The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Burges Salmon LLP, United Kingdom.
The Respondent is David Critchley, David Critchley of Cheshire, United Kingdom, self-represented. 2. The Domain Names and Registrar
The disputed domain names, and (the “Domain Names”), are registered with Easyspace (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 24, 2016. On August 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On August 25, 2016, 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 Complainant filed an amended Complaint on August 30, 2016, correcting some minor typographical errors in the original document and updating the name of the Complainant’s authorized representative.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2016. The Response was filed with the Center on September 16, 2016.
The Center appointed Tony Willoughby as the sole panelist in this matter on September 26, 2016. 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 member of the Virgin Group, the group of companies founded by Sir Richard Branson in 1970, which is now engaged in a variety of activities ranging from transportation to telecommunications. The Complainant is the group company responsible for managing the group’s “Virgin” brand and owns the group’s VIRGIN trade mark registrations. One such trade mark registration is European Union Trade Mark No. 001471143 filed on January 21, 2000 (registered January 30, 2003) for VIRGIN (word) for goods and services in classes 16, 25, 35 and 42.
The Domain Names were registered on August 22, 2014 and, as viewed by the Panel, are currently connected to pay-per-click webpages at websites, which appears to the Panel to be hosted by a third party.
The Respondent is the director of several companies, two of which are Virgin Trademarks Limited and Virgin Brands Limited, both incorporated on January 21, 2016.
On February 15, 2016 the Complainant wrote to the Respondent drawing the Respondent’s attention to its trade mark rights and seeking inter alia transfer of the Domain Name and its “.” equivalent and changes of name of the above two companies to exclude the word “Virgin”, or, failing that, dissolution of the companies. Not having received any reply to that letter the Complainant sent a chaser on March 7, 2016. There was no reply. On March 22, 2016 the Complainant’s representatives wrote a detailed letter setting out the Complainant’s rights and seeking the relief sought in the Complainant’s letter of February 15, 2016.
On April 4, 2016 the Respondent emailed the Complainant’s representative claiming that he had responded to the Complainant’s “very aggressive” letter of February 15, 2016 and saying that he had asked for information as to which trade mark he was alleged to have infringed and how he had infringed it. He said that he had postponed the launch of his business “until [he] was in a position to move forward”. On April 11, 2016 the Complainant’s representative responded explaining that the Complainant had not received the Respondent’s letter and asked for a copy. On the same day the Respondent replied, repeating his request for information as to which trade mark he was alleged to have infringed and how he had infringed it.
On April 22, 2016 the Complainant’s representative wrote to the Respondent drawing attention to the fact that the Respondent had not provided any information as to the Respondent’s plans for his businesses, but subject to that proviso, answering the Respondent’s question, i.e. providing details of the Complainant’s relevant trade mark registrations and its claim to common law trade mark rights and highlighting the risk of confusion if the Respondent proceeded with use of the domain names and company names, the subject of that correspondence.
In the absence of any reply, the Complainant’s representative sent the Respondent further letters on May 9, 2016 and August 12, 2016, the latter letter indicating that the Complainant had now become aware of the Domain Name, and its “.” equivalent. The Respondent did not reply. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Names are confusingly similar to the Complainant’s VIRGIN registered trade mark, that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Domain Names were registered and are being used in bad faith. B. Respondent
The Respondent’s Response reads verbatim as follows:
“Further to your letter dated [ ], I, David Critchley would like to respectfully respond to the claim made by Virgin Enterprises Ltd as follows:
The two web addresses in dispute were registered to be used in conjunction with the limited companies we have in the UK. Contrary to the assertion of Virgin Enterprises LTD, I must stress that these are not being held passively, but are to be used when companies begin trading. The company will sell and or license various unused and unexploited Trademarks, Brands and Patents.
The word Virgin is used in a purely descriptive capacity, as the brands, Trademarks and Patents we intend selling/ licensing will be unused and unexploited. The word virgin was chosen as it best describes the nature of our business, (and is no way meant to pass off as Virgin Enterprises, nor infringe on Virgin Enterprises trademarks)
I do hope this assists you in making your ruling, and also believe you should rule in our favour in this matter, allowing any supposed Trademark infringement to be dealt with by the relevant body.” 6. Discussion and Findings A. General
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove that:
(i) The Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names have been registered in bad faith and are being used in bad faith. B. Identical or Confusingly Similar
The Domain Names each incorporate the Complainant’s VIRGIN trade mark and additional descriptive matter at the second level. In the case of the Domain Names, the generic “.com” Top Level Domain identifier serves no distinctive purpose and may be ignored for the purpose of the assessment under paragraph 4(a)(i) of the Policy.
The Panel finds that the Domain Names are confusingly similar to a trade mark in which the Complainant has rights. C. Rights or Legitimate Interests
It is inconceivable to the Panel that the Respondent was not fully aware of the Complainant and its VIRGIN trade mark and the patently obvious risk of confusion when selecting the Domain Names and the company names, Virgin Trade Marks Limited and Virgin Brand Licensing Limited.
The Panel points to the following factors leading to that conclusion.
- The Complainant’s VIRGIN trade mark is a household name in the United Kingdom. The Domain Names identify precisely the Complainant’s core business, namely the management and exploitation of the Complainant’s VIRGIN trade mark.
- The Respondent is no simpleton. He is the director of in excess of ten United Kingdom limited companies.
- The Respondent is no novice when it comes to trade marks and brands. Two of his companies have names referencing trade marks and brands and in his Response he indicates that those companies will be selling and licensing trade marks and brands.
- Not only is the VIRGIN trade mark of the Complainant a household name in the United Kingdom, it is well-known within the business community in the United Kingdom that the Complainant is and has long been an active licensor of its VIRGIN trade mark.
- The Complainant’s letters and those of its representative more than adequately set out the Complainant’s trade mark rights and the potential for trade mark infringement on the part of the Respondent and its companies, rendering the Respondent’s request for further information in that regard disingenuously meaningless.
- A bona fide business operator, intent on providing a bona fide service offering under the Domain Names would have provided prompt and detailed responses to the letters from the Complainant and its representative, seeking to justify its adoption of names incorporating the “Virgin” name. A bona fide business operator would also have drawn the Complainant’s attention at an early stage in the correspondence to the other “Virgin” domain names of which the Complainant and its representative were plainly unaware at the outset.
Paragraph 4(c) of the Policy provides for various circumstances, which if established to the satisfaction of the Panel, will demonstrate rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy. None of those circumstances is applicable here. Knowingly (as the Panel has found) selecting domain names and company names for use in a manner which can only infringe the rights of a trade mark owner cannot give rise to rights or legitimate interests in respect of a domain name for the purposes of paragraph 4(a)(ii) of the Policy.
In the absence of any credible explanation from the Respondent the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names. D. Registered and Used in Bad Faith
On the basis of the above findings the Panel concludes that it is more likely than not that the Respondent registered the Domain Names to exploit them on the back of the fame of the Complainant’s VIRGIN trade mark either by way of sale or by way of attracting traffic to his websites for commercial gain as described in paragraph 4(b)(iv) of the Policy. In the view of the Panel the Respondent, an experienced businessman, could never for one moment have thought that he could legitimately use the Domain Names for the purpose set out in the Response.
Thus, the Response, to put it generously, is less than credible.
While the Domain Names are not in active use in the sense that they do not currently appear to be connected to any website operated by the Respondent, in the hands of the Respondent they are out of the control of the Complainant and represent, in the view of the Panel, at the very least an abusive threat hanging over the head of the Complainant, which could be activated at any time by the Respondent. In the view of the Panel that abusive threat constitutes a continuing use in bad faith.
The Panel is unable to see any use to which the Domain Names could be put without infringing the Complainant’s trade mark rights.
The Panel finds that the Domain Names were registered and are being used in bad faith within the meaning of paragraphs 4(b)(iv) and 4(a)(iii) of the Policy. 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 Names, and , be transferred to the Complainant.
Tony Willoughby
Sole Panelist
Date: October 3, 2016
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