WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. ForNames
Case No. D2016-2236
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 ForNames of Manchester, United Kingdom.
2. The Domain Names and Registrar
The disputed domain names <virginmedea.com>, <virginmedis.com>, <virgnimedia.com> and <virgonmedia.com> are registered with Wild West Domains, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 3, 2016. On November 3, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 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.
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 November 8, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 30, 2016.
The Center appointed Debrett G. Lyons as the sole panelist in this matter on December 6, 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 facts relevant to the decision in this case are that:
(1) the Complainant owns the intellectual property rights of a group of companies having diverse operations but all doing business by reference to the trade mark VIRGIN;
(2) the Complainant is the proprietor of an international portfolio of registrations for VIRGIN and VIRGIN – formative trade marks, including VIRGIN MEDIA;
(3) the disputed domain names were registered on the following dates: <virginmedea.com> on January 22, 2007, <virginmedis.com> on February 10, 2007, <virgnimedia.com> on February 13, 2007 and <virgonmedia.com> also on February 13, 2007;
(4) the disputed domain names resolve to websites with content and advertising having no connection with the Complainant; and
(5) there has been no commercial or other relationship between the Parties and the Complainant has not authorized the Respondent to use the trade mark or to register any domain name incorporating the trade mark.
5. Parties' Contentions
The Complainant asserts trade mark rights in VIRGIN and VIRGIN MEDIA by reason of national registration and at common law by way of reputation.
The Complainant alleges that the disputed domain names are either identical or confusingly similar to one or other of these trade marks.
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain names.
The Complainant alleges that the Respondent registered and is using the disputed domain names in bad faith.
The Complainant petitions the Panel to order transfer of the disputed domain names.
The Respondent did not submit a Response to those contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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.
It is the responsibility of the Panel to consider whether the requirements of the Policy have been met, regardless of the fact that the Respondent failed to submit a response. Having considered the Complaint and the available evidence, the Panel finds the following:
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trade mark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to the trade mark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trade mark rights. In this case the Complainant asserts both registered and unregistered (common law) trade mark rights.
It is accepted that a trade mark registered with a national authority is evidence of trade mark rights for the purposes of the Policy.1 The Complainant provides ample evidence of registration of the trade mark VIRGIN, but for reasons which follow the Panel prefers to rely on the Complainant's rights in the trade mark VIRGIN MEDIA.
That trade mark is the subject of, inter alia, United Kingdom Registration Number 3,100,686, registered from August 28, 2015. Whilst this registration postdates the creation dates of the disputed domain names, the relative timing of registration has been held immaterial to the question under paragraph 4(a)(i) of the Policy as to whether or not a complainant has trade mark rights. Accordingly, the Panel accepts that the Complainant has trade mark rights in VIRGIN MEDIA and further references in this discussion to the "trade mark" are to VIRGIN MEDIA.
The generic Top-Level Domain ("gTLD"), ".com", can generally (as it can here) be disregarded for the purposes of comparison2, which resolves in this case to that of the trade mark VIRGIN MEDIA with the following terms: "virginmedea", "virginmedis", "virgnimedia" and "virgonmedia".
The Complainant's assertion is that these are clear examples of so-called "typosquatting". The Complainant states that they are either identical or confusingly similar to the trade mark. The Panel remarks that, even devoid of their gTLDs, none of the disputed domain names is identical to the trade mark3. The Panel further remarks that whilst a claim of typosquatting might be an indicator of bad faith, a typosquatted iteration of a trade mark is not, ipso facto, confusingly similar to that trade mark.
So, whilst there may be room for disagreement as to whether the term "virginmedis" is confusingly similar to VIRGIN, there is in this Panel's assessment no room for disagreement that the term is confusingly similar to VIRGIN MEDIA.
So, too, the Panel finds that the other three disputed domain names are confusingly similar to the trade mark. In all cases, the disputed domain name is an obvious alteration of the trade mark.
The Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has the burden to establish that the Respondent has no rights or legitimate interests in the disputed domain names. Nevertheless, it is well-settled that the Complainant need only make out a prima facie case, after which the onus shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests.4
Notwithstanding the lack of a response to the Complaint, paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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 or service mark at issue."
There is no evidence that the Respondent has trade mark rights in the disputed domain names. The publicly available WhoIs database identifying the Respondent as the registrant does not support any conclusion that the Respondent might be commonly known by any of the disputed domain names. There is no relationship between the Parties, and the Complainant has not authorized the Respondent to use its trade mark. The evidence is that the disputed domain names resolve to webpages with sponsored links to third-party advertisers or otherwise carrying content having no connection with the Complainant's business under the trade mark. That does not indicate a bona fide offering of goods or services, or show a legitimate noncommercial use of the disputed domain names.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, and that the Respondent in failing to reply to the Complainant's contentions has not rebutted such prima facie case.
The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names and so the Complainant has satisfied the second element of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out circumstances which shall be evidence of the registration and use of a domain name in bad faith. They are:
"(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."
Complainant argues that each of those scenarios is applicable. It submits, for example, that paragraph 4(b)(i) applies since the disputed domain names are "for sale at the SEDO website". There is no evidence of that claim and the Panel prefers the more cautious finding that the Respondent's actions fall under paragraph 4(b)(iv). The Panel has already found the disputed domain names to be confusingly similar to the trade mark. The Panel accepts the Complainant's assertion that the Respondent gains commercially from the resultant confusion which brings traffic to the resolving webpages. The Panel finds that, in terms of paragraph 4(b)(iv) of the Policy, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to various online locations by creating a likelihood of confusion with the Complainant's trade mark as to the source or affiliation of those locations. To the extent that the 2015 registration date of the trade mark (which postdates the creation dates of the disputed domain names by a decade) might be thought to have any relevance to paragraph 4(b)(iv), the Panel observes from a sworn statement submitted with the Complaint that the trade mark was first adopted and used by the Complainant in 2007.
Accordingly, the Complainant has satisfied the third and final limb of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules and with the Complainant's request, the Panel orders that the disputed domain names <virginmedea.com>, <virginmedis.com>, <virgnimedia.com> and <virgonmedia.com> be transferred to the Complainant.
Debrett G. Lyons
Date: December 20, 2016
1 See paragraph 1.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
2 Ibid. at paragraph 1.2.
3 Certainly not the VIRGIN trade mark, as seems implicit in the Complainant's submission.