WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Ervin Remus Radosavlevici, Virgin Media Cloud
Case No. D2018-0248
1. The Parties
The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Burges Salmon LLP, United Kingdom.
The Respondent is Ervin Remus Radosavlevici, Virgin Media Cloud, of London, United Kingdom, self-represented.
2. The Domain Names and Registrars
The disputed domain names <virginglobalmedia.com>, <virginglobalmedia.net>, <virginmediacloud.info>,
<virginmediacloud.net> and <vmedia.cloud> are registered respectively with Name.com, Inc., GoDaddy.com, LLC and Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 5, 2018. On February 6, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 6, 2018, the Registrar Name.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On February 7, 2018, the Registrar GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On February 7, 2018, the Registrar Tucows Inc. transmitted by e-mail 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 February 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 28, 2018. Several emails were received from the Respondent. However, no formal Response was filed with the Center.
The Center appointed Antony Gold as the sole panelist in this matter on March 27, 2018. 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 a wholly owned subsidiary of the Virgin Group, based in the United Kingdom. The Virgin Group operates in a diverse range of business sectors and in 35 countries.
The Complainant is the owner, manager and licensor of trade marks and other intellectual property used by companies within and outside the Virgin Group, including by Virgin Media Inc., (“Virgin Media”). Virgin Media was formed in 2006 and is an authorized licensee of the Complainant. It is part of Liberty Global plc, which is the world’s largest international cable company. Virgin Media is a substantial operator of broadband, video and fixed line telephony services in the United Kingdom and Ireland. It provides services to 5.7 million cable customers and mobile services to 3 million subscribers and trades under the VIRGIN MEDIA name.
The VIRGIN brand has been promoted internationally over a number of years. The Complainant‘s first United Kingdom registration for a VIRGIN trade mark was applied for in 1973. The Complainant is the owner and licensor of numerous trade marks for VIRGIN, or variations of it. These include, by way of example only:
- European Union Trade Mark No. 011991882 for VIRGIN (word mark) registered on December 10, 2013, in classes 1,2,4,6,7,8,10, 13, 15, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 34, 37 and 40;
- United Kingdom Trade Mark No. 00003100686 for VIRGIN MEDIA (word mark) registered on August 28, 2015, in classes 9, 35, 36, 38, 41 and 42; and
- United Kingdom Trade Mark No. 00002638445 for the Virgin “V” logo (figurative mark) registered on January 25, 2013, in class 41.
The Complainant is the registered proprietor of over 5,350 domain names, incorporating VIRGIN, or variants of it, including <virgin.com>; <virginmedia.com> and <virginmedia.co.uk>.
The Respondent is an individual based in London, in the United Kingdom. He is the owner of a company previously named Virgin Media Cloud Limited. However, following an application by the Complainant to the United Kingdom Company Names Tribunal in February 2017, the Respondent was required to change the name of this company to one that was dissimilar to the Complainant’s VIRGIN trade marks.
The disputed domain name: <vmedia.cloud> was registered on February 9, 2017 and the disputed domain name <virginmediacloud.net> was registered on July 31, 2017. The disputed domain name <virginmediacloud.info> was registered on October 27, 2017 and the disputed domain names <virginglobalmedia.com> and <virginglobalmedia.net> were each registered on November 27, 2017.
The use made of the disputed domain names is as follows; <virginglobalmedia.com> points to a single webpage containing the words “WorkSpace” with a sub-heading “Realise your Digital Transformation goals”. <virginglobalmedia.net> points to a directory page containing sponsored links and a message “This domain may be for sale”. <virginmediacloud.info> points to a single page which contains the claim “website coming soon!”. <virginmediacloud.net> does not point to a live website of any type. <vmedia.cloud> points to a parking page which includes an offer “Would you like to buy this domain?”.
The Complainant has previously brought successful proceedings against the Respondent under both the Policy and Nominet’s Dispute Resolution Service (“DRS”) Policy in respect of other domain names registered by the Respondent which incorporated the Complainant’s VIRGIN trade mark.
The Respondent is listed as the sole director and shareholder of another United Kingdom limited company, Virgin Global Media Ltd, incorporated on December 4, 2017. The registration of this company by the Respondent is the subject of separate proceedings before the Company Names Tribunal instigated by the Complainant. The Respondent has also registered further domain names incorporating the Complainant’s trade marks. These are currently the subject of separate proceedings under Nominet’s DRS Policy.
5. Parties’ Contentions
The Complainant says that the disputed domain names are identical or confusingly similar to trade marks in which it has rights. The generic Top-Level Domains (“gTLDs”) “net”, “info”, “cloud” and “com” are discounted for the purposes of assessing confusing similarity. The disputed domain names fully incorporate one or more of the Complainant’s VIRGIN, VIRGIN MEDIA and “V” figurative trade marks.
The addition of descriptive and generic words such as “global” or “cloud” do not prevent the disputed domain names from being identical or similar to the Complainant’s trade marks, nor does the abbreviation of Virgin Media Cloud to “V Media Cloud”. In fact, the added words exacerbate the likelihood of confusion to Internet users. The inclusion of “global” is apt to be perceived as alluding to the geographic reach of the large international business operated by Virgin Media’s parent company. Similarly use of “media” and “cloud” are likely to be considered as referring to the Virgin Media’s “Virgin Media Cloud” business, albeit this ceased operations in March 2016. Finally, the disputed domain name <vmedia.cloud> will be perceived as referencing Virgin Media’s business as “V” has often been used in place of the VIRGIN trade mark in order to denote a connection with the business of Virgin Media. By way of example, the “V” popular music festival, held annually in England between 1996 and 2017, was previously sponsored by Virgin Media. Furthermore, “V” is also used by Virgin Media, in respect of its set-top box for television services and it has launched both a “V+” and “V6” box. Accordingly, use of “V” in conjunction with “Media Cloud” is likely to be associated by Internet users with the Complainant’s figurative “V” logo mark.
The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has not made any demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods and services. The disputed domain names are not being used to host active websites and the websites resolved to by the disputed domain names, display error messages, generic “Website Coming Soon” pages or the Registrars’ standard holding pages.
Furthermore, there is no information that would suggest that the Respondent has any legitimate right to use the VIRGIN, VIRGIN MEDIA or “V” figurative trade marks. The Complainant has not found any registered trade marks belonging to the Respondent which correspond to the disputed domain names and it has not licensed or otherwise authorised the Respondent to use its VIRGIN-related trade marks.
The Complainant says that the disputed domain names were registered and are being used in bad faith. Given the previous history of disputes between itself and the Respondent, it is reasonable to infer that the Respondent has registered the disputed domain names for the purpose of disrupting the Complainant’s business and/or that of Virgin Media. In the light of the parties’ previous disputes, the Respondent must have been aware of the Complainant’s and Virgin Media’s extensive reputation at the time he registered the disputed domain names. The Respondent has not demonstrated any prima facie right to use its VIRGIN trade marks in the disputed domain names and has failed to provide evidence of use, or preparations to use, the disputed domain names in connection with a genuine offering of goods or services. In the light of the Respondent’s previous course of dealing with the Complainant, the Respondent has evidently registered the disputed domain names in order to disrupt the business of the Complainant.
Given the renown and goodwill of the VIRGIN trade marks and the scope of the Virgin Group’s business, the Respondent registered and is using the disputed domain names to attempt to attract, for commercial gain, Internet users looking for the Complainant to the websites to which the disputed domain names point by creating a likelihood of confusion with the Complainant’s VIRGIN trade marks, as to the source, sponsorship, affiliation or endorsement of the websites resolved to by the disputed domain names. The Complainant states that this is particularly the case given that Virgin Media Cloud, was closed on April 28, 2016. The closure was announced on March 8, 2016, two days before the registration by the Respondent of other domain names incorporating the Complainant’s trade marks, which have been the subject of separate proceedings under the Policy and Nominet’s DRS Policy.
The Virgin Group is reliant upon the goodwill and reputation of its VIRGIN trade marks to bolster support for all of its new ventures. It regularly introduces new products which include the word “Virgin” and additional word or words, which can be descriptive or indicative of a sub-brand. Because the disputed domain names include words which are descriptive of services offered by Virgin Media, in combination with descriptive, generic words such as “global” or “cloud”, they will confuse Internet users into believing the disputed domain names are associated with the Complainant.
Moreover, whilst the disputed domain names are not currently pointing to active websites, it is possible that subsequent website content posted by the Respondent may imply a connection with the Complainant and its services. The Complainant refers to Intel Corporation v. The Pentium Group, WIPO Case No. D2009-0273, in which the panel found that the passive holding of a domain name, without any obvious purpose, does not necessarily circumvent a finding that the domain name is being used for the purpose of paragraph 4(a)(iii) of the Policy. In addition, section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) outlines the circumstances in which the passive holding of a domain name might amount to bad faith use under the Policy. The circumstances of the Respondent’s registration of the disputed domain names falls within those guidelines.
Lastly, the Respondent registered the disputed domain names in order to prevent the Complainant from reflecting its VIRGIN trade marks in corresponding domain names. The Respondent has registered a total of thirteen domain names incorporating the Complainant’s VIRGIN, VIRGIN MEDIA and VIRGIN “V” logo trade marks and the registration of the disputed domain names accordingly represents a pattern of such conduct by the Respondent.
The Respondent did not provide a formal response to the Complainant’s contentions within the due date for a Response. However, by an email dated February 10, 2018, he contacted the Center stating that the disputed domain names were registered to his businesses and formed part of their assets and that he would provide evidence of this. The Respondent added that the disputed domain names would not be transferred or cancelled and requested payment of a fee for the disruption to his businesses, his losses and damage to the reputation of his companies.
6. Discussion and Findings
The Panel is empowered under paragraph 10(a) of the Rules to conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and the Rules. It is obliged under paragraph 10(b) of the Rules to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case. With these provisions in mind, the Panel treats the Respondent’s e-mail of February 10, 2018 as its informal Reply to the Complaint, albeit that it does not attempt to answer any of the Complainant’s assertions.
Paragraph 4(a) of the Policy provides that the Complainant proves each of the following three elements in order to succeed in its Complaint:
(i) the disputed 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 disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has established through the details provided of its trade marks for VIRGIN, VIRGIN MEDIA and the “V” figurative mark, that it has rights in the trade marks VIRGIN, VIRGIN MEDIA and the “V” figurative mark. Moreover, the word “VIRGIN” is distinctive in the context of the services provided by the Complainant and Virgin Media.
For the purpose of determining whether the disputed domain names are confusingly similar to the Complainant’s trade marks, the gTLD “.com”, “.net” and “.info” are disregarded as they are a technical requirement of registration. The gTLD “.cloud” would likewise ordinarily be disregarded as a technical requirement of registration. However, as explained at section 1.11.3 of the WIPO Overview 3.0 “Where the applicable TLD and the second-level portion of the domain name in combination contain the relevant trade mark, panels may consider the domain name in its entirety for purposes of assessing confusing similarity”.
Virgin Media is part of a large international business which, amongst other activities, is engaged in the provision of media content through the Internet. Accordingly, the addition of the words “global” and “media” to “virgin” do not serve to differentiate the disputed domain names <virginglobalmedia.com> and <virginglobalmedia.net> from the Complainant’s VIRGIN and VIRGIN MEDIA trade marks because these words will be perceived by Internet users as a reference to the perceived scale of Virgin Media. These disputed domain names are accordingly confusingly similar to the Complainant’s VIRGIN and VIRGIN MEDIA trade marks.
The same analysis applies in respect of the disputed domain names <virginmediacloud.info> and <virginmediacloud.net>. Cloud-based services are a common technical feature of online media distribution and Virgin Media operated a business known as “Virgin Media Cloud” until March 2016. In view of the repute of the Complainant’s marks, the distinctive character of the Complainant’s trade mark and the nature of the services provided under the marks, the incorporation of the word “cloud” does not prevent these disputed domain names from being confusingly similar to the Complainant’s VIRGIN and VIRGIN MEDIA trade marks. Rather, as the Complainant says, the inclusion of those words within the disputed domain names accentuates the impression of a connection, or affiliation with the Complainant’s trade marks and increases the likelihood of confusion.
The Complainant has a registered trade mark for a stylized “V” and Virgin Media has used it in connection with its “V” Festival and in connection with the V+ and V6 television set-top boxes provided to its customers. In these circumstances, the inclusion of the word “media” within the second-level portion of the disputed domain name <vmedia.cloud>, exacerbates, rather than reduces, the degree of confusing similarity between the disputed domain name and the Complainant’s “V” trade mark, as does the use of the gTLD “.cloud”.
The Panel accordingly finds that the disputed domain names are confusingly similar to trade marks in which the Complainant has rights.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out, without limitation, three circumstances by which a respondent might show that it has rights or legitimate interests in a domain name, namely;
(i) before any notice to it of the dispute, it had used or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) it had been commonly known by the domain name, even if it had acquired no trade mark or service mark rights; or
(iii) it was making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Having regard to the websites to which the disputed domain names presently point, there is no evidence before the Panel that the Respondent has used or made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services. Section 2.2 of the WIPO Overview 3.0 sets out non-exhaustive examples of evidence which would support a claim by a respondent of prior use, or demonstrable preparations to use a domain name. The use of the disputed domain names by the Respondent, as described above, is either nil or token and falls a long way short of this guidance.
Whilst the Respondent has attempted to form United Kingdom-based companies the names of which include one or more of the Complainant’s trade marks, it has, to date, been prevented from retaining such a company name by the United Kingdom Company Names Adjudicator. In the circumstances, those company names are not capable of founding a legitimate interest by him in any of the disputed domain names. In any event, the existence of a registered company name is not evidence, in itself, that a respondent is commonly known by it, see for example Rothschild Bank AG, N M Rothschild & Sons Limited and Rothschild Continuation Holdings AG v. Rothchild Corporation and Rothchild Internet Development Corporation SA de CV/ Joseph Martin Rothchild, WIPOCase No. D2001-1112, in which the panel held that a mere and unsubstantiated assertion of rights is insufficient to confer a legitimate right to a domain name.
Section 2.5.2 of the WIPO Overview 3.0 explains that panels will look beyond the domain name itself in assessing whether the overall facts and circumstances support a claimed fair use. The facts in this case point to the Respondent having engaged in a pattern of registering domain names and company names incorporating the Complainant’s trade marks without any evident intention on his part to put them to a good faith use. There is nothing to point to fair use by the Respondent.
The Complainant having made out a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names, the burden of production shifts to the Respondent to demonstrate that he has such rights or legitimate interest; see section 2.1 of the WIPO Overview 3.0. By not responding substantively to the Complaint, the Respondent has plainly failed to satisfy this burden.
The Panel accordingly finds that the Respondent has no rights or legitimate interests with respect to the disputed domain names.
C. Registered and Used in Bad Faith
The disputed domain names contain the Complainant’s VIRGIN, VIRGIN MEDIA and “V” figurative trade marks in full and adds words which Internet users are likely to associate with the Virgin Group, and/or Virgin Media such as “global” or “cloud”. Given the history of proceedings between the Complainant and the Respondent, the Respondent was plainly aware of the Complainant and its trade marks as at the date of registration of the disputed domain names and that the Complainant was certain to object to the domain name registrations. The only substantive comment of the Respondent on the Complaint, set out in his e-mail to the Center dated February 10, 2018, has been to stipulate that he wants compensation for disturbance to his business as a result of the Complaint having been filed. Having regard to the fact that, as outlined above, there is no genuine use being made by the Respondent of the disputed domain names, this underscores a lack of good faith intention on his part.
Paragraph 4(b) of the Policy sets out, without limitation circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The circumstances set out in paragraph 4(b)(ii) of the Policy are if a respondent has registered a domain name in order to prevent the trade mark owner from reflecting its mark in a corresponding domain name and the respondent has engaged in a pattern of such conduct.
Section 3.1.2 of the WIPO Overview 3.0 explains that “establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration”. The Complainant has provided many instances of abusive domain name registrations by the Respondent. Accordingly, bad faith registration and use by the Respondent has been established under paragraph 4(b)(ii) of the Policy and it is therefore not necessary to consider the other grounds of bad faith which the Complainant has asserted.
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, <virginglobalmedia.com>, <virginglobalmedia.net>, <virginmediacloud.info>, <virginmediacloud.net> and <vmedia.cloud> be transferred to the Complainant.
Date: April 10, 2018