WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. John Palmer
Case No. D2017-0312
1. The Parties
The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Burges Salmon LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is John Palmer of Sale, United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name <virginconstruction.com> (the "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 February 16, 2017. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 17, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent's 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 February 24, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 16, 2017. The Center received an email communication on February 27, 2017, from an individual indicating that he will be the legal representative of the Respondent, but no Response was filed.
The Center appointed Jon Lang as the sole panelist in this matter on March 27, 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 a wholly owned subsidiary of the Virgin Group and owner and manager of the VIRGIN trademarks and brand. It is responsible for the ownership, management, licensing and protection of all trademarks, intellectual property and goodwill in the VIRGIN name, the VIRGIN signature logo and associated marks and get-up. The Complainant first sought registered protection for its Virgin brand in 1973 when an application was made for the trademark VIRGIN, now registered under UK Trade Mark Registration No. 1009534. The Complainant currently has a portfolio of approximately 3,000 trademark applications and registrations in over 150 countries, spanning across the majority of classes of goods and services. The portfolio includes numerous registrations for the VIRGIN name and stylised form of the VIRGIN signature logo, together with many composite marks which include both. By way of (further) example, the Complainant owns European Union Trade Mark No. EU004262093 filed on January 28, 2005 and registered on March 17, 2006, for the word mark VIRGIN for services in classes 35, 36, 37 and 44, which includes "Building construction"; "advisory services relating to development of property"; "advisory services relating to the renovation of property"; "commercial retail property development services"; and "property development".
The VIRGIN brand has been promoted internationally for many years and has acquired substantial goodwill.
The Complainant licences its VIRGIN trademarks to companies within and outside the Virgin Group including, for instance, Virgin Rail Group, Virgin Money, Virgin Media and Virgin Hotels.
The Complainant is also the registered proprietor of over 5,350 domain names either consisting exclusively of the VIRGIN name or in which the VIRGIN name is used in combination with other words and/or numbers e.g. <virgin.com> and <virgin.co.uk>.
In 2010, the Virgin Group announced the launch of Virgin Hotels, a four-star lifestyle hotel brand. The first Virgin Hotel opened in Chicago in January 2015. More are planned in other locations in the United States of America over the next two years and will comprise a mixture of new construction projects and the conversion of existing hotels or office properties.
The Respondent registered the Domain Name on July 3, 2016. The Respondent is the Secretary and Director of a company called "Virgin Construction Ltd" which was incorporated on July 5, 2016.
The Domain Name resolves to a holding page displaying the words "website coming soon! Please check back soon to see if the site is available."
The Complainant wrote to the Respondent in August 2016, requesting undertakings that the Respondent would cease use of the VIRGIN name. No response was received to that letter or a follow up letter sent in September 2016, or letters subsequently sent by the Complainant's external legal advisors. In fact, the only communication in the record which appears to emanate from the Respondent is an email sent by the Respondent on February 26, 2017, to someone who is described as "Legal Counsel", forwarding the Notification of Complaint email he received from WIPO two days earlier. It said, "Hi Marben I have just received this from WIPO so now we know what they want…". That appears to have prompted "Marben" to write to WIPO (as indicated above), by email the next day (February 27, 2017) saying ..
"We acknowledge the emails you sent to my client, regarding copies of the case details pertaining (LS) D2017‑0312 <virginconstruction>.
We note and inform the Honorable Pannel of Arbitrator that I will be the Legal Representative of the Respondent Mr. John Palmer, in this instant proceeding.
We will file the response in the allowed time frame. Any corresponding notifications shall be sent to me cc my client Mr. John Palmer."
Nothing more was heard from or on behalf of the Respondent.
5. Parties' Contentions
The following is a summary of the Complainant's main submissions.
The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Domain Name incorporates the Complainant's VIRGIN mark in full, with the addition of the purely descriptive, non-distinctive word "construction" and the addition of the suffix ".com" (which may be discounted for comparison purposes).
The addition of the generic and purely descriptive word "construction" does not remove the likelihood of confusion between the VIRGIN mark and the Domain Name.
Further, or alternatively, the addition of the word "construction" to the VIRGIN name perpetuates the likelihood of association between the Domain Name and the VIRGIN mark. The dominant feature of the Domain Name is the VIRGIN mark, whilst the word "construction" is descriptive of activities carried out by the Complainant's hotel business.
The Respondent has no rights or legitimate interests in respect of the Domain Name.
The Complainant does not believe that the Respondent can demonstrate any circumstances that would evidence rights to, or legitimate interests in the Domain Name.
The Complainant has not licensed or authorised the Respondent to use its VIRGIN mark.
There is no information to suggest any other legitimate right to use the VIRGIN mark – there is no evidence of any registered trademark owned by the Respondent corresponding to the Domain Name and there is no evidence that the Respondent is using the Domain Name in connection with a bona fide offering of goods or services. In fact, it is not being used to host an active website at all.
The Domain Name was registered and is being used in bad faith
The Complainant asserts that it is reasonable to infer that the Domain Name was acquired by the Respondent for the purpose of unfairly disrupting the business of the Complainant and/or the Virgin Group.
The Respondent has provided no evidence to suggest that it has a legitimate right to use the VIRGIN name. The VIRGIN-branded businesses have been trading since 1970 and it is inconceivable that at the time of registration of the Domain Name on July 3, 2016, the Respondent was unaware of the existence of the Complainant and/or the Virgin Group's extensive reputation. Accordingly, by registering the Domain Name, the Respondent has prevented the Complainant from reflecting the mark in a corresponding domain name in circumstances where it has demonstrated no prima facie right to use the VIRGIN mark and has failed to provide any evidence that it is using, or has undertaken demonstrable preparations to use the Domain Name in connection with a genuine offering of goods and services.
Furthermore, the Complainant believes that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to the Domain Name by creating a likelihood of confusion with the Complainant's VIRGIN mark as to the source, sponsorship, affiliation, or endorsement of the Domain Name. This is particularly so given the rapid expansion of the Virgin Hotels business, which continues to explore hotel construction and development opportunities across the world's major cities.
In all of its new ventures, the Virgin Group relies heavily upon the substantial fame and goodwill in the VIRGIN name to rally support to each new enterprise or market place. The Virgin Group regularly introduces new products where the VIRGIN name is combined with an additional word or words. Sometimes the additional words are descriptive and sometimes they are distinctive sub-brands.
Given the strength of the VIRGIN brand, and the fact that the Domain Name is descriptive of services specifically undertaken by the Complainant, i.e. in relation to expansion of the Virgin Hotels business, there is a strong likelihood that the use of the VIRGIN name together with the word "construction" in the Domain Name will confuse the public into the mistaken belief that the Domain Name is associated with the Complainant.
The fact that the Respondent is not currently using the Domain Name (it is resolving to a holding page as mentioned earlier) does not detract from the assertion that registration and use of the Domain Name is in "bad faith" for the purposes of the Policy.
Save as indicated earlier, the Respondent did not respond to the Complaint.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed.
A. Identical or Confusingly Similar
The Complainant clearly has rights in the VIRGIN trademark.
Ignoring the generic Top-Level Domain ("gTLD") ".com" (as the Panel may do for comparison purposes), the Domain Name comprises the Complainant's VIRGIN trademark, followed by the word "construction". As the VIRGIN trademark and Domain Name are not identical, the issue of confusing similarity must be considered. Under the UDRP, the test for confusing similarity typically involves a comparison, on a visual or aural level, between the trademark and the domain name. To satisfy the test, the trademark to which the domain name is said to be confusingly similar, would generally need to be recognisable as such within the domain name. The addition of common, dictionary, descriptive, or negative terms are usually regarded as insufficient to prevent confusing similarity.
The well-known VIRGIN trademark is clearly recognizable within the Domain Name. The only real issue therefore is whether the word "construction" which follows it, renders the Domain Name something other than confusingly similar (to the VIRGIN mark). In the Panel's view, it does not.
Indeed, given the existence of the Virgin Hotels business, inclusion of the word "construction" in the Domain Name may well enhance the risk of confusing similarity. But even if that is not the case, inclusion of the word "construction" certainly does not preclude a finding of confusing similarity.
Accordingly, the Panel finds that the Domain Name is confusingly similar to the VIRGIN mark for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established.
B. Rights or Legitimate Interests
By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name and, as such, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complaint however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding.
Despite a respondent not having been licensed by or affiliated with a complainant, it might still be able to demonstrate rights or legitimate interests. For instance, a respondent can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers.
The Respondent incorporated Virgin Construction Ltd on July 5, 2016, two days after registration of the Domain Name. There is no evidence to suggest that the Respondent was (or is) commonly known by the Domain Name at the time of registration (or otherwise).
Furthermore, no evidence has been adduced that Virgin Construction Ltd has been in any way active since its incorporation. The fact that the Domain Name resolves to a holding page displaying the words "website coming soon! Please check back soon to see if the site is available",suggests, at least in relation to establishment of an online presence, that not much has been done at all. Even if some activity could be established on the part of Virgin Construction Ltd (or for that matter the Respondent itself) that could be said to constitute use of the Domain Name, such use would have to be without intent for commercial gain to misleadingly divert consumers. The Respondent would likely fail in this regard, as it would likely fail in any attempt to demonstrate fair use.
A respondent can also show that before any notice of dispute, it was using or had made 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. Not much has been done in the way of preparations to establish an online presence, as indicated above, and given the Respondent's lack of engagement in this proceeding, there is no other evidence available which could go to demonstrate use or preparations to use the Domain Name in connection with a bona fide offering of goods or services. In these circumstances, the Panel is entitled to draw an inference that there is nothing much the Respondent could have said to support a position in this regard. In any event, it is unlikely that the Respondent could maintain that it was unaware from the outset that registration of a Domain Name containing such a well-known trademark might spark a dispute. Similarly, it is unlikely that the Respondent could maintain an assertion that any offering of goods or services was bona fide, given the confusing similarity between the Complainant's VIRGIN mark and the Domain Name and the absence of any trading concern apparently connected with the Domain Name until two days after registration of the Domain Name.
There is no evidence before this Panel which suggests that the Respondent has rights or legitimate interests in the Domain Name or that there would be anything inappropriate in a finding that reflects this. Accordingly, this Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
One way a complainant may demonstrate bad faith registration and use is to show that a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant's mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. Another is to show that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor. The Complainant has advanced both propositions in its Complaint. The Respondent has not explained why it registered the Domain Name. We have a clue, in that a company with a name corresponding to the Domain Name was incorporated just after the Domain Name was registered, but we have nothing from the Respondent in this regard. If a UDRP proceeding is commenced in circumstances where a well-known mark (of which a respondent must have been aware) is used in a confusingly similar domain name, it is incumbent on the respondent to come forward with an explanation if it is to avoid or attempt to avoid the risk of an adverse finding. Indeed, a respondent's non-participation is a factor that can be taken into account, along with others, in considering bad faith under the Policy
Paragraph 3.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (Second Edition) poses the question, "Can there be use in bad faith when the domain name is not actively used and the domain name holder has taken no active steps to sell the domain name or contact the trademark holder (passive holding)?". The consensus view on that question is that "panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity. Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration".
In this case, the Respondent chose not to respond to pre-Complaint correspondence sent by and on behalf of the Complainant and (the Panel assumes) chose not to instruct its advisors to represent it in these proceedings (despite early indications that it would). The Respondent also chose not to participate itself. The Respondent did however choose a well-known trademark, VIRGIN to incorporate into a Domain Name rendering such Domain Name confusingly similar to that VIRGIN mark. There is no evidence that the Respondent has any rights or legitimate interests in the Domain Name, despite the incorporation of a company bearing a name corresponding to the Domain Name. For reasons explained earlier and in these circumstances, the Panel finds that, for the purposes of the Policy, there is evidence of both registration and use of the Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <virginconstruction.com> be transferred to the Complainant.
Date: April 10, 2017