
1. The Parties
The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom" or "UK"), represented by Stobbs IP Limited, United Kingdom.
The Respondent is Daniel Stracey, Imagination.ph of Manilla, Philippines.
2. The Domain Names and Registrar
The disputed domain names <virgininvesting.com> and <virgininvesting.tv> are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 4, 2016. On October 4, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 4, 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. In response to a notification by the Center on October 13, 2016 that the Complaint was administratively deficient, the Complainant filed an amended Complaint October 18, 2016.
The Center verified that 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 October 19, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2016. An email was received on October 17, 2016 from the Respondent stating she intended to defend her corner. The Center acknowledged receipt of the communication in October on the same day. The Respondent did not submit any further response. Accordingly, the Center notified the parties of the commencement of panel appointment process.
The Center appointed Petter Rindforth as the sole panelist in this matter on December 2, 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.
On December 6, 2016, the Panel issued Administrative Panel Procedural Order No. 1 (the "Panel Order") requesting the Complainant to provide evidence of claimed trademark rights in form of maximum 10 official copies of connected Certificate of Registrations. The Complainant duly replied to the Panel Order on December 8, 2016.
The Panel shall issue its Decision based on the amended Complaint, the Complainant's reply to the Panel Order, the Policy, the Rules, the Supplemental Rules, and without the benefit of any formal Response from the Respondent. The case before the Panel was conducted in English, which is the language of the Registration Agreement for the disputed domain names as confirmed by the Registrar.
4. Factual Background
The Complainant is the owner of a number of registered trademarks for the word VIRGIN around the world, including:
- No 1453959 VIRGIN (word), registered as Australian National Trademark on October 14, 2011, Classes 36 and 42;
- No 199800058 VIRGIN (word), registered as Hong Kong Trademark on January 6, 1998, Class 36;
- No 3226770 VIRGIN (word), registered as Japan National Trademark on November 29, 1996, covering class 36; and
- No 3398247 VIRGIN (word), registered at the United States Patent and Trademark Office ("USPTO"), on March 18, 2008, Class 36.
The disputed domain name <virgininvesting.com> was registered on December 11, 2015. The disputed domain name <virgininvesting.tv> was registered on January 7, 2016. No detailed information is provided about the Respondent's activities, apart from what is mentioned below by the Complainant.
5. Parties' Contentions
The Complainant states that the Complainant owns very extensive rights in the VIRGIN trademark, as word and device, and in combination with other words, in a number of countries. Further, the Complainant is the holder of 4 500 domain names, incorporating the VIRGIN name/trademark.
The Complainant has a significant reputation and has built up a vast amount of goodwill in the VIRGIN trade mark in the UK and abroad in relation to a wide range of goods and services. 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 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 throughout Europe and the United States of America. The number of employees employed by the Virgin Group of Companies is in excess of 40000, generating an annual group turnover in excess of 4.6 billion pounds. The Complainant has also gained a significant reputation in the trademark through extensive use.
The public are very used to seeing VIRGIN used in conjunction with another word/descriptive element, such as VIRGIN MONEY.
The Complainant refers to a number of previous UDRP decisions where typographical error domain names or domain names comprising VIRGIN followed by another element, have been transferred to the Complainant. The Complainant concludes that both <virgininvesting.com> and <virgininvesting.tv> are confusingly similar to the VIRGIN trademark.
The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names <virgininvesting.com> and <virgininvesting.tv>, as the Respondent is not commonly known by the names "Virgin" or "Virgin Investing", the Respondent has no trade mark registrations for VIRGIN or VIRGIN INVESTING, and the Respondent has no legitimate interests in the disputed domain names.
Finally, the Complainant states that the disputed domain names were registered and are being used in bad faith.
The <virgininvesting.com> domain name resolves to a website which uses the VIRGIN trademark and the website has the look and feel of an official site of the Complainant. The Complainant, referring to its well known trademark VIRGIN, is extremely concerned that the use of this domain name by the Respondent, could result in consumers being confused.
The <virgininvesting.tv> has also been registered in bad faith. No use is being made of the disputed domain name and the Complainant sees no other justification for registering <virgininvesting.tv> other than to attempt to sell it to the Complainant in the future for a figure which is in excess of the Respondent's out of pocket expenses.
The fact that the Respondent has registered two domain names which contain the Complainant's famous VIRGIN trademark indicates a pattern of behavior and shows a clear knowledge of the Complainant's famous trademark.
The Complainant requests that the Panel issue a decision that the disputed domain names be transferred to the Complainant.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, a complainant must prove each of the following:
(i) that the disputed domain names are 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 names; and
(iii) that the disputed domain names have been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has obtained multiple trademark registrations for VIRGIN in numerous jurisdictions (e.g., US Registration No. 3398247 of March 18, 2008).
The Panel finds that the Complainant has established rights in the VIRGIN trademark for purposes of the Policy through its trademark registrations with the USPTO. SeeJanus International Holding Co. v. Scott Rademacher, WIPO Case No. D2002-0201 (finding that panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive).
The relevant part of the disputed domain names is "virgininvesting". The addition of the generic Top-Level Domain ".com" and of the country code Top-level Domain ".tv" are insufficient to distinguish the disputed domain names from the Complainants' trademark.
The Panel concludes that the disputed domain names consist of the Complainant's trademark VIRGIN, with the addition of the generic word "investing". As stated in many UDRP decisions, the addition of a generic term does not necessarily distinguish a domain name from a trademark. See Audi AG and Volkswagen AG v. Glenn Karlsson-Springare, WIPO Case No. D2011-2121. ("The additional word "environment" following the trademarks AUDI, VW and VOLKSWAGEN in the disputed domain names is merely generic and does not avoid a finding of confusing similarity of the disputed domain names with Complainants' trademarks."). In this case, the word "investing" could rather be seen as a notice to the public to make investments in the Complainant's company, goods and services.
The Panel therefore concludes that the disputed domain names <virgininvesting.com> and <virgininvesting.tv> are confusingly similar to the Complainant's trademark VIRGIN.
B. Rights or Legitimate Interests
Once a complainant establishes a prima facie case of the second element of the Policy, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
By not submitting a Response, the Respondent failed to invoke any circumstance which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name or to rebut the Complainant's prima facie case that it lacks rights or legitimate interests.
The Respondent has no rights to use the Complainant's trademark and is not an authorized agent or licensee of the Complainant's products, services or trademarks. There is nothing in the Respondent's name that indicates it may have become commonly known by the disputed domain names, enabling it to establish a legitimate interest in the disputed domain names <virgininvesting.com> or <virgininvesting.tv>, nor any evidence in the present record to indicate that the Respondent is making any legitimate noncommercial or fair use of any the disputed domain names.
The Panel notes that <virgininvesting.com> resolves to a website that has the look and feel of an official site of the Complainant and the disputed domain name <virgininvesting.tv> resolves to parking web site, stating that it will be "launched very soon".
As to <virgininvesting.com>, the website shows the well-known figurative version of the Complainant's trademark VIRGIN, and <virgininvesting.tv> is registered under the ccTLD ".tv". Although being the official cc TLD for Tuvalu, ".tv" is generally used for media, entertainment and television related domain names. That in mind, also a parked domain name under ".tv" will automatically for the public be seen as related to a company offering entertainment services, such as the Complainant. Such use, even if it is considered non-active use, does not establish rights or legitimate interests.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.
C. Registered and Used in Bad Faith
With respect to <virgininvesting.tv>, as shown by prior UDRP panel decisions, the apparent lack of so-called active use (e.g., to resolve to a website) of the disputed domain names without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. Each UDRP panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. See Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574 ("There is no active use of the domain names in the sense that they resolve to an active web site. Nevertheless the circumstances of the registration of the domain names and Respondent's US trade mark application are indicative of his intention to hold the trade mark and the domain names for some future active use in a way which would be competitive with or otherwise detrimental to Complainant.") See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 ("…the circumstances identified in paragraphs 4(b)(i), (ii) and (iii) can be found in a situation involving a passive holding of the domain name registration.").
In this case, the Panel takes into account the following circumstances:
- The Complainant's trademark VIRGIN is considered by the Panel as highly distinctive and well-known;
- The disputed domain names clearly contain the Complainant's trademark, with the addition of the generic word "investing";
-The ccTLD ".tv" for "www.virgininvesting.tv" indicates for this Panel a connection with the Complainant's television/entertainment services;
- With respect to <virgininvesting.com>, the domain name resolves to a website that has the look and feel of an official site of the Complainant and shows the Complainant's well known VIRGIN trademark, this creates a likelihood of confusion with the coplainant's trademark as described under paragraph 4(b)(iv) of the Policy.
- The fact that the Respondent has registered two domain names including the Complainant's trademarks further indicates bad faith.
- The Respondent has not timely responded to the Complaint and has therefore not provided evidence of any actual or contemplated good faith use by it of the disputed domain names.
Thus, the Panel concludes that the disputed domain names were registered and are being used in bad faith, and that the Complainant has succeeded in proving the three elements within paragraph 4(a) 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 names, <virgininvesting.com>, and <virgininvesting.tv> be transferred to the Complainant.
Date: December 16, 2016