The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland (the ‘’United Kingdom’’ or the “UK’’) represented by Ipulse, United Kingdom.
The Respondent is Duygu Mert of Kocaeli, Turkey. 2. The Domain Names and Registrar
The disputed domain names , , and are registered with Alantron Bilişim Ltd Şti.(the “Registrar’’). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 11, 2011. On April 12, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 14, 2011, 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.
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 21, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 11, 2011. The Respondent did not submit any response within the due date for Response. Accordingly, the Center notified the Respondent’s default on May 12, 2011. The Respondent sent a communication by email to the Center on May 17, 2011.
The Center appointed Luca Barbero as the sole panelist in this matter on May 23, 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. 4. Factual Background
The Complainant is a company incorporated in England and Wales and is a member of a group of companies known collectively as the Virgin Group, which was originally established in the United Kingdom in 1970.
The Complainant is the owner of a number of trademark registrations for VIRGIN, such as the United States Trademark Registration Nos. 1469618, filed on March 3, 1986 and registered on December 22, 1987, in class 9; 1597386, filed on March 18, 1988 and registered on May 22, 1990, in classes 16 and 25; 3174388, filed on December 16, 1999 and registered on November 21, 2006, in class 3; the United Kingdom Trademark Registration Nos. 1559467, filed on January 18, 1994 and registered on March 1, 1996, in class 9; 1572219, filed on May 17, 1994 and registered on September 26, 1997, in class 33; 1585773 , filed on September 15, 1994 and registered on October 20, 1995, in class 36; the Community Trademark Registration Nos. 1798560, filed on August 8, 2000 and registered on June 5, 2002, in classes 3, 9 and 39; 2424885, filed on October 25, 2001 and registered on March 4, 2003, in classes 5, 29, 30 and 31; and 3252335, filed on July 3, 2003 and registered on December 20, 2004, in class 36.
The Complainant is also the owner of the domain name , registered on December 30, 1999, which is used in connection with the Complainant’s online games.
The disputed domain names , and were created on August 16, 2010 and on November 15, 2010. 5. Parties’ Contentions A. Complainant
The Complainant points out that it has developed a reputation in its VIRGIN trademark in relation to a very wide range of goods and services and in an extremely wide geographical range. The Complainant informs the Panel that the Virgin Group is constituted by two hundred companies worldwide which operate in 32 countries, including throughout Europe and the United States of America, with more than 40.000 employees and an annual group turnover in excess of 4.6 million GBP.
The Complainant highlights that a section of its business is dedicated to online gaming, which is run through the Complainant’s site under and in which the Complainant has developed a significant reputation.
The Complainant contends that disputed domain names are confusingly similar to the trademark VIRGIN in which the Complainant has rights as they reproduce the well-known trademark VIRGIN in its entirety, with the mere addition of the generic terms “gaming”, “jackpots”, “keno” and “slots”, which all applies to the Complainant’s gaming services.
With reference to the requirement of the rights or legitimate interests, the Complainant states that the Respondent is not known by the disputed domain names and that it is not making a legitimate or fair use of the disputed domain names. The Complainant emphasizes that, in light of the reputation of the VIRGIN mark, it is not conceivable any use of the disputed domain names which could be unrelated to the Complainant’s mark.
With reference to the circumstances evidencing bad faith, the Complainant indicates that the disputed domain names were registered by the Respondent for the purpose of selling them to the Complainant for a valuable consideration in excess of the out of pocket costs, since the Respondent requested to the Complainant an amount of 2500 GBP for each domain name, as per correspondence attached to the Complaint.
The Complainant also states that the fact that the disputed domain names are pointed to web pages indicating that the sites are currently down and under maintenance could potentially damage the reputation of the Complainant’s online business, since users who may be diverted to the corresponding sites may feel that the Complainant’s sites are unreliable and opt for other online gaming providers.
The Complainant underlines that, in view of the extent and nature of the Complainant’s reputation in the mark VIRGIN, it is impossible to envisage any legitimate purpose for registering the disputed domain names, other than to capitalize or gain on the basis of the Complainant’s reputation or disrupt the Complainant’s business. B. Respondent
The Respondent sent a communication by email to the Center, after the notification of the Respondent’s default, reiterating its offer for sale of the disputed domain names to the Complainant for the “final price” proposed to the Complainant before the filing of the Complaint, corresponding to 2500 GBP for each domain. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark or a service in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant has provided evidence of ownership of a number of trademark registrations such as VIRGIN.
The Complainant has provided evidence of ownership of, inter alia, the United States Trademark Registration No. 1469618, filed on March 3, 1986 and registered on December 22, 1987, in class 9; the United Kingdom Trademark Registration No. 1559467, filed on January 18, 1994 and registered on March 1, 1996, in class 9; and the Community Trademark Registration No. 1798560, filed on August 8, 2000 and registered on June 5, 2002, in classes 3, 9 and 39.
The Panel finds that the disputed domain names are confusingly similar to the trademarks owned by the Complainant since, pursuant to a number of prior decisions rendered under the Policy, the addition of descriptive terms to a trademark is not a distinguishing feature.
Therefore, the mere addition of the words “gaming”, “slots”, “keno” (which is an online betting game) and “jackpots” does not exclude the likelihood of confusion between the disputed domain names and the Complainant’s trademark.
It is well established in prior UDRP decisions that the addition of generic or descriptive terms to a trademark is not a distinguishing feature, inter alia,Barry D. Sears, Ph.D. v. YY / Yi Yanlin, WIPO Case No. D2007-0286 (“diet” added to the ZONE mark); Fry’s Electronics, Inc. v. Whois ID Theft Protection, WIPO Case No. D2006-1435 (“electronic” added to the FRY mark); Wal-Mart Stores, Inc. v. Henry Chan,WIPO Case No. D2004-0056 (“chase”, “girlsof”, “jobsat”, “sams”, “application”, “blackfriday”, “blitz”, “books”, “career(s)”, “check”, “flw”, “foundation”, “games”, “mart”, “photostudio”, “pictures”, “portrait”, “portraitstudio(s)”, “registry”, “retaillink” and “wire” added to the WALMART mark); PepsiCo, Inc. v. Henry Chan,WIPO Case No. D2004-0033 (“chart”, “miusic”, “earena”, “sweep”, “nfl” and “coliseum” added to the PEPSI mark); International Organization for Standardization ISO v. Quality Practitioners Institute and Website Pros, Inc. and Quality,WIPO Case No. D2005-1028 (“net” and “training” added to the ISO mark); Banca Intesa S.p.A v. Roshan Wickramaratna,WIPO Case No. D2006-0215 (“online” added to BANCAINTESA mark); Groupe Auchan v. Jakub Kamma,WIPO Case No. D2007-0565 (addition of the term “software” to the trademark AUCHAN), eBay Inc. v. ebayMoving / Izik Apo,WIPO Case No. D2006-1307 (“moving” added to the EBAY mark).
More in particular, the selection of such terms is particularly apt to increase the likelihood of confusion between the disputed domain names and the Complainant’s business in the context of the online games.
The Panel concurs with the views expressed in Stanworth Development Limited v. Michael Gordon,WIPO Case No. D2007-1227, where the panel found that “the Domain Name is almost identical, and is confusingly similar to Complainant’s mark, RIVER BELLE, adding only a misspelling of the generic term “casino,” which describes Complainant’s services. The result is a Domain Name that is distinctly suggestive of Complainant’s “casino” services, linked with Complainant’s RIVER BELLE mark.”
See also, along these lines, DaimlerChrysler A.G. v. Donald Drummonds,WIPO Case No. D2001-0160; Microsoft Corp. v. StepWeb,WIPO Case No. D2000-1500, Stanworth Development Limited v. Kaneoka Senuchi,WIPO Case No. D2005-0703, Stanworth Development Limited v. 3748431 Canada Inc.,WIPO Case No. D2005-0655 and Stanworth Development Limited v. Michael Rand,WIPO Case No. D2008-0158 where the panel found that “the Respondent’s Domain Name contains the Complainant’s trade mark RIVER BELLE in toto and the suffix “casin”. Taking into account that the suffix is an obvious misspelling of the word “casino”, the suffix does not only not prevent consumer confusion but is on the contrary suggestive of the services that the trademark is registered for (gaming services)”.
In view of the above, the Panel finds that the Complainant has proven that the disputed domain names are confusingly similar to the trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent may establish a right or legitimate interest in the disputed domain names by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
“(i) before any notice to you of the dispute, your 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
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.”
It is well-established that the burden of proof lies on the Complainant. However, satisfying the burden of proving a lack of the Respondent’s rights or legitimate interests in respect of the disputed domain name according to paragraph 4(a) (ii) of the Policy is potentially quite onerous, since proving a negative circumstance is always more difficult than establishing a positive one.
Accordingly, in line with the UDRP precedents, it is sufficient that the Complainant show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the Respondent. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain names in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; MetAmerica Mortgage Bankers v. Whois ID Theft Protection, c/o Domain Admin, NAF Claim No. FA852581.
In the case at hand, the Complainant has made a prima facie case and the Respondent has failed to raise any convincing circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names.
The Panel observes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademarks. Furthermore, there is no indication before the Panel that the Respondent is commonly known by the disputed domain names.
The Panel notes that the disputed domain names have been redirected to a web page displaying the indication that the web site is under maintenance. Based on the documents and statements submitted by the parties, there is no evidence showing that the Respondent has made preparations to use the disputed domain names in connection with a bona fide offering of goods or services, or that it intends to make a legitimate, non-commercial or fair use of the disputed domain names.
Thus, and in light of the above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names, in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purpose of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain names in bad faith:
(i) circumstances indicating that the holder has registered or has 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
(ii) the holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the holder has engaged in a pattern of such conduct; or
(iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s website or location or of a product or service on the holder’s website or location.
As to bad faith at the time of the registration, the Panel finds that, in light of use of the trademark since 1970 and of the amount of advertising and sales of the Complainant’s products worldwide, the Respondent was likely aware of the Complainant’s trademarks when it registered the disputed domain names, in 2010. Moreover, the Respondent itself, in its email addressed to the Complainant on February 28, 2011, expressly states “we are aware of reputation of VIRGIN companies”.
The Panel shares the view of a number of panel findings of “opportunistic bad faith” in the registration of renowned or even somewhat less famous trademarks as found in Gateway, Inc. v. Lorna Kang,WIPO Case No. D2003-0257. Along the same lines, Veuve Cliquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; Expedia, Inc. v. European Travel Network,WIPO Case No. D2000-0137; Prada S.A. v. Mark O'Flynn,WIPO Case No. D2001-0368; Ferrari S.p.A. v. Inter-Mediates Ltd.,WIPO Case No. D2003-0050 and The Nasdaq Stock Market, Inc. v. Act One Internet Solutions,WIPO Case No. D2003- 0103. As stated, inter alia, in DHL Operations B.V v. Net Marketing Group,WIPO Case No. D2005-0868 “...it is obvious that the value and goodwill, of the Complainant’s mark DHL which has an extensive world wide recognition, would have been known to the Respondent at the time of registration of the disputed domain name. The registration and use of the mark by an entity unconnected to the Complainant gives rise to the presumption of opportunistic bad faith”.
The Panel deems that also paragraph 4(b)(i) of the Policy is applicable to the present case since, in light of the content of the correspondence attached to the Complaint, the disputed domain names were also registered for the purpose of selling them to the Complainant for a consideration in excess of the documented out-of-pockets costs. Indeed, the Respondent offered to assign the disputed domain names for 2500 GBP each, amount that is certainly well over the out of pocket costs directly related to the domain names. See, inter alila, Wal-Mart Stores, Inc. v. Brad Tauer,WIPO Case No. D2000-1076 where it was found “the amount sought, $475, far exceeds the domain name registration fee and Respondent did not present any documentation as to any other "out-of-pocket costs directly related to the domain name."
The Panel also finds paragraph 4(b)(ii) of the Policy applicable in this case, since the Respondent has registered the disputed domain names in order to prevent the Complainant from using the mark and has clearly engaged in a pattern of such conduct since it has registered four domain names incorporating the registered trademark owned by the Complainant. In fact, according to the consensus view of the panel, a “pattern of conduct” as required in paragraph 4(b)(ii) of the Policy typically involves multiple domain names directed against multiple complainants, but may involve multiple domain names directed against a single complainant (see Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046, Revlon Consumer Products Corporation v. Domain Manager, PageUp Communications, WIPO Case No. D2003-0602).
In view of the above, the Panel finds that the disputed domain names was registered and are being used in bad faith. 7. Decision
For all 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 , , and be transferred to the Complainant.
Luca Barbero
Sole Panelist
Dated: June 6, 2011
Full & Egal Universal Law Academy