WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Domain Admin, Whois Privacy Corp. / Maddisyn Fernandes, Fernandes Privacy Holdings
Case No. D2017-0853
1. The Parties
The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Stobbs IP Limited, UK.
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, New Providence, United States of America ("US") / Maddisyn Fernandes, Fernandes Privacy Holdings of La Paz, Bolivia (Plurinational State of).
2. The Domain Name and Registrar
The disputed domain name <virginmiedia.com> is registered with Internet Domain Service BS Corp (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 27, 2017. On April 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 2, 2017, 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 May 3, 2017, 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 May 8, 2017.
The Center verified that the Complaint together with the amended 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 May 9, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 29, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 30, 2017.
The Center appointed Knud Wallberg as the sole panelist in this matter on June 21, 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 for the Virgin Group of Companies. The Virgin Group was established in 1970 and now comprises over 200 companies worldwide operating in 32 countries including throughout Europe and the United States of America. The Virgin Group of Companies employs more than 40,000 people and generates an annual turnover in excess of GBP 4.6 billion.
The Complainant is the owner of a vast number of trademark registrations on a global basis consisting of or containing the word element VIRGIN including registrations of the trademark VIRGIN MEDIA.
In addition to the domain names <virgin.com> and <virginmedia.com>, the Complainant owns more than 4,500 other domain names incorporating the Virgin name.
The disputed domain name <virginmiedia.com> was registered on August 24, 2016 and resolves to an active website.
5. Parties' Contentions
The Complainant claims that since "virginmiedia" is the dominant element of the disputed domain name and since this is an obvious misspelling of the Complainant's VIRGIN MEDIA trademark, the disputed domain name is confusingly similar to the Complainant's VIRGIN MEDIA trademark.
The Complainant further claims that the Respondent has no rights or legitimate interests in relation to the disputed domain name. The Respondent's use supports that they are not using it in relation to a bona fide offering of goods and services. The disputed domain name thus resolves to a pay-per-click site from which the domain owner seeks to profit from Internet users mistyping the Complainant's domain name <virginmedia.com>.
Finally, the Complainant claims that the Respondent has registered and uses the disputed domain name in bad faith. Given the scale of the Complainant's operation, and the fame of their VIRGIN and VIRGIN MEDIA brands, it is thus inconceivable that the Respondent would not have known about the Complainant's brands prior to registering the disputed domain name. In addition, the disputed domain name resolves to a pay-per-click site from which the domain owner seeks to profit from Internet users mistyping the Complainant's domain name <virginmedia.com>. Also, the Respondent has been involved in a number of UDRP cases in which they have been instructed to transfer the respective domain names to the Complainant in question, which clearly evidences that the Respondent is engaged in a pattern of registering domain names in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(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.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <virginmiedia.com> is confusingly similar (in the sense of the Policy) to the Complainant's registered trademark VIRGIN MEDIA since it incorporates the said registration in full with the addition of the letter "i". The generic Top-Level Domain ("gTLD") ".com" does not dispel a finding of confusing similarity as it is disregarded under the first element confusing similarity test, see paragraph 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0").
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to the disputed domain name.
B. Rights or Legitimate Interests
It is clear from the facts of the case that the Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
Given the circumstances of this case, and in particular the way that the Respondent has been and is using the disputed domain name the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not produced, and indeed there is no other evidence of the types of circumstances set out in paragraph 4(c) of the Policy that might give rise to rights or legitimate interests in the disputed domain name on the part of the Respondent in these proceedings.
Consequently, the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b) of the Policy provides an example of circumstances which shall be evidence of registration and use in bad faith:
(i) circumstances indicating that the Respondent has registered or has 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 the Respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or
(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service on the Respondent's website or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain name has been registered and is being used in bad faith.
Given the circumstances of the case and in particular the evidence on record of the longstanding use of the Complainant's trademarks VIRGIN and VIRGIN MEDIA, and the distinctive nature of the marks, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant's marks. Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose a domain name which could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain name was registered in bad faith.
Also, the Respondent is at present using the disputed domain name actively for a standard parking page that contains links to the Complainant's official website as well as to websites of possible competitors of the Complainant. It is thus obvious to the Panel that the Respondent is using the disputed domain name in bad faith by intentionally attempting to attract, for commercial gain, web users to its website by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website.
Noting that the disputed domain name incorporates a registered and distinctive trademark, that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name, that the disputed domain name is used for commercial gain, that the Respondent appears to have been the Respondent in a number of previous UDRP cases and considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) and 4(b) of the Policy are also fulfilled in this case.
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 <virginmiedia.com> be transferred to the Complainant.
Date: July 5, 2017