WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Giannis Karanikolas, Karanikolas Ioannis
Case No. D2017-2290
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 Giannis Karanikolas, Karanikolas Ioannis of Athens, Greece.
2. The Domain Name and Registrar
The disputed domain name is <virgin1045.com> which is registered with Papaki Ltd (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 20, 2017. On November 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 21, 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. In response to a notification by the Center that the Complaint was administratively deficient, Complainant filed an amended Complaint on November 22, 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 Respondent of the Complaint, and the proceedings commenced on November 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 18, 2017. Respondent did not submit any response by the specified due date. Accordingly, the Center notified Respondent's default on December 20, 2017. An email communication from Respondent's email address was received by the Center on December 21, 2017.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on January 8, 2018. This Panel finds that it was properly constituted. This 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.
On January 12, 2018, the Center communicated to the parties of Procedural Order No. 1 issued by the Panel, requesting copies of the Complainant's relied-upon VIRGIN trademark registrations, a translation into English of Greek domain name decisions annexed by the Complainant, evidence supporting the Complainant's assertions regarding the Respondent's pattern of conduct; and evidence on the recognition and use of the Complainant's trademark in Greece. In such Procedural Order this Panel set forth January 30, 2018, as the deadline to forward his decision to the Center. On January 17, 2018, Complainant filed with the Center its reply to such Procedural Order. Respondent did not submit any reply to such Procedural Order.
4. Factual Background
Complainant has rights over the VIRGIN trademark for which it holds, among others, registration No. 000628487 with the European Union Intellectual Property Office, registered on December 21, 1999, in classes 18 and 25, and registration No. 113420 with the Trademark Office of Greece, registered on February 19, 1996, in class 39.
Complainant also has rights over the VIRGIN RADIO trademark for which it holds registration No. 014109185 with the European Union Intellectual Property Office, registered on December 8, 2015, in classes 9, 35, 36, 38, 41 and 42.
The disputed domain name was registered on March 31, 2017. At the time the Complaint was filed, the web site associated to the disputed domain name showed headings with the terms "Virgin Greece", "Live Stream" and "Videoclips", among others.
5. Parties' Contentions
Complainant's assertions may be summarized as follows.
Complainant is the brand owner for the Virgin group of companies. The Virgin group originated in 1970 as a mail order company specialising in popular music records and since that date it has expanded into a wide variety of businesses focusing on 5 main sectors: travel and leisure, telecommunications, music and entertainment, financial services, and health and wellness. As a result, the Virgin group now comprises over 200 companies worldwide operating in 32 countries. The Virgin group of companies has over 40,000 employees generating an annual turnover in excess of GBP 4.6 billion. Virgin Radio was launched in 1993 as the United Kingdom's first national commercial radio station. Virgin Radio UK was relaunched in March 2016. Virgin Radio International's global portfolio covers 8 countries and has 19 million listeners.
Complainant has a significant reputation and has built up a vast amount of goodwill in the VIRGIN trademark in the United Kingdom and abroad in relation to a wide range of goods and services. The VIRGIN brand is commonly used alongside an additional element, for example VIRGIN ATLANTIC, VIRGIN TRAINS, VIRGIN HOLIDAYS, VIRGIN MEDIA, VIRGIN MOBILE, VIRGIN RADIO and VIRGIN GAMES, and is a well-known brand worldwide. Complainant is also the registered owner of over 4,500 domain names, incorporating the Virgin name, which supports the wide scale use of the VIRGIN brand often in conjunction with an additional element, such as <virgin.com>, <virgin-radio.co.uk>, <virginradio.com>, <virginmusic.org>, etc.
Various press articles evidence the activities of the Virgin group in Greece and strongly suggest that the Greek public would be aware of Complainant.
The disputed domain name is confusingly similar to the VIRGIN trademark. Complainant has a significant body of previous favorable UDRP decisions which relate to domain names comprising the term "virgin" followed by another element and which support that a likelihood of confusion does exists in relation to domain names comprising "virgin" and an additional element.
Respondent has no legitimate interest in the disputed domain name and has no rights in relation to the "virgin1045" element of the disputed domain name. Respondent is not commonly known by the name Virgin or Virgin1045. Respondent has no trademark registrations for Virgin or Virgin1045. There is no believable or realistic reason for the registration or use of the disputed domain name other than to take advantage of Complainant's rights.
The disputed domain name resolves to a web site which is branded Virgin Greece. The disputed domain name 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 disputed domain name, since Complainant is engaged in multiple proceedings with the party responsible for the web site which the disputed domain name resolves to.
The controversy on the disputed domain name forms part of a larger conflict issue. Complainant became aware of an infringing radio station streamed via the Internet, originally located at "www.virgin1045.gr". Domain name complaints were filed before the Greek authorities and as result both <virgin1045.gr> and <virgin.gr> were transferred to Complainant. The infringing web site has now been transferred to the disputed domain name and <virgingreece.gr>. Thus the finding as regards the disputed domain name should be in line with the decisions issued in relation to the domain name complaints filed in relation to <virgin1045.gr> and <virgin.gr>. Respondent is well aware that Complainant is entirely committed to preventing the continued nature of such use, through Virgin domain name registrations. Their intentions are to prolong the issue in hope that Complainant will offer to resolve the issue for a sum in excess of the documented out of pocket costs related to the disputed domain name.
There are circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to Complainant, or to a Complainant's competitor, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name.
Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the trademark in a corresponding domain name. The domain name complaints already filed in relation to the Greek equivalents of the disputed domain name, previously decided, confirm that Respondent is linked with the owner of the corresponding Greek domain names and is engaged in a pattern of such conduct.
Internet users land on Respondent's site through being confused with Complainant. This is done with the intention of commercially gaining through increasing the number of visitors to Respondent's web site. The mistaken link between the web site and Complainant also disrupts Complainant's business as the web site is falsely linked with an undertaking whose activities Respondent has no control over. Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor. The use which is being made on the web sites in question, together with the continued abusive behaviour is undoubtedly disrupting Complainant's business.
There are circumstances which indicate that by using the disputed domain name Respondent has intentionally attempted to attract, for commercial gain, Internet users to the web site or other online location, creating a likelihood of confusion with Complainant's trademark as to the source, sponsorship, affiliation or endorsement of the web site or location or of a product or service on the web site or location. The disputed domain name is only being used because the inclusion of the "virgin" element will attract Internet users to its web site.
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent did not reply to Complainant's contentions. In response to the Center's notification of Respondent's default, on December 21, 2017, the Center received an email communication from the email address corresponding to Respondent as per the WhoIs, which in essence contains the following: "I do not understand what you mean. I do not understand english. What happened with the domain name? I think now you make something illegal. This Domain name is mine and anyone who wants this have to buy it at least. You steal my Rights & my money. For which reason? Please contact with me Greek Language."
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to "decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable".
The informal email communication from Respondent referred to above cannot be deemed as an official response since it does not comply with the requirements set forth in the Rules, paragraph 5(b). The lack of response from Respondent does not automatically result in a favorable decision for Complainant (see Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465). The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
In examining the Complaint and the evidence supplied by Complainant, this Panel noticed the Complaint is full of bare assertions and assumptions, and wonders whether Complainant could have elaborated better arguments and filed more evidence. As past UDRP panel decisions have demonstrated, it is not enough to merely rely on the stated strength of a company or the allegedly international recognition of a trademark.1
A. Identical or Confusingly Similar
It is undisputed that Complainant has rights over the VIRGIN trademark.
The disputed domain name consists of the VIRGIN trademark in its entirety followed by the digits "1045" and the generic Top-Level Domain ("gTLD") ".com". Since the addition of a gTLD after a domain name is technically required, it is well established that such element may be disregarded where assessing whether a domain name is identical or confusingly similar to a mark. The addition of the "1045" suffix is not enough to avoid confusing similarity with the VIRGIN trademark (see AB Electrolux v. Eslam Gamal, WIPO Case No. D2017-0094, and Eli Lilly and Company v. media/broadcasting, Lee Shung, WIPO Case No. D2010-1079).
Thus this Panel finds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant asserts that Respondent is not commonly known by the name Virgin or Virgin1045, and that Respondent has no trademark registrations for Virgin or Virgin1045. Complainant provided a screenshot of the web site associated to the disputed domain name, which shows what seems to be a stylized "V" followed by "Virgin Greece", and below that some headings with the terms "Live Stream" and "Videoclips", among others.
In the file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to a possible right to or legitimate interest in the disputed domain name by Respondent. In the absence of any explanation from Respondent as to why it might consider it has a right or legitimate interest in using the disputed domain name which reflects in its entirety Complainant's trademark, albeit with a suffix, this Panel considers that Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.2
Based on the aforesaid, this Panel concludes that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
Complainant contends that Respondent's registration and use of the disputed domain name is in bad faith, which Respondent chose not to rebut.
Complainant largely relies on the decisions issued on June 30, 2016, by the Greece's National Telecommunication Committee in Virgin Enterprises Limited v. Andreas Katsara, Decision Serial No. 768/15, relating to the domain name <virgin1045.gr>, and Virgin Enterprises Limited v. Nikos Kokkaras, Decision Serial No. 768/29 relating to the domain name <virgin.gr>. Those decisions ordered the transfer of such domain names to Complainant. This Panel notices that such decisions did not address the element of bad faith registration and use, as required under the Policy, and thus are not applicable to the present case.3
Complainant asserts that it became aware of an infringing radio station streamed via Internet, originally located at "www.virgin1045.gr", which web site has now been transferred to the web site associated to the disputed domain name. Complainant contends that Respondent is linked with the owner of <virgin1045.gr> since both the <virgin1045.gr> domain name and the disputed domain name resolved to a web site with the same content, having provided a screenshot of both web sites.4
The fact that the content of the web sites associated to <virgin1045.gr> and the disputed domain name are practically identical as regards design, and with the same type of content, leads this Panel to conclude that Respondent may have some link with the registrant of <virgin1045.gr>, from which it may be validly inferred that Respondent was aware of Complainant and Complainant's rights over the VIRGIN trademark at the time Respondent obtained the disputed domain name.
Where the disputed domain name incorporates another's trademark in its entirety, coupled with just some digits, where the registration and use of the corresponding trademark preceded the registration of the disputed domain name by a number of years, where use of Complainant's trademark in the disputed domain name is without Complainant's authorization, and where it is apparent that Respondent was aware of Complainant's trademark, there is little doubt that Respondent may have intentionally sought to attract Internet users to the web site associated to the disputed domain name by including the VIRGIN trademark in the disputed domain name and creating a likelihood of confusion with said Complainant's trademark.
In sum, from the overall evidence in the file it may be validly inferred that Respondent deliberately targeted Complainant's VIRGIN trademark at the time it obtained the disputed domain name, most likely with the intention to benefit from such trademark and to take an unfair commercial advantage, which denotes bad faith.
In this Panel's view, the lack of response is also indicative that Respondent lacks arguments and evidence to support its holding of the disputed domain name in good faith.
In light of the above, this Panel finds that Complainant has satisfied 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, this Panel orders that the disputed domain name <virgin1045.com> be transferred to Complainant.
Date: January 30, 2018
1 See Jones Apparel Group, Inc. v. jonesapparelgroup.com, WIPO Case No. D2001-0719: "it is not this Panel's role to perfect a poor pleading". See also The Skin Store, Inc. v. eSkinStore.com, WIPO Case No. D2004-0661, Servizi Interbancari S.p.A. v. Andrea Picaro, WIPO Case No. D2001-0881, Koninklijke Philips Electronics N.V. v. Relson Limited, WIPO Case No. DWS2001-0003, and GA Modefine S.A. v. Sparco P/L, WIPO Case No. D2000-0419.
2 See INTOCAST AG v. LEE DAEYOON, WIPO Case No. D2000-1467: "For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given …… Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant's assertion."
3 Complainant supplied a copy of those decisions, which are in Greek, and their translations into English. From the content of such decisions this Panel infers that cancellation or transfer of a domain name under the ".gr" country code Top-Level domain may be ordered where the registrant has no legal right or interest in the domain name and/or the domain name in question has been registered or used in bad faith.
4 This Panel corroborated Complainant's allegation by accessing <web.archive.org> which showed the content for <virgin1045.gr> on May 20, 2016 and October 11, 2016, and for <virgin1045.com> on April 14, 2017 and October 12, 2017, among other dates. See section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, and Sensis Pty Ltd., Telstra Corporation Limited v. Yellow Page Marketing B.V., WIPO Case No. D2011-0057.