WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. PowerBusiness Associates Inc.
Case No. D2013-0975
1. The Parties
The Complainant is Virgin Enterprises Limited of The School House, London, United Kingdom of Great Britain and Northern Ireland (the “United Kingdom”), represented by Stobbs IP Limited, United Kingdom.
The Respondent is PowerBusiness Associates Inc of San Juan Capistrano, California, United States of America, represented internally.
2. The Domain Name and Registrar
The disputed domain name <virginadventures.com> (“the Domain Name”) is registered with Melbourne IT Ltd (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 31, 2013. On May 31, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 4, 2013, 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 for the Domain Name.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 10, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was June 30, 2013. The Response was filed with the Center on June 30, 2013.
The Center appointed Warwick Smith as the sole panelist in this matter on July 15, 2013. 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
The Complainant is the brand owner for the Virgin group of companies (“Virgin”). Virgin originated in 1970, when Richard Branson began selling music records under the “Virgin” name. Since then, Virgin’s activities have expanded into a wide variety of businesses. There are now over 200 Virgin companies operating in 32 countries.
The Complainant produced a statement from one of its trademark attorneys, setting out at some length the history and relevant details of Virgin. The statement sufficiently establishes that Virgin has a substantial reputation around the world in diversified businesses ranging from the original record company to airline and telecommunication companies. Virgin operates its airline services under the names “Virgin Atlantic”, and “Virgin Australia”. A California-based United States domestic airline, launched in 2007, operates under the name “Virgin America”.
In addition to its airline interests, Virgin has other travel-related operations, including in the areas of passenger rail travel and short haul holidays from the United Kingdom (operated by Virgin Rail Group Limited and “Virgin Sun” respectively). A travel agency business was also opened in the United Kingdom in 2000 or early 2001, under the name “Virgin Travelstore”. Other travel-related businesses are conducted under the names “Virgin Holidays”, Virgin Holiday Cruises”, and “Virgin Vacations”.
In October 2004, Virgin announced plans to develop the world’s first privately funded spaceships, which would carry commercial passengers on space flights. A new business venture called “Virgin Galactic” was formed to launch this venture.
The Complainant says that Virgin launched a service described as “Virgin Experience Days” in March 2001, under the name of “Virgin Experience”. Originally offering experiences to corporate clients as a way of incentivizing staff and customers, this enterprise expanded into the consumer experience gift market, providing a variety of gifts ranging from books, flowers, hampers, etc, to activities such as “experience days”, flying, “adventure”, and hotel breaks.
The trademark attorney’s statement draws attention to the fact that Virgin has regularly introduced new products where the “Virgin” name has been combined with an additional word or words. Virgin was said to have thus “transferred its reputation to other spheres of business. This transfer of reputation from existing Virgin Group companies to these new ventures is notable because it involved a commercial sector arguably unconnected to many, if not all, of the Virgin Group’s previous enterprises.”
The Complainant’s Trademarks
The Complainant produced details of numerous VIRGIN trademarks and service marks, for which it is registered as proprietor in the United States, the United Kingdom, and the European Union. Many of them pre-date the registration of the Domain Name.
Virgin Domain Names
The Virgin group’s principal website is at “www.virgin.com”, and the Panel is satisfied from the material produced by the Complainant that that website has attracted very substantial Internet traffic. In addition to the principal website at “www.virgin.com”, the Complainant says that it is also the proprietor of over 4,500 other domain names which incorporate the “Virgin” name.
The Respondent and the Domain Name
The Domain Name was created on October 5, 2004. It does not currently resolve to any active website.
The Complainant did not produce any information about the Respondent or its activities. The Respondent says in its Response that it runs travel businesses under a variety of names, including “Travelmakers.com”, “Authorizedagents.com”, “Funhawaii.com”, “FunIncentives.com”, and “FunCompanies.com”. According to the Response, there are 30 other websites from which the Respondent conducts travel-related business. In addition, the Respondent says that it holds several travel-related domain names which it intends to use in the future. One of them is in “www.moontravel.com”, and the Respondent says that it intends to use this domain name when it will become practicable to do so (estimated to be in about 15 years’ time).
The Response was submitted on letterhead featuring the prominent heading:
“TRAVELMAKERS™
SIGNATURE TRAVEL NETWORK MEMBER”
The Respondent’s name appeared in smaller font immediately below that heading. There was also a logo featuring a picture of a yacht.
5. Parties’ Contentions
A. Complainant
The Complainant contends:
1. The Domain Name is confusingly similar to the mark VIRGIN, in which the Complainant has rights. The confusing similarity arises in part because the public have become accustomed to seeing the Complainant’s VIRGIN brand used in conjunction with additional elements (including for example, “Adventure days”), and in relation to a wide range of products and services.
2. Bearing in mind the massive reputation of the VIRGIN brand and Virgin’s operations in a wide range of activities (including experience and adventure-related services), there is no believable or realistic reason for registration or use of the Domain Name, other than to take advantage of the Complainant’s rights. Further, the Domain Name was registered in 2004, and no legitimate use has been made of the Domain Name in the period of approximately nine years since then.
3. The Domain Name was registered and is being used in bad faith.
(i) The Complainant alleges that each of the circumstances which are deemed by paragraph 4(b) of the Policy to provide evidence of bad faith registration and use,1 is applicable in this case. It repeats that the public are very accustomed to seeing the mark VIRGIN used across a wide variety of business activities, and that the word “Virgin” is commonly used in conjunction with an additional element.
(ii) Adding the word “adventures” adds nothing from a brand perspective. The public would immediately consider that this was a reference to Virgin. The public are used to seeing VIRGIN as a brand representing new and innovative businesses, and are therefore accustomed to seeing the brand entering into new fields.
(iii) Bearing in mind the extent of the Complainant’s reputation in its VIRGIN brand, it is impossible to envisage any legitimate purpose the Respondent might have had for registering the Domain Name. The only purpose which can reasonably be envisaged, is that the Respondent intended to capitalize or gain from the Complainant’s reputation in some way, or to prevent the Complainant from registering the Domain Name.
(iv) The Respondent has intentionally attempted to cause confusion and extract large sums of money from the public.
B. Respondent
The Respondent contends:
1. The Complainant has no trademark in the United States, and does not operate any “Virgin Adventures” business in the United States. The fact that the Complainant may desire to own the Domain Name for some future business venture does not give the Complainant any rights in the Domain Name.
2. The Respondent, as first registrant, has the first right to use the Domain Name. If the Complainant wanted to start a website at the Domain Name, the Complainant should have reserved the Domain Name itself, in a timely fashion. The Respondent was entitled to reserve the Domain Name to protect it for future use.
3. The Complainant falsely thinks that every work that has the word “virgin” in it belongs to the Complainant. The Complainant cannot ban others from using that word.
4. The Domain Name was registered “because the Respondent is in the travel business”. The Respondent’s business plan calls for “gradual implementation of the said travel domain in 2014”.
5. The Domain Name rightfully belongs to the Respondent, and the Complainant has failed to prove that the Respondent has been holding the name hostage.
6. Discussion and Findings
A. What the Complainant must prove under the Policy - General
Under paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“… decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable”.
B. Identical or Confusingly Similar
The Complainant has established this part of the Complaint. It is the registered proprietor of the word mark VIRGIN in the European Union and in numerous other jurisdictions, and that mark has been incorporated in full in the Domain Name. The inclusion of the additional word “adventures” in the Domain Name is not sufficient for the Respondent to avoid a finding of confusing similarity: that word is a generic, dictionary word only, and the Complainant’s VIRGIN mark is both recognizable as such within the Domain Name and the dominant component of the Domain Name.2
C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
The consensus view of WIPO panels on the onus of proof under paragraph 4(a)(ii) of the Policy, is summarized at paragraph 2.1 of WIPO Overview, 2.0, as follows:
“… a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. 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 a respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. … If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”
In this case, the Domain Name is confusingly similar to the Complainant’s VIRGIN mark, and the Complainant has not authorized or licensed the Respondent to use that mark, whether in a domain name or otherwise. There is nothing in the evidence which might suggest that the Respondent (or any business or organization operated by the Respondent) has been commonly known by the Domain Name, and therefore no basis for any possible defense under paragraph 4(c)(ii) of the Policy.
That combination of circumstances establishes a prima facie case of “no rights or legitimate interests”, so 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. The Respondent has clearly failed to discharge that burden. After nine years no use has yet been made of the Domain Name, and the vague implication in the Response that the Respondent intends to use the Domain Name “in the travel business” cannot constitute “demonstrable preparations” to use the Domain Name, for the purposes of paragraph 4(c)(i) of the Policy. The fact that the Respondent has not been using the Domain Name also effectively rules out the possibility of any defense under paragraph 4(c)(iii) of the Policy.
The Respondent is wrong in its apparent belief that being the first to register a domain name somehow confers on the registrant a right or legitimate interest in that domain name under the Policy. If that were the position, every cybersquatter would have a complete defense to a claim made against it in a proceeding under the Policy.
The Panel is satisfied on the evidence that the Respondent has no rights or legitimate interests in respect of the Domain Name.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances are:
(i) circumstances indicating that [a respondent has] registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name to the complainant or to a competitor of the complainant, for valuable consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) [the respondent has] registered the disputed domain name in order to prevent the complainant from reflecting the complainant’s trade mark or service mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.
The Complainant has proved that by 2004 when the Domain Name was registered, Virgin had established a very substantial worldwide reputation, including in the travel industry in which the Response shows that the Respondent has interests. Given that worldwide reputation, and the Respondent’s apparent interest in the travel market, the Panel finds it inconceivable that the Respondent would not have been aware of Virgin when the Domain Name was registered. Indeed, the Respondent has not denied that it was aware of Virgin.
Given the widespread reputation of Virgin in the travel market, and the Respondent’s stated intention to begin using the Domain Name as a “travel domain” in 2014, the Respondent must have appreciated that numerous Internet users who were familiar with Virgin would assume that any website at the Domain Name would be operated by (or commercially associated with) Virgin. If the Respondent appreciated that, it is a small step to conclude that the Respondent intended that confusion of that sort should occur.
A number of other factors point to bad faith on the part of the Respondent. The absence of any website at the domain name in the period of approximately nine years since it was registered, clearly called for some explanation from the Respondent. So did the Respondent’s choice of the word “virgin” as the first and dominant component of the Domain Name (the word has no immediately obvious connection with the word “adventures”, at least in the travel industry where the Respondent says it intended to use the Domain Name). The Respondent elected not to address either of those matters, referring only vaguely to a business plan (details of which were not produced) which was said to call for gradual implementation in the travel sector in 2014. The Respondent’s statement that some of the 30 other websites operated by it were not pointed to any website for up to four years after registration, does not provide any adequate explanation for its failure to put the Domain Name to any use over a period as long as nine years.
In short, the Panel has not found the Response credible. In those circumstances, the only sensible inference is that, in registering the Domain Name, the Respondent intended to target the Complainant and its VIRGIN mark for commercial benefit. Given that there is no evidence of any website having been established at the Domain Name, the most probable explanation is that the Respondent registered the Domain Name for the purpose described in paragraph 4(b)(i) of the Policy, set out above, and the Panel so finds.
The Complainant having made out its case on all three elements of paragraph 4(a) of the Policy, the Domain Name must be transferred to the Complainant.
7. Decision
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 <virginadventures.com> be transferred to the Complainant.
Warwick Smith
Sole Panelist
Date: July 29, 2013
1 See section 6D of this decision, infra.
2 The WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview 2.0”), summarizes the consensus view of WIPO UDRP Panels on the “identical or confusingly similar“ question, in the following terms:
“1.2 The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms … typically being regarded as insufficient to prevent threshold internet user confusion. …” See too, the following statement from the decision in Virgin Enterprises Limited v Virginfree, WIPO Case No. D2000-1715, where a complaint relating to the domain name <virginfree.com> was upheld: “An Internet user will probably be struck first by “virgin” and in all likelihood expect a linkage to the Virgin Group. The addition of “free” will by no means lead that person to believe that there cannot be any linkage.”
So here, the Panel considers that many Internet users coming across the Domain Name would probably be struck first by the word “virgin”, and expect to find some linkage between the Domain Name and Virgin. The addition of the generic word “adventures” would not be enough to counter that expectation.