WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Mimoun Bouazani
Case No. D2017-1837
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 Mimoun Bouazani of Utrecht, the Netherlands, self-represented.
2. The Domain Names and Registrars
The disputed domain name <virginshipping.biz> is registered with Realtime Register B.V.
The disputed domain name <virginshipping.com> is registered with Key-Systems GmbH dba domaindiscount24.com.
The disputed domain name <virginshipping.net> is registered with Metaregistrar BV (jointly referred to as the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 21, 2017. On September 22, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 25 and 29, 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").
On October 2, 2017, the Center sent an email in English and Dutch to the Parties regarding the language of the proceedings. On October 3, 2017, the Complainant requested English as the language of the proceedings. On October 3, 2017, the Respondent requested Dutch as the language of the proceedings.
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint in both English and Dutch, and the proceedings commenced on October 5, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2017. The Response was filed with the Center on October 5, 2017.
The Center appointed Christian Schalk, Flip Jan Claude Petillion and Knud Wallberg as panelists in this matter on December 12, 2017. The Panel finds that it was properly constituted. Each member of 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.
The parties disagree on the language of the proceedings. While the Complainant requests that the proceedings shall be in English, the Respondent wishes to have the present proceeding conducted in Dutch language.
4. Factual Background
The Complainant is the brand owner for the Virgin group of companies. The Virgin Group was founded in 1970 when its founder Richard Branson began selling music records under the Virgin name. Since then, it has expanded into a variety of businesses and comprises now over 200 companies operating in 32 European and North American countries. Such businesses comprise among others aviation (e.g., Virgin Atlantic), music, books, retail services for gas and electricity, digital entertainment platforms, hotels and also a trading company. The Virgin Group employs more than 40,000 persons and generates an annual group turnover in excess of GBP 4.6 billion. According to the material brought before the Panel, the Complainant's Virgin brand has been regularly rated in Anglo-Saxon countries as one of the most valuable brands.
Various UDRP panelists have found that the Complainant's trademarks and activities are well known throughout the world (see, for instance, Virgin Enterprises Limited v. Richard Nani, franco Resources plc, WIPO Case No. D2016-0659) and are renowned trademarks that have been registered and used for several decades (see, Virgin Enterprises Limited v. Isabelle Gillard, WIPO Case No. D2015-0244).
The Complainant has more than 1,000 trademark registrations in the term VIRGIN throughout the world that predate the registration of the disputed domain names, for instance:
- European Union trademark No. 001471143 VIRGIN, registered on January 30, 2003 covering goods and services in the International Classes 16, 25, 35 and 42;
- European Union trademark No. 004262093 VIRGIN, registered on March 17, 2006 covering services in the International Classes 35, 36, 37 and 44;
- United States of America ("U.S.") trademark registration No. 1413664, registered on October 14, 1986 covering goods and services in the International Classes 39;
- U.S. trademark registration No. 3913151, registered on February 1, 2011, covering goods and services in the International Classes 35, 44 and 45.
In addition, the Complainant owns several thousand domain names which feature all the term "virgin" either alone or in connection with descriptive elements, such as, for instance, <virgin-travel.info>, <virginenergy.biz> and <virgin-enterprises.com>.
The Respondent registered the disputed domain name <virginshipping.com> on April 22, 2014 and the disputed domain names <virginshipping.biz> and <virginshipping.net> on June 8, 2017. All disputed domain names resolve to the same website. The website shows the picture of a huge containership.
On the top left corner of the website, the term "Virgin Shipping" is written in a prominent manner as a company name. Below is stated "Our Shipping promise made to you by our employees". On the bottom, an address in Mobile, Alabama, USA is mentioned as a contact address. According to this website, the Respondent's company started its business on September 1, 2014.
Immediately after the website has opened, a window pops up for about 20 to 25 seconds and covers the centre of the website. Therein, under the headline "Legal disclaimer" it is written that "Virgin Shipping is in no way connected or linked to Virgin Group or and other Virgin names organization such as Virgin Earth, Virgin Water etc." Furthermore, it is stated that "Virgin Shipping assumes no responsibility for errors or omissions in the contents on this website and it is the responsibility of the internet user to make their own decision about the accuracy, reliability and correctness of the information contained therein." The pop-up window further states that "in no event shall Virgin Shipping be liable for any special, direct, indirect, consequential, or incidental damages or any damages whatsoever, whether in an action of contract, negligence, or other tort, arising out of or in connection with the use of the Service or the contents of the website. Virgin Shipping reserves the right to make additions, deletions or modifications to the contents to its service at any time without prior notice."
At the bottom of the website, the term "Disclaimer" is featured again. When clicking on this word, the same text as in the aforementioned pop-up window appears. This text then continues that "all intellectual property rights, including but not limited to, copyrights, trademark rights and database rights related to the information, text, images, logos, photographs and illustrations on this website and regarding the lay-out and design thereof are the property of Virgin Shipping and/or have been licensed to Virgin Shipping by the owner(s) of those rights."
According to the documents brought before the Panel, a printout of the Dutch chamber of commerce, lists the Respondent's trade names as "Logistics Trader, FSSC Consult and Virgin Shipping". The listed website is "www.logistictrader.com", which resolves to an active website on logistic services among others in the field of shipping and aviation. A commercial registry of the U.S. State of Alabama certifies that the name "virgin shipping LLC" has been reserved for the period of one year (June 8, 2017 to June 8, 2018) by a company called "Logistics Trader, LLC".
5. Parties' Contentions
The Complainant alleges that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant refers in this context to its trademark rights in the term VIRGIN and states that the addition of the term "shipping" to the disputed domain names adds nothing from a brand perspective and is entirely in keeping with the Complainant's brand style.
The Complainant contends further that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant refers to its massive reputation of the VIRGIN brand in a wide range of activities since as early as 1970 and argues that there is no believable or realistic reason for registration or use of the domain name other than to take advantage of the Complainant's rights. The Complainant states further that that it does not believe that "Virgin Shipping" is an active company. The Complainant contends that an independent investigation revealed that the images used on the website to which the disputed domain names resolve have been plagiarised from other websites, are not illustrative of the supposed activities of "Virgin Shipping" and that no financial information or trading figures could be uncovered in order to demonstrate that the Respondent's company is active. Therefore, the Complainant believes that the Respondent is not making legitimate or fair use of the disputed domain names.
The Complainant alleges further that the disputed domain names were registered and are being used in bad faith. The Complainant reports that a client brought the disputed domain name <virginshipping.biz> to the Complainant's attention. An independent investigation commissioned by the Complainant then uncovered the other disputed domain names, which are also registered by the Respondent. According to this investigation, "Virgin Shipping" is not an active company, and therefore, the Respondent does not have legitimate interest in the disputed domain names and registered and is using them in bad faith.
The Complainant believes that the disputed domain names were acquired for the purpose of selling them to the Complainant for valuable excess of the Respondent's out-of-pocket costs of acquiring the disputed domain names. The Complainant is convinced that given the scale of the Complainant's operation and the fame of its VIRGIN brand, it is inconceivable that the Respondent would not have known about the Complainant prior registering the disputed domain names. The Complainant submits that the Respondent could have reasonably surmised that the registrations would come to the Complainant's attention and presumably hoped that the Complainant could be persuaded to purchase the disputed domain names for more than the out-of-pocket costs of acquiring the disputed domain names.
The Complainant states further that by registering the disputed domain names, the Respondent has also prevented the owner of the VIRGIN marks from reflecting the marks in a corresponding domain name. The Complainant further asserts that the Respondent has displayed a pattern of such conduct as he owns several other domain names featuring the Complainant's VIRGIN mark, such as <virginshipping.at>, <virginshipping.ca>, <virginshipping.fr>, <virginshipping.ch>, <virginshipping.it> and <virginshipping.ma>.
The Complainant fears further that the disputed domain names will also attract Internet users looking for the Complainant's services and divert them to the Respondent's website instead. The Complainant concludes that by registering the disputed domain names, the Respondent has created a likelihood of confusion with the Complainant's trademarks. Internet users who type in any of the disputed domain names would believe that they will find information regarding the Complainant and that such behaviour is also aimed at disrupting the business of the Complainant as the owner of the VIRGIN mark.
The Respondent describes his company as a (freight) forwarder, which provides ocean transport services using its registered container VIRU234579-3. This container is specifically designed to transport MRI machines, for which the helium in the MRI machine is "kept cold", preventing loss/evaporation of helium. The Respondent continues that the service of his company is very specific and in no way identical or confusingly similar to the services provided by the Virgin Group to the direct consumer. The Respondent underlines that he has an interest in retaining his company/trade name, which is also registered with the Dutch chamber of commerce and with the chamber of commerce of the state of Alabama in the U.S. The Respondent argues that this trade name doesn't provide any added value to Virgin Group, as it solely delivers to the consumer and is not known as an ocean shipping company. The Respondent then asks how his use of the name "Virgin Shipping" could affect the Complainant's brands' reputation. The Respondent states further that his company has obtained a license from the U.S. Federal Maritime Commission, a bond and worldwide liability insurance, and that his company is a member of FIATA and of TIA and has contracts with the world's largest shipping companies, such as MAERKS, MSC and CMA-CGM.
6. Discussion and Findings
A. Language of the Proceedings
The Panel decides that the language of the proceeding to be in English for the following reasons.
(a) Paragraph 11(a) of the Rules provides that "unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding". The Registrar confirmed that the language of the registration agreement is Dutch.
(b) Paragraph 10(c) of the Rules provides that "[T]he Panel shall ensure that the administrative proceeding takes place with due expedition." As noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM, WIPO Case No. D2006-0334).
(c) In deciding whether to allow the proceedings to be conducted in a language other than the language of the Registration Agreement, and to require the Respondent to translate the Response into English language, the Panel must have regard to all "the relevant circumstances". The factors that the Panel should take into consideration include whether the Respondent is able to understand and effectively communicate in the language in which the Complaint has been filed and would suffer no real prejudice, and whether the expenses of requiring translation and the delay in the proceedings can be avoided without at the same time causing injustice to the parties (see, SWX Swiss Exchange v. SWX Financial LTD, WIPO Case No. D2008-0400).
(d) In the case at issue, this Panel considers that conducting the proceedings in English would not be disadvantageous to the Respondent, since it results from the Complainant's undisputed allegations that the Respondent has demonstrated an ability to understand and communicate with its potential customers in English. All disputed domain names are composed by terms of English language. Furthermore, the website to which the disputed domain names resolve is also in English. Also, an invoice presented by the Respondent is in English. In addition, the Response form has been filled out by the Respondent in English except Section B where the Respondent has replied in Dutch to the statements and allegations made in the Complaint. According to the case file, the Respondent sent email communications to the Center in Dutch on October 6, 9, 16 and 23. For all these reasons, the Panel believes that the Respondent has sufficient knowledge to follow and to contribute to the proceedings in English.
B. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights in the trademark VIRGIN. The term VIRGIN is a registered trademark of the Complainant for a variety of goods and services in most countries of the world. It has acquired a very high degree of distinctiveness and even notoriety through intensive use throughout decades. Therefore, the disputed domain name is nearly identical to the Complainant's VIRGIN trademark.
As it has been decided by previous UDRP panels, incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see, for instance, Yahoo! Inc. v. Blue Q Ltd., Romain Barissat, WIPO Case No. D2011-0702; Casa Editorial El Tiempo, S.A. v. Montanya Ltd, WIPO Case No. D2009-0103; Todito.com, S.A. de C.V. v. Francisco Gómez Ceballos, WIPO Case No. D2002-0717; Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615; Compagnie Générale des Etablissement MICHELIN v. Lost in Space, SA, WIPO Case No. D2002-0504; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; and EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047). All disputed domain names feature the VIRGIN trademark in its entirety.
Furthermore, in accordance with many decisions rendered under the Policy, the addition of descriptive terms or numbers to a trademark is generally not a distinguishing feature (see, Bellsouth Intellectual Property Corporation v. Freeworld and/or Luis, WIPO Case No. D2000-1807; Bellsouth Intellectual Property Corporation v. Henry Chan, WIPO Case No. D2004-0550; Canon U.S.A. Inc., Astro Business Solutions, Inc. and Canon Information Systems, Inc. v. Richard Sims, WIPO Case No. D2000-0819; Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0565; Aventis, Aventis Pharma SA. v. John Smith, WIPO Case No. D2004-0624; and Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002).
As far as the disputed domain names are concerned, the word "shipping" is a common word in the English language. Therefore, the word "shipping" does not avoid a finding of confusing similarity to the Complainant's trademark. The only distinctive element of the disputed domain name consists of the term "virgin", which is identical to the Complainants' trademark.
Furthermore, the generic Top-Level Domain ("gTLD") suffixes ".com", ".biz" and ".net" in the disputed domain names do not affect the determination that the disputed domain names are almost identical to the Complainant's trademark VIRGIN in which the Complainant has rights (see also Compagnie Générale des Etablissements Michelin v. Trendimg, WIPO Case No. D2010-0484; Köstrizer Schwarzbierbrauerei v. Macros-Telekom Corp., WIPO Case No. D2001-0936; and Laboratoire Pharmafarm (SAS) v. M. Sivaramakrishan, WIPO Case No. D2001-0615 and cases cited therein). It is well-established that gTLD suffixes such as ".com", ".biz" and ".net" may be disregarded for the purposes of assessing identity or confusing similarity. Where a domain name incorporates complainant's mark, this is sufficient to establish that the domain name is identical or confusingly similar for purposes of the Policy. See, Sportsdirect.com Retail Limited v. Nicole Missell and Dreamless Brand, WIPO Case No. D2015-1946 andKabushiki Kaisha Hitachi Seisakusho (d/b/a Hitachi Ltd) v. Arthur Wrangle, WIPO Case No. D2005-1105.
For all these reasons, the Panel finds that the Complainant has fulfilled the first element under paragraph 4(a) of the Policy.
C. Rights or Legitimate Interests
The Respondent is not known under the term VIRGIN nor has the Complainant granted a license to the Respondent to use reflect his VIRGIN trademark in the disputed domain names, nor on the Respondent's website. Neither has the Respondent brought forward evidence of any rights in the term "virgin".
Furthermore, the Respondent has not rebutted the Complainant's allegations that the images used on the website to which the disputed domain names resolve have been plagiarised from other websites and are thus not illustrative of the supposed activities of "Virgin Shipping".
On the invoice of October 5, 2017 which the Respondent has presented before the Panel, all its content is written in the same font. Only the name of the Respondent's company is written in a different font. Furthermore, the name is not complete since it mentions only "VIRGIN SHIPPING" without identification of the type of legal entity (LLC) (Virgin Shipping LLC). This is at least very unusual.
Moreover, the Respondent has not rebutted to the Complainant's allegations that the Respondent owns several other domain names featuring the Complainant's VIRGIN mark, such as <virginshipping.at>, <virginshipping.ca>, <virginshipping.fr>, <virginshipping.ch>, <virginshipping.it> and <virginshipping.ma>.
All this leads the Panel to the conclusion that the Respondent must have been aware of the Complainant when it registered the disputed domain names. The Respondent did this although he had already an active domain name to which another website resolves, namely <logistictrader.com> according to the extract of the Dutch chamber of commerce. Therefore, the Panel believes that the only reason why the Respondent has chosen the VIRGIN brand to be part of disputed domain names was that the Respondent wanted to create an impression of an association with the Complainant (see also: Telstra Corporation Limited v. Nuclear Marshmallows, supra) and to attract Internet users for commercial gains to the websites to which the disputed domain names resolve. The Complainant has activities in many fields of business. For instance, the Complainant is very active in the field of aviation. Therefore, Internet users searching for the Complainant's services could assume that also maritime transport services may be part of the Complainant's activities or that the Respondent is somehow associated with the Complainant.
For all these reasons, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name and therefore, the requirement of paragraph 4(a)(ii) of the Policy is met.
D. Registered and Used in Bad Faith
The Complainant contends that the Respondent registered and is using the disputed domain names in bad faith. The Policy, paragraph 4(b) sets forth four non-exclusive circumstances, which evidence bad faith registration and use of a domain name:
(i) circumstances indicating that the Respondent has registered or has acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registrations to the Complainant who is owner of the trademark or service mark or to a competitor of the 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 disputed domain names 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 disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, 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 its website or location or of a product or service on its website or location.
It is a principle considered under prior UDRP decisions (see, for instance, Carolina Herrera, Ltd. v. Alberto Rincon Garcia, WIPO Case No. D2002-0806; Six Continents Hotels, Inc. v. Seweryn Nowak, WIPO Case No. D2003-0022) and under the paragraph 2 of the Policy, that a domain name registrant represents and warrants to the concerned registrar that to its knowledge, the registration of the disputed domain names will not infringe the rights of any third party.
The Panel finds that the Respondent must have been aware of the Complainant's trademark and its products when it registered the disputed domain names. The Panel's own searches in search engines such as Google revealed on its first pages only hits related to the Complainant and its different business activities. Furthermore, the existence of the disclaimer is also evidence of the Respondent's awareness of the Complainant's rights in the VIRGIN mark and consequent bad faith at the time of registration of the disputed domain names (see IKEA Systems B.V. v. James Acosta, WIPO Case No. D2013-2245). Therefore, the Panel is convinced that the Respondent was aware of the Complainant when it registered the disputed domain name.
The Panel finds that the Respondent is using the disputed domain name in bad faith.
Even if Internet users become aware that the website at the disputed domain names is not such of the Complainant, the Respondent will nonetheless have achieved commercial gain in the form of a business opportunity. Furthermore, Internet users interested in services in the field of maritime transport may have reached the Respondent's website only because of the fact that the Respondent reflected the Complainant's VIRGIN mark in the disputed domain names.
Therefore, the Panel is convinced that the main reason of the registrations and use of the disputed domain names by the Respondent are, to intentionally attract, for commercial gain, Internet 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. The fact that the Respondent registered not only the disputed domain name <virginshipping.com> but also the same term under the gTLDs ".biz" and ".net" is also evidence of its desire to divert as many potential internet users as possible towards its complaint sites (see also Bridgestone Firestone Inc. v. Jack Myers, WIPO Case No. D2000-0190).
The Respondent has posted a disclaimer on the website to which the disputed domain names resolve. In some particular circumstances, especially if it is sufficiently clear and prominent, a disclaimer may sometimes be found to support other factors indicating good faith or legitimate interests (see, LEGO Juris A/S v. Andrew Orr, WIPO Case No. D2015-1311).
However, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 3.7 states: "In cases where the respondent appears to otherwise have a right or legitimate interest in a disputed domain name, a clear and sufficiently prominent disclaimer would lend support to circumstances suggesting its good faith. For example, where a respondent is legitimately providing goods or services related to the complainant's mark only (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903), the presence of a clear and sufficiently prominent disclaimer can support a finding that the respondent has undertaken reasonable steps to avoid unfairly passing itself off as related to the complainant, or to otherwise confuse users.
On the other hand, where the overall circumstances of a case point to the respondent's bad faith, the mere existence of a disclaimer cannot cure such bad faith. In such cases, UDRP panels may consider the respondent's use of a disclaimer as an admission by the respondent that users may be confused."
The Panel finds that given the overall circumstances, it is evident that the Respondent was aware of the Complainant and its VIRGIN trademark. The fact that the website displays a pop-up disclaimer does not alter the Panel's view that the Respondent registered the disputed domain names to profit from the Complainant's fame and investments in the VIRGIN brand.
Given all facts and circumstances of this case, the Panel finds therefore, that the disputed domain names have been registered and used 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 <virginshipping.biz>, <virginshipping.com> and <virginshipping.net> be transferred to the Complainant.
Date: December 18, 2017