WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Cesar Alvarez
Case No. D2016-2140
1. The Parties
The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Stobbs IP Limited, UK.
The Respondent is Cesar Alvarez of Caracas, Venezuela (Bolivarian Republic of).
2. The Domain Name and Registrar
The disputed domain name <virginmedia.shop> is registered with Gandi SAS (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 21, 2016. On October 21, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 21, 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.
On October 26, 2016, the Center transmitted an email to the parties in English and Spanish regarding the language of the proceedings. On October 27, 2016, the Complainant submitted its request that English be the language of the proceedings. On October 29, 2016, the Respondent submitted its request that Spanish be the language of the proceedings.
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 in English and Spanish, and the proceedings commenced on November 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2016. The Response was filed with the Center on November 20, 2016.
The Center appointed Rodrigo Azevedo as the sole panelist in this matter on December 7, 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 brand and since that date it has expanded into a wide variety of businesses. The VIRGIN MEDIA trademark was licensed to a British company that provides fixed and mobile telephone, television and broadband Internet services to businesses and consumers in the United Kingdom.
The Complainant obtained numerous trademark registrations for VIRGIN and VIRGIN MEDIA in several countries, respectively since 1975 and 2015. The Complainant also owns dozens of domain names incorporating the terms "virgin" or "virgin media", including <virginmedia.com>, registered in 1999, and <virginmedia.co.uk>, registered in 2000.
The Respondent registered the disputed domain name <virginmedia.shop> on September 26, 2016.
The Panel accessed the disputed domain name on December 20, 2016, which resolved to a parking page displaying a message stating that "This domain name has been registered with Gandi.net" and offering domain name registration and website hosting services.
5. Parties' Contentions
The Complainant makes the following contentions:
-The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. The Complainant owns very extensive rights in the VIRGIN and VIRGIN MEDIA marks including but not limited to the trademark applications and registrations attached at Annex 4 to the Complaint.
A Google search for VIRGIN MEDIA brings up only results related to the Complainant. The Complainant registered the domain name <virginmedia.com> on February 2, 1999 and it resolves to the home page of the Complainant's VIRGIN MEDIA business. The Complainant has a significant reputation and has built up a goodwill in the VIRGIN and VIRGIN MEDIA trademarks in the UK and abroad in relation to a wide range of goods and services. The Complainant has also registered over 4,500 domains names incorporating the VIRGIN name. A number of previous UDRP decisions including but not limited to Virgin Enterprises Limited v. WhoisGuard, Inc. / michael ceesar, creations, WIPO Case No. D2016 0671, Virgin Enterprises Limited v. Richard Nani, franco Resources plc, WIPO Case No. D2016-0659, Virgin Enterprises Limited v. Jay Cannon, WIPO Case No. D2016-0452, Virgin Enterprises Limited v. Guard Whois, WIPO Case No. D2015-2348, Virgin Enterprises Limited v. Tj Chughtai, Noble Travel, WIPO Case No. 2015-1646 and Virgin Enterprises Limited v. Domainadmin / Whois Privacy Corporation, WIPO Case No. 2015-1547 have found a likelihood of confusion in relation to domain names comprising the term "virgin" and an additional element.
-The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has no rights in relation to the VIRGIN and VIRGIN MEDIA elements which form the disputed domain name. Bearing in mind the massive reputation in the VIRGIN and VIRGIN MEDIA marks 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 disputed domain name other than to take advantage of the Complainant's rights. The disputed domain name is not being used in relation to a bona fide offering of goods or services and the Respondent is not making legitimate or fair use of the domain name. The Respondent is not commonly known by the names "virgin" or "virgin media". The Respondent has no trademark registrations for VIRGIN or VIRGIN MEDIA.
-The disputed domain name was registered and is being used in bad faith. Internet users reach the website linked to the disputed domain name expecting to reach an official site of the Complainant, specifically an official site of VIRGIN MEDIA. There are circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant or to one of its competitors for a valuable consideration in excess of the documented out of pocket costs directly related to the disputed domain name; the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting its mark in a corresponding domain name; the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; there are circumstances indicating that by using the disputed domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location. VIRGIN MEDIA is a famous brand and the Respondent would have registered the disputed domain name in full knowledge of the Complainant. When the Complainant initially wrote to the Respondent, he replied offering to sell the disputed domain name for USD 4,530,000.00. This is a sum clearly in excess of the Respondent's documented out of pocket expenses. Furthermore, the disputed domain name has clearly been registered in order to disrupt the business of the Complainant. It is also clear that the Respondent has registered the disputed domain name for commercial gain. The Respondent is the registrant of 235 domain names. A review of these domain names show that the Respondent has registered domain names containing other brands, such as the UK national grocery store <morrisions.shop>.
The Respondent makes the following contentions:
-Whether the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights: the Respondent is a professional in the field of Statistics applied to the Market Investigation and Brand Management and an independent service provider that is part of the "Upwork.com" community. The Respondent performs independent consulting activities focusing in detecting and temporally acquiring domain names that legitimately can be used to identify the products and services of qualified merchants. Also, the Respondent offers domain names as part of a product that complements the client's brand management practices and adds value to their economic activities, using evaluation methods based on the verticality of the domain name towards the related business and on the demand of services on Internet search engines. The offer of ".shop" domain names dates as early as 2012. Starting in 2015, pre-reserves of domain names with a ".shop" extension could be made until the beginning of the Sunrise phase. The phases of sale of the new gTLD extensions approved by ICANN includes: "Expression of interest", "Quiet period", "Sunrise", "Landrush" and "Go Live". Sunrise is a phase that takes place before the general opening for domain registration, giving trademark owners the opportunity to protect their brands under the ".shop" extension. The Sunrise phase for the offer of ".shop" domain names remained active from June 30, 2016 to August 29, 2016. Every trademark owner should invest in brand management to acquire domain names in a timely manner, within the established deadlines, and supported by ICANN regulations for the correct exercise of their trademark rights. When this period expires, the offer is opened to the general public for the legitimate registration, according to the Respondent, under the assumption of lack of interest to obtain the respective domain name by the holder of the mark. Because the Complainant did not exercise the special conditions granted to trademark owners in order to have preferential access to the domain name registration, this allowed the Respondent to acquire it legitimately to be offered as part of a consulting practice. The Complainant tries to obtain the disputed domain name by taking disrespectful advantage of the normative system by ignoring the purpose of the Sunrise phase through the improper invocation of its trademark rights to the detriment of the Respondent.
- Whether the Respondent has rights or legitimate interests in respect of the disputed domain name: the Respondent is a professional service provider that offers a tool to increase the market share of its clients by using specific domain names. The identification tool is a vital asset for the Respondent's achievement of the objectives proposed by the aforementioned consulting solution and according to the Respondent allows for a legitimate temporary appropriation of a domain name when the trademark owner lacks knowledge of the existence of the ".shop" extension. As of November 19, 2016, the Complainant had not registered any domain names within the extension ".shop". The Complainant intends to acquire key domain names for its businesses using domain name disputes based on the systematically inappropriate and untimely invocation of his trademark rights. The extension ".shop" is dedicated especially to websites of electronic commerce, and has attracted the attention of thousands of merchants and brands on the Internet, which augurs the protagonism of these domain names. The disputed domain name has a "fingerprint" function to identify this business on the Internet and is oriented to be favorably sensitive to be accessed through Internet search engines. Consequently, obtaining the disputed domain name the Complainant will have better web positioning, greater flow of visitors and sales volume, increasing his market share.
- Whether the disputed domain name has been registered and is being used in bad faith: the Complainant had a preferential registration period and could have had added the disputed domain name to his assets. The well-known Rosener Equation estimates the value of a domain name in terms of its verticality in relation to the related business, measured mainly by the average number of monthly searches for the respective keyword using Internet search engines. According to the website "wwwestibot.com", the "virgin media" keyword resulted in 1,875,000 average monthly searches, evidencing the huge demand for this expression. The existence of a domain name market is not a violation of the ICANN regulations. Behind most websites there is an economic activity that makes it profitable and domain names used as a gateway to it. It is logical that there is a monetary value associated with this economic activity. The domain name market is widely accepted and is usually associated with emerging industries and other related activities. The market for domain names promotes researches that contribute to the sustainability of the virtual environment, including the activities performed by the Respondent. Therefore, the Complainant is taking advantage of the research made by the Respondent, and is also trying to obtain the disputed domain name for free, improperly enforcing his trademark rights through this proceeding. The Respondent does not compete with the Complainant, but performs a synergistic professional activity. The Respondent has only registered the disputed domain name and does not plan to activate any website associated with it or to link it to any of its own websites. The Respondent does not have any active website associated with his domain names, and there is no scenario in which the Respondent could disturb the commercial activity of the Complainant. From the beginning, the Respondent has stated his intention to reach an agreement with the Complainant, because his main objective was to transfer the disputed domain name under proper conditions and the recognition of the services rendered. However, an agreement could not be reached since the Complainant was not willing to offer conditions for a fair negotiation. On the contrary, the communications received on behalf of the Complainant were made in a very inflexible form, without assuming that the Complainant had not previously known the existence of ".shop" domain names, without recognizing the services rendered by the Respondent and basically requesting the immediate transfer of the disputed domain name under a unilateral assignment by the Respondent. This behavior evidences the Complainant's intention to force a dishonest appropriation of the disputed domain name.
- Therefore, the Panel is urged to evaluate the positive scenario that the Respondent introduced to the Complainant's activity and that regardless of the outcome of this administrative proceeding will generate benefits for that organization. Likewise, it is requested to take into consideration that the denial of the Complaint will allow the parties to reactivate the negotiation for an agreement in which the Respondent could be compensated for the services rendered, for the value added by the identification of such asset, and/or for the present and future damage caused to the Respondent's professional integrity by submitting him to an unnecessary proceeding. The denial of the Complaint will strengthen the dispute resolution system giving a clear message to trademark holders trying to use the proceedings as an unethical way to acquire a domain name.
6. Language of the Proceeding
Pursuant the paragraph 11 of the Rules, and unless otherwise agreed by the Parties or specified otherwise in the Registration Agreement, the language of the administrative proceedings is the language of the Registration Agreement, which is Spanish in the present case.
However, also pursuant to paragraph 11 of the Rules, the Panel is granted power to determine the language of the proceedings having regard to the circumstances of the case. In the Panel's view, consideration must be given to procedural fairness, by allowing both parties to prepare the necessary documents to confront the opponent's case and protect their own interests.
Furthermore, according to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (WIPO Overview 2.0), panels have found that, in certain situations, where the respondent can apparently understand the language of the complaint, and the complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement. Such acceptance is subject to the panel's authority to determine the appropriate language of the proceeding on appointment. Likewise, in appropriate circumstances, a response in a language different from that of the complainant may be accepted.
In light of the Complainant's and the Respondent's submissions regarding the language of the proceedings, the Center proceeded to issue its case-related communications to the parties in both Spanish and English and appointed a Panel familiar with both languages.
The Panel believes that this was a proper approach to the present case. Both Parties have been given a fair opportunity to present their case – the Complainant in English and the Respondent in Spanish – and the Respondent's Response demonstrated that he had no difficulty in understanding the Complainant's contentions. Confirming this statement, the Registrar's website and the website linked to the disputed domain name are in English, with alternative versions in Spanish and other languages.
Accordingly, the Panel accepts the Complaint in English and decides to render the Decision in English, which shall be notified to the parties both in English and in Spanish.
7. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, a complainant shall prove the following three elements:
(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 has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel has no doubt that "virgin" and "virgin media" are terms directly connected with the Complainant's activities.
Exhibit 4 to the Complaint shows numerous trademark registrations for VIRGIN and VIRGIN MEDIA obtained by the Complainant respectively since 1975 and 2015.
The trademark VIRGIN MEDIA is wholly encompassed within the disputed domain name.
The disputed domain name differs from the Complainant's trademark only by the addition of the new gTLD denominator ".shop".
It is well established that the addition of a gTLD extension (such as ".shop" in this case) is generally irrelevant when determining whether a domain name is confusingly similar to a complainant's trademark. Especially when the new gTLD represents an obvious addition to the relevant Complainant's trademark.
As a result, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trademark, and that the Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples without limitation of how a respondent can demonstrate a right or legitimate interest in a domain name:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is 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 at issue.
The Respondent admitted that the registration of the disputed domain name was made after evaluating its verticality in relation to the related business, measured by the average number of monthly searches for the respective keyword using Internet search engines. However, the high attraction to the disputed domain name was essentially built by consumers looking for the Complainant's businesses, as shown by the Google search provided by the Complainant in Annex 5.
Therefore, in the view of this Panel, the registration of a third party trademark that is very popular in search engines in order to offer it for sale – to the respective rights owner or to anyone else – is not a legitimate noncommercial or fair use of the domain name without intent for commercial gain. Furthermore, this practice may misleadingly divert the Complainant's consumers or tarnish the Complainant's trademark.
Also, the Complainant has not authorized the use of its trademark to the Respondent, and the Panel finds no indication that the Respondent is commonly known by the disputed domain name. Actually, the Respondent has not indicated any other reason to justify why he has chosen the specific term "virginmedia" to compose the disputed domain name, and stated that he is not planning to publish any website at the disputed domain name.
Therefore, the present record provides no evidence to demonstrate the Respondent's intent to use or to make demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Consequently, the Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name, and the Complainant has proven the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances in particular, but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has 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 documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.
When the disputed domain name was registered by the Respondent (in September 2016) the trademarks VIRGIN – and its variations, including VIRGIN MEDIA – was already well-known and directly connected to the Complainant's activities.
The disputed domain name encompasses the trademark VIRGIN MEDIA, together with the gTLD ".shop".
Actually, the Respondent expressly recognizes that before registering domain names he performs an evaluation about its verticality in relation to the related business, measured by the average number of monthly searches for the respective keyword using Internet search engines.
Therefore, the Panel concludes that it would not be feasible to consider that the Respondent – at the time of the registration of the disputed domain name – could not have been aware of the Complainant's trademark, as well as that the adoption of the expression "virginmedia" together with the gTLD extension ".shop" could be a mere coincidence.
Actually, in doing so, the Respondent: (i) creates a likelihood of confusion with the Complainant's trademark; (ii) potentially obtains revenue from this practice; and (iii) deprives the Complainant from selling its products to prospective clients who are clearly looking for the Complainant.
Additionally, when contacted by the Complainant, the Respondent conditioned the transfer of the disputed domain name to the payment of valuable consideration, in excess of documented out-of-pocket costs directly related to the disputed domain name.
The mere fact that a trademark owner has not exercised the preferential registration of his brand as a domain name – under a new gTLD extension – during the Sunrise phase does not preclude the Panel to find bad faith registration and use when it is posthumously registered by a third party.
It is true that presently the disputed domain name does not resolve to any active webpage, but essentially to a website promoting the Registrar's services.
However, UDRP panels have frequently found that the apparent lack of so-called active use of the domain name (passive holding) does not prevent a finding of bad faith. See WIPO Overview 2.0, paragraph 3.2; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; and Polaroid Corporation v. Jay Strommen, WIPO Case No. D2005-1005.
The passive and non-collaborative posture of the Respondent, (a) not presently using the disputed domain name and (b) expressly indicating that he has no intention to use it, certainly cannot be considered to be a bona fide use for the benefit of the Respondent in this Panel's opinion. Such circumstances, including (c) the lack of any plausible interpretation for the registration of the disputed domain name by the Respondent, as well as (d) the request for an amount in excess of documented out-of-pocket costs directly related to the disputed domain name registration, are enough in this Panel's view to characterize bad faith registration and use in the present case.
Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith, and the Complainant has also satisfied the third element 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 <virginmedia.shop> be transferred to the Complainant.
Date: December 22, 2016