WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Willem Sternberg De Beer
Case No. D2017-1851
1. The Parties
Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Stobbs IP Limited, United Kingdom.
Respondent is Willem Sternberg De Beer of Klerksdorp, South Africa.
2. The Domain Name and Registrar
The disputed domain name <virginactiveradio.com> (the “Domain Name”) 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 September 22, 2017. On September 25, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 26, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on September 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 20, 2017.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on November 6, 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
Complainant is the brand owner for the Virgin Group of Companies. The Virgin Group originated in 1970 when Richard Branson began selling music records under the Virgin name and since that date it has expanded into a wide variety of businesses. As a result, the Virgin Group now comprises over 200 companies worldwide operating in 32 countries including throughout Europe and the United States of America.
Complainant owns extensive rights in the VIRGIN Mark, VIRGIN ACTIVE Mark and VIRGIN RADIO Mark (collectively, “the VIRGIN Marks”) including but not limited to U.S. Trademark Registration No. 74,162,592 (registered May 1, 1991 for VIRGIN) and United Kingdom Trademark Registration No. 3,107,227 (registered May 5, 2015 for VIRGIN ACTIVE), and United Kingdom Trademark Registration No. 3,188,359 (registered September 29, 2016 for VIRGIN RADIO). Complainant has built up significant goodwill in the VIRGIN, VIRGIN ACTIVE and VIRGIN RADIO Marks in the United Kingdom and abroad in relation to a wide range of goods and services.
The Domain Name was registered on May 11, 2017.
5. Parties’ Contentions
Attached to the Complaint at Annex 5 is a Witness Statement (“the Statement”) from Emily Hill outlining the very wide-ranging activities of the Virgin Group and the extent of the Group’s operations. The Statement contains information to establish the well-known nature of the VIRGIN Mark and the extent of its use. The Statement shows that the Virgin Mark is commonly used alongside an additional element, for example VIRGIN ATLANTIC, VIRGIN ACTIVE, VIRGIN HOLIDAYS, VIRGIN MEDIA, VIRGIN MOBILE, VIRGIN RADIO, and VIRGIN GAMES. And the Statement contains information to establish the well-known nature of the VIRGIN Marks and the extent of their use.
The Statement chronicles, in part, the following: In 1993, VIRGIN RADIO was launched as the United Kingdom’s first national commercial radio station. In 1999 a network of health clubs, VIRGIN ACTIVE, was launched. In 2001, Virgin announced the creation of a network of VIRGIN FM radio stations throughout Asia under the name VIRGIN RADIO (Asia). In 2001 Virgin Active was launched in South Africa. In 2003, VIRGIN RADIO began broadcasting in Thailand. A second Australian VIRGIN ACTIVE health club in Melbourne followed in May 2009. In 2010, VIRGIN RADIO International launched a Calgary station. In 2014, Virgin Radio International launched its second Virgin branded radio station in Bangkok. In 2014, Virgin Active South Africa opened their very first RED club in Cape Town, a new type of gym designed for those who may be new to gyms and their equipment. That same year, Virgin Active announced that it is to open two new fully “connected’’ health clubs in London in early 2015, and Virgin Active South Africa opened the doors of its new 3000m2 state-of-the-art double storey health club in Ballito.
When VIRGIN is coupled with active and/ or radio it can have no other meaning for the public other than as a reference to Complainant’s brand. Complainant also owns over 4,500 domain names, incorporating the VIRGIN Mark. This is another example of the wide scale use of the VIRGIN Mark in conjunction with an additional element. The Domain Name is identical and confusingly similar to trade marks in which Complainant has rights and the public has become accustomed to seeing VIRGIN.
Respondent has no rights in relation to the VIRGIN ACTIVE and VIRGIN RADIO Marks which form the domain name. Bearing in mind the massive reputation of the VIRGIN, VIRGIN ACTIVE and VIRGIN RADIO Marks, and Complainant’s operations in a wide-range of activities since as early as 1970, there is no believable or realistic reason for registering or using the Domain Name other than to take advantage of Complainant’s rights. Respondent’s use of the Domain Name shows that Respondent is not using it in relation to a bona fide offering of goods and services. Respondent is neither commonly known by, nor does it have trademark registrations, for the VIRGIN Marks or VIRGIN ACTIVE RADIO.
The Domain Name resolves to a parking page stating that “the website is coming soon”. It is not being used in relation to a bona fide offering of goods and services and Respondent is not making legitimate or fair use of the Domain Name. Complainant wrote to Respondent on multiple occasions prior to filing this complaint and received a single response, with Respondent stating that he believed he is the rightful owner of the Domain Name simply because he bought it when it was for sale. He did not provide any genuine reason why has a legitimate interest in the Domain Name when given the chance. It seems more probable that the Domain Name was acquired for the purposes of selling it to Complainant for valuable consideration in excess of his out-of-pocket costs. Given the scale of Complainant’s operation, and the fame of Complainant’s VIRGIN Marks, it is inconceivable that Respondent would not have known about Complainant’s brands before registering the Domain Name. Respondent could have reasonably surmised that the registration would come to Complainant’s attention, and would have hoped that Complainant could be persuaded to purchase the Domain Name from him for more than the out-of-pocket costs of acquiring it. Indeed, Respondent said in his single response that he would sell the Domain Name to Complainant “at a reasonable offer”.
By registering the Domain Name Respondent has also prevented Complainant from reflecting the VIRGIN Marks in a corresponding domain name. Respondent owns 11 other domain names, including <virginactiveradio.za>, evidencing a pattern of registering domain names containing famous trademarks, per 4(b)(ii) of the Policy. In a similar vein, the Domain Name will inevitably attract Internet users looking for Complainant, and divert them to Respondent’s web site. By registering the Domain Name Respondent has created a likelihood of confusion with the VIRGIN Marks by attempting to suggest that his website is in some way connected to Complainant. Internet users who type in the Domain Name will almost certainly be looking for information about Complainant. This confusion is also aimed at disrupting the business of the trademark owner, per 4(b)(iii) of the Policy.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004. Insofar as Respondent has defaulted, it is therefore appropriate to accept the facts asserted by Complainant and to draw adverse inferences of fact against Respondent. Nonetheless, paragraph 4(a) of the Policy requires that Complainant prove each of the three elements set forth therein to obtain an order that the Domain Name should be cancelled or transferred.
A. Identical or Confusingly Similar
It is uncontested that Complainant has established rights in its VIRGIN Marks before Respondent registered the Domain Name. These rights were established by use and through many trademark registrations including the ones set forth above.
The Panel finds that the Domain Name is confusingly similar to the VIRGIN Mark. The Domain Name <virginactiveradio.com> consists of a combination of Complainant’s VIRGIN Mark, VIRGIN ACTIVE Mark and VIRGIN RADIO Mark in their entirety and the generic Top-Level Domain (“gTLD”) suffix “.com”. It is an accepted principle that the addition of suffixes such as “.com”, being a gTLD, is not a distinguishing factor. The confusing similarity derives from the fact that the Domain Name incorporates the well-known VIRGIN Mark with “active” and “radio” which not only reflect businesses that the Complainant is engaged in but also portions of Complainant’s registered VIRGIN ACTIVE and VIRGIN RADIO marks.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
There is no indication that Complainant has licensed or otherwise authorized Respondent to use the VIRGIN Marks for any purpose. This suffices to make a prima facie showing for paragraph 4(a)(ii). See Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261.
Paragraph 4(c) of the Policy sets forth three nonexclusive circumstances which, if found by the Panel to be proved based on its evaluation of all the evidence presented, demonstrate the Respondent’s rights or legitimate interests to the Domain Name. Respondent has provided no such evidence to rebut Complainant’s prima facie showing. For example, there is no evidence that Respondent was commonly known by the VIRGIN Marks or “VIRGIN ACTIVE RADIO”, or that it has trademark registrations for any of them. Furthermore, there is no evidence that Respondent was using or even preparing to use the Domain Name or a name corresponding to the Domain Name before any notice of the dispute in this case in connection with a bona fide offering of goods or services. Rather, the Domain Name resolves to a parking page stating that “the website is coming soon”. Furthermore, Respondent is not making a legitimate noncommercial or fair use of the Domain Names without intent to misleadingly divert consumers. Indeed, Complainant is using a confusingly similar Domain Name so that consumers are likely to be diverted. And, considering that Respondent owns 11 other domain names, including <virginactiveradio.za>, and Respondent offered to sell the Domain Name to complainant, it is likely that Respondent is seeking to profit from registering the Domain Name.
The Panel therefore holds that Complainant has established element (ii) above.
C. Registered and Used in Bad Faith
As mentioned above, there is no evidence of record that Respondent was using or even preparing to use the Domain Name or a name corresponding to the Domain Name before any notice of the dispute in this case in connection with a bona fide offering of goods or services. The VIRGIN Mark is well known around the world, including South Africa, so it is difficult to imagine that Respondent would not have been aware of it when he registered the Domain Name. Further evidence of bad faith registration is that Respondent combined the well-known VIRGIN Mark with portions of two other of Complainant’s registered marks.
Respondent has also been using the Domain Name in bad faith. “Parking” a domain name, as Respondent did here, can constitute bad faith use. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (holding that “passive holding” of the domain name could constitute use of the domain name in bad faith). The Panel has already found that Respondent incorporated in the Domain Name three of Complainant’s registered marks for which Respondent does not have any rights or legitimate interests. Indeed, the international renown of the VIRGIN Mark alone is well established in the record here. Respondent has parked the Domain Name for free without using it and without submitting any evidence whatsoever of any good faith use of or intention to use it. In response to Complainant’s repeated correspondence to Respondent, he failed to provide any genuine reason why he has a legitimate interest in the Domain Name or provide evidence of his good faith use of the Domain Name. This combined with the fact that Respondent owns 11 other domain names, including <virginactiveradio.z>a, and he offered to sell the Domain Name to complainant, leads to the conclusion that Respondent’s holding of the Domain Name constitutes bad faith use.
The Panel therefore holds that Complainant has established element (iii) above.
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 <virginactiveradio.com> be transferred to Complainant.
Harrie R. Samaras
Date: November 15, 2017