WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Adnan Mohammad / Registration Private, Domains By Proxy, LLC
Case No. D2016-2472
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 Adnan Mohammad of Dubai, United Arab Emirates / Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <virginmobile.store> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 6, 2016. On December 7, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 8, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 9, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on December 14, 2016.
The Center verified that the Complaint together with the amendment to 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 proceeding commenced on December 16, 2016. In accordance with the Rules, paragraph 5, the due date for Response was January 5, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2017.
The Center appointed Lynda M. Braun as the sole panelist in this matter on January 23, 2017. 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 of the Virgin Group, which originated in 1970. Initially, the Virgin name was used to sell music records. Now, there are over 200 Virgin-branded companies - with a customer base of over 75,000,000 operating in 32 countries, covering a wide variety of businesses, and employing over 40,000 people. During its many years of use, the Virgin brand has acquired a strong, global reputation. The Complainant launched its Virgin Mobile Telecom business in November 1998.
The Complainant is the owner of hundreds of trademark registrations for the VIRGIN and VIRGIN MOBILE trademarks, among others, in numerous countries worldwide, including, but not limited to, the United States, the United Kingdom and the United Arab Emirates (the “VIRGIN MOBILE Mark”), where the Respondent resides. Specifically, in the United Arab Emirates, the Complainant owns Reg. Nos. 169495, 169496 and 169497 in International Classes 9, 35 and 38, respectively. In addition, the Complainant registered the domain name <virginmobile.com> on July 1, 1998, which resolves to the home page of the Complainant’s official website at “www.virginmobile.com”. The Complainant owns 4,500 additional domain names that incorporate the VIRGIN trademark.
The Respondent registered the Disputed Domain Name on June 15, 2016. The Disputed Domain Name consists of the VIRGIN MOBILE Mark in its entirety. The Disputed Domain Name does not resolve to an active website. The Disputed Domain Name resolves to a web page that states: “Website Coming Soon”. The Complainant sent a letter to the Respondent on July 13, 2016 to inform the Respondent of the Complainant’s trademark rights. The Respondent responded, requesting payment of USD 3,000 from the Complainant for the Disputed Domain Name.
5. Parties’ Contentions
In summary, the following are the Complainant’s contentions:
- The Disputed Domain Name is confusingly similar to the Complainant’s trademarks.
- The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
- The Disputed Domain Name was registered and is being used in bad faith.
- The Complainant seeks the transfer of the Disputed Domain Name from the Respondent to the Complainant in accordance with paragraph 4(i) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires that the Complainant prove the following three elements in order to prevail in this proceeding:
(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 was registered and is being used in bad faith.
A. Identical or Confusingly Similar
This element consists of two parts: first, does the Complainant have rights in a relevant trademark or trademarks and, second, is the Disputed Domain Name identical or confusingly similar to that trademark or trademarks.
It is uncontroverted that the Complainant has established rights in the VIRGIN MOBILE Mark based on both longstanding use and its numerous trademark registrations for the VIRGIN MOBILE Mark in the United States, the United Kingdom and in countries worldwide.
The Disputed Domain Name <virginmobile.store> consists of the VIRGIN MOBILE Mark followed by the generic Top-Level Domain (“gTLD”) “.store”. The addition of a gTLD such as “.store” in a domain name is technically required. Thus, it is well established that such element may generally be disregarded when assessing whether a disputed domain name is identical or confusingly similar to a trademark. Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182. The Panel concludes that the Disputed Domain Name is identical to the VIRGIN MOBILE Mark.
Accordingly, the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate Interests
Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied 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.
The Complainant has not authorized, licensed, or otherwise permitted the Respondent to use its VIRGIN MOBILE Mark. The Complainant does not have any type of business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. Instead, the Panel finds that the Respondent was improperly using the Disputed Domain Name for commercial gain and thus, has no rights or legitimate interests in the Disputed Domain Name.
Finally, where a respondent has registered and used a domain name in bad faith (see the discussion below), the respondent cannot be reasonably found to have made a bona fide offering of goods or services.
In this case, the Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Respondent has not submitted any substantive arguments or evidence to rebut the Complainant’s prima facie case.
Accordingly, the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
This Panel finds that, based on the record, the Complainant has demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, bad faith may be found where the Respondent knew or should have known of the registration and use of the VIRGIN MOBILE Mark prior to registering the Disputed Domain Name. See Façonnable SAS v. Names4sale, WIPO Case No. D2001-1365. Such is true in the present case in which the Respondent registered the Disputed Domain Name long after the Complainant first registered and used the VIRGIN MOBILE Mark.
The longstanding and public use of the VIRGIN MOBILE Mark would make it disingenuous for the Respondent to claim that it was unaware that the registration of the Disputed Domain Name would violate the Complainant’s rights. See Expedia, Inc. v. European Travel Network, WIPO Case No. D2000-0137 (finding bad faith where the respondent registered the domain name after the complainant established rights in the complainant’s trademarks). Thus, the timing of the Respondent’s registration of the Disputed Domain Name indicates that it was made in bad faith in these circumstances.
Second, the Respondent’s offer to sell the Disputed Domain Name for valuable consideration in excess of the documented out-of-pocket costs directly related to the Disputed Domain Name is also evidence of the Respondent’s bad faith registration and use under paragraph 4(b) of the Policy. See Eastman Sporto Group LLC v. Jim and Kenny, WIPO Case No. D2009-1688 (finding bad faith when the respondent offered to sell the disputed domain name for an amount in excess of the costs of registration).
Accordingly, the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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 <virginmobile.store> be transferred to the Complainant.
Lynda M. Braun
Date: January 31, 2017