WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. WhoisGuard, Inc. / Luis Alberto Laichter
Case No. D2016-2177
1. The Parties
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.
Respondent is WhoisGuard, Inc. of Panama, Panama / Luis Alberto Laichter of Buenos Aires, Argentina.
2. The Domain Names and Registrars
The disputed domain name <virginmedia.online> is registered with GoDaddy.com, LLC and the disputed domain name <virginmedia.site> is registered with NameCheap, Inc. (collectively, the "Registrars").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 27, 2016. On October 27, 2016, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On October 27 and 31, 2016, the Registrars transmitted by email to the Center their verification responses confirming that Respondent is listed as the registrant and providing the contact details.
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 Respondent of the Complaint, and the proceedings commenced on November 9, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 29, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 30, 2016.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on December 14, 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
Complainant is the brand owner of the Virgin Group, which originated in 1970. Initially, the Virgin name was used to sell music records. Now, there are over 300 Virgin-branded companies—with a customer base of 74,078,370 (as of 2013)—operating in 50 countries, covering a wide variety of businesses, and employing over 64,000 people. During its years of use, the Virgin brand has acquired a strong, global reputation.
Complainant is the owner of the trademark registrations for the VIRGIN and VIRGIN MEDIA marks, among others. The VIRGIN mark was first registered on April 11, 1973, and the VIRGIN MEDIA mark was registered on May 18, 2007. Virgin Media, which offers television, broadband Internet, and phone services, was launched in 2007. In addition to the domain name <virginmedia.com> (registered on February 27, 1999), Complainant owns a variety of other domain names incorporating the VIRGIN mark, including <virgin.com>; <virginonline.com>; <virgin-voice.com>; and <virgin-radio.com>.
The disputed domain name <virginmedia.online> was registered on October 13, 2015, and expires on October 13, 2017. The disputed domain name <virginmedia.site> was registered on November 2, 2015, and expires on November 2, 2017. In Complainant's correspondence with Respondent Luis Alberto Laichter's representative, Laicher, to whom the <virginmedia.online> domain name is registered, also directed the registration of the domain name <virginmedia.site> to Respondent WhoisGuard, Inc.
The disputed domain name <virginmedia.site> was the subject of a December 15, 2015 URS default determination that resulted in the suspension of the site for the duration of the registration.
5. Parties' Contentions
Complainant alleges that the disputed domain names are confusingly similar to its VIRGIN and VIRGIN MEDIA marks because the disputed domain names incorporate the VIRGIN mark fully, the public is used to seeing the word "Virgin" in conjunction with the word "Media" on account of Complainant's famous Virgin Media business, and Virgin coupled with Media has only one meaning to the public—a reference to Complainant's business.
According to Complainant, Respondent has no rights or legitimate interests in the disputed domain names as, in view of the reputation of the VIRGIN and VIRGIN MEDIA brands, Respondent could have had no legitimate reason to register the disputed domain names. Complainant asserts that Respondent is not commonly known by the VIRGIN or VIRGIN MEDIA marks, have no trademark registrations in those marks, and that Respondent is the owner of 82 other domain names. Moreover, Complainant contends that <virginmedia.online> is not being used for a bona fide offering of goods or services and that Respondent's lack of legitimate interest in <virginmedia.site> is evidenced by a URS decision that has resulted in the suspension of the site.
Complainant submits that Respondent registered and is using the disputed domain names in bad faith because (1) Respondent has attempted to sell the domain name to Virgin Media; (2) the domain name <virginmedia.online> is currently on sale for USD 600; (3) Respondent notified Complainant that he had registered the disputed domain name <virginmedia.site>; (4) Respondent's registration of two domain names incorporating VIRGIN MEDIA shows a pattern of bad behavior; and (5) Internet users only reach the disputed domain name sites because they incorporate the VIRGIN MEDIA mark in its entirety.
Respondent did not respond to Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the VIRGIN and VIRGIN MEDIA marks in view of its trademark registrations. These marks are recognizable in the disputed domain names, which, in relevant part, are nearly identical to Complainant's registered VIRGIN MEDIA trademark. The Panel further finds that the whole of the disputed domain names are confusingly similar to the VIRGIN MEDIA mark as they incorporate the trademark fully and as the addition of the ".online" or the ".site" generic Top-Level Domain does nothing to ameliorate the entire reproduction of the VIRGIN MEDIA trademark.
Accordingly, the Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy with respect to both of the disputed domain names.
B. Rights or Legitimate Interests
The evidence of record establishes that Complainant has not authorized or licensed Respondent to use its VIRGIN or VIRGIN MEDIA trademarks or apply for or use any domain names incorporating those marks. Complainant had rights in the VIRGIN and VIRGIN MEDIA trademarks long before Respondent registered the disputed domain names. Considering the global reach of the various Virgin-branded companies and the worldwide popularity of the Virgin brand, an individual would not choose to use the word "Virgin" in conjunction with the word "media" unless seeking to create an impression of an association with Complainant. This establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names and shifts the burden to Respondent to indicate that it has a right to or a legitimate interest in the disputed domain names. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
Respondent provides no evidence in rebuttal of the prima facie case.
Accordingly, the Panel finds that Complainant has carried its burden and satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that the disputed domain names were registered in bad faith. Complainant's VIRGIN mark has been registered since 1973 and the VIRGIN MEDIA mark has been registered since 2007. In view of Complainant's numerous trademark registrations in the word "VIRGIN" and in the word "VIRGIN" in conjunction with another word as well as the worldwide reputation and presence of various Virgin-branded companies, it is not plausible that Respondent was unaware of Complainant's marks and its rights in those marks when it sought to register the disputed domain names. For the same reasons and also as there is no indication that Respondent conduct any legitimate business activity pertaining to the media industry, there can be no plausible circumstance requiring Respondent to legitimately use <virginmedia.online> and <virginmedia.site>. Telstra Corp. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
With regard to <virginmedia.online>, the Panel finds that this domain name was being used in bad faith. Complainant represents that Respondent Laichter had previously offered to sell this domain name to Virgin Media and that, before it was locked down, the site that <virginmedia.online> resolved to offered the disputed domain name for sale to the public for USD 600. Respondent Laichter's offer to sell <virginmedia.online> to Virgin Media is evidence of bad faith use under paragraph 4(b)(i) of the Policy. Additionally, Respondent Laichter's general offer to sell the disputed domain name to the public for USD 600—a sum greater than any out-of-pocket costs related to the disputed domain name—also evidences bad faith use, as Respondent knew or should have known that someone with rights in the VIRGIN MEDIA mark would have an interest in the domain name. CEAT Ltd. v. Vertical Axis Inc., WIPO Case No. D2011-1981 (finding that a general offer to sell evidences bad faith use).
With respect to <virginmedia.site>, the sum of the evidence supports a finding of bad faith use. Complainant's various trademarks incorporating the VIRGIN mark have a strong reputation worldwide, as evidenced by the international reach of the Virgin Group. Respondent has provided no evidence of any actual or contemplated good faith use by it of the disputed domain name even after the URS suspension, an event that would have motivated a good faith user to marshal and present evidence. Respondent registered more than one domain name incorporating the VIRGIN MEDIA mark and, in fact, proactively notified Complainant of the fact that it had registered <virginmedia.site>. On the whole, there appears to be no plausible explanation or basis for a legitimate, actual or contemplated, active use of the disputed domain name by Respondent. As such, the Panel finds bad faith use.
Thus, the Panel finds that Complainant has carried its burden and satisfied paragraph 4(a)(iii) of the Policy with respect to the disputed domain names, <virginmedia.online> and <virginmedia.site>.
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, <virginmedia.online> and <virginmedia.site>, be transferred to Complainant.
Lawrence K. Nodine
Date: December 28, 2016