WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Bhavesh Tank, KUTCH WEB INFO
Case No. D2017-0934
1. The Parties
The Complainant is Virgin Enterprises Limited of London, Territory of the United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Stobbs IP Limited, UK.
The Respondent is Bhavesh Tank, KUTCH WEB INFO of Bhuj, Gujarat, India.
2. The Domain Name and Registrar
The disputed domain name <virginpvcpipe.com> 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 May 9, 2017. On May 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 10, 2017, 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.
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 May 19, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 8, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 9, 2017.
The Center appointed Tobias Zuberbühler as the sole panelist in this matter on July 4, 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 intellectual property holder for the Virgin Group of Companies (the “Virgin Group”). The Virgin Group originated in 1970, when the founder began selling music records under the VIRGIN name, and has since expanded into a wide variety of businesses in the main sectors travel and leisure, telecommunications, music and entertainment, financial services, and health and wellness. Today, the Virgin Group comprises over 200 companies worldwide operating in 32 countries, with a total number of employees of over 40,000 and an annual group turnover in excess of GBP 4.6 billion.
The Complainant has numerous registered trademarks for the term VIRGIN. Those marks are used extensively throughout the world to promote a variety of products and services. The marks are very
well-known around the world.
The Complainant currently licenses its VIRGIN marks to approximately 60 licensees, who generally use the VIRGIN mark in conjunction with an additional word, e.g., VIRGIN ATLANTIC, VIRGIN MEDIA, VIRGIN HOLIDAYS, VIRGIN MOBILE, VIRGIN MONEY and VIRGIN TRAINS. The Complainant is also the owner of over 4,500 domain names incorporating the VIRGIN mark alone or with an additional element.
The disputed domain name <virginpvcpipe.com> was registered on May 18, 2016. The disputed domain name currently resolves to the website of Umiya Poly Plast Industries, an Indian manufacturer and supplier of PVC pipes.
5. Parties’ Contentions
In summary, the Complainant contends the following:
The disputed domain name is identical and confusingly similar to trademarks in which the Complainant has rights and which the public has become accustomed to seeing. The “virgin” element of the disputed domain name stands out the most, and the addition of “pvcpipe” does not assist in avoiding confusion.
The Respondent has no rights or legitimate interest in the disputed domain name. The Respondent is not commonly known by the name VIRGIN or virginpvcpipe. The name of the company using the disputed domain name is Umiya Poly Plastic Industries. The Respondent has no trade mark registrations for VIRGIN nor has it used or prepared to use the disputed domain name in connection with a bona fide offering of goods and services. The only reason the Respondent is using the disputed domain name is to divert traffic to its website, which does not constitute legitimate use.
According to the Complainant, this is a classic example of bad faith registration. Given the scale of the Complainant’s operation and the fame of the VIRGIN brand, the Complainant contends that it is inconceivable that the Respondent would not have known about the Complainant’s marks prior to the registration of the disputed domain name. It is therefore likely that the Respondent has registered the disputed domain name assuming that the Complainant would become aware of the registration and would offer it valuable consideration in return for transferring the disputed domain name. By registering the disputed domain name, the Respondent has also created a likelihood of confusion with the Complainant’s mark, resulting in the attraction of Internet users to the website, with the aim of commercial gain.
The Complainant further states that the circumstances surrounding the case and the manner of use of the disputed domain name could also indicate that the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting its trademark in a corresponding domain name or for the purpose of disrupting the Complainant’s business.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is identical to the Complainant’s registered trademark VIRGIN, with the added element “pvcpipe”. In the case at hand, it is difficult to believe that there is no intended correlation between the disputed domain name and the VIRGIN trademark, because “virgin” is not an adjective commonly associated with PVC pipes.
The fact that the Complainant has an extensive reputation for a series of marks comprising VIRGIN followed by a key word describing a business is likely to create the impression in the minds of Internet users that the website connected to the disputed domain name is in some way related to the Complainant or the Virgin Group.
The Panel thus finds that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights and that the Complainant has fulfilled paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Although the website connected to the disputed domain name is currently used to advertise the products of the company Umiya Poly Plastic Industries, which seems to be a legitimate business manufacturing and selling PVC pipes, this does not, in and of itself, constitute usage in connection with a bona fide offering of goods or services. Although the Respondent may be operating a legitimate business, this does not give it a right to use a domain name which incorporates and is confusingly similar to the Complainant’s trademark. The Respondent was never authorized by the Complainant to use the VIRGIN trademark.
Furthermore, it does not appear that the Respondent is commonly known by the domain name or has any other basis for demonstrating any rights or legitimate interests in the disputed domain name.
In summary, the Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In view of the notoriety of the Complainant’s trademark, the Panel finds it plausible that the Respondent has registered and used the disputed domain name in an attempt to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website or of the products presented on the website, as foreseen in paragraph 4(b)(iv) of the Policy. This conclusion is enforced by the fact that the website itself does not contain any further mention of the term VIRGIN. The only purpose of using this term in the domain name seems to be to attract those customers who might be looking for products associated with the Complainant.
Therefore, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith, thus fulfilling paragraph 4(a)(iii) of the Policy.
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 <virginpvcpipe.com> be transferred to the Complainant.
Date: July 18, 2017