WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. Mariusz Slowinski

Case No. D2017-0890

1. The Parties

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 Respondent is Mariusz Slowinski of Strzelno, Poland.

2. The Domain Names and Registrars

The disputed domain name <virginmobile.xyz> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com; the disputed domain name <virgin.news> is registered with OVH; and the disputed domain name <virgin9.com> is registered with Key-Systems GmbH dba domaindiscount24.com (altogether referred as the “Registrars”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2017. On May 3, 2017, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On May 4 and 5, 2017, the Registrars transmitted by email to the Center their verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center sent an email communication to the Parties in English and Polish on May 9, 2017 regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain names <virgin.news> and <virgin9.com> is Polish. The Complainant submitted a request for English to be the language of the proceeding on May 11, 2017. The Respondent did not submit any communication regarding 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 of the Complaint, and the proceedings commenced on May 18, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 7, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 13, 2017.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on June 28, 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 Complainant is part of the Virgin Group of companies and acts as its trademark owner. The Virgin Group originated in 1970 when Richard Branson began selling music records under the “Virgin” name and since that date, it has expanded into a wide variety of businesses.

The Complainant is the owner of several VIRGIN and VIRGIN MOBILE trademark registrations in numerous jurisdictions around the world, including, but not limited to, the European Union where the Respondent resides. In the European Union, the Complainant has trademark rights on the VIRGIN sign since 1996 and 1997 in relation to goods and services in class 9 and 38 (European Union trade mark No. 000217182, filed on April 1, 1996, registered on September 4, 1998, duly renewed and European Union trade mark No. 014465496, VIRGIN MOBILE, filed on August 12, 2015, registered on February 15, 2016, duly renewed). The Complainant is also the registrant of 4,500 domain names incorporating the VIRGIN trademark.

The Respondent is an individual person domiciled in Poland. The Respondent’s email address is associated with approximately 75 other domain names. The Respondent registered the disputed domain names on:

- <virginmobile.xyz>: December 2, 2016;

- <virgin9.com>: September 5, 2016;

- <virgin.news>: February 28, 2017.

The disputed domain names <virginmobile.xyz> and <virgin9.com> resolve to pay-per-click pages while the disputed domain name <virgin.news> is inactive.

5. Parties’ Contentions

A. Complainant

Firstly, the Complainant contends that the disputed domain names are identical or at least confusingly similar to their well-known VIRGIN and VIRGIN MOBILE trademarks as the disputed domain names <virgin9.com> and <virgin.news> both incorporate the VIRGIN trademark in its entirety while the disputed domain name <virginmobile.xyz> entirely incorporates the VIRGIN MOBILE trademark.

Secondly, the Complainant puts forward that the Respondent lacks rights and legitimate interests in the disputed domain names as the Respondent has no rights in relation to the VIRGIN and VIRGIN MOBILE signs, nor is the Respondent commonly known by these names. The Complainant further claims that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services, as the disputed domain names <virginmobile.xyz> and <virgin9.com> resolve to pay-per-click pages.

The Complainant finally alleges that the Respondent registered and is using the disputed domain names in bad faith. In this respect, the Complainant claims that the Respondent acquired the disputed domain names with the sole purpose of selling them to the Complainant for valuable consideration, hoping that the registrations would come to the Complainant’s attention. The Complainant also contends that the disputed domain names <virginmobile.xyz> and <virgin9.com> resolve to pay-per-click websites and that this is indicative of an intention to attract Internet users for commercial gain, by creating confusion with the Complainant’s trademarks.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is therefore in default.

6. Discussion and Findings

6.1 Language of proceedings

Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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 proceeding.”

The complaint was filed in English. However, the Registrars of the disputed domain names <virgin.news> and <virgin9.com> confirmed that the registration agreements for those disputed domain names are in Polish.

The Complainant requested that the language of the proceedings be English. Its main arguments are that the Respondent is the owner of several other domain names which are constituted of English words and that it might thus be sufficiently well versed in the English language. The Complainant also argues that they have no knowledge of Polish and that the use of that language instead of English would impose a significant burden on them.

The Respondent did not reply to the Complainant’s request regarding the language of the proceedings.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceedings take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceedings should not create an undue burden for the parties (see, e.g., Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293).

In this case, the Panel observes that the Complaint was filed in English and that the Respondent never answered to any communications from the Center or the Complainant. The Respondent seems to have no interest in the present proceedings. On the other hand, the Complainant has no knowledge of the Polish language and therefore, if the proceedings were to be in Polish, the Panel considers that it would create an undue burden and delay.

Finally, the Panel concurs with prior UDRP panels, especially in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, where a Respondent’s failure to respond to a preliminary determination by the Center as to the language of the proceedings “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the complaint.”

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of these proceedings is English, and that it will accept the communications filed in Polish and English without translation.

6.2 Substantive issues

Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain names be transferred to the Complainant:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names;

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

In the Panel’s opinion, the Complainant has demonstrated clear worldwide trademark rights on the VIRGIN and VIRGIN MOBILE signs, including in the European Union.

The Panel is also satisfied that said trademarks can be considered as well-known trademarks, as they have been found by prior UDRP panels (see, e.g., Virgin Enterprises Limited v. Richard Nani, franco Resources plc, WIPO Case No. D2016-0659; Virgin Enterprises Limited v. Guard Whois, WIPO Case No. D2015-2348; and Virgin Enterprises Limited v. Isabelle Gillard, WIPO Case No. D2015-0244).

The disputed domain names incorporate the Complainant’s trademark VIRGIN in its entirety and the disputed domain name <virginmobile.xyz> entirely incorporates the trademark VIRGIN MOBILE.

The disputed domain names only differ from the Complainant’s trademarks by the adjunction of the number “9” and the generic Top-Level-Domain (“gTLD”) extensions <.xyz>, <.news> and <.com>.

However, it is well established in prior decisions under the UDRP that the mere addition of descriptive and non-distinctive elements to a trademark in which the Complainant has rights is insufficient to avoid a finding of confusing similarity (see, e.g., TPI Holdings Inc. v. Carmen Armengol, WIPO Case No. D2009-0361). In this case, the Panel finds that the mere addition of the number “9” is insufficient to distinguish the disputed domain name <virgin9.com> from the Complainant’s trademark.

Furthermore, for the purposes of the present comparison, the Panel agrees with the common view under the UDRP that gTLD extensions may typically be considered irrelevant in assessing confusing similarity between a trademark and a disputed domain name (see, .e.g., Boehringer Ingelheim International GMBH v. Ralf Zinc, WIPO Case No. D2016-1236) and considers the gTLDs <.xyz>, <.news> and <.com> to be irrelevant.

The combination of the Complainant’s trademark and the <.news> gTLD increase the potential for confusion since such an extension denotes information. In the Panel’s opinion, Internet users are likely to believe that the disputed domain name <virgin.news> directs to information about the Complainant (see, e.g., Inter IKEA Systems B.V. v. Hka c/o Dynadot Privacy, WIPO Case No. D2014-1874).

The Panel consequently finds that the disputed domain names are identical or confusingly similar to the Complainant’s trademarks and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of proving that the respondent lacks rights or legitimate interests in the disputed domain name. However, where the complainant shows a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain names (see, e.g., Crédit Industriel et Commercial S.A. v. Zabor Mok, WIPO Case No. D2015-1432).

In the present case, the Complainant has made a prima facie showing that the Respondent is not commonly known by the VIRGIN or VIRGIN MOBILE signs, nor has he any rights in relation to the VIRGIN and VIRGIN MOBILE trademarks.

The Complainant has indicated that the Respondent does not use the disputed domain names in relation to a bona fide offering of goods or services. Indeed, the disputed domain names <virginmobile.xyz> and <virgin9.com> both resolve to pay-per-click pages displaying commercial links related to the Complainant’s activity. The disputed domain name <virgin.news> is inactive. The Panel therefore finds no basis upon which to attribute any rights or legitimate interests to the Respondent in the disputed domain names in accordance with paragraph 4(c) of the Policy (see, e.g., Spigen Korea Co., Ltd., Spigen Inc. v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2016-0145).

Finally, the Respondent has not filed a response to the Complainant’s contentions to attempt to demonstrate rights or legitimate interests in the disputed domain names and has not provided evidence of the circumstances set in paragraph 4(c) of the Policy.

Consequently, the Panel considers that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Bad faith in registering a domain name can be found when the respondent “knew or, at least should have known” of the complainant’s trademark rights and nevertheless registered a domain name in which it had no rights or legitimate interests (see e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).

In view of the reputation of the Complainant’s trademarks, entirely reproduced in the disputed domain names and the use of such domain names, the Panel finds that it is highly implausible that the Respondent did not have the Complainant in mind when registering the disputed domain names.

Additionally, a quick trademark search for VIRGIN and VIRGIN MOBILE would have revealed the existence of the Complainant and its trademarks to the Respondent. Thus, the Respondent’s failure to do so may be considered a contributory factor to its bad faith (see, e.g., Lancôme Parfums et Beauté & Cie, L’Oréal v. 10 Selling, WIPO Case No. D2008-0226).

Bad faith in using a domain name can be found when a respondent uses the disputed domain name in order to mislead Internet users to believe that the corresponding website is related to the complainant. Directing Internet users to a webpage providing revenue to the Respondent through pay-per-click links is evidence of use in bad faith in the circumstances of the present case (see, e.g., F Hoffmann-La Roche AG v. Anna Valdieri, WIPO Case No. D2007-0956).

In the present case, two of the disputed domain names point towards parking pages displaying commercial links related to the Complainant’s activity, which according to the Panel aims at intentionally creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or links contained in the parking page. Furthermore, it is likely that the Respondent is receiving click-through fees each time an Internet user accesses the websites “www.virginmobile.xyz” and “www.virgin9.com” and clicks on any of the numerous links available. The use of a well-known trademark in order to derive this type of commercial benefit is evidence of bad faith in the Panel’s view.

Finally, per the circumstances of this case, non-use of the disputed domain name <virgin.news> constitutes use in bad faith under paragraph 4(a)(iii) of the Policy. Indeed, the Panel finds hard to conceive any plausible, actual or contemplated active use of the disputed domain name <virgin.news> by the Respondent that would not be illegitimate (see, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

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 disputed domain names, <virginmobile.xyz>, <virgin.news> and <virgin9.com>, be transferred to the Complainant.

Nathalie Dreyfus
Sole Panelist
Date: July 12, 2017