WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Ervin Remus Radosavlevici, Virgin Media Cloud
Case No. D2017-0505
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.
2. The Domain Name and Registrar
The disputed domain names <virginmediacloud.com>, <virginmedia.host> are registered with GoDaddy.com, LLC and <virginmedia.cloud> is registered with Tucows Inc (the “Registrars”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 10, 2017. On March 13, 2017, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On April 13, 14 and April 21, 2017, each Registrar transmitted by email 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 March 27, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 16, 2017. The Center received several email communications from the Respondent dated March 28, April 2, 3, and 11, 2017. The Respondent did not submit any formal response. Accordingly, on April 20, 2017, the Center notified the Parties of the commencement of the Panel appointment process.
The Center appointed James A. Barker as the sole panelist in this matter on May 1, 2017. 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 Panel has accepted the following facts, largely set out in the Complaint. These facts have not been contested by the Respondent.
The Complainant is a wholly owned subsidiary of the Virgin Group and owner and manager of the VIRGIN trademarks. The Virgin Group is engaged in a diverse range of business sectors including travel and leisure, telecommunications and media, music and entertainment, financial services, and health and wellness. The Complainant’s marks are used in connection with more than 60 VIRGIN branded businesses and around 60 million customers world-wide.
The Complainant’s VIRGIN marks were registered as early as 1973 in the United Kingdom (UK Trademark No. 1009534). The Complainant is the owner of numerous registrations which include the VIRGIN name and a stylized form of the VIRGIN logo, a significant number of which are registered in the United Kingdom where the Respondent has its address. These include a UK mark for VIRGIN MEDIA registered in 2007 (UK Trademark No. 2429892) and a European Trade Mark registered in 2015 (Trade Mark No. 013867478).
Virgin Media, Inc. is an authorized licensee of the Complainant and a member of the Virgin Group. Virgin Media is a leading cable operator in the United Kingdom and Ireland. On March 8, 2016, Virgin Media announced that “Virgin Media Cloud”, an online storage system, would be closed on April 28, 2016.
The Complainant is also the registrant of over 5,350 domain names that include its VIRGIN name.
The creation date indicated in the WhoIs details for each of the three disputed domain names indicates March 2016 (<virginmediacloud.com>), August, 2016 (<virginmedia.cloud>) and January, 2017 (<virginmedia.host>).
At the date of this decision, the disputed domain names do not revert to active webpages.
The Respondent is registered as the sole director/shareholder of a UK limited company “Virgin Media Cloud Ltd”, incorporated in England and Wales in July 2016. The Complainant notes that there is no evidence that the Respondent’s company is currently trading.
The Complainant sent a cease and desist letter to the Respondent in September 2016, but got no response despite a follow up letter. Further letters were sent to the Respondent with no reply. Those letters relevantly concerned the disputed domain name <virginmediacloud.com>, as well as other domain names in dispute with the Respondent in separate proceedings to this one. At the time it sent those letters the Complainant says that it was not aware of the registrations of the other two disputed domain names in this case.
5. Parties’ Contentions
The Complainant says that the disputed domain names are identical or confusingly similar to the Complainant’s VIRGIN marks. The addition of the term “cloud” and the generic top-level domain names (gTLDs) “.cloud”, “.host” and “.com”, to those domain names are either irrelevant or not sufficient to distinguish the Complainant’s marks.
The Complainant also says that the Respondent lacks rights or legitimate interests in the disputed domain names. There is no evidence to suggest that the Respondent has any legitimate rights to use the VIRGIN or VIRGIN MEDIA trademarks or that the Respondent is otherwise using the disputed domain names in connection with a bona fide offering of goods or services.
The Complainant says that the disputed domain names were registered and are being used in bad faith. The Complainant considers that the Respondent has registered the disputed domain names to disrupt the business of the Complainant and/or has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks. The Complainant says that this is a reasonable inference in view of the distinctive nature of the Complainant’s marks, and there is no evidence that the Respondent has any connection with the disputed domain names.
Further, or in the alternative, the Complainant says that, given the timing of the registration of the disputed domain names, those registrations were done to take advantage of the closure of Virgin Media’s cloud storage services, information on which was available in the public domain from March 8, 2016. In this respect, the Complainant refers to the registration of <virginmediacloud.com> two days after that date, and the registration of domain names that are not the subject of this dispute.
The Complainant refers to Nominet DRS decisions (for the resolution of .uk domain name disputes) as well as decisions under the Policy that acknowledged the reputation of its marks.
The Respondent did not formally reply to the Complainant’s contentions.
In response to the notification of the Complaint, the Respondent sent an email to the Center stating, in total, that:
“Hello. Can say why? It’s on my company register what it’s the problem with my company and my domains for be restricted. I will attach paperwork from my company register. And please let my know what it’s wrong with my company because the domains it’s restricted this can’t be Possible For you put Restriction and give clearly answer. What it’s wrong with the domains because I need to be used please as soon possible Thanks”.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed the Complainant must prove that:
(i) the disputed domain names are identical or confusingly similar to a trademark 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 were registered and are being used in bad faith.
In considering these elements, paragraph 15(a) of the Rules provides that the Panel shall decide the Complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable. These elements are discussed in turn below, immediately after a discussion of a procedural issue relating to the inclusion of multiple nominal Respondents in this disputed.
A. Differently named Respondents
The Complaint is brought against Ervin Remus Radosavlevici, as the registrant of each of the disputed domain names (although a different physical address is provided for the domain names in the WhoIs record). As confirmed by the concerned Registrar, that Respondent is the registrant of <viginmediacloud.com> and <virginmedia.host>. The third disputed domain name is registered in the name of Ervin Remus Radosavlevici, Virgin Media Cloud.
The Panel does not consider that much turns on this difference in the named registrants. It seems reasonably plain from the record that Ervin Remus Radosavlevici is the registrant-in-fact of all of the disputed domain names. That person has responded in relation to the notification of the Complaint in relation to all three disputed domain names, and not made any claim that he is not the relevant registrant. Accordingly, the Panel has proceeded on the basis that Ervin Remus Radosavlevici is a single registrant of all of the disputed domain names. Notwithstanding some differences in registration details, that person is consistently named in all of the registrations. There is otherwise no strong evidence in the case file that there may be multiple different registrants of the disputed domain names, such that the Panel would need to consider a case for consolidation of the Complaint.
B. Identical or Confusingly Similar
There is no dispute that the Complainant has registered rights in relation to its VIRGIN and VIRGIN MEDIA marks. While the textual components of the Complainant’s marks are obviously descriptive, the Complainant has clearly demonstrated its registered rights, and that it uses its marks for a wide variety of goods and services. The Complainant’s rights in its marks have been recognized in a large number of previous decisions under the Policy. See, most recently in relation to both the Complainant’s VIRGIN and VIRGIN MEDIA marks: Virgin Enterprises Limited v. LINYANXIAO aka lin yanxiao, WIPO Case No. D2016-2302. In that case, the Panel noted that: “By virtue of its extensive use and advertising since the 1970s, the Complainant and its trade marks VIRGIN and VIRGIN MEDIA enjoy a significant reputation worldwide and a strong online presence.”
The Panel finds that all three of the disputed domain names are confusingly similar to at least the Complainant’s VIRGIN MEDIA mark. All of the disputed domain names include that mark entirely, and add only the terms “cloud” or “host” (whether or not as the generic Top-Level Domain (gTLD) extension). Those terms do nothing to distinguish the Complainant’s mark. In the case of the term “cloud”, as the Complainant has set out, this was closely associated with one part of the Complainant’s business, relating directly to the Complainant’s authorized licensee, Virgin Media, Inc. The term “host” would appear to have a similar general connection. For these reasons, it is easily conceivable that the addition of those terms could service to reinforce confusion as to whether the disputed domain names are connected with the Complainant.
The Panel notes that, for two of the disputed domain names, terms have been added as part of the gTLD extension (“cloud” and “host”) rather than as part of the domain name itself. Panels have generally found that the top level gTLD extension is generally irrelevant for considering confusing similarity, as these extensions are only necessary functional components of a domain name. See e.g., paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”). However, this general logic does not hold where the gTLD itself is used, as it is here, in some obviously descriptive sense. In these cases, it is reasonable to infer that Internet users would read all the descriptive components of the disputed domain names as such. The Panel has therefore had regard to the Respondent’s deliberate selection of the terms “cloud” and “host” in the gTLD extension, as supporting a finding of confusing similarity.
For these reasons, the Panel finds that the disputed domain names are confusingly similar to the VIRGIN MEDIA mark in which the Complainant has registered rights.
C. Rights or Legitimate Interests
The Complainant has asserted that the Respondent has no rights or legitimate interests in the disputed domain names and that, given the fame of the Complainant’s marks, it is inconceivable that the Respondent might have acquired such rights. There is no evidence in the case file that the Respondent has made a legitimate or bona fide use of the disputed domain names. Neither has the Respondent come forward with any explanation as to its use of the disputed domain names.
The only communication from the Respondent appears to question why the Complaint has been brought and to states that the disputed domain names are on the “company register”. This is no real argument for the Respondent’s rights or legitimate interests in those domain names. The Respondent’s registration of a company name “Virgin Media Cloud” does not, by itself, provide much support for the Respondent’s rights in the disputed domain names. In this connection, paragraph 4(c)(ii) of the Policy provides that a Respondent might demonstrate rights or legitimate interests by evidence that it is “commonly known” by a disputed domain name. The Respondent has provided no evidence that it is, in fact, “commonly known” by any of the disputed domain names. The formal registration of a company name does nothing to establish the fact of whether the Respondent’s company is in fact trading, or otherwise “commonly known” by the name it has registered.
Paragraph 4(c) of the Policy sets out other illustrative circumstances by which a respondent might demonstrate rights or legitimate interests. The Respondent has not provided evidence to outline any such circumstance. The Respondent has not otherwise put forward evidence that might allow the Panel to consider whether he has rights or legitimate interests in the disputed domain names.
For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names, for the purpose of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainant makes primarily two arguments as to why the Respondent should be found to have both registered and used the disputed domain names in bad faith.
Firstly, the Complainant considers that the Respondent has registered the disputed domain names to disrupt the business of the Complainant. This argument is based on paragraph 4(b)(iii) of the Policy which provides that bad faith may be found where there is evidence the Respondent has “registered the domain name primarily for the purpose of disrupting the business of a competitor”. Paragraph 4(b)(iii) does not require a particular kind or level of intended disruption. It is enough if some kind of disruption is primarily intended.
The Panel however does not consider the evidence strongly points to intended disruption of the Complainant’s business. There is no direct evidence of the Respondent’s intention in this case. The Respondent has not actively used the disputed domain names. There is also no evidence that the Respondent operates any business or enterprise that competes with the Complainant’s.
Secondly, the Complainant argues that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks. For the reasons set out above, the Panel agrees that the Respondent has created a likelihood of confusion with the Complainant’s marks. But the evidence is not strong that the Respondent registered the disputed domain names to attract Internet users to his website. The Respondent has not created any active website, as acknowledged in the Complaint itself. Nor is there evidence that the Respondent has linked any of the disputed domain names to any other website.
While the Panel does not accept either of these arguments, there is nevertheless sufficient evidence to establish the requisite bad faith. The circumstances of bad faith set out in paragraph 4(b) of the Policy are “without limitation” to other circumstances. Those other circumstances can be found where there is evidence that the Respondent registered the disputed domain name to take some unfair advantage of the Complainant’s mark. See e.g., SingTel Optus Pty v. Xnet, WIPO Case No. D2004-0734.
In this case, it can be readily inferred that the Respondent at least knew of the Complainant’s mark when he registered the disputed domain names. As noted by the Complainant, the fame of its mark is such that it is difficult to conceive that the Respondent was not aware of it; or that the Respondent could have a legitimate purpose in registering the disputed domain name other than to create a false impression of an association with the Complainant. Similar findings have been made by Panels in previous cases involving the Complainant’s mark. In addition to the cases noted above, and in relation to at least the Complainant’s VIRGIN MEDIA mark, see e.g., Virgin Enterprises Limited v. Cesar Alvarez, WIPO Case No. D2016-2140, Virgin Enterprises Limited v. Wang Hong Wei, WIPO Case No. D2016-1860.
This finding is reinforced by other circumstances in this case. The Respondent has exactly incorporated the Complainant’s VIRGIN MEDIA mark in the disputed domain names, and added terms (“cloud” and “host”) that directly relate to the business of Virgin Media, Inc, at least as it operated for some period. There is no countervailing evidence that the Respondent has some connection with those marks that is unconnected with the Complainant’s business. The registration and contact details for the disputed domain names also include various differences, unexplained by the Respondent.
In these circumstances, the Panel agrees that it is difficult to conceive that the Respondent can have registered and used the disputed domain names in good faith. For completeness, the Panel also notes that the inactive holding of the registrations by the Respondent does not detract from this conclusion. It is well-established that a lack of positive action may, in appropriate circumstances, itself be evidence of bad faith: Telstra Corporation v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
For these reasons, the Panel finds that the disputed domain names have been registered and used 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 disputed domain names <virginmedia.cloud>, <virginmediacloud.com>, <virginmedia.host> be transferred to the Complainant.
James A. Barker
Date: May 15, 2017