WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Zhang Guo Jie
Case No. D2018-0530
1. The Parties
The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Stobbs IP Limited, United Kingdom.
The Respondent is Zhang Guo Jie of Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <virginmobile.online> (the “Domain Name”) is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) (the “Registrar”).
3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on March 9, 2018. On March 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 12, 2018, 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.
On March 15, 2018, the Center sent a communication to the Parties, in English and Chinese, regarding the language of the proceeding. On March 16, 2018, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 in English and Chinese of the Complaint, and the proceedings commenced on March 21, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 10, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 11, 2018.
The Center appointed Karen Fong as the sole panelist in this matter on April 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 the brand owner for the Virgin Group of companies. The Virgin Group started life in 1970 when the entrepreneur, Richard Branson began selling music records under the VIRGIN brand. The original business expanded into businesses supplying a wide variety of goods and services under the VIRGIN brand. The Virgin Group is focussed on 5 main sectors - travel and leisure, telecommunications, music & entertainment, financial services and health & wellness. In 2016 the business had 60 million customers worldwide, 71,000 staff and the group revenue was USD 24 billion. In addition, the Virgin Group run a number of charitable foundations, such as Virgin Unite and Virgin Start-Up. Globally, Virgin businesses are active in 35 countries. There are now more than 60 Virgin branded businesses worldwide, employing in excess of 71,000 people, in 35 countries.
Virgin Mobile is the telecommunications brand that forms part of the Virgin Group. It began in 2000 and now operates in many parts of the world.
The Complainant owns registered trade marks for VIRGIN and VIRGIN MOBILE (individually and collectively referred to as the “Trade Mark”) all over the world including in China where the Respondent is based. The earliest registration for VIRGIN submitted in evidence is the UK trade mark registration which dates back to 1973. The Complainant has also submitted extensive evidence of its use of the Trade Mark.
The Respondent is located in Fujian, China. The Domain Name was registered on October 26, 2016. The Domain Name does not appear to have ever resolved to an active website. The Respondent owns just under 7,000 domain names.
5. Parties’ Contentions
The Complainant contends that the Domain Name is confusingly similar to the Trade Mark, that the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6. 1 General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is 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 Name; and
(iii) The Domain Name was registered and being used in bad faith.
6.2. Language of the Proceeding
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the 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 proceedings. According to the information received from the Registrar, the language of the registration agreement for the Domain Name is Chinese.
The Complainant submits that the language of the proceeding should be English. The Complainant contends that the Domain Name is in English and makes reference to words in the English language which
demonstrates an awareness of the English language on the part of the Respondent, more than adequate for him to understand the proceedings in English. This is reinforced by his ownership of just under 7,000 other domains which make reference to English. Requiring the Complainant to translate the Complaint into Chinese would be unduly unfair on the Complainant when the Domain Name is in English, and requiring such translation would not allow the proceedings to take place with due expedition. It would place undue burden on the Complainant and cause undue delay to the proceedings.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. The Respondent has not challenged the Complainant’s request and in fact has failed to file a response. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English. In all the circumstances, the Panel determines that English be the language of the proceeding.
6.3. Substantive Analysis
A. Identical or Confusingly Similar
The Panel is satisfied that the Complainant has established that it has registered and unregistered rights to the trade mark VIRGIN and VIRGIN MOBILE.
The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name. In this case the Domain Name contains the Complainant’s distinctive trade marks, VIRGIN and VIRGIN MOBILE, in their entirety. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”). The gTLD in this case is “.online”.
The Panel finds that the Domain Names is identical to trade marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or 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) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant submits that the Respondent is not known by the name VIRGIN or VIRGIN MOBILE and has no trade mark registrations for either mark. Neither is the Respondent using the Domain Name in connection with a legitimate offering of goods/services.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not provided any reasons why he chose to register a well-known trade mark which he has no connection to. The Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
C. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the VIRGIN and VIRGIN MOBILE trade marks when he registered the Domain Name. It is implausible that he was unaware of the Complainant when he registered the Domain Name. The Trade Mark is one of the world’s most well-known trade marks. In the WIPO Overview 3.0, section 3.2.2 states as follows:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the domain name is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). In light of the above, the Panel finds that registration is in bad faith.
The Domain Name is also used in bad faith. The Respondent is the owner of just under 7,000 domain names including domain names which comprise well-known trade marks e.g., <skyscanner.online>, underarmour.top>, <kfc.tech>, <samsungpay.site>, <googlemap.online> and <bloomberg.site>. The Respondent has also been found to have engaged in bad faith registration of domain names in Klarna AB v. Guo Jie Zhang, Zhang Guo Jie, WIPO Case No. D2017- 0734. One of the examples of a bad faith registration is contained in paragraph 4(b)(ii) of the Policy (“you have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided you have engaged in a pattern of such conduct”). This is part of a flagrant pattern of conduct as the Respondent is engaged in a pattern of registration of a series of well-known trade marks and therefore his use of the Domain Name is 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 Domain Name <virginmobile.online> be transferred to the Complainant.
Date: May 16, 2018