WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Darren Barrett
Case No. D2017-0798
1. The Parties
1.1 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.
1.2 The Respondent is Darren Barrett of Muscat, United Kingdom.
2. The Domain Names and Registrar
2.1 The disputed domain names <virginoman.com>, <virginradiomuscat.com> and <virginradiooman.com> (the "Domain Names") are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 20, 2017. On April 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On the same day, 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.
3.2 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").
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 25, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 16, 2017.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on May 22, 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.
3.5 On May 22, 2107 and in response to an email to the Respondent notifying him of the appointment of the Panel, the Respondent sent an email to the Center that contained the following statement:
"My name is Darren Barrett, I am the holder of the domains listed below, the information is very vague, these were purchased a long time ago and I intend to launch a fan site project on them very soon."
3.6 In correspondence that then followed, the Complainant offered to withdraw its Complaint if the Respondent agreed to transfer the Domain Names to the Complainant. In an email in response sent on May 23, 2017, the Respondent appeared to contend that he had previously offered the Domain Names to the Complainant "at no cost", but now wanted to use them for a fan site. He denied any wrong doing. The Respondent also claimed that the Complaint had been forwarded to him the previous day. The parties engaged in further email communication on May 26, 2017, which the Center was copied on, in which the Respondent asked for the Complaint to be denied.
4. Factual Background
4.1 The Complainant is a company incorporated in England and Wales and is part of the well-known "Virgin Group" of companies.
4.2 The Virgin Group was originally established by its founder and chairman Sir Richard Branson in the UK in 1970, when he started a business selling popular music records by mail order under the "Virgin" name. Since then the Virgin Group has grown significantly in terms of its size, geographic reach and the industries in which it operates.
4.3 The Virgin Group now comprises over 200 companies worldwide operating in 32 countries including throughout Europe and the United States of America. The number of employees employed by the Virgin Group of companies is in excess of 40,000, generating an annual group turnover in excess of GBP 4.6 billion. It is engaged in a wide range of business activities ranging from transportation and travel to mobile telephony, media (including Internet, television and phone services), music (including broadcasting), radio, fitness, financial services and property development.
4.4 One of these businesses operates under the name of "Virgin Radio". Virgin Radio was launched in 1993 as the United Kingdom's first national commercial radio station and in 2001 the Virgin Group announced the creation of a network of radio stations under that brand in Asia. Virgin Radio stations were also subsequently launched in Canada.
4.5 The Complainant is the company within the Virgin Group responsible for the ownership, management, licensing and protection of all trademarks, intellectual property and goodwill in the "Virgin" name. It has a portfolio of a large number of trade mark applications and registrations in numerous countries that either comprise or incorporate the term "Virgin". They include:
(i) International trade mark no 1141309 with a registration date of May 21, 2012 for the word mark VIRGIN in classes 9, 35, 36, 38 and 41, which has proceeded to grant inter alia as a European Union trade mark; and
(ii) European trade mark no 003422193 for the word mark VIRGIN RADIO, filed on October 21, 2003, registered on February 22, 2005, in classes 16, 28 and 38.
4.6 The address the Respondent had provided in respect of two of the Domain Names suggests that he is an individual based in the United Kingdom. It includes, for example, what appears to be a United Kingdom postcode. However, the address also includes "Muscat", which, as far as the Panel is aware, is not the name of any place in the United Kingdom. Further the address given in respect of the third Domain Name appears to be an address in Oman.
4.7 The Domain Names where all registered on April 1, 2016.
4.8 Prior to the filing of the Complaint in these proceedings each of the Domain Names were used to display a holding page for a business using the name "The MediaSite". That holding page displayed the following text:
"SPECIALIST IN PROVIDING UNIQUE MEDIA SOLUTIONS ALL OVER THE WORLD
Information and Advisory Services
The MediaSite consult on broadcasting and digital delivery worldwide, this site has been registered for future use"
4.9 The holding page also contained the following disclaimer at both the top and bottom of the page:
"This website is in NO WAY affiliated with Virgin Radio or any of its companies"
4.10 However, after the Complaint was filed the holding page was changed so that the description of "The MediaSite" was removed and replaced with the following text:
"BRING VIRGIN RADIO TO OMAN
A fansite dedicated to bringing the best station in the world to Oman"
4.11 The following statement was also added to the bottom of the webpage:
"This site has been created as a fansite to the best radio station in the world, VIRGIN RADIO, and we hope one day they open a station in Oman, Since launching in the mid 90's in the UK, VR is KNOWN worldwide for being a music leader, the station in Dubai on 104.4 is the best station in the UAE and we hope that one day it arrives here in Oman".
5. Parties' Contentions
5.1 The Complainant refers to the Virgin business and identifies various marks that incorporate the "Virgin" name, including the two trade marks identified in the Factual Background section of this decision. It claims that these businesses frequently adopt a name which comprise the term "Virgin" in conjunction with another word that is descriptive of the goods or services provided under that name. It also contends that when the words "virgin" and "radio" are used in combination, this can have no meaning for the public other than a reference to the Complainant's brand.
5.2 The Complainant maintains that each of the Domain Names involve the use of the Complainant's mark with a geographical term and as such are confusingly similar to those marks.
5.3 The Complainant claims it is the proprietor of over 4,500 domain names that incorporate the "Virgin" name. However, no description is provided as to how these are used, if at all.
5.4 The Complainant maintains that the use made of the Domain Names does not involve a bona fide offering of goods and services and that the Respondent does not otherwise have any right or legitimate interest in the Domains Names.
5.5 So far as bad faith registration and use is concerned, the Complainant asserts that each of the examples of circumstances indicating bad faith apply in this case, although it primarily contends that the Domain Names were (a) acquired for the purposes of selling it to the Complainant for valuation consideration in excess of their out-of-pocket costs; and/or (b) have been used to attract Internet users to the website operating from the Domain Name for the commercial gain of "The Media-Site". The Complainant also contends that the domain name <themediasite.co.uk> is registered in the name of the Respondent. The Complainant does not directly evidence that contention, although it is notable that the contact email used by the Respondent in respect of two of the Domain Names incorporates the <themediasite.co.uk> domain name.
5.6 The Respondent did not file any formal Response in these proceedings. However, as is recorded in the Procedural History section of this decision, the Respondent has made a number of factual claims as to the reasons for the registration of the Domain Names.
6. Discussion and Findings
6.1 To succeed in these proceedings the Complainant must make out its case in all respects under paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainants have rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names (paragraph 4(a)(ii)); and
(iii) the Domain Names have been registered and are being used in bad faith (paragraph 4(a)(iii)).
6.2 Paragraph 5(f) of the Rules also provides that:
"If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint."
6.3 As has already been recorded in the Procedural History section of this Complaint, the Respondent sent an email to the Center on May 23, 2017 claiming that he had only received a copy of the Complaint the previous day. No explanation for this claim is offered.
6.4 However, it would appear that the Complainant has failed to comply with its procedural obligations under paragraph 3(b)(v) of the Rules to include in a complaint:
"… all information (including any postal and e-mail addresses and telephone and telefax numbers) known to Complainant regarding how to contact Respondent or any representative of Respondent, including contact information based on pre-complaint dealings …"
6.5 In particular, the contact details provided by the Complainant only identify the contact email address and Oman address used by the Respondent in respect of one of the Domain Names in an Annex to the Complaint. Also it is apparent from the Complainant's allegation that the Respondent is also the registrant of the <themediasite.co.uk> domain name, that the Complainant has reviewed the WhoIs details for that domain name. These details (which according to the last update date in the relevant publically available Nominet record, have not changed since January 2017), provide an additional United Kingdom address for the Respondent in Lichfield Staffordshire. Again this is not mentioned in the Complaint.
6.6 Given these procedural oversights, had the Respondent sought extra time to put in a Response in this matter out of time, the Panel might well have been sympathetic. However, the Respondent has made no such request. Further:
(i) it is apparent from the case file that the Center has provided to the Panel that the Center had already noticed that a relevant contact email address was missing from the Complaint and also had forwarded a copy of the Complaint to that address;
(ii) it is also apparent from the case file that due to non-delivery as to one address as invalid, the Center has forwarded a hard copy of the Complaint to one of the geographical addresses recorded in the WhoIs details for the Domain Names;
(iii) it is a respondent's responsibility to ensure that its contact details in respect of a domain name are up to date and accurate. This includes ensuring that the email address used is capable of receiving notifications from a UDRP provider under the UDRP; and
(iv) it is clear from the Respondent's own reply emails that at least some of the correspondence sent to him by the Center safely reached him.
6.7 In the circumstances, the Panel sees no good reason why it should not proceed to issue its decision in this case and will now proceed to do so.
A. Identical or Confusingly Similar
6.8 The Panel accepts that each of the Domain Name can only be sensibly understood as a combination of the terms "virgin" or "virgin radio" in combination with the country name "Oman" or the name of Oman's largest and capital city, "Muscat", and the ".com", generic Top-Level Domain ("gTLD").
6.9 The Panel also accepts that the most distinctive elements of the Domain Names are the terms "virgin" and "virgin radio" and that the Complainant has demonstrated that it is the owner of registered trade mark in these terms. The addition of a geographical term and gTLD to each of the Domain Names does not so change or distract from the preceding terms as to prevent a finding of confusing similarity with those marks.
6.10 Accordingly, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.11 The Panel accepts the Complainant's contention that the Respondent has no right or legitimate interest in any of the Domain Names.
6.12 For the reasons that are discussed in the context of bad faith later on in this decision, the Panel does not accept the Respondent's contention both in email correspondence and on the revised holding pages currently appearing from the Domain Names, that the Domain Names were registered or are being held for use as a fan site for the Complainant's radio stations. On the contrary, the Panel has concluded that the Domain Names were registered and have then been held in order to lead Internet users to web pages promoting the Respondent's "The MediaSite" business by reason of the Domain Names' confusing similarity to the Complainant's mark and business. There is no right or legitimate interest in holding a domain name for such a purpose.
6.13 However, even if the Domain Names were registered for use as a fan site, it would not matter. This is a case where each of the Domain Names takes the form of one of the Complainant's trade marks together with an additional geographical descriptor.
6.14 As is recorded in paragraph 2.7.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0"):
"Where a domain name which is identical to a trademark (i.e., <trademark.tld>) is being used in relation to a genuine noncommercial fan site, panels have tended to find that a general right to operate a fan site (even one that is supportive of the mark owner) does not necessarily extend to registering or using a domain name that is identical to the complainant's trademark, particularly as the domain name may be misunderstood by Internet users as being somehow sponsored or endorsed by the trademark".
"Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner."
6.16 In conducting that assessment, there is a continuum here between additional terms that may say little about impersonation, suggestion or endorsement (or actively suggest an association) and words that point in the other direction. As the WIPO Jurisprudential Overview 3.0 also goes on to state:
"At one end, certain geographic terms (e.g., <trademark-usa.com>, or <trademark.nyc>), or terms with an 'inherent Internet connotation' (e.g., <e-trademark.com>, <buy-trademark.com>, or <trademark.online>) are seen as tending to suggest sponsorship or endorsement by the trademark owner.
At the other extreme, certain critical terms (e.g., <trademarksucks.com>) tend to communicate, prima facie at least, that there is no such affiliation."
6.17 This issue was also explored in some detail by this Panel in Johnson & Johnson v. Ebubekir Ozdogan, WIPO Case No. D2015-1031, which was another case where the domain name took the form of <[trade mark][geographical descriptor].[TLD]>
6.18 Therefore, in the present case, even if there was a genuine intent to use the Domain Names for a fan site, the fact that each of the Domain Names take the form of nothing more than the Complainant's mark and a geographical descriptor means that each of the Domain Names inherently suggest that they belong to or are endorsed by the Complainant. Accordingly the Respondent has no rights or legitimate interests in the same and the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.19 The Panel rejects the claim made by the Respondent in correspondence that the Domain Names have been registered for the purposes of a fan site. First, the Panel gives little credence to a mere assertion in this respect in an email, as opposed to set out in a formal Response endorsed with a statement of truth (as to which see for example, Privatbrauerei Eichbaum GmbH & Co. KG v. Hamit Karaca, WIPO Case No. D2010-0258). Second, if this really were the Respondent's intention, no explanation is offered as to why three domain names were required in this respect. Third, and most importantly, since registration the Domain Names have for the most part not been used for this purpose, but instead to promote a business using the name "The MediaSite". The recent change in the form of web page appearing from the Domain Names appears to the Panel to be an attempt by the Respondent having been faced with the Complaint to create evidence to support an after-the-event excuse for their registration and past use.
6.20 Instead, the Panel accepts the Complainant's claim that that the Domain Names were chosen and used by the Respondent because their association with the Complainant would draw Internet users to web pages that would promote the Respondent's "MediaSite" business. The only credible explanation for the choice of the Domain Names is because of their association with the Complainant's marks and business. There is no obvious use of the term "Virgin Radio" that appears in two of the Domain Names other than one which refers to the Complainant's business and there is no obvious connection between the words in the Domain Names and "The MediaSite". The fact that this is so and that the Respondent knew this to be the case is further demonstrated by (a) the fact that the web pages initially appearing from the Domain Names contained disclaimers expressly referring to the Complainant's business; and (b) the Respondent's own claim that the Domain Names were to be used for a fan site.
6.21 Such use falls squarely within the scope of the example of circumstances evidencing bad faith registration and use set out in paragraph 4(b)(iv) of the Policy. It also does not matter that once Internet users reached the web pages they would realise as a result of the disclaimers or otherwise that the web pages were not operated by or associated with the Complainant. By then the Respondent has already taken unfair advantage of the Complainant's mark to draw Internet users to those web pages.
6.22 The Panel therefore holds that the Domain Names were all registered and used in bad faith.
6.23 For completeness however, the Panel also records that even if it had been prepared to accept the Respondent's explanation for registration of the Domain Names, this is unlikely to have made a difference. In the opinion of the Panel the registration and use of a domain name that inherently impersonates a rights holder in order to draw Internet users either to a criticism or fan site in respect of the rights holders goods or services involves bad faith (as to which see 1066 Housing Association Ltd. v. Mr. D. Morgan, WIPO Case No. D2007-1461).
6.24 Accordingly, the Complainant has made out the requirements of paragraph 4(a)(iii) of the Policy.
7.1 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, <virginoman.com>, <virginradiomuscat.com> and <virginradiooman.com> be transferred to the Complainant.
Matthew S. Harris
Date: May 31, 2017