WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Ltd. v. Iman Afzalzadeh
Case No. DIR2016-0030
1. The Parties
The Complainant is Virgin Enterprises Ltd. of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Saba & Co. IP, Lebanon.
The Respondent is Iman Afzalzadeh of Stockholm, the Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name <virginmobile.ir> is registered with IRNIC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 23, 2016. On September 26, 2016, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On October 2, 2016, IRNIC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. Hard copies of the Complaint were received by the Center on September 30, 2016.
The Center verified that the Complaint satisfied the formal requirements of the .ir Domain Name Dispute Resolution Policy (the "Policy" or "irDRP"), the Rules for .ir Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 7, 2016. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2016. On October 28, 2016, the Center notified the Respondent's default.
The Center appointed Philippe Gilliéron as the sole panelist in this matter on November 7, 2016. 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 was created in 1970 when Richard Branson began selling music records and then expanded over the years into a variety of businesses, such as Virgin Atlantic, Virgin Trains, Virgin Holidays or Virgin Media. The Virgin Group now counts more than 200 companies worldwide in 35 countries, totaling more than 71,000 employees and an annual turnover in excess of GBP 24 billion.
The Complainant's trademarks belong to the most well-known trademarks. The list "the world's best brands 2015" for instance ranked "Virgin Mobile" as number 16 in the top 100 of "The world's best marketing compaigns and companies for 2015". Furthermore, many companies have ranked Virgin to be one of the most famous brands in the world; "ranking the brands" for instance nominated the Virgin brand as number 22 on their list of "UK Most Valuable Brands".
The Complainant owns numerous brands consisting in all or in part of the term "Virgin" on a worldwide basis. Such is the case of the VIRGIN MOBILE trademarks in the United Kingdom, which include a verbal trademark, Registration No. UK00002365570, registered in 2005 under classes 9 and 38, as well as the combined trademark Registration No. UK00002601989 that was registered in 2012 under classes 9, 35, 36, and 38. The VIRGIN MOBILE trademark has also been filed in the Islamic Republic of Iran as both verbal and combined trademarks; applications were still pending as of the time the Complaint was filed.
On July 23, 2016, the Respondent registered the disputed domain name.
On July 27, 2016, the Complainant sent a cease-and-desist letter to the Respondent, drawing its attention upon its trademarks, alleging the registration of the disputed domain name violated law, and inviting the Respondent to transfer the disputed domain name in favor of the Complainant. The Respondent did not respond.
The website at the disputed domain name resolves to an inactive page.
5. Parties' Contentions
The Complainant first argues that the disputed domain name is identical to its VIRGIN MOBILE trademark, which it entirely incorporates.
The Complainant then asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name as the Respondent has not used it with a bona fide offering of goods and services, that he is not commonly known by the disputed domain name and that he does not make any noncommercial or fair use of the disputed domain name. The Complainant did not authorize the Respondent to register or use the disputed domain name.
The Complainant finally affirms that the disputed domain name was registered and is being used in bad faith. Given the well-known character of the VIRGIN marks, it is clear that the disputed domain name was registered in bad faith. Considering that no legitimate use of the disputed domain name can be contemplated, the passive holding of the disputed domain name has to be considered as amounting to a use in bad faith.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this 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".
Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered or is being used in bad faith.
A. Identical or Confusingly Similar
According to the Policy, paragraph 4(a)(i), the Complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The Complainant proves to be the holder of numerous verbal trademarks throughout the world consisting of the word "Virgin", including in the Islamic Republic of Iran. As already found by several Uniform Dispute Resolution Policy ("UDRP") panels (Virgin Enterprises Limited v. Ali Khan, WIPO Case No. DTV2001-0029; Virgin Enterprises Limited v. KAP Computer Solutions Pvt. Ltd., WIPO Case No. D2013-0715), there is no doubt in the Panel's opinion that the VIRGIN marks, notably VIRGIN MOBILE, enjoy a wide reputation.
UDRP panels widely agree that incorporating a trademark into a domain name can be sufficient to establish that the domain name is identical or confusingly similar to a registered trademark for purpose of the UDRP Policy (see, e.g., Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503; Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358; and F. Hoffmann-La Roche AG v. Relish Enterprises, WIPO Case No. D2007-1629).
This is all the more true when the inserted trademark, a well-known one, is the dominant part of the disputed domain name. Such happens to be the case here where the Complainant's trademark not only is the dominant part of the disputed domain name, but its sole element.
The ".ir" country code Top-Level Domain ("ccTLD") is a technical requirement of registration and is therefore disregarded under the confusing similarity test.
As a result, the Panel considers paragraph 4(a)(i) of the Policy to be satisfied.
B. Rights or Legitimate Interests
According to the Policy, paragraph 4(a)(ii), the Complainant has to demonstrate that the Respondent has no rights or legitimate interests in the disputed domain name.
As the panel stated in Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624, demonstrating that the respondent has no rights or legitimate interests in the domain name "would require complainant to prove a negative, a difficult, if not impossible, task". Thus, in that decision, the panel opined that "[w]here a complainant has asserted that the respondent has no rights or legitimate interests in respect of the domain name, it is incumbent upon the respondent to come forward with concrete evidence rebutting this assertion". Following that decision, subsequent UDRP panels developed a consensus view that it is deemed sufficient for a complainant to make a prima facie case that the respondent lacks rights or legitimate interests in a domain name. Once a prima facie case has been made, it is the respondent's burden to demonstrate its rights or legitimate interests. If it fails to do so, the complainant is deemed to have satisfied to paragraph 4(a)(ii) of the Policy (see, e.g., paragraph 2.1, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0")).
In the present case the Complainant is the owner of numerous VIRGIN trademarks. The Complainant has indicated it has no business or other relationships with the Respondent.
The Complainant thus has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent has not answered the Complaint.
Considering the absence of a Response and the fact that the Respondent is neither commonly known by the disputed domain name, nor has made a legitimate noncommercial or fair use of the disputed domain name, the Panel finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
Consequently, in light of the above, the Panel considers paragraph 4(a)(ii) of the Policy to be fulfilled.
C. Registered or Used in Bad Faith
For a complaint to succeed, a panel must be satisfied that a domain name has been registered or is being used in bad faith (Policy, paragraph 4(a)(iii)).
Bad faith requires the Respondent to be aware of the Complainant's trademarks. In the present case, the Complainant is the owner of numerous VIRGIN trademarks, which enjoy a worldwide reputation and amount to well-known trademarks as pointed out above.
Considering the worldwide reputation of the VIRGIN mark, the Panel finds it hard to believe that the Respondent would have chosen and registered the disputed domain name in good faith, without having been aware of the VIRGIN trademarks. The Respondent, having neglected to participate in these proceedings, did not bring any evidence to support such a choice; such evidence does not result from the file, and the Respondent has to bear the consequences of its default on that regard.
There is no doubt in the Panel's opinion that the Respondent was very well aware of the Complainant's trademarks.
As constantly held by prior UDRP panels, it is a consensus view that the lack of an active use of a domain name does not as such prevent a finding of bad faith. In such cases the panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include a complainant having a well-known trademark, no response to the complaint, concealment of identity and the impossibility of conceiving a good faith use of the domain name (see Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574; Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131).
As found by the UDRP panel in Virgin Enterprises Limited v. KAP Computer Solutions Pvt. Ltd., supra: "The Complainant provided evidence that the VIRGIN Marks are well established, while the Respondent failed to provide evidence of any actual or contemplated good faith use. Furthermore, given that the Complainant is typically using its VIRGIN Marks in conjunction with additional elements (such as VIRGIN ATLANTIC, VIRGIN TRAINS, VIRGIN HOLIDAYS, VIRGIN MEDIA, VIRGIN MOBILE, VIRGIN RADIO, and VIRGIN GAMES), that the public have become accustomed to such use and that the term "Virgin Company" is predominantly associated with the Complainant or related companies, the fact that the disputed domain name fully incorporates the Complainant's highly distinctive VIRGIN Marks by merely adding the generic word "company" is rendering the false impression that the domain name is somehow related to the Complainant. In the view of the Panel, the facts of this case do not allow for any plausible actual or contemplated active use of the disputed domain name by the Respondent in good faith, as it is a domain name Internet users might mistakenly enter when searching for information on the Complainant and goods or services provided under the VIRGIN Marks. The Panel is therefore convinced that, even if the disputed domain name was not actively used, the Respondent's non-use of the domain name would equal use in bad faith".
These considerations apply mutatis mutandis to the present case where, considering the fame of the VIRGIN MOBILE trademark, one cannot contemplate any registration and use of the disputed domain name other than in bad faith.
Consequently, the Panel is of the opinion that the disputed domain name has been registered and is being used in bad faith under the 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, the Panel orders that the disputed domain name <virginmobile.ir> be transferred to the Complainant.
Date: November 13, 2016