Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Stobbs IP Limited, United Kingdom.
Respondent is Wang Hong Wei of Yi Wu, Zhe Jiang, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (the “Registrar”). 3. Procedural History
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on September 13, 2016. On September 14, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 19, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On September 19, 2016, the Center transmitted by email in both English and Chinese to the Parties a request for comment on the language of the proceeding. Complainant submitted a request for English to be the language of the proceeding on September 21, 2016. Respondent did not comment on the language of the proceeding by the specified due date.
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 and 4, the Center formally notified Respondent of the Complaint in both English and Chinese, and the proceedings commenced on September 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was October 18, 2016. Respondent submitted a simple email indicating that he did not agree with the Complaint on September 30, 2016 and November 3, 2016, but did not submit any substantive response. Accordingly, the Center informed the Parties the commencement of panel appointment process on October 19, 2016.
The Center appointed Yijun Tian as the sole panelist in this matter on October 24, 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 A. Complainant
Complainant is a company incorporated in of London, United Kingdom and is the brand owner of Virgin Group. Based on the information provided by Complainant, founded in 1970, Virgin Group has a widespread reputation and has built up a vast amount of goodwill in the VIRGIN related trademarks in the United Kingdom and abroad in relation to a wide range of goods and services. Virgin Group now comprises over 200 companies worldwide operating in 32 countries including throughout Europe and the United States of America (“USA”). The number of employees employed by Virgin Group is in excess of 40,000, generating an annual group turnover in excess of 4.6 billion pounds.
Complainant has exclusive rights in numerous trademarks comprising the term “virgin” or “virgin media” worldwide since 1973. VIRGIN related trademarks (VIRGIN Marks) cover many jurisdictions, including in United Kingdom (registration number 1009534 on April 11, 1973), and the Europe Union (registration number 578716 on May 20, 1999). It also owns numerous domain names which contain VIRGIN Mark, such as , which was registered in September 1997. B. Respondent
Respondent is Wang Hong Wei of Yi Wu, Zhe Jiang, China.
The disputed domain name was registered on May 29, 2016, which is long after the VIRGIN Marks were registered. The website is a parking page where the disputed domain name is for sale.
The Complainant submitted a Complaint in respect of the disputed domain name under the Uniform Rapid Suspension System (“URS”) on July 15, 2016 to which the Respondent did not answer. On August 5, 2016, the examiner appointed under the URS determined that the evidence was not clear and convincing that the Complainant holds valid national or regional word mark and denied the Complaint. 5. Parties’ Contentions A. Complainant
Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s VIRGIN Marks.
Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that the disputed domain name was registered and is being used in bad faith.
Complainant requests that the disputed domain name be transferred to it. B. Respondent
Respondent did not formally reply to Complainant’s contentions. After the administrative proceeding has been commenced, on September 30, 2016, Respondent sent a reply email which stated “we disagree” in Chinese. 6. Discussion and Findings 6.1. Language of the Proceeding
The language of the Registration Agreement for the disputed domain name is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement. From the evidence presented on the record, no agreement appears to have been entered into between Complainant and Respondent to the effect that the language of the proceeding should be English. Complainant filed initially its Complaint in English, and has requested that English be the language of the proceeding for the following reasons:
a) Both the Registrar and Respondent have a competent understanding of English. This evidenced by the Registration Agreement, which is issued in both English and Chinese. (Annex 2 to the Complaint)
b) English is the international business language, which is widely spoken across the world. 50-150 million people in China have some degree of spoken fluency in English and Respondent would fall within this section of the Chinese population.
c) The disputed domain name comprises English words.
d) The other 27 domain names which are owned by Respondent all letters considered in the domain names are from English. Respondent has a good understanding of English.
e) Respondent owns domain name strings relating to other famous brands, such as , , and .
Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
Paragraph 11(a) allows the panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593). The language finally decided by the panel for the proceeding should not be prejudicial to either one of the parties in its abilities to articulate the arguments for the case (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004). WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) further provides:
“in certain situations, where the respondent can apparently understand the language of the complaint (or having been given a fair chance to object has not done so), and complainant would be unfairly disadvantaged by being forced to translate, the WIPO Center as a provider may accept the language of the complaint, even if it is different from the language of the registration agreement” (WIPO Overview 2.0, paragraph 4.3; see also L’Oreal S.A. v. MUNHYUNJA,WIPO Case No. D2003-0585).
The Panel has taken into consideration the facts that Complainant is a company from United Kingdom, and Complainant will be spared the burden of working in Chinese as the language of the proceeding. The Panel has also taken into consideration the facts that the disputed domain name includes the English words “virgin” and “media” (Compagnie Gervais Danone v. Xiaole Zhang,WIPO Case No. D2008-1047).
On the record, the Panel finds persuasive evidence in the present proceeding to suggest that Respondent may have sufficient knowledge of English. In particular, the Panel notes that, based on the evidence provided by Complainant, (a) the disputed domain name was registered in Latin characters and particularly in English, rather than in Chinese script; (b) The website resolved from the disputed domain name is in Chinese and English, and Respondent is apparently selling the disputed domain name through the website (the webpage shows “Welcome to ” and “the domain is for sale!”); (c) the website appear to have been directed to users worldwide (particularly Chinese and English speakers); (d) the Center has notified Respondent of the proceeding in both Chinese and English; (e) the Center informed Respondent that it would accept a Response in either English or Chinese.
Considering these circumstances, the Panel finds the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case. Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding, and the decision will be rendered in English. 6.2. Discussion and Findings
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) 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.
On the basis of the evidence introduced by Complainant and in particular with regard to the content of the relevant provisions of the Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows: A. Identical or Confusingly Similar
The Panel finds that Complainant has rights in the VIRGIN Marks acquired through registration. Based on the information provided by Complainant, the VIRGIN Marks have been registered worldwide since 1973, and Virgin Group now comprises over 200 companies worldwide operating in 32 countries including throughout Europe and the USA.
The disputed domain name comprises the VIRGIN MEDIA Mark in its entirety. The disputed domain name only differs from Complainant’s trademarks by the top-level suffix of “.vip”. This does not eliminate the identity or at least the confusing similarity between Complainant’s registered trademarks and the disputed domain name. WIPO Overview 2.0 states:
“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”. (paragraph 1.2).
Thus, the Panel finds that the suffix “.vip” is not sufficient to negate the confusing similarity between the disputed domain name and the VIRGIN MEDIA Mark.
The Panel therefore holds that the Complaint fulfils the first condition of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that Respondent has rights or legitimate interests in the disputed domain name:
(i) before any notice to Respondent of the dispute, Respondent’s 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) Respondent (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) Respondent is 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.
The overall burden of proof on this element rests with Complainant. However, it is well established by previous UDRP panel decisions that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the complainant’s contentions. If respondent fails to do so, complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (Danzas Holding AG, DHL Operations B.V. v. Ma Shikai,WIPO Case No. D2008-0441; WIPO Overview 2.0, paragraph 2.1 and cases cited therein).
Complainant has rights in the VIRGIN Marks globally since 1973. According to Complainant, Virgin Group has a widespread reputation and has built up a vast amount of goodwill in the VIRGIN related trademarks in the United Kingdom and abroad in relation to a wide range of goods and services. It has more than 40,000 employees, generating an annual group turnover in excess of 4.6 billion pounds.
Moreover, Respondent is not an authorized dealer of VIRGIN branded products or services. Complainant has therefore established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name and thereby shifted the burden of production to Respondent (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra; Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
Based on the following reasons the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name:
(a) There has been no evidence adduced to show that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Respondent has not provided evidence of a legitimate use of the disputed domain name or reasons to justify the choice of the words “virgin media” in its business operation or the use of the VIRGIN MEDIA Mark and design on its website (without disclaimer or other clarifying details). There has been no evidence to show that Complainant has licensed or otherwise permitted Respondent to use the VIRGIN Marks or to apply for or use any domain name incorporating the VIRGIN Marks;
(b) There has been no evidence adduced to show that Respondent has been commonly known by the disputed domain name. There has been no evidence adduced to show that Respondent has any registered trademark rights with respect to the disputed domain name. The disputed domain name was registered on May 29, 2016, which is long after the VIRGIN Marks became widely known. The disputed domain name is identical or confusingly similar to Complainant’s VIRGIN Marks, particularly VIRGIN MEDIA Mark;
(c) There has been no evidence adduced to show that Respondent is making a legitimate noncommercial or fair use of the disputed domain name. By contrast, according to the Panel’s investigation, the Panel recently visited the website resolved by the disputed domain name , and finds that it is offering to sell the disputed domain name, stating “Welcome to ” and “the domain is for sale!”;
The Panel finds that Respondent has failed to produce any evidence to establish its rights or legitimate interests in the disputed domain name. The Panel therefore holds also taking into consideration the Panel’s findings below, that Complainant has established the second element of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding disputed domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.
The Panel concludes that the circumstances referred to in paragraph 4(b)(i) and (iv) of the Policy are applicable to the present case and upon the evidence of these circumstances and other relevant circumstances, it is adequate to conclude that Respondent has registered and used the disputed domain name in bad faith. a) Registered in Bad Faith
The Panel finds that Complainant has a widespread reputation in the VIRGIN Marks with regard to its products and services. Complainant has rights in the VIRGIN Marks globally since 1973. Based on the information provided by Complainant, Virgin Group has a widespread reputation in the VIRGIN related trademarks in the United Kingdom and abroad in relation to a wide range of goods and services, and it has more than 40,000 employees, generating an annual group turnover in excess of 4.6 billion pounds.
It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the disputed domain name (in 2016).
Moreover, Respondent has chosen not to respond to Complainant’s allegations. By contrast, Respondent is currently using the website resolved by the disputed domain name to offer to sell the disputed domain name. According to the panel’s decision in The Argento Wine Company Limited v. Argento Beijing Trading Company, supra, “the failure of the Respondent to respond to the Complaint further supports an inference of bad faith”. (see also Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787).
Thus, the Panel concludes that the disputed domain name was registered in bad faith with the intent to create an impression of an association with Complainant’s products. b) Used in Bad Faith
Complainant has adduced evidence to prove that by using the confusingly similar disputed domain name, Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website”.
To establish an “intention for commercial gain” for the purpose of this Policy, evidence is required to indicate that it is “more likely than not” that intention existed (The Argento Wine Company Limited v. Argento Beijing Trading Company, supra).
Given the widespread reputation of the VIRGIN Marks, the Panel finds that the public is likely to be confused into thinking that the disputed domain name has a connection with Complainant, contrary to the fact. There is a strong likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website to which the disputed domain name resolves. In other words, Respondent has through the use of a confusingly similar disputed domain name created a likelihood of confusion with the VIRGIN Marks. Moreover, Respondent did not respond formally to the Complaint. And, as mentioned above, Respondent is offering to sell the disputed domain name through the website resolved by the disputed domain name. The Panel therefore concludes that the disputed domain name is being used by Respondent in bad faith.
In summary, Respondent, by choosing to register and use a domain name, which is confusingly similar to Complainant’s well-known trademarks, intended to ride on the goodwill of Complainant’s trademarks in an attempt to exploit, for commercial gain, Internet users destined for Complainant. In the absence of evidence to the contrary and rebuttal from Respondent, the choice of the disputed domain name and the conduct of Respondent as far as the website to which the disputed domain name resolves and the offer to sell the disputed domain name are indicative of registration and use of the disputed domain name 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 name be transferred to Complainant.
Yijun Tian
Sole Panelist
Dated: October 28, 2016
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