The Complainant is Virgin Enterprises Limited of London, the United Kingdom of Great Britain and Northern Ireland, represented by Ipulse IP Ltd, the United Kingdom of Great Britain and Northern Ireland.
The Respondent is Maine Street Investments of Chino, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2011. On April 7, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On April 7, 2011, GoD, Inc. 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 15, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 5, 2011. The Respondent did not submit any formal response.
On April 8, 2011, the Center received by email a settlement request from the Respondent. On April 11, 2011, the Center acknowledged receipt of the Respondent’s communication and notified the Possible Settlement to the parties. On April 19, 2011, the Complainant declined to settle with the Respondent (on the basis that the Respondent had made it clear that it wished to obtain significantly more money than the costs associated with the registration of the disputed domain name). The same day the Respondent sent an email expressing confusion about the dispute resolution process being undertaken.
The Center appointed Andrew F. Christie as the sole panelist in this matter on May 13, 2011. 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.
On May 13, 2011 the Center received an email from the Respondent expressing surprise at the efforts of the Complainant in bringing this action. On May 27, 2011 a further email was received from the Respondent, expressing a negative view about the dispute resolution process. A copy of each email was forwarded to the Panel. 4. Factual Background
The Complainant is the intellectual property holding company for the Virgin Group of companies, and is responsible for the ownership, management and protection of all trademarks and intellectual property in the VIRGIN word trademark, in the VIRGIN signature logo trademark and in associated marks (collectively referred to hereinafter also as the “Virgin Marks”). This group was founded in 1970 in the United Kingdom of Great Britain and Northern Ireland and has grown very significantly since that time. The Virgin Group has traded under the VIRGIN trademark since foundation in relation to a wide variety of activities, and now comprises over 200 companies worldwide, operating in 32 countries, with more than 40,000 employees and generating an annual group turnover in excess of 4.6 billion pounds sterling.
The VIRGIN trademark was first registered by the Complainant in 1973, and there are now over 3,000 trademark applications and registrations incorporating the Virgin Marks in over 125 countries. The applications and registrations cover a wide variety of goods and services that reflect the diversity of the Virgin Group’s worldwide business interests.
In 1995 the Virgin Group launched a range of financial services that includes banking, insurance, credit cards, mortgages, share dealing, personal loans and pensions under the trademark VIRGIN MONEY. The VIRGIN MONEY trademark was registered in the United Kingdom of Great Britain and Northern Ireland on May 21,1999. An application for registration of this trademark was made in the United States of America on September 25, 2008, and is currently pending.
The Respondent registered the disputed domain name on March 10, 2010. For some period of time up to commencement of the Complaint, and thereafter, the disputed domain name resolved to a parking page with what appears to be automatically-generated pay-per-click links to a number of websites offering various services, at least one of which relates to the Complainant’s own business. In an email to the Complainant on June 18, 2010, the Administrative and Technical Contact for the disputed domain name states that he “has an idea for creating an investment company for young couples who need education in the area of finance so that their lives may be filled with peace and prosperity”, and that he ”would aspire to the same level of economic excellence that Mr. Branson [founder and Chairman of the Virgin Group] has achieved with some of his ventures”. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to the VIRGIN trademarks in which the Complainant has rights because the only difference is the addition of the descriptive word “investments”. Given that the Complainant’s trademarks cover financial services, including investments, it is clear that the disputed domain name is confusingly similar.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the website to which it resolves is not related to any legitimate business; (ii) as far as the Complainant is aware, the Respondent has never been known by the disputed domain name and appears to have no connection whatsoever to the name contained within it; (iii) the Respondent does not appear to be making any legitimate or fair use of the disputed domain name; and (iv) given the reputation of the VIRGIN trademark in the field of finance, there is no believable or realistic claim to the potential use of the disputed domain name that does not relate to the Complainant’s rights in its VIRGIN trademark.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the Respondent emailed the Complainant saying he would sell it for one million dollars US, (ii) the website to which the disputed domain name resolves is a “click through” website, on which at least one of the links is to a website for the Complainant’s own business; (iii) presumably the Respondent generates income from these links and thus the Respondent has attempted to attract for commercial gain, Internet users to the Respondent’s website because of the fame and reputation of the Complainant’s VIRGIN trademark; and (iv) given the extent and nature of the Complainant’s reputation in the VIRGIN trademark it is impossible to envisage any legitimate purpose for registering the disputed domain name other than to capitalize or gain on the basis of that reputation, or to disrupt the business of the Complainant in some way. B. Respondent
Apart from the email communications mentioned in Section 3 of this decision, the Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name incorporates the whole of the Complainant’s trademark VIRGIN, and adds the descriptive word “investments”. The Complainant provides a number of financial services products under the trademark VIRGIN, including investment products. Given that fact, the addition of the word “investments” to the word “virgin” does not lessen the inevitable confusion of the disputed domain name with the Complainant’s trademark. Accordingly, this Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and does not appear to have any association with a legitimate business that has a connection with the words “virgin investments”. The Respondent registered the disputed domain name 11 years after the Complainant registered the VIRGIN MONEY trademark for use in relation to the Complainant’s financial services business. The website to which the disputed domain name resolves is a parking page website with links to various other sites, none of which appear to be businesses of the Respondent. According to the present record, the disputed domain name is not being used in connection with a bona fide offering of goods and services. Accordingly, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
The Complainant has conducted a wide ranging, well known and profitable business of international renown for many decades under its trademark VIRGIN. The present record indicates that the Respondent was aware of the Complainant’s business at the time it registered the disputed domain name and that, indeed, it “created this domain legally with the intent of creating my own company to level of what Mr. Branson [founder and Chairman of the Virgin Group] has done with his ventures.” The Respondent has used the disputed domain name to resolve to a parking page website with what appears to be automatically-generated pay-per-click links to various other websites, including those concerned with investment. On the facts of the present record, this Panel is persuaded that the Respondent is using the disputed domain name with the intention of attracting, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website (that being evidence of the registration and use of a domain name in bad faith, pursuant to the paragraph 4(b)(iv) of the Policy). Furthermore, on the facts of the present record, the Respondent has offered to sell the disputed domain name to the Complainant for one million dollars US, which is far in excess of the out-of-pocket expenses directly related to the domain name (that being evidence of the registration and use of a domain name in bad faith, pursuant to the paragraph 4(b)(i) of the Policy). This Panel therefore finds that the disputed domain name has been registered and is being used in bad faith. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Andrew F. Christie
Sole Panelist
Dated: May 30, 2011
Full & Egal Universal Law Academy