WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Ricky Gilbert
Case No. D2017-0812
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 Ricky Gilbert of London, United Kingdom.
2. The Domain Name and Registrar
2.1 The disputed domain name <virginradiopakistan.com> (the "Domain Name") is 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 21, 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 the same date, 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 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2017. The Respondent sent an email to the Center on April 26, 2017. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties of the commencement of the Panel appointment process on May 17, 2017.
3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on May 29, 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
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 United Kingdom 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 Unites 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 trade marks, 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 Union trade mark no 003422193 for the word mark VIRGIN RADIO filed on October 21, 2003, with a registration date of February 22, 2005, in classes 16, 28 and 38.
4.6 The Respondent would appear to be an individual located in the United Kingdom.
4.7 The Domain Name was registered on December 9, 2016. It has since registration been used for a website the home page of which display a logo that is a stylised version of the text "Virgin Radio Pakistan" and appears to display links to various articles. As far as the Panel can tell there is no consistent theme to these articles and who has created them is unclear. The website continues to operate as at the date of this decision.
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 the Domain Name involves the use of the Complainant's marks 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 domain names are used, if at all.
5.4 The Complainant maintains that the use made of the Domain Name does not involve a bona fide offering of goods and services or legitimate or fair use, and that the Respondent does not otherwise have any right or legitimate interest in the Domain Name.
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 Name was (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 commercial gain. In this respect it contends that when it contacted the owner of the Domain Name "they stated they would be willing to transfer the domain for $20k". However, so far as the offer of sale is concerned, no attempt is made to describe when or in what circumstances this offer was made or to provide any supporting evidence in respect of the same.
5.6 The Respondent did not put in a formal Response in these proceedings. However, as has already been mentioned in the Procedural History section of this decision, the Respondent sent an email to the Center on April 26, 2017. That email contained the following statement:
"Still this is my intellectual property and no other party has rights on it .. i own this
property in my country and in use of this... as my country name mentioned with
domain name.... and if they want to purchase it
.... i quoted them the rate ...
No one has right to claim my property...
Without not paying me off
If they think they owe ot they should have bought it from online godady's portal ..
as i did and they should notify godady ....
Kindly reslove this issue and pay me for my property or don't just claim it.. ."
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under the Rules set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
A. Identical or Confusingly Similar
6.3 The Panel accepts that the Domain Name can only be sensibly understood as a combination of the term "Virgin Radio" with the country name "Pakistan" and the ".com", generic Top-Level Domain ("gTLD").
6.4 The Panel also accepts that the most distinctive elements of the Domain Name are the terms "virgin" and/or "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 ".com" gTLD to the Domain Name does not so change or distract from the reading of the preceding terms as to prevent a finding of confusing similarity with those marks.
6.5 Accordingly, the Complainant has made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.6 For the reasons that are set out in the context of bad faith later on in this decision, the Panel has concluded that the Domain Name was registered and has been held with the intention of using the confusing similarity between the name "Virgin Radio Pakistan" that appears in the Domain Name and its associated website and the Complainant's marks to attracting Internet users to that website and with the intention of taking some form of unfair advantage of the Complainant's marks.
6.7 Such use does not provide the Respondent with a right or legitimate interest under the Policy. On the contrary, the use of a domain name in this manner is a positive indication of a lack of rights or legitimate interests.
6.8 Whether there is an actual independent business operating from that website is questionable for reasons that again are addressed later on in this decision. However, even if the Respondent is operating a business under the "Virgin Radio Pakistan" name, it does not matter. The deliberate use of another's mark for a business in order to take advantage of an association with that mark, does not constitute a bona fide offering of goods and services under the Policy (see for example, Financial Industry Regulatory Authority, Inc. v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org / Edward Banis, WIPO Case No. D2016-0434).
6.9 In the circumstances, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.10 The Panel accepts that the terms "Virgin" and "Virgin Radio" are sufficiently well known, at least in the United Kingdom, that the Respondent is likely of have been aware of their association with the Virgin Group at the time that the Domain Name was registered. Further, the term "Virgin Radio" is one that has no obvious use or meaning other than as the name of the radio stations of the Complainant.
6.11 Although the Domain Name has been used by the Respondent for a website presenting news articles, the Panel has its doubts as to whether this is a website of actual independent genuine business or service. The Complainant has somewhat unhelpfully done little more in the Complaint than provide a copy of a partial screenshot of the website operating from the Domain Name and then left the Panel to form its own conclusions as to what this may or may not be. However, the website is still operational as at the date of this decision and is remarkable for its lack of substantive content. If it is being used for an actual independent business or service, it is at best a work in progress.
6.12 Nevertheless whatever the website's status, there is nothing in the content of the website that offers or suggests any innocent explanation for the choice of the name "Virgin Radio Pakistan". In the circumstances, the only sensible conclusion that the Panel can draw is that it was and is the Respondent's intention to take some form of advantage of the association of that name with the Virgin Group of companies and its marks.
6.13 Further, the Panel also accepts that it is more likely than not that the Respondent sought to gain some form of commercial advantage from this association. The Respondent's offer to sell the Domain Name to the Complainant for "$20K" supports that conclusion. The Complainant provides next to no information as to exactly when and in what circumstances this offer was made and no corroborating evidence is provided in this respect. However, the Panel accepts that such an offer was made, in light of the Respondent's email to the Center on April 26, 2017, which appears to expressly confirm that the Respondent "quoted [the Complainant] a rate" for the purchase of the Domain Name.
6.14 Given this, the Panel concludes that this activity fell and falls within the scope of example circumstances indicating bad faith registration and use set out in paragraph 4(b)(iv) of the Policy. Further, even if does not strictly fall within the scope of this paragraph, it is nevertheless clear that the Respondent registered and has used the Domain Name to take some form of unfair advantage of an association with the Complainant's marks.
6.15 That is of itself sufficient to justify a finding of bad faith registration and use. As is recorded in paragraph 3.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0"):
"Given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant's trademark would also satisfy the complainant's burden."
6.16 In the circumstances, the Panel concludes that the Domain Name has been registered and used in bad faith and that the Complainant has satisfied 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 Domain Name, <virginradiopakistan.com>, be transferred to the Complainant.
Matthew S. Harris
Date: May 31, 2017