WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Chris Jones
Case No. D2017-1833
1. The Parties
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.
The Respondent is Chris Jones of Liverpool, United Kingdom.
2. The Domain Names and Registrar
The disputed domain names <virginmediamatesrates.com> and <virginmediaskyswicther.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2017. On September 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 22, 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 October 5, 2017.
On October 10, 2017 the Complainant informed the Center of talks with the Respondent and requested the suspension of the proceedings. The Proceedings were suspended on October 11, 2017. On November 9, 2017 the Center reminded the parties of the expiration of the suspension period on November 10, 2017. The Complainant instructed the Center to reinstitute the Proceedings if no reply was received from the Respondent after November 10, 2017. Accordingly the Proceedings were reinstituted and all dates were recalculated. The new date for the Response was November 28, 2017. No reply was received from the Respondent. On November 30, 2017, the Center sent an email to the Parties informing them that the Center would proceed with the Panel Appointment process.
The Center appointed Gareth Dickson as the sole panelist in this matter on December 12, 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 domain names <virginmediamatesrates.com> and <virginmediaskyswicther.com> were registered on August 31, 2012 and February 5, 2016 respectively. The Respondent has a United Kingdom address and uses an email address within the <virginmedia.com> domain name as its contact details on the WhoIs for each Domain Name.
The Complainant is the registered proprietor of numerous trade mark registrations for VIRGIN, including European Union Trade Mark number 611459, registered on January 26, 1999. Although the Complainant has submitted voluminous background materials discussing the evolution and growth of its business, none of these materials clearly sets out what its trade mark registrations cover. Instead, the evidence is limited to lists of registrations in various jurisdictions and the classes, but not the goods or services, for which they are registered or have been applied for. No United Kingdom registrations are relied on, and no European Union trade mark registrations are identified as covering media services per se. (The Panel would expect that if such registrations exist they would have been expressly relied on, given the prominence of “media” in the Domain Names, and so the Panel has not taken it upon itself to manually review every single trade mark registration listed in thee Complainant’s evidence.)
The Complainant is the registered proprietor of European Union trade mark 13867478 for the word mark VIRGIN MEDIA, applied for on March 23, 2015 and registered on October 14, 2015.
5. Parties’ Contentions
The Complainant contends that it owns “very extensive” registered trade mark rights, “significant” reputation and a “vast amount of goodwill” in the VIRGIN and VIRGIN MEDIA marks in the United Kingdom and abroad. It submits that when VIRGIN is coupled with MEDIA it can have no other meaning for the public than as a reference to the Complainant’s brand. It states that the highest ranked results for searches for “virgin media mates rates” and “virgin media sky swicther [sic]” are sites referring to the Complainant. In its evidence, it states that the Complainant (or a member of the Complainant’s group) launched the Virgin Media service in the United Kingdom in 2007.
The Complainant also argues that there is no believable or realistic reason for the Respondent’s registration or use of the Domain Names, particularly since both Domain Names point to websites stating “Coming soon” and are therefore not being used in relation to the bona fide offering of goods and services nor is the Respondent making legitimate or fair use of the Domain Names.
Finally, the Complainant alleges that there are circumstances which indicate that the Respondent has registered the Domain Names “primarily” for the purposes of transferring them to the Complainant or a competitor for valuable consideration in excess of documented out of pocket costs, and that the Respondent “has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location”. The Complainant asserts that it is inconceivable that the Respondent would not have known about the Complainant’s brands prior to registering the Domain Names.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant bears the burden of proving that:
(i) the Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith.
These criteria are cumulative. The failure of the Complainant to prove any one of them means the Complaint must be denied.
A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights in European Union Trade Marks numbers 611459 and 13867478 for VIRGIN and for VIRGIN MEDIA respectively, as set out above (the “Trade Marks”).
The Panel further accepts that the Domain Names are confusingly similar to the Trade Marks. In both Domain Names, VIRGIN MEDIA is the dominant and distinctive element and what follows in each domain name, that is, “mates rates” and “sky swicther [sic]”, together with the <.com> suffix, does not distinguish either Domain Name in any way from the Complainant’s VIRGIN MEDIA trade mark.
The Panel therefore accepts that the Domain Names are confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Panel accepts that the Respondent has no rights or legitimate interests in respect of the Domain Names. The Respondent has had ample opportunity to put the Domain Names to use, or at least to be able to show that he is making demonstrable preparations to use them, but he has not done so. In the absence of such evidence and in the face of the Respondent’s knowledge of the Complainant’s VIRGIN MEDIA brand, the Panel must conclude that no such rights or legitimate interests exist.
C. Registered and Used in Bad Faith
Although the Panel notes that the Complainant’s VIRGIN MEDIA trade mark post-dates the registration of the domain name <virginmediamatesrates.com>, it is satisfied that the Complainant has had unregistered rights in VIRGIN MEDIA in the United Kingdom, where the Respondent resides, since the Virgin Media service was launched in 2007. The Panel finds that the Respondent knew about those rights when registering the Domain Names, not least because the Respondent uses a <virginmedia.com> email address in his WHOIS contact details for both Domain Names.
The Complainant has not substantiated either its claim that the Respondent registered the Domain Names for the purposes of transferring it to the Complainant or a competitor for valuable consideration in excess of documented out of pocket costs or its allegation that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location. Nonetheless, given the Respondent’s knowledge of the Complainant’s rights in VIRGIN MEDIA when he registered the Domain Names and the apparent lack of any rights or legitimate interests in doing so, the Panel finds that the Domain Names were registered in bad faith.
The Panel also finds that the Domain Names are being used in bad faith. Given that the Trade Marks and the Domain Names are confusingly similar, their use by the Respondent to direct Internet users to an unhelpful holding page (seemingly having done so for several years), is a clear misappropriation of the Complainant’s VIRGIN MEDIA mark within the Domain Names and therefore amounts to use of the Domain Names 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 disputed domain names <virginmediamatesrates.com> and <virginmediaskyswicther.com> be transferred to the Complainant.
Date: December 28, 2017<