The Complainant is Virgin Enterprises Limited, of London, the United Kingdom of Great Britain and Northern Ireland (“Complainant”), represented by Stobbs, Cambridge, United Kingdom.
The Respondent is Domain Administrator, of Cabramatta, Australia (“Respondent”). 2. The Domain Names and Registrar
The disputed domain names and are registered with Active Registrar, Inc.
Active Registrar, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2013. On September 25, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 26, 2013, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was October 23, 2013. Respondent did not submit any formal response. Accordingly, the Center notified the parties of the commencement of the Panel appointment process on October 24, 2013.
The Center appointed Douglas Isenberg as the sole panelist in this matter on November 5, 2013. 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.
The Center received an email communication from Respondent on October 3, 2013, and was copied on the Respondent’s email communications to Complainant’s representative on October 8, 2013 and October 15, 2013. The Center received further email communications from Respondent on October 28, 2013, and November 17, 2013. The Center informed Respondent that his emails to the Center would be forwarded to the Panel for its consideration. The Panel has considered only those communications submitted prior to the due date for the Response. 4. Factual Background
Complainant states that it “is the brand owner for the Virgin Group of Companies,” which “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.” Complainant further states that “the Virgin Group now comprises over 200 companies worldwide operating in 32 countries including throughout Europe and the USA. The number of employees employed by the Virgin Group of Companies is in excess of 40,000, generating an annual group turnover in excess of 4.6 billion pounds.” Complainant further states that “[t]he public have become accustomed to seeing the VIRGIN brand used in conjunction with additional elements and used in relation to a wide range of products and services including health and wellness services.”
Complainant states that the disputed domain names were created on August 29, 2007. According to website printouts provided by Complainant, the disputed domain name is being used in connection with a parking page (which contains links for a home-based business, “daily deals,” hotels and various insurance services) – which Complainant describes as “a revenue generating site.” Complainant does not state how the disputed domain name is being used, and a printout provided by Complainant shows only a search using the Bing search engine for the term “www.”. 5. Parties’ Contentions A. Complainant
Complainant contends, in relevant part, as follows:
The disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights because “Complainant owns very extensive rights in the VIRGIN mark,” including those set forth in an eight-page schedule provided by Complainant; previous decisions under the Policy (including but not limited to Virgin Enterprises Limited v. Trade Out Investments Ltd/Power Brand Centre Corp.,WIPO Case No. D2011-0640) establish Complainant’s rights in the VIRGIN mark; “[t]he public have become accustomed to seeing the VIRGIN brand used in conjunction with additional elements and used in relation to a wide range of products and services including health and wellness services”; “[i]f used in combination with CARE; the public would undoubtedly see such use as being use by the complainant”; and “[t]he domains complained of consist of the name Virgin Care [and] [t]hese words would quite clearly be associated with the Complainant’s own Virgin brand and businesses.”
The Respondent has no rights or legitimate interests in respect of the disputed domain names because (to quote Complainant’s arguments in their entirety): “Bearing in mind the massive reputation of the VIRGIN brand and [Complainant’s] operations in a wide range of activities, there is no believable or realistic reason for registration or use of the domain name VIRGINCARE other than to take advantage of [Complainant’s] rights”; and “[i]t is clear that in accordance with the domain policy Rules 3(6)(ix)(2) that the domain name holder has no legitimate interest in the domain[s].”
The disputed domain names were registered and are being used in bad faith because, inter alia, “[b]earing in mind the extent and nature of the Complainant’s reputation the VIRGIN brand, especially in relation to health and wellness related services, the extremely distinctive and unique nature of the VIRGIN trade mark, it is impossible to envisage any legitimate purpose for registering the virgincare domain names, other than to capitalise or gain from the Complainant’s reputation in some way, or to prevent [Complainant] from registering the domains.” B. Respondent
Respondent did not formally reply to Complainant’s contentions. However, in an e-mail to the Center dated October 3, 2013, Respondent stated, in relevant part: “We registered this domain for creating a social networking website for religious group or selective group with Christian faith and or worshiper of ‘Virgin Mery’ [sic]… I believe any holly [sic] Virgin and or Virgin Mary in this world and out of this are not breathing [sic] your client's Trade Merks [sic]... Do they? However, I will not mind selling this name considering they pay my losses[.] I am sure ‘Virgin merry’ [sic] can not be a property of your client.” 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the disputed domain name is 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 name; and (iii) the disputed domain name has been registered and is being used in bad faith. Policy, paragraph 4(a).
Where a complainant does not prove one or more of these elements, the panel is compelled to issue a decision denying the complaint, regardless of the complainant’s ability to prove the other element(s) required by the Policy. Accordingly, under such circumstances, any discussion by the panel with respect to such other element(s) would be unnecessary in reaching a decision to deny the complaint. See, e.g., Admerex Limited v. Metyor Inc.,WIPO Case No. D2005-1246 (“[s]ince the Complainant must prove all three elements of the Policy, and since the Complainant fails under the third element,… it is not necessary to make a finding under the second element of the Policy”); Micro Electronics, Inc. v. MicroCenter,WIPO Case No. D2005-1289 (where the complainant failed to prove the second element of the Policy, “there is no need for the Panel to address the third element of the Policy”). Therefore, given that the Panel in the instant case finds, as discussed below, that Complainant has failed to prove the third element of the Policy – that is, paragraph 4(a)(iii) – the Panel makes no conclusive findings with respect to the first and second elements of the Policy. A. Identical or Confusingly Similar
Based upon the trademark registrations cited by Complainant, and consistent with previous decisions under the Policy in favor of Complainant, it is apparent that Complainant has rights in and to the VIRGIN mark.
As to whether the disputed domain names are identical or confusingly similar to the VIRGIN mark, the relevant comparison to be made is with the second-level portion of the domain names only (i.e., “virgincare”), as it is well-established that the top-level domain names (i.e., “.com” and “.net”) should be disregarded for this purpose. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 1.2 (“WIPO Overview 2.0”) (“The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”).
In many decisions under the Policy, “a wide variety of panelists have considered that the addition of generic words to trademarks was not sufficient to escape the finding of similarity and does not change the overall impression of the designations as being connected to the Complainant.” SANOFI AVENTIS v. ProtectF/RegisterF, WIPO Case No. D2006-1272. However, typically “the nature of the other word will largely determine the confusing similarity.” Yellow Corporation v. MIC,WIPO Case No. D2003-0748. That is, whether the other word is generic or descriptive or related to the complainant’s goods and services may be relevant. In this case, although Complainant has stated that “the VIRGIN brand [is] used in conjunction with additional elements and used in relation to a wide range of products and services including health and wellness services,” this statement is not directly supported by any evidence (as further discussed below), the list of trademarks provided by Complainant does not support this statement, and a signed statement from a trademark attorney for Complainant refers only to “Virgin Life Care,” a “health rewards program” in South Africa launched in 2006, and other “healthcare related projects.”
Based on the above, it is therefore difficult to ascertain what effect, if any, inclusion of the word “care” in the disputed domain names has on confusing similarity under the Policy, especially considering that the VIRGIN mark is a dictionary word, that is, that it is not a fanciful mark. Accordingly, and in light of the Panel’s findings with respect to bad faith below, paragraph 4(a)(iii), the Panel refrains from making a finding with respect to the first element of the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
In support of its arguments under paragraph 4(a)(ii) of the Policy, Complainant has stated, in full, as follows: “Bearing in mind the massive reputation of the VIRGIN brand and [Complainant’s] operations in a wide range of activities, there is no believable or realistic reason for registration or use of the domain name VIRGINCARE other than to take advantage of [Complainant’s] rights”; and “[i]t is clear that in accordance with the domain policy Rules 3(6)(ix)(2) that the domain name holder has no legitimate interest in the domain[s].”
As set forth in paragraph 2.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”):
While the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP…. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.
Here, Complainant’s references to “a wide range of activities” do not include any uses of the VIRGIN mark in connection with the word “care,” making it difficult for the Panel to conclude that “there is no believable or realistic reason for registration or use of the domain name VIRGINCARE other than to take advantage of [Complainant’s] rights.” In addition, Complainant has failed to directly address, even in a conclusory manner, any of the factors set forth in paragraph 4(c) of the Policy, pursuant to which a respondent can demonstrate its rights or legitimate interests in a domain name.
Further, Respondent’s statement that it “registered this domain for creating a social networking website for religious group or selective group with Christian faith and or worshiper of ‘Virgin Mery’ [sic]” is, although unsupported, plausible. Indeed, in a previous decision under the Policy denying a transfer of the domain name to the same Complainant as in this case, a panel found that a respondent had rights or legitimate interests in the domain name due in part to a definition of the word “virgin” that differs from the VIRGIN mark itself. Virgin Enterprises Limited v. Internet Domains,WIPO Case No. D2001-1008. Nevertheless, the Panel notes that Respondent’s statement is unsupported by any evidence whatsoever.
Accordingly, it is unclear both as to whether Complainant has made a prima facie case under paragraph 4(a)(ii) of the Policy as well as to whether Respondent has appropriately demonstrated its rights or legitimate interests. In light of this, and given the Panel’s finding with respect to paragraph 4(a)(iii) of the Policy, below, the Panel declines to make a finding with respect to paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Whether a domain name is registered and used in bad faith for purposes of the Policy may be determined by evaluating four (non-exhaustive) factors set forth in the Policy: (i) circumstances indicating that the registrant has registered or the registrant 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 registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant 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 registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’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 registrant’s website or location or of a product or service on the registrant’s website or location. Policy, paragraph 4(b).
In this case, Complainant makes only conclusory allegations that bad faith exists under each of the above-cited factors, repeating the requirements of each factor but not elaborating as to how any of them applies here. Further, Complainant’s statement that the public “would immediately and undoubtedly” consider the disputed domain names to be related to Complainant is unsupported by reference to any authority.
Although Complainant refers to “the extent and nature of the Complainant’s reputation [of] the VIRGIN brand, especially in relation to health and wellness related services,” the record contains only scant evidence of how the VIRGIN mark may have been used by Complainant in connection with any goods or services related to “care.” For example, the eight-page schedule of trademarks provided by Complainant includes no marks that contain the word “care,” nor does the schedule set forth any goods or services for any of the marks, rendering it impossible for the Panel to ascertain whether this word is associated with the VIRGIN mark. And, a “witness statement” provided by Complainant states only in passing that, “In 2012, Assura Medical, one of the fastest growing independent providers of NHS services in the UK, officially changes its name to Virgin Care.” Given that this name change took effect some five years after registration of the disputed domain names, it seems at best irrelevant to bad faith in this case. See, e.g., WIPO Overview 2.0, paragraph 3.1: “[W]hen a domain name is registered by the respondent before the complainant’s relied-upon trademark right is shown to have been first established (whether on a registered or unregistered basis), the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.”
Further, although the witness statement refers to the launch in South Africa of “Virgin Life Care” in 2006, neither the statement nor the Complaint makes a case that this “launch” established any trademark rights on behalf of Complainant.
In light of these concerns, this Panel notes that “[i]t may be that Complainant could develop evidence of bad faith… in a legal proceeding that would allow more evidentiary development. The Policy, however, was not designed to transfer domain names in every case that a trademark owner might ultimately win.” Trans Continental Records, Inc. v. Compana LLC,WIPO Case No. D2002-0105.
Accordingly, the Panel finds that Complainant has not established bad faith under paragraph 4(a)(iii) of the Policy. 7. Decision
For the foregoing reasons, the Complaint is denied.
Douglas M. Isenberg
Sole Panelist
Date: December 2, 2013
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