WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Imran Zafar
Case No. D2002-0696
1. The Parties
Complainant is Virgin Enterprises Limited, of London, United Kingdom ("U.K.") (hereinafter "the Complainant"), represented by Mr. Richard Penfold of Harbottle & Lewis, Solicitors, London, U.K..
Respondent is Mr. Imran Zafar of London, U.K. (hereinafter "the Respondent"), who represents himself in this Administrative Proceeding.
2. The Domain Names and Registrar
The domain names at issue are respectively and (hereinafter when referred to jointly "the Domain Names"). The Registrar with which the Domain Names are registered is Computer Service Langenbach GmbH trading as J of Rathauser 16, D-40213, Düssledorf, Germany (hereinafter "the Registrar").
3. Procedural History
This is an Administrative Proceeding concerning a Complaint (hereinafter "the Complaint") submitted by the Complainant pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") implemented by the Internet Corporation for Assigned Names and Numbers (hereinafter "ICANN") on October 24, 1999, and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented by ICANN on the same date (hereinafter "the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (hereinafter "the Supplemental Rules") of the WIPO Arbitration and Mediation Center (hereinafter "the Center").
The Original Complaint relating to the Domain Name was received by the Center by e-mail on July 23, 2002, and in hardcopy on July 26, 2002. The Original Complaint was acknowledged on July 24, 2002.
On July 24, 2002, registration details and verification as to the Domain Name were sought from the Registrar. First, Second and Final Reminders were sent to the Registrar by e-mail respectively on July 26, July 30 and July 31, 2002. On August 1, 2002, the Registrar confirmed (1) that the disputed Domain Name, , was registered with it in the name of the Respondent; (2) that the record was created on June 12, 2002, and modified on July 3, 2002; (3) that the Policy applied to the disputed Domain Name, ; and (4) that the languages of the Registration Agreement were German and English. On August 1, 2002, further confirmation was sought from the Registrar regarding the language of the Registration Agreement.
On the foregoing date a request was made by the Complainant to amend the Complaint to include the additional Domain Name, . The Amended Complaint concerning the Domain Names was received by the Center by e-mail on August 1, 2002, and in hardcopy on August 6, 2002.
On August 2, 2002, registration details and verification as to the Domain Name were sought from the Registrar. On August 5, 2002, the Registrar confirmed (1) that the disputed Domain Name, was registered with it in the name of the Respondent; (2) that the record was created on June 12, 2002, and modified on August 1, 2002; (3) that the Policy applied to the disputed Domain Name, ; and (4) that the languages of the Registration Agreement were German and English (as explained by the Registrar, the German and English versions are shown "at the same time"). This applies to both the Domain Names.
A request for further details and confirmation was submitted to the Registrar on August 5, 2002. A reminder was sent on August 6, 2002, and a reply was received by the Center on August 7, 2002.
On August 7, 2002, a Complaint Deficiency Notification was sent by the Center to the Complainant. Consequent on this, an Amended Complaint was received by the Center by e-mail on August 7, 2002, and in hardcopy on August 12, 2002.
In accordance with Paragraph 4a of the Rules and Paragraph 5 of the Supplemental Rules, the Center has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules. Payment in the required amount to the Center has been made by the Complainant.
On August 8, 2002, the Center formally dispatched to the Respondent, by e-mail, the Notification of Complaint and Commencement of Administrative Proceeding, the Original Complaint, the Amended Complaint and the Corrected Amended Complaint, together with a letter to notify the Respondent of the commencement of this Administrative Proceeding. A hardcopy of the foregoing documents was also sent to the Respondent by courier. Further copies were sent by the Center to the Complainant, the Registrar and ICANN.
In accordance with Paragraph 4c of the Rules, the formal date of the commencement of the administrative proceeding was August 8, 2002. Pursuant to Paragraph 5 of the Rules, the last day for the submission of a Response to the Complaint by the Respondent was August 28, 2002. A Response was received, in fact, by the Center, by e-mail, on August 9, 2002, and in hardcopy on August 12, 2002. Receipt of the Response in hardcopy was acknowledged by the Center on August 12, 2002.
On August 23, 2002, the parties were notified by the Center, in accordance with Paragraph 6f of the Rules as to the appointment of Mr. Michael Ophir to serve as a single member Administrative Panelist, he having submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On that day the Center transmitted the case file to the Administrative Panel ("the Panel") and notified the parties of the projected decision date.
On August 16, 2002 the Center received, by e-mail, a Supplemental Filing on the part of the Complainant. A hardcopy of this was received by the Center on August 20, 2002. Receipt of the Supplemental Filing transmitted by e-mail was acknowledged by the Center on August 19, 2002.
4. Factual Background
4.1 Activities of the Complainant
The information below is submitted as fact by the Complainant and, except where otherwise stated, is accepted as such by the Panel. The principal details are as follows:
The Virgin Group comprises several hundred companies, most of which are organized into corporate groups. The Complainant licenses companies within the Virgin Group to use the VIRGIN name. Most companies within the Virgin Group are trading companies the names of which begin with the word "Virgin".
Some examples of the Virgin Group�s versatility and diversity are as follows:
The Virgin Group was established in 1970, as a mail order company selling popular music records. In 1971, the first Virgin record shop was opened in London. Since then, the Virgin Group has used the name "VIRGIN".
In 1979, the Virgin Group launched the "Virgin Megastore" concept. There are, today, over 30 Virgin Megastores in the U.K. and Ireland selling records, tapes, CD discs, DVDs and computer games software. Seventy Virgin Megastores have been opened worldwide, including 10 in the USA. In 1998, the turnover for the Megastore business in the U.K. exceeded �250 million.
The Virgin Group expanded from its retail base to establish a film and video distribution company, nightclubs and commercial and residential property development companies, while at the same time expanding into computer games and software publishing with the formation of Virgin Games Limited and Virgin Mastertronic Limited.
In 1984, Virgin Atlantic Airways Limited ("VAA") was launched. VAA currently carries over one million passengers per year and its worldwide turnover in 1998, was over �820 million. Virgin Holidays Limited, formed in 1985, had a turnover in 1998 of �166 million.
The Virgin Group�s interests extend beyond the U.K. (1) to the Far East where Virgin Vision Limited distributes films and videos; (2) the various holiday destinations to which customers of Virgin Holidays Limited travel; (3) to Australia, Europe, and the USA, where Virgin Records (America) Inc. was launched in 1987 and, in particular, New York and Miami where VAA�s aircraft fly under the distinctive VIRGIN name.
The majority of the Virgin Group companies that do not include VIRGIN in their company name, do, nevertheless, either trade under the name VIRGIN or use the VIRGIN name in relation to their products or services.
In March 1995, Virgin Direct (now renamed Virgin Money Group Limited) was launched to sell financial services at a significantly lower cost than traditional finance services companies. It now has in excess of �2 billion of funds under management and, in 1998, had a U.K. turnover of over �550 million.
In October 1997, Virgin Direct entered into a joint venture with the Royal Bank of Scotland and launched the "Virgin One" account, as a combined mortgage and current account, in order to break down the barriers between savings and borrowing. The "Virgin One" account was originally available to Virgin Direct customers and homeowners. Its key advantage was advertised as offering "One Account, One Statement and One Phone Number" to customers who can run their account over the telephone 24 hours a day, any day of the year. Customers can also apply for financial services online at "" and "". The "Virgin One" account had 82,000 customers and �4.55 billion of committed customer facilities as at December 31, 2001. The U.K. registered trademark VIRGIN ONE is used under license from the Complainant.
In June 1996, Virgin began operation of its own Internet Website, identified by the domain name . Virgin Net was launched at the end of 1996, as an Internet service provider.
Virgin is one of the U.K.�s largest private corporate groups and has achieved growth from a sales turnover in 1983, totaling �50 million to a turnover, in 1994, exceeding �1.4 billion. Total turnover for the group in 1997 exceeded �2.1 billion and, in 1998, exceeded �2.5 billion. Estimates for 2001 are in the region of �3.8 billion. These figures do not include all the turnover of goods and services provided under the VIRGIN trademark under license to others and specifically exclude the turnover figures of Virgin Records and Virgin Interactive Entertainment. As a group, Virgin currently employs over 30,000 staff and operates in over 20 countries across the world.
The Complainant submits that the Virgin Group is an entity which deals with, and depends upon, the general public for its business. In doing so, it trades very much upon the VIRGIN name, which has considerable goodwill with the public and is associated with an extremely wide variety of products and services. A survey conducted by the U.K. Public Relations Magazine PR Week in 1995, showed that over 90% of the public recognized the VIRGIN name.
It is further submitted that the Virgin Group�s reputation is not limited to any particular area of activity. The history of the Virgin Group shows that it has always been interested in developing new products and services and expanding its market place, whilst relying on the VIRGIN name to rally support to a particular new enterprise or market place.
The Complainant is registrant of many hundreds of domain names, the majority of which include the VIRGIN name.
4.2 The Complainant�s Trademarks
The Complainant submits that it is the proprietor of all worldwide VIRGIN trademark applications and registrations attributable to the Virgin Group of companies and that it licenses the VIRGIN trademark to companies both within and outside the Virgin Group of companies.
The word "VIRGIN", it is contended, was first registered by the Virgin Group as a trademark on April 11, 1973. Since the late 1970s, the Group has also used a stylized form of the "VIRGIN" name. This was first registered as a trademark in 1979, and is known as the VIRGIN "signature logo".
The Complainant, on its submission, owns approximately 1400 trade and service mark applications and registrations for the "VIRGIN" trademark in over 123 countries for a wide variety of goods and services. In the U.K., alone, the Complainant claims that it owns over 30 trademark registrations for the word "VIRGIN" on its own. In particular, the Complainant is the proprietor of a U.K. registered service mark "VIRGIN ONE" to which further reference will be made in this Decision.
4.3 The Respondent�s Activities
On June 12, 2002, the Respondent registered the Domain Names and . This was many years after the establishment of the Virgin Group�s reputation for a wide variety of goods and services and after the registration of numerous U.K. and worldwide trademarks incorporating the "VIRGIN" name, including the foregoing U.K. registered trademark for "VIRGIN ONE" which was registered in March 1998.
The Respondent first came to the Complainant�s attention on June 20, 2002, when the Respondent sent an e-mail to various addresses of the Virgin One Group�s administration, with the subject heading of "New Website VirginO." The e-mails were received at the personal e-mail addresses of several Virgin One employees. The text of the e-mail stated "Please visit the new website and find out more." The Virgin One employees who received the e-mail found that the "" site provided links to various pornographic sites.
The Complainant instructed its authorized representatives to send a letter of claim to the Respondent, which was done on June 27, 2002, by e-mail, notifying the Respondent that he was infringing the Complainant�s intellectual property rights, requesting that the Domain Name be canceled, and that the Complainant�s authorized representatives be notified as soon as this was done. A deadline of July 4, 2002, was given.
The Respondent replied to the foregoing notification on June 27, 2002, by e-mail and attached letter, disagreeing with the Complainant�s assertions and stating inter alia "We would like to inform you that waiting till July 4, 2002 would be a waste of time and your clients are more than welcome to commence proceedings now. But, please be aware that the moment these proceedings begin this news will hit the headlines of every national paper." The letter was signed "The Virgin Team".
On July 1, 2002, the Complainant�s authorized representatives undertook an Internet search to check the status of the website, which revealed that the website was active and provided links to several pornographic sites.
On July 23, 2002, the Complainant�s authorized representatives sent copies of the Original Complaint by e-mail to WIPO, the Respondent and the Registrar. At this stage, the Complainant was unaware that the Respondent had also registered the Domain Name and only discovered its existence on July 31, 2002. The Complainant notified its authorized representatives, who, in turn, requested permission from the WIPO Case Manager to amend and resubmit the Complaint. This permission was received on August 1, 2002, on which date the Complaint was resubmitted by e-mail.
On the filing date of this Complaint the Domain Names were still registered in the name of the Respondent.
5. Parties� Contentions
5.1 Complainant
Identical or Confusingly Similar to a Trademark or Service Mark
It is submitted by the Complainant that the Domain Names contain a word confusingly similar to the Complainant�s trademark VIRGIN and identical to the Complainant�s registered trademark VIRGIN ONE, with no relevant distinguishing matter.
It is further contended that Virgin has established a reputation in the financial services industry through the Virgin Direct business and the Virgin One Account launched in October 1997. There is, therefore, potential for confusion amongst the public who have become accustomed to seeing the VIRGIN ONE mark used to describe the financial products and services provided by the Virgin One Account. The Complainant is the registered owner of eight Domain Names incorporating VIRGIN ONE each of which directs Internet traffic to the VIRGIN ONE website. The Domain Names are therefore confusingly similar to the trademark VIRGIN ONE in which the Complainant has registered and unregistered/common law trademark rights. It is submitted, therefore, by the Complainant that the provisions of Paragraph 4a(i) of the Policy are satisfied.
Rights or Legitimate Interests in the Domain Names
The Complainant contends that, pursuant to the provisions of Paragraph 4a(ii), the Respondent has no rights or legitimate interests in respect of the Domain Names as evidenced by the fact that:
(1) the Respondent has no relationship with or permission from the Complainant for the use of the marks VIRGIN and/or VIRGIN ONE. Further, the Complainant has not consented to the Respondent�s application for registration of, or use of, any domain name incorporating those marks;
(2) the Domain Names were registered by the Respondent on June 12, 2002. At that time the Complainant and the Virgin Group, it is submitted, had a very considerable reputation in the VIRGIN name in the U.K. and elsewhere. At that time, also, the Complainant had both U.K. and overseas registered trademark rights in the VIRGIN name and had common law trademark rights in the name, which it had been accruing since the early 1970s. In addition, the Complainant had a U.K. registered trademark for VIRGIN ONE and, it is submitted, had a significant reputation in the VIRGIN ONE account which had been built up since 1997;
(3) as far as the Complainant is aware there is no evidence of the Respondent�s use of or demonstrable preparations to use the Domain Names or either of them, in connection with a bona fide activity. The Complainant also contends that any commercial activity under the VIRGIN name without license or authority from the Complainant is not bona fide due to the strength of its common law and registered trademark rights;
(4) as far as the Complainant is aware the Respondent is not commonly known by the Domain Names or either of them, and submits that this is highly unlikely, bearing in mind the substantial goodwill established by the Complainant in the VIRGIN mark and the VIRGIN ONE mark to date, and its rigorous policing of both the VIRGIN mark and the VIRGIN ONE mark;
(5) The Complainant is not aware that the Respondent is making a legitimate non-commercial or fair use of the Domain Names or, without intent, for commercial gain. It is submitted by the Complainant that any use of the Domain Names by the Respondent is likely to misleadingly divert consumers or to tarnish or otherwise dilute the Complainant�s well known registered trademarks. Furthermore as set out in paragraphs 51 to 64 (inclusive) of the Complaint, the Respondent is actively targeting the Complainant with a view to redirecting Internet traffic from the Complainant�s VIRGIN ONE website to the Respondent�s website via the Domain Names and providing links to various pornographic sites.
Registration and Use in Bad Faith
The Complainant contends that the Respondent has registered and is using the Domain Names in bad faith in violation of the Policy at Paragraph 4a(iii) on the following grounds:
(1) It is submitted by the Complainant that, at the time of the registration of the Domain Names by the Respondent, the mark VIRGIN was well known both in the U.K. and overseas and the mark VIRGIN ONE was well known in the U.K. The Complainant, in its submission, had created substantial goodwill in both the marks concerned and had trademark rights which were first registered in the early 1970s in respect of the mark VIRGIN;
(2) it is beyond reasonable belief, it is submitted, that the Respondent registered the Domain Names without the Complainant or the Virgin Group in mind. This, the Complainant asserts, is clear from the Respondent�s e-mail to Virgin One�s employees sent shortly after the Domain Names were registered;
(3) from the evidence, in particular the e-mail correspondence from the Respondent to Virgin One employees, the Domain Names were registered in order to take advantage of and tarnish the Complainant�s goodwill by re-directing Internet traffic to pornographic websites.
WIPO Decisions
The Complainant refers to the following decisions of the Administrative Panel in support of the present Complaint:
(1)In Yahoo! Inc v. Jorge O. Kirovsky, WIPO Case No. D2000-0428 the Panel considered that the use of the non-distinctive words "mail" and "chat", added to the name YAHOO in the domain names registered by the Respondent, rendered the domain names confusingly similar to the Complainant�s mark YAHOO, particularly as the non-distinctive words were closely associated with the Complainant�s business.
(2)GA Modefine SA v. AES Optics, WIPO Case No. D2000-0306 concerned the domain name . In considering whether the registration and use of the Domain Name had been carried out in bad faith the Panel stated:
"...bad faith can be presumed in the registration and use of a domain name consisting wholly or partly of the notorious trademark of a third party".
(3)In Endemol Entertainment UK Plc v. Guido Scherpenhuyzen, WIPO Case No. DTV2001-0023 concerning the domain names and , the Panel considered that:
"The linking of the domain name to a pornographic website as well as a neo-nazi website, and specifically informing Complainant regarding this, illustrates conclusively Respondent�s disreputable intentions with the domain names at issue."
The Panel found that this was a fact which supported a finding of bad faith.
U.K. Case Law
It is submitted by the Complainant that U.K. law, where the Complainant is domiciled, supports its claim that the Respondent has no rights in the Domain Names concerned and that these should be transferred to the Complainant. The following case was referred to by the Complainant in support of its Complaint:
In British Telecommunications plc and Others v. One in a Million Limited (1999) FSR 1 (CA) (the "One in a Million Case"), the court upheld (1) both the fundamental principle that nobody has any right to represent his goods as the goods of somebody else [see also A.G. Spalding & Bros. v. A.W. Gamage Limited [1915] 32 RPC 273 at 283] and (2) that the mere registration of a domain name, which incorporates a well known trademark, in itself amounts to passing off and trademark infringement.
The Court of Appeal confirmed that the trade names in question in the One in a Million Case, including the VIRGIN name, were well known �household names�. It was held further that "...the placing on a register of a distinctive name makes a representation to persons who consult the register that the registrant is connected or associated with the name registered and thus the owner of the goodwill in the name" (Aldous LJ at page 23).
5.2 Respondent
The principal features set out in the Response are as follows:
Legal Grounds
The Respondent draws the attention of the Panel to Section 10(2) of the U.K. Trademarks Act, 1994 which provides that -
"A registered trademark is infringed if someone else uses a mark identical or similar to the registered trademark in relation to goods or services which are identical to or similar to those for which the trademark is registered and there exists a likelihood of confusion on the part of the public which includes the likelihood of association with the trademark."
Factual Assertions and Submissions in Reply to the Contentions of the Complainant
Whether the Domain Names are Identical or Confusingly Similar to a Trademark or Service Mark in which the Complainant has Rights
The Respondent admits that the Domain Name is confusingly similar to Complainant�s mark, Virgin One, which, however, is only registered in the U.K. under Class 36 (Financial Services) by the Complainant.
The Respondent submits that no member of the public would be imprudent enough not to distinguish the dissimilarity between the Complainant�s goods or services (Financial) and an adult website featuring sexually inexperienced females. Given the nature of the Internet, when appears in a domain name, a user, in the Respondent�s view, would be unreasonable in assuming that it must resolve to one of the Complainant�s websites. In any event, a user, it is contended, seeing the explicit nature of the "www." website would very quickly realize that it is in no way connected to the Complainant.
Trademarks, it is submitted by the Respondent, are important rights that enable their proprietors to establish brand awareness while protecting consumers from marketplace confusion. What they typically do not do, however, is to grant trademark proprietors a complete monopoly over the use of a word. Further, a U.K. Class 36 (Financial Affairs) registration does not give the Complainant exclusive Global Rights to the expression "Virgin One".
It is submitted by the Respondent that simply because a domain name is similar or even identical to a trademark, should not result in the transfer of the domain name to the trademark proprietor. Unless there is evidence that the use of the domain name concerned actually infringes a registered trademark, a person other than the proprietor of that trademark should be able to continue to use the domain name.
Whether the Respondent has Rights or Legitimate Interests in Respect of the Domain Names
It is asserted by the Respondent that the Domain Name "virginone" is composed of two generic words, namely "Virgin" and "One". The word "Virgin" is a common noun. It has a number of meanings essentially connoting a sexually inexperienced female, and including "a person who has not experienced sexual intercourse", "a chaste or unmarried woman; a maiden", "The Virgin Mary" and "unused, pristine, in a known initial state", and, as adjectives, "of relating to, or being a virgin; chaste", "being in a pure or natural state"; "unsullied: virgin snow, virgin soil", "unused, uncultivated, or unexplored: virgin territory", "existing in native or raw form; not processed or refined" and "obtained directly from the first pressing: virgin olive oil".
The word "one" has been defined as � "a single entity, unit, object, or living being" "the single and only individual of a specified or implied kind", "single, unmarried".
It is contended by the Respondent that Virgin Enterprises have chosen their name "Virgin" with the full knowledge that it has an adult meaning. They must accept, therefore, that there will be uses for the word "Virgin" other than their own.
"Virgin", on the Respondent�s submission, is the first choice of word amongst Internet users trying to track down websites with pornography.
The word "virgin", argues the Respondent, is a common descriptive word which is totally apt for use in the Respondent�s adult website. There is no reason why the Respondent should be deterred from adopting such a manifestly appropriate descriptive term if it is available.
The Respondent, on his submission, is making a perfectly legitimate use of the Domain Names in connection with a bona fide offering of services (for the purpose of an adult website as the names suggest) without creating any confusion with the Complainant�s mark.
According to paragraph 69 (iii) of the Complaint the Complainant states:
"as far as the Complainant is aware there is no evidence of the Respondent�s use of or demonstrable preparations to use any of the domain names in connection with a bona fide activity."
As submitted by the Respondent, according to paragraphs 52, 56, 57, 58, 59 and 63 of the Complaint, under the heading "The Respondent�s Activities", the Complainant admits that "[t]he website was active and provided links to several pornographic sites." Further, in paragraph 63 of the Complaint it states "[t]he site was still active on July 23, 2002."
Virgin Enterprises, it is contended by the Respondent, does not have carte blanche ownership of everything with the word "virgin" in it. There are more than five thousand (5000) domain names registered containing the word "Virgin". A list of such domain names was supplied by the Respondent. It is surprising, therefore, to the Respondent how Virgin Enterprises could assert that it was the only one meriting the proprietorship of the and Domains when thousands of businesses use the word "Virgin" in their names.
Whether the Domain Names have been Registered and are being Used in Bad Faith
The Respondent submits that trademark rights and domain name rights are not coextensive. One may, he asserts, register a domain name for a legitimate purpose even if another party has trademark rights in a corresponding mark. Mere knowledge, the Respondent contends, that another party claims such trademark rights in the same name is not sufficient, by itself, to constitute a bad faith registration, particularly where the name involved is a common noun such as "Virgin".
The Domain Names, the Respondent asserts, were not registered in order to be resold to the Complainant or to any other individual or business under any circumstances and were, on no occasion, offered to anyone at any price.
On the Respondent�s submission, the Domain Names were mainly registered bearing in mind that the words "Virgin" and "One/1" would be a suitable name for a pornographic website of the kind planned by the Respondent (containing images of sexually inexperienced females amongst other pornography). The idea behind the name was basically "One and Only Virgin".
As contended by the Respondent, the primary purpose of choosing and registering the Domain Names was to set up an adult website. On account of the divergence of services offered by the Complainant and the Respondent, and the difference between their respective trade channels, there is no risk of confusion between the Complainant�s trademark, on the one hand, and the Respondent�s Domain Names, on the other.
In the Respondent�s view it is obvious, by the nature of the respective services provided, that the Complainant and the Respondent are not competitors. Further, the Domain Names were not registered by the Respondent primarily to disrupt the Complainant�s business.
The Respondent claims that he has never intended to use the Domain Names for commercial gain by diverting consumers or tarnishing the Complainant�s mark.
On the Respondent�s submission, if one looks at the copy of the e-mail and attached letter of the Complaint supplied by the Complainant it will be noticed that, instead of asking the Respondent to cancel the Domain and notify the Complainant�s authorized representatives, the Respondent was requested to provide undertakings for immediately transferring the Domain Name to the Complainant. In addition, the Respondent was asked to pay a sum of �500 as a contribution towards damages and legal expenses incurred in obtaining these undertakings. The Respondent was also requested to undertake that he would not now, or in the future �
(1) trade under the VIRGIN name or anything deceptively similar thereto anywhere in the world; or
(2) establish or operate a Website using any Internet domain name or URL which comprises or includes the VIRGIN name; or
(3) use, sell, transfer or assign or offer for sale, transfer or assign the domain name or any other domain name incorporating the VIRGIN name or anything deceptively similar to any person other than the Complainant; or
(4) otherwise pass off any goods or services as being the goods or services of or approved or authorized by Virgin Enterprises Limited, whether by use of or dealing in the domain name or by any other use of or dealings in the VIRGIN name; or
(5) following compliance with the undertakings set out at paragraph 1 above, register any domain names, file any trademark applications or incorporate any companies that include the name VIRGIN or anything deceptively similar thereto anywhere in the world;
(6) or authorize, assist or enable others to do any of the above.
Taking the above facts into consideration, it clearly proves, on the Respondent�s submission, that this is a case of harassment in which a multi-billion pound enterprise is abusing its powers to suppress a perfectly legitimate business of an individual who is in no position to fight the giant. The Panel is requested, therefore, to make a finding of reverse domain name hijacking.
6. Discussion and Findings
6.1 Decision by Panel on Admissibility of Complainant�s Further Submissions made Subsequent to Filing of Response by Respondent
The Center, in its communications with the Complainant and the Respondent subsequent to the filing of the Response, correctly observed the position under the provision of the Policy and the Rules, which do not provide for the parties to the dispute filing Supplementary Submissions subsequent to the Complaint and the Response. Paragraph 12 of the Rules does provide, however, that �
"In addition to the Complaint and the Response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties."
From the wording of the foregoing provision in Rule 12, it seems clear that Supplementary Submissions may only be filed by the Complainant and/or the Respondent at the specific request of the Administrative Panel.
This Panel respectfully agrees with the view expressed by the Administrative Panelist in Harvey Norman Retailing Pty Ltd. v. Pty Ltd.,WIPO Case No. D2000-0945, who stated that "...it would, and should, be in exceptional cases only that supplementary submissions are requested by a Panel" (see also: Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 and Gordon Sumner, p/k/a Sting v. Michael Urvan, WIPO Case No. D2000-0596).
This Panel does not consider that there are any exceptional circumstances in this case that would warrant the Panel to request the Complainant to file Further Submissions to the Respondent�s Response. Further, there is, in the Panel�s view, nothing exceptional in the facts or legal provisions in dispute between the parties to this Administrative Proceeding, or in the application of the Policy to those facts or to those legal provisions, or in the form and substance of the Complaint and the Response submitted by the parties, which would justify complicating the present issue by requesting Supplementary Submissions on the part of the parties or either of them.
In the light of the foregoing observations, this Panel does not request the filing of Supplementary Submissions on the part of the Complainant and will not direct its attention or take into account the unsolicited Supplementary Submissions made by the Complainant.
6.2 General Observations
The Complainant has devoted a considerable part of its Complaint to a detailed description and analysis of the VIRGIN Group of Companies and its manifold interests. There are, today, several hundred VIRGIN companies encompassing a very wide range of activities including, but not limited to, rail transport, retail trade, hotels, entertainment, aviation, literary publication, travel and finance.
The VIRGIN Group, with a staff of over 30,000 and operations in more than 20 countries throughout the world, constitutes one of the largest private corporate groups in the U.K., the growth of which has increased from a sales turnover of �50 million in 1983, to a total turnover exceeding �2.5 billion in 1998. Estimates for the year 2001 are in the region of �3.8 billion.
From the details supplied by the Complainant it is clear that the VIRGIN Group is an extremely substantial concern of both local and international repute. It is understandable, therefore, that the VIRGIN Group constitutes an entity "which deals with, and depends upon, the general public for its business". In doing so, "it trades very much upon the VIRGIN name, which has considerable goodwill with the public and is associated with an extremely wide variety of products and services."
One might add that, in the eyes of the general public, the VIRGIN Group of Companies undoubtedly enjoys considerable repute and is regarded as having the highest integrity and moral standing. This, in part might well account for the survey result, in 1995, conducted by the U.K. Public Relations magazine PR Week, which showed that over 90% of the public recognized the VIRGIN name (Complaint, paragraph 46).
This Panel notes that the Complainant is the proprietor of some 1400 trade and service mark applications and registrations for the VIRGIN mark for a wide variety of goods and services in over 123 countries. This Panel, in particular, takes due note of the U.K. trademark registrations for the word VIRGIN on its own and of the registered trademark of the Complainant "VIRGIN ONE".
6.3 Reasoned Discussion and Finding
Pursuant to the provisions of paragraph 4a of the Policy it is incumbent upon the Complainant to prove to the Panel the three following elements if it is to succeed in convincing the Panel to transfer the Respondent�s registered Domain Names to it:
(i)that the Domain Names are 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 Domain Names; and
(iii)that the Domain Names have been registered by the Respondent or on his behalf and are being used in bad faith.
Each of the foregoing three elements will be considered in turn by this Panel.
Identical or Confusingly Similar to a Trademark or Service Mark in which the Complainant has Rights
Based on the evidence submitted, the Panel finds that the Complainant is the proprietor of, and has rights to, the trademark "VIRGIN ONE". The Panel also finds, on the evidence, that the foregoing trademark is distinctive.
The Domain Names in issue are respectively and . It has been held in previous Panel Decisions that the suffix ".com" has no bearing on the question of identity or similarity. This Panel approves those earlier findings and extends their import to the suffix ".net", which, likewise, has no relevance in this Panel�s view, to the question of identity or confusing similarity.
In the light of the foregoing it is clear (and the Respondent himself admits this) that the Domain Name , registered by the Respondent, is identical to the Complainant�s trademark "VIRGIN ONE" under the provisions of paragraph 4a(i) of the Policy.
This Panel accepts the Complainant�s submission that the Virgin Group has established, inter alia, a considerable reputation in the financial services industry through the Virgin One Account launched in 1997. It is agreed, accordingly, that there is a potential for confusion by the public, which has become accustomed to seeing the VIRGIN ONE mark used to describe the financial services provided by the Virgin One Account.
It is noteworthy, also, that the Complainant is the registered owner of eight domain names incorporating "VIRGIN ONE". Each of these directs Internet traffic to the VIRGIN ONE website. From this and the foregoing it is clear, in the opinion of this Panel, that the Respondent�s registered Domain Name , whilst not identical to the Complainant�s trademark, is, nevertheless, confusingly similar to the mark "VIRGIN ONE" (see, also, Yahoo! Inc. v. Jorge O. Kirovsky previously considered).
It is established ICANN policy that having a domain name, which is identical or confusingly similar to a registered trademark, is sufficient to meet the test established by paragraph 4a(i) of the Policy even if there is no likelihood of de facto confusion. There is no relevance, therefore, to the Respondent�s submission to the effect that the trademark registered by the Complainant in the area of financial services has no connection with the pornographic elements inherent in the Respondent�s registered Domain Names and that, accordingly, there is no risk of confusion on the part of the Complainant�s customers.
By the same token, there is no relevancy to the Respondent�s submission in connection with Section 10(2) of the U.K. Trademarks Act, 1994, which was previously considered. As laid down by the Panel in Television Française 1 v. The Fork 1, WIPO Case No. D2000-0747, identity and confusing similarity are not to be measured by reference to classes of goods or services in relation to which they are used. This Panel cites with approval the finding in the foregoing Administrative Decision that "....a domain name being identical to a trademark is not a matter of similarity of goods or services covered by the respective trademark nor existence of a likelihood of confusion due to the similarity of goods or services covered by the trademark". It should be pointed out, in addition, that, in the light of the foregoing finding by this Panel, the Respondent�s submissions as to the exclusivity of a trademark in relation to the Class of goods or services under which it is registered, is, likewise, irrelevant.
The evidence submitted by the Complainant certainly supports the claim that the word "VIRGIN", by itself or in combination with another word or words, constitutes a well-known mark. This is important since it reinforces the Complainant�s position in regard to the �identical� and �confusingly similar� aspects in Paragraph 4a(i) of the Policy. On the other hand, no concern, however well-known, famous or even notorious, can acquire a universal monopoly, without limitation, on a common noun unless, of course, that common noun has become distinctive in relation to a particular class of goods or services. To this limited extent the Panel accepts the Respondent�s submission � even though this does not change the final outcome of this case. The various etymological definitions of the word "virgin" supplied by the Respondent in his Response have been noted by this Panel.
On the basis of all the preceding considerations, this Panel finds that the Respondent�s registered Domain Name is identical and confusingly similar to the Complainant�s registered trademark "VIRGIN ONE", and that the Respondent�s registered Domain Name is confusingly similar to the Complainant�s trademark "VIRGIN ONE". Accordingly, the element under the provision of Paragraph 4a(i) has been proven to the satisfaction of this Panel.
Rights or Legitimate Interests
Paragraph 4a(ii) of the Policy imposes on the Complainant the additional obligation to prove that the Respondent has "no rights or legitimate interests" in respect of the Domain Names. Examples of circumstances that show the existence of such rights or legitimate interests are set out in Paragraph 4c of the Policy as follows:
(1)"...use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services"; or
(2)(the Respondent) "(as) an individual, business, or other organization (has) been commonly known by the domain name, even if (the Respondent has) acquired no trademark or service mark rights"; or
(3)(the Respondent is) "making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue".
The Panel holds that the Respondent has failed to show the "use of, or demonstrable preparations to use, the Domain Names in connection with a bona fide offering of goods or services". The Respondent, therefore, has failed to establish any rights or legitimate interest under Paragraph 4c(i), (ii) and (iii) of the Policy. This is based on the following factors and submissions of the Complainant all of which are accepted by the Panel:
(1)No evidence was filed by the Respondent in support of any relationship he had with, or permission obtained from, the Complainant authorizing the use of the marks "VIRGIN" and/or "VIRGIN ONE". Further, there is no evidence to show that the Complainant gave his consent to the Respondent to register or use the Domain Names or any other domain name incorporating those marks.
(2)At the time the Domain Names were registered by the Respondent, that is, June 12, 2002, the "VIRGIN" name had already acquired a considerable reputation, both in the U.K. and elsewhere. The Complainant itself, as proprietor, held U.K. and overseas registered trademark rights in the VIRGIN name and, in particular, held the proprietorship rights in the U.K. in respect of the registered trademark "VIRGIN ONE" which, in the course of some five years, had developed a significant reputation.
(3)No evidence was submitted by the Respondent as to his use of, or demonstrable preparations to use, the Domain Names, or either of them, in connection with a bona fide activity.
(4)The Respondent did not produce any evidence to show that he is commonly known by the Domain Names or either of them.
(5)No real or cogent evidence was adduced by the Respondent to the effect that he is, or was, making a legitimate non-commercial or fair use of the Domain Names or, without intent, for commercial gain.
(6)Any use of the Domain Names by the Respondent is likely to misleadingly divert the Complainant�s consumers (particularly those receiving or seeking financial services within the framework of the "VIRGIN ONE" Account), or to tarnish or otherwise dilute the Complainant�s trademarks including the "VIRGIN ONE" registered trademark.
(7)The Respondent is actively targeting the Complainant with a view to redirecting Internet traffic from the Complainant�s "VIRGIN ONE" website to the Respondent�s website via the Domain Names and providing links to various pornographic sites.
The Respondent�s submission to the effect that the Virgin Group or Virgin Enterprises chose the name "Virgin" "with the full knowledge that it has an adult meaning", is not accepted by this Panel. There is no evidence from either party as to the choice of the term "VIRGIN" by the Complainant. On the other hand, whilst not strictly relevant to the present issue, this Panel does support the Respondent�s view that the Complainant must accept the fact that there are, and will be, uses for the term "VIRGIN" other than those attributed to it by the Complainant. This, however, in this Panel�s finding, does not mean that a third party is entitled to plagiarize the Complainant�s lawfully registered trademark and adopt it, without permission, as his registered Domain Names.
This Panel also rejects the Respondent�s contention that "�VIRGIN� is the first choice of word amongst Internet users trying to track down websites with pornography." There is no evidence before the Panel to support this assertion.
On the Respondent�s submission, "[t]he word �VIRGIN� is a common descriptive word, which is totally apt for use in the Respondent�s adult website". There is no reason, in the Respondent�s opinion, why he should be deterred from adopting "such a manifestly appropriate descriptive term if it was available" (emphasis added by Panel). This, in the Panel�s view, is exactly the point. On account of their being identical and confusingly similar to the Complainant�s registered trademark, "VIRGIN ONE", the Domain Names and are NOT (using the Respondent�s terminology) "available". It follows, therefore, that, contrary to the Respondent�s belief, the use he is making of the Domain Names is far from legitimate. Such use can hardly be classed (as claimed by the Respondent) as a "bona fide offering of services (for the purpose of an adult website as the names suggest) without creating any confusion with the Complainant�s mark".
The Panel agrees with the Respondent that Virgin Enterprises "does not have carte blanche ownership on everything with the word �virgin� in it". On the evidence, there are 2,000 (not 5,000 as asserted by the Respondent) domain names (some but by no means all in the ownership of the Complainant) registered containing the word "VIRGIN". Many of these, on the computer printout supplied by the Respondent, as their respective names clearly indicate, are pornographic sites of one kind or another. All this, however, and the submission by the Respondent that "thousands of businesses use the word �VIRGIN� in their names", are not relevant to the present issue. In this Administrative Proceeding the claim by the Complainant is based on the fact that it holds the proprietorship of the trademark "VIRGIN ONE" registered an appreciable time before the registration of the Domain Names. That, basically, is the principal relevancy in the present issue.
In a number of Decisions in the area of domain name disputes, Administrative Panels have addressed the question as to what constitutes a "bona fide offering of goods or services within the framework of Paragraph 4c(i) of the Policy". Whilst it is clear, and known to this Panel, that the Doctrine of Binding Judicial Precedent does not apply to Administrative Proceedings of the present kind, this Panel is of the view, nevertheless, that it is both permissible and useful for a Panelist to seek support for his finding from previous Decisions of other Panelists.
Thus, in the case of Stephanie Seymour v. Jeff Burgar d/b/a Stephanie Seymour Club, FA0104000097112 dated May 29, 2001, it was held by the Panel that the "" website served "only as a portal" and did not evidence any bona fide offering of goods and services. In fact, it did nothing but misappropriate the Complainant�s trademark in order to lure Internet users to the Respondent�s commercial site. This case bears a very strong resemblance to the present issue.
In a similar case (Michael Andretti v. Alberta Hot Rods, FA0108000099084 dated October 4, 2001), the Panel likewise found that the Respondent�s use of constituted a portal to the Respondent�s unrelated commercial website . This, in the Panel�s view, evidenced "the intention of gaining commercially by attracting Internet users". This case, also, is similar to the issue at hand.
As held in the case of V & S Vin & Sprit AB v. Canal Prod Ltd.,WIPO Case No. D2002-0437, whether or not the Respondent�s websites can be considered to constitute a bona fide offering of goods or services or legitimate fair use of the Domain Names, depends on whether or not the Domain Names were registered in bad faith. As will shortly be seen this Panel finds, in fact, that the Domain Names were registered in bad faith. Accordingly, the websites concerned are not connected with a bona fide offering of goods or services.
In the light of all the foregoing observations, discussions and findings, this Panel is satisfied that the Complainant has proved that the Respondent has no rights or legitimate interests in respect of the Domain Names (Paragraph 4a(ii) of the Policy). In contrast, the Respondent has failed to demonstrate his rights and legitimate interests in the Domain Names within any of the provisions set out in Paragraph 4c(i) to (iii).
Domain Names Registered and Used in Bad Faith
Paragraph 4a(iii) of the Policy provides that it is incumbent on a Complainant to prove that the Respondent�s domain names have been registered and are being used in bad faith. Paragraph 4b of the Policy outlines the circumstances, which, in particular but without limitation, shall be evidence of the registration and use of a domain name in bad faith. These are as follows:
(i)circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trade or service mark, or to a competitor of that Complainant, for valuable consideration exceeding the Respondent�s out-of-pocket expenses directly related to the domain name; or
(ii)the Respondent has registered the domain name in order to prevent the trade or service mark proprietor from reflecting the mark in a corresponding domain name, but only where the Respondent has engaged in a pattern of such conduct; or
(iii)the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv)by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to his 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 a product or service, on the Respondent�s website or location.
As a starting point, it seems reasonable to accept the Complainant�s submission that, at the time of the Domain Name registration, the Respondent was well aware of the Virgin Group�s existence. Equally, he must have been aware of the VIRGIN ONE trademark � a fact evidenced by the Respondent�s e-mail to Virgin One�s employees sent shortly after the Domain Names were registered. Taking these circumstances into account, it would require a great deal of imagination to believe that the choice of the Domain Names and by the Respondent was purely coincidental. Not even the Respondent himself makes such a submission. The Respondent�s contention, however, that, in principle, it is possible to register a domain name even if another party has trademark rights in a corresponding mark, is wholly unacceptable to the Panel. Equally unacceptable to the Panel is the Respondent�s submission that knowledge, of itself, that another party claims trademark rights in the domain name concerned, is not sufficient to constitute a registration in bad faith and certainly not where the name concerned is a common noun such as "virgin".
The reason for the choice of "virginone" and "virgin1" proffered by the Respondent is hard to accept. The Panel would have thought that if the idea underlying the name was, as submitted, "One and Only Virgin", it would not have been beyond the realms of possibility to use that expression for the Domain Name.
It is further contended by the Complainant that, on the basis of the evidence filed and, in particular, the foregoing e-mail transmission, the Domain Names were registered by the Respondent in order to take advantage of and tarnish the Complainant�s goodwill by re-directing Internet traffic to pornographic websites. This contention, likewise, is accepted by this Panel.
No submission was made and no evidence was filed showing that the Respondent registered the Domain Names for the purpose of selling them to the Complainant. Accordingly, this Administrative Panel does not find that there are circumstances of the type contemplated by Paragraph 4b(i) of the Policy.
Further, preventing a trademark proprietor from reflecting his trademark in a corresponding domain name, constitutes a use of the domain name within the parameters of Paragraph 4b(ii) of the Policy, but only where the Respondent has been shown to engage in a pattern of such conduct. No such pattern was shown or even submitted as evidence by the Complainant. This Panel, therefore, does not find that there are circumstances in the present issue such as those outlined in Paragraph 4b(ii) of the Policy.
It is noteworthy, however, that, in addition to the foregoing, the Policy outlines other circumstances as evidence of bad faith registration and use of a given domain name. Thus, the Policy in Paragraph 4b(iii) points to bad faith in the registration of a domain name "primarily for the purpose of disrupting the business of a competitor". Although it is very conceivable that the registration and use of the Domain Names may disrupt the Complainant�s financial services under the trademark VIRGIN ONE, no evidence was produced to show that such disruption is the primary purpose of the Respondent. In any event, it can hardly be maintained that the Respondent, whose aim is the re-direction of Internet customers of the Complainant to pornographic websites, can be classed as a "competitor" of the Virgin Group.
This leaves Paragraph 4b(iv) of the Policy, the full wording of which is set out above. After perusing all the submissions of both the parties and the evidence filed by them, it is the Panel�s considered opinion that the words "virginone" and "virgin1" are not ones that the Respondent would legitimately have chosen within the framework of providing services or information via a website, unless it was his calculated intention to create an impression in the minds of both the actual and potential customers of the Complainant seeking financial services, as well as the public at large, of an association with the Complainant. It is clear, beyond any doubt, that the Respondent registered the Domain Names with the Virgin Group in mind. Thus, this Administrative Panel finds that the Respondent, by virtue of his registration of the Domain Names, intentionally sought to attract for commercial gain, users to his websites, by creating a likelihood of confusion with the Complainant�s trademark "VIRGIN ONE" as to the source, sponsorship, affiliation or endorsement of that website.
It is to be emphasized that the basis for a remedy within the parameters of the Policy is bad faith registration and use of a given domain name. Both the Policy as well as numerous cases decided under it by Administrative Panels are ample evidence of the fact that such bad faith can be present even where a particular domain name is used in relation to an offering for goods or services wholly different from those in respect of which the Complainant�s trademark is registered (see Harvey Norman Retailing Pty Ltd. v. Pty Ltd, above.; Michael Andretti v. Alberta Hot Rods, above; Porsche Cars North Am., Inc. v. P [1999] 51 7. Supp. 2d 707 at p. 710: "....mere act of [domain name] registration creates an immediate injury by preventing Porsche from utilizing those domain names itself in order to channel customers to its own website"; Endemol Entertainment UK Plc v. Guido Scherpenhuyzen (cited by the Complainant) concerning the domain names and : "The linking of the domain name to a pornographic website as well as a neo-nazi website, and specifically informing the Complainant regarding this, illustrates conclusively the Respondent�s disreputable intentions with the domain names at issue").
It is known that, throughout the world, trademarks, which have achieved a certain degree of notoriety, receive legal protection wider than that given to conventional registered marks. Thus, the fame of a given trade or service mark may prevent the registration of the same mark by a third party even where that party�s goods or services are quite different from those of the registered proprietor of the well-known mark, and even where the potential for confusion is remote or non-existent.
It is not within the competence of the Panelist in this Administrative Proceeding to determine whether or not the Complainant�s marks "VIRGIN" and "VIRGIN ONE" are famous or well-known. At the same time, when one takes note of the wide variety of activities throughout the world in which the Virgin Group is involved, the number of its employees, its relationship with the public and its annual turnover (see: Paragraph 4.1 of the present Decision), it would be hard to imagine that the Virgin Group�s trade and service marks, incorporating the word "VIRGIN", are not well-known. This is equally true of the "VIRGIN ONE" registered mark in respect of financial services.
On the assumption that "VIRGIN ONE" is, indeed, a well-known mark, two Panelist Decisions are relevant to the issue. The first is Fortnum & Mason plc v. Corporate Business Sales Limited, WIPO Case No. D2000-1207. There, it was decided that the registration of several domain names containing the well-known trademarks of third parties amounted to "unambiguous evidence of registration and use in bad faith". In the other case, Parfums Christian Dior v. Javier Garcia Quintas and C, WIPO Case No. D2000-0226, it was held by the Panelist that the registration by a third party of the domain names and both of which, obviously, purported to show a connection with the Complainant�s famous name and products, suggested "opportunistic bad faith" on the part of the Respondent (see also: Société des Hotels Meridien SA v. United States of Moronica, WIPO Case No. D2000-0405).
The Panel disagrees with the Respondent that, given its generic nature, the trademark "VIRGIN ONE" is necessarily of weak distinctiveness. Acquired distinctiveness applies to trademarks, such as "VIRGIN ONE", which are not inherently distinctive but have acquired a certain distinctiveness through use, that is, a trademark which has had broad exposure for an appreciable period. Such acquired distinctiveness is evidence of a given trademark�s strength in the market place. For that reason it is often entitled to an ambit of protection wider than it might be thought to merit. It follows, therefore, that, in the opinion of this Panel, and in contrast to that of the Respondent, a monopoly for the use of a generic term can be claimed in certain circumstances.
Based on the above discussion, the Panel finds that the Respondent has registered and is using the Domain Names in bad faith pursuant to Paragraph 4a(iii) and Paragraph 4b(iv) of the Policy.
7. Decision
On the basis of the previous Discussion, and for all the foregoing reasons, the Panel decides that �
The Domain Names and , registered by the Respondent are identical and confusingly similar to the trademark "VIRGIN ONE" in which the Complainant has rights (Paragraph 4a(i) Policy);
the Respondent has no rights or legitimate interests in respect of the Domain Names (Paragraph 4a(ii) Policy);
the Domain Names have been registered and are being used by the Respondent in bad faith (Paragraph 4a(iii) Policy).
Accordingly, the Panel finds that the Complaint should be allowed and the Domain Names and be transferred to the Complainant and directs Registrar Computer Service Langenbach GmbH trading as J, to do so forthwith.
Michael Ophir
Sole Panelist
Dated: October 15, 2002
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