The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Stobbs IP Limited, United Kingdom.
The Respondent is Zhichao Yang of Hefei, Anhui, China. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , and are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 5, 2013. On the same date, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 5, 2013, the Registrar transmitted by email to the Center its verification response confirming that:
(a) it is the Registrar for the disputed domain names;
(b) the disputed domain names are registered in the name of the Respondent and the contact details are correct;
(c) the registration agreements are in English;
(d) the disputed domain names were registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain names.
In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on December 16, 2013.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Policy, 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 amended Complaint, and the proceedings commenced on December 17, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 7, 2014.
On January 8, 2014, the Center received an email communication from an email address that was displayed at one of the websites associated to the disputed domain names.
The Center appointed Warwick A. Rothnie as the sole panelist in this matter on January 15, 2014. 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 the intellectual property holding arm of the Virgin Group of companies (the Virgin Group). The Virgin Group started in 1970 when Richard Branson began selling music recordings under the Virgin name. The Virgin Group has since expanded into a diverse range of fields.
The Virgin Group apparently comprises some 200 companies operating in some 32 companies including countries in Europe and the United States of America (“USA”). It employs some 40,000 employees and has annual group turnover in excess of GBP 4.6 billion.
One of the emanations of the Virgin Group is air travel and associated services under the name “Virgin Atlantic”. The Virgin Atlantic business would appear to have started operating in 1984. That business offers flights to many destinations in Europe, North America including the USA, Africa and the Middle East and Asia including destinations such as Hong Kong, China and Shanghai, China. It is claimed that it has spent GBP 25 million or more on marketing each year between 2005 and 2012. It appears that it has carried in excess of 75 million passengers since its inception.
Another is a mobile or cellular phone business under the name Virgin Mobile which apparently started in 1999. Amongst other things, this latter emanation includes a business operated in the USA by reference to “Virgin Mobile USA”.
The Complaint contains tables identifying by registration number numerous trademark registrations in the USA, the United Kingdom and the European Union for the word “virgin” simpliciter or in the form of a signature. A number of these are in the International Classes appropriate for telecommunications services or air travel. The Complaint also states that the Complainant holds a number of trademark registrations or applications for VIRGIN MOBILE or VIRGIN ATLANTIC. In some cases, these are identified as being in the form of a logo.
The Registrar has indicated that the disputed domain names were created between June and September 2013.
At the time this Decision is being prepared, the disputed domain names do not resolve to an active website.
According to the Complainant, the Respondent is the holder of some 14,000 other domain name registrations. 5. Discussion and Findings
No substantive response has been filed. The Complaint has been served, however, on the physical and electronic coordinates specified in the WhoIs record. When the courier attempted to deliver the physical copies of the Written Notice to the address specified in the WhoIs record, it was stated that the addressee was unknown at that address. The coordinates used, however, have been confirmed as correct by the Registrar.
Accordingly, the Panel finds that the Complaint has been properly served on the Respondent.
When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable A. Identical or Confusingly Similar
The first element that the Complainant must establish is that the disputed domain names are identical with, or confusingly similar to the Complainant’s trademark rights.
There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain names must be shown to be identical or confusingly similar to the trademark.
The Complainant has proven ownership of numerous trademarks for VIRGIN. The Complaint also identifies a number of registrations or applications for trademarks for VIRGIN ATLANTIC and VIRGIN MOBILE. Unfortunately, the Complaint does not distinguish between those which are registered and those which are merely pending applications. Given the dates of application, it seems likely that many are in fact registered. In any event, given the length and extent of use of those two trademarks in the UK, the USA and Hong Kong, China (at least) evidenced in the Complaint, the Panel finds that the Complainant also holds common law rights in those two trademarks.
On the question of identity or confusing similarity, what is required is simply a comparison and assessment of the disputed domain names themselves to the Complainant’s proved trademarks: see for example, Disney Enterprises, Inc. v. John Zuccarini, Cupcake City and Cupcake Patrol,WIPO Case No. D2001-0489; IKB Deutsche Industriebank AG v. Bob Larkin,WIPO Case No. D2002-0420. This is different to the question under trademark law which can require an assessment of the nature of the goods or services protected and those for which any impugned use is involved, geographical location or timing. Such matters, if relevant, may fall for consideration under the other elements of the Policy.
In undertaking that comparison, in the present circumstances it is permissible to disregard the “.com” component of the disputed domain name as a functional aspect of the domain name system. See Telstra Corporation Limited v. Ozurls,WIPO Case No. D2001-0046; Ticketmaster Corporation v. DiscoverNet Inc.,WIPO Case No. D2001-0252.
Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.
The disputed domain names fall into two broad groups: one group based around misspellings of “Virgin Atlantic”, such as, and , for example, and a second group based around misspellings or mistranscriptions of “Virgin Mobile”, such as and , for example. In each case, the resemblance of the disputed domain names to VIRGIN ATLANTIC or VIRGIN MOBILE as the case may is obvious. The Complainant’s trademarks, VIRGIN ATLANTIC or VIRGIN MOBILE, are plainly the dominant or distinctive component of the disputed domain names. Accordingly, the Panel finds that each of the disputed domain names is confusingly similar to the Complainant’s trademarks. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.10. B. Rights or Legitimate Interests
The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which a respondent has rights or legitimate interests in a domain name:
“(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.”
These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.
The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in disproving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., paragraph 2.1 of the WIPO Overview 2.0.
None of the disputed domain names is the name of the Respondent or derived from his or her name. It may be inferred from the Complaint that neither the Complainant nor any other member of the Virgin Group has authorized or arranged for the Respondent to register the disputed domain names. There does not appear to have been any use of the disputed domain names in connection with a good faith offering of goods or services. Nor for any noncommercial or fair use. Given the strong association between the Virgin Group and the trademarks VIRGIN ATLANTIC and VIRGIN MOBILE, the Panel considers it very unlikely that the Respondent could legitimately use either term in any business independent of the Virgin Group. As the trademarks applications identified in the Complaint for China were made in 1999 and 2000, it is highly likely that they are registered. In any event, it is most unlikely that the Respondent could secure priority over them.
Accordingly, the Panel finds that the Complainant has established a strong prima facie case that the Respondent does not have any rights or legitimate interests in any of the disputed domain names and that case has not been rebutted by the Respondent. Therefore, this element of the Policy has been established. C. Registered and Used in Bad Faith
Under the third requirement of the Policy, the Complainant must establish that the disputed domain names have been both registered and are being used in bad faith by the Respondent.
Typically, this requires that the Complainant show that the Respondent had knowledge of the Complainant’s trademark and registered the disputed domain names to take advantage of the trademark’s significance to the trademark owner’s detriment.
Paragraph 4(b) of the Policy provides a number of illustrations of such conduct:
(i) circumstances indicating that [the Respondent has] registered or [the Respondent has] acquired the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registrations 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 Respondent’s] documented out-of-pocket costs directly related to the disputed domain names; or
(ii) [the Respondent has] registered the domain names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the Respondent has] engaged in a pattern of such conduct; or
(iii) [the Respondent has] registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] web site 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 your web site or location or of a product or service on your web site or location.
The Complainant advances a range of claims to support this limb of the Policy. It is not necessary to consider or deal with them all.
As already noted above, the disputed domain names fall into two broad groups: those based on the Complainant’s VIRGIN ATLANTIC trademark and those based on the Complainant’s VIRGIN MOBILE trademark. Often, paragraph 4(b)(ii) above applies when the Respondent has registered a number of disputed domain names based on different trademarks of different businesses. That is not invariably the case, however. See e.g. Telstra Corporation Limited v. Ozurls, supra, where the registration of 15 domain names around the complainant’s trademark, TELSTRA, led to a finding of an abusive pattern. The Panel considers the Respondent’s conduct in this case similarly evidences an abusive pattern of conduct.
First, in the present case, the Respondent has registered eight disputed domain names based on the Complainant’s VIRGIN ATLANTIC trademark and seven disputed domain names based on the Complainant’s VIRGIN MOBILE trademark.
Secondly, there is the nature of the disputed domain names as misspellings or mistranscriptions of the Complainant’s trademarks. UDRP panels have repeatedly recognized that the registration of a domain name to relying on mis-typing errors, so-called typosquatting, to generate click-through revenues or misdirect the browser is bad faith under the Policy. The disputed domain names in the present case are plainly adapted for that purpose.
In this respect, the Panel considers that there is considerable force in the Complainant’s contention that the scope and strength of its reputation in the two trademarks, VIRGIN ATLANTIC and VIRGIN MOBILE, mean it is extremely unlikely that the Respondent would chance upon either combination inadvertently or use them in good faith without some sort of sanction or approval from the Complainant.
Accordingly, the Panel finds that this requirement is also made out. 6. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names,
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be transferred to the Complainant.
Warwick A. Rothnie
Sole Panelist
Date: January 29, 2014
Full & Egal Universal Law Academy