WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Peter Smith
Case No. D2017-0854
1. The Parties
1.1 The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Stobbs IP Limited, United Kingdom (the “Complainant”).
1.2 The Respondent is Peter Smith of Douglas, Isle of Man, United Kingdom (the “Respondent”).
2. The Domain Name and Registrar
2.1 The disputed domain name <virgingamesvirgingames.com> (the “Disputed Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 27, 2017. On April 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 28, 2017, 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.
3.2 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”).
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 2, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 23, 2017.
3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on June 2, 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
4.1 The Complainant is Virgin Enterprises Limited with main offices in London. The Complainant is the brand owner for the Virgin Group of Companies. The Virgin Group is said to have originated in 1970 when Sir Richard Branson commenced the sale of records under the Virgin name and since that date it has expanded into a variety of businesses. It is said that the Virgin Group now comprises of over 200 companies worldwide operating in 32 countries including throughout Europe and the United States of America. The number of employees employed by the Virgin Group of Companies is said to be in excess of 40,000 who in turn are said to generate an annual group turnover in excess of GBP 4.6 billon. It is further stated that the Virgin brand is commonly used together with an additional element for instance in the marks VIRGIN ATLANTIC, VIRGIN TRAINS, VIRGIN HOLIDAYS, VIRGIN MEDIA, VIRGIN MOBILE, VIRGIN RADIO and VIRGIN GAMES. Therefore it is said that the Complainant has developed a significant reputation in relation to the VIRGIN mark and to the VIRGIN brand. The Complainant owns many trademark registrations including the element “virgin” including European Union Trade Mark (“EUTM”) registration number 001470186 for VIRGIN, registered on August 28, 2003, and EUTM registration number 014180491 for VIRGIN GAMES, registered on December 2, 2015.
4.2 The Respondent, according to the WhoIs database, is Peter Smith who is recorded as having registered the Disputed Domain Name <virgingamesvirgingames.com> on September 4, 2016 through the Registrar GoDaddy.com LLC. It resolves to a website hosted at “www.marketworld.com” associated with a licensed binary options scheme.
5. Parties’ Contentions
5.1 The Complainant submits that it has very extensive rights in the VIRGIN and VIRGIN GAMES marks including but not limited to the trademark applications and registrations attached to the Complaint. In addition, it is said that the Complainant has built up a significant reputation and a vast amount of goodwill in the VIRGIN and VIRGIN GAMES trademarks in the United Kingdom and abroad in relation to a wide range of goods and services. The Complainant is also the registered proprietor of over 4,500 domain names incorporating the Virgin name thereby, demonstrating further, the wide scale use of the Virgin brand with an additional element. The Complainant therefore submits that the Disputed Domain Name <virgingamesvirgingames.com> is identical and confusingly similar to trademarks in which the Complainant has rights. In support the Complainant refers to a significant body of previous UDRP decisions where respective panelists have transferred a significant number of domain names to the Complainant. The Complainant in support relies on extracts from some of these decisions including the recent case of Virgin Enterprises Limited v. Richard Nani, WIPO Case No. D2016-0659 concerning <virginatlancticflights.com> wherein it is stated as follows:
“[T]he Panel finds that the Complainant’s trademarks and activities are well known throughout the world.”
And in Virgin Enterprises Limited v. Guard Whois, WIPO Case No. D2015-2348 concerning
<virginatlantic-tickets.com> wherein it is stated as follows:
“[T]he Complainant has also gained a significant reputation in the VIRGIN and VIRGIN ATLANTIC brands through use over decades.”
5.2 Bearing in mind the massive reputation of the Virgin brand and the Complainant’s operations in a wide range of business activities since 1970, it is submitted on behalf of the Complainant that there is no believable or realistic reason for the registration or use of the Disputed Domain Name other than to exploit the rights of the Complainant. Therefore, it is further submitted that the Respondent could not have legitimately registered the Disputed Domain Name as the Respondent clearly has no rights or interests in the “Virgin” or “Virgin Games” marks which form part of the Disputed Domain Name. The Complainant asserts that as the Disputed Domain Name resolves to a website hosted at “www.marketworld.com”, the Disputed Domain Name is not being used in relation to a bona fide offering of goods and services and neither is the Respondent making a legitimate or fair use of the Disputed Domain Name. The Complainant argues that as the Respondent is not commonly known by the name VIRGIN or VIRGIN GAMES and as the Respondent is the owner of over 20,000 domain names it becomes clearer that the Respondent has no legitimate interest in the Disputed Domain Name.
5.3 On the question of bad faith registration, in the first instance, the Complainant argues that the Respondent’s registration of the Disputed Domain Name is a classic example of bad faith registration. Secondly, the Complainant contends that the Respondent failed to respond to letters and emails dispatched to him following the Complainant’s discovery of the Disputed Domain Name registered by the Respondent and that it resolves to a website hosted at “www.marketworld.com” associated with a licensed binary options scheme. Thirdly, the Complainant asserts that it is inconceivable that the Respondent would not have known about the Complainant’s brands prior to registering the Disputed Domain Name. Fourthly, the Complainant alludes to the fact that the Respondent is associated with 20,000 other domain names containing other trademarks and misspellings of the trademarks of other online betting companies for instance <888casino9.com> and <betfairir.com> as further evidence that the Disputed Domain Name was registered in and is being used in bad faith. In this regard the Complainant submits that the Respondent is clearly redirecting Internet users to the website “www.marketworld.com” a website associated with a binary options trading scheme.
5.4 The Respondent did not reply to the Complainant’s contentions. In the circumstances in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default.
6. Discussion and Findings
6.1 Under paragraph 4(a) of the Policy, to succeed in this administrative proceeding the Complainant must prove that: (i) the Disputed Domain Name is identical or confusingly similar to the trademark or service mark of the Complainant; (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 and is being used in bad faith.
6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in any administrative proceeding.
A. Identical or Confusingly Similar
6.3 Undoubtedly, the Panel finds as a fact that the Complainant owns extensive multiple trademark and domain name registrations in the United Kingdom and worldwide for the marks VIRGIN and VIRGIN GAMES. It is also a fact that the Complainant has built up a massive and significant reputation in many business activities worldwide. The Panel finds without any hesitation that the Disputed Domain Name <virgingamesvirgingames.com> is identical or confusingly similar to the Complainant’s marks. See in this regard Bayerische Motoren Werke AG v. bmwcar.com, WIPO Case No. D2002-0615. Clearly, the Disputed Domain Name wholly incorporates the Complainant’s marks. As has been held in previous UDRP decisions, the addition of the generic Top-Level Domain (“gTLD”) “. com” does nothing to prevent a finding of confusing similarity. The Panel is satisfied that the Complainant has also gained a significant reputation in the Virgin brands through use over the decades as held in Virgin Enterprises Limited v. Guard WhoIs, supra.
6.4 The Panel therefore finds that the Complainant has established that the Disputed Domain Name is confusingly similar to the Complainant’s trademarks.
B. Rights or Legitimate Interests
6.5 In line with Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455, the Panel also finds that the Respondent to whom the burden of production shifts in circumstances where the Complainant has established a prima facie case has failed to adduce any evidence or circumstances that suggests any rights or legitimate interests exist in the Disputed Domain Name within paragraph 4(c) of the Policy. As submitted by the Complainant the Respondent has not been authorized or licensed to utilize or register the Disputed Domain Name, neither is there any evidence that the Respondent has ever been commonly known by the Disputed Domain Name or ever been associated or affiliated with the Complainant. Furthermore, the Panel finds that there is no indication that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name without the intention to derive financial gain from misleadingly diverting Internet visitors to a website “www.marketworld.com” associated with a binary options trading scheme.
6.6 Accordingly, the Panel is satisfied that the Complainant has established that the Respondent does not possess any rights or legitimate interests in the Disputed Domain Name as stipulated in paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.7 The Panel equally finds, bearing in mind the massive reputation of the Complainant’s Virgin brand and extensive business activities that the Respondent registered and has continued to use the Disputed Domain Name in bad faith. The Panel has taken into consideration a number of irrefutable factors. Firstly, the Respondent could not have been unaware of the Complainant’s extensive fame and reputation in the VIRGIN and VIRGIN GAMES trademarks before electing to register the Disputed Domain Name. Following Virgin Enterprises Limited v. Simon Thomson, WIPO Case No. D2014-0266 in relation to the domain name <virginentrepreneurs.com>, the Panel draws support from the concluding remarks in that decision which state as follows:
“having regard to the extensive reputation of the complainant under a series of marks comprising of the VIRGIN mark followed by a word descriptive of a business or venture, members of the public would naturally assume that the domain name locates a website connected with the complainant’s group.”
The Panel finds those comments equally applicable in this case. Secondly, since the Disputed Domain Name resolves to a website associated with a binary options trading scheme it is clear that the Respondent has been misleadingly diverting Internet visitors to that website for pecuniary gain which in fact suggests that the Respondent has intentionally attempted to attract for commercial gain, Internet visitors to the website by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement thereof. Thirdly, the WhoIs database reveals that the Respondent is associated with over 20,000 other domain names which contain the trademarks and misspellings of the trademarks of other online betting companies such as <888casino9.com> and <betfairir.com>. Fourthly, the Respondent failed to respond to letters and emails dispatched to him following the Complainant’s discovery that the Respondent had registered the Disputed Domain Name which resolves to a website associated with a binary options trading scheme. Fifthly, as alluded to in 5.4 above, the Panel has drawn adverse inferences from the failure of the Respondent to respond to the contentions of the Complainant in this proceeding.
6.8 Accordingly, the Panel is satisfied that the Respondent registered the Disputed Domain Name in bad faith and continued in bad faith use.
7.1 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 <virgingamesvirgingames.com> be transferred to the Complainant.
Date: June 22, 2017