Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom" or "UK"), represented by Stobbs IP Limited, United Kingdom.
Respondent is Balticsea LLC of Kaliningrad, the Russian Federation / Contact Privacy Inc. Customer 0134432592 of Toronto, Ontario, Canada. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 24, 2016. On October 24, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 25, 2016, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 31, 2016 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complain on November 4, 2016.
The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on November 7, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 27, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on November 29, 2016.
The Center appointed Roberto Bianchi as the sole panelist in this matter on December 6, 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 Virgin group of companies originated in 1970 when Sir Richard Branson began selling music records under the Virgin name. Since then the group has expanded its operations into various businesses, presently comprising over 200 companies worldwide operating in 32 countries, including Europe and the United States of America. The Virgin group of companies has over 40,000 employees worldwide, and its annual turnover exceeds 4.6 billion GBP.
Complainant owns numerous registrations for the VIRGIN trademark and other marks incorporating the "Virgin" term, in the United Kingdom, the European Union and elsewhere, inter alia,
- United Kingdom: VIRGIN, Reg. No. 1009534, Reg. Date April 11, 1973, filed on April 11, 1973, covering products in International Class 9;
- United Kingdom: VIRGIN MEDIA, Reg. No. 2439120, Reg. Date October 5, 2007, filed on November 21, 2006, covering products and services in International Classes 9, 35, 38, 41 and 42;
- United Kingdom: VIRGIN MEDIA, Reg. No. 2429892, Reg. Date May 18, 2007, filed on August 14, 2006, covering products and services in International Classes 9, 35, 38 and 41.
The disputed domain name was registered on June 24, 2008. The disputed domain name resolved to a website which was offering the domain name for sale and to a click through site which displays a range of adverts, including an advert for "Virgin Broadband". 5. Parties' Contentions A. Complainant
Complainant contends as follows:
Complainant owns extensive rights in the VIRGIN and VIRGIN MEDIA marks including but not limited to the trademark applications and registrations. Complainant has rights and the public have become accustomed to seeing VIRGIN and VIRGIN MEDIA. Complainant has gained a significant reputation in these brands in the UK and abroad in relation to a wide range of goods and services through extensive use. The public are very used to seeing VIRGIN used in conjunction with another word. In particular, the public are used to seeing VIRGIN MEDIA. This is because of the famous VIRGIN MEDIA business. A Google search for VIRGIN MEDIA brings up results of Complainant only. In addition to (registered on September 10, 1997) and (registered on February 22, 1999), Complainant is also the registered proprietor of over 4,500 domains names, incorporating the VIRGIN name. Details of some of these domains are attached at Annex 8 to the Complaint. This list is another example of the wide scale use of the VIRGIN brand in conjunction with an additional element. In addition, Complainant has built up a vast amount of goodwill in the VIRGIN and VIRGIN MEDIA trade marks. The disputed domain name is identical to the famous brand of Complainant, namely VIRGIN MEDIA.
Prior UDRP panels have found that Complainant's trademarks are well-known and that Complainant has gained a significant reputation. Respondent has no rights or legitimate interests in respect of the domain name. Bearing in mind the reputation of the VIRGIN and VIRGIN MEDIA marks, there is no believable or realistic reason for registration or use of the domain names other than to take advantage of Complainant's rights. In view of the reputation of the VIRGIN and VIRGIN MEDIA brands, one cannot possibly believe that Respondent legitimately registered this domain name.
The disputed domain name is not being used in relation to a bona fide offering of goods and services. Respondent is not making legitimate or fair use of the disputed domain name. The disputed domain name resolves to a click-through site that displays a range of ads, including an ad for "Virgin Broadband".
On August 1, 2016, Complainant wrote to the registrant of the disputed domain name setting out its rights. Despite following up with a reminder, no response has been received. The registrant of the disputed domain name when given multiple opportunities has failed to express a legitimate intended future use for the domain name. This is no doubt because of the fact that they cannot realistically have a legitimate interest in the disputed domain name.
Respondent is not commonly known by the name "Virgin" or "Virgin Media". Respondent has no trademark registrations for VIRGIN or VIRGIN MEDIA.
The registration of the disputed domain name is an example of a bad faith registration.
Internet users reach this site expecting to reach an official site of Complainant, specifically an official site of VIRGIN MEDIA. Complainant sees absolutely no other justification for the registration of the disputed domain name other than to sell it to Complainant for a profit and for a sum in excess of their out of pocket expenses. VIRGIN MEDIA is a famous brand and Respondent has registered the disputed domain name in full knowledge of Complainant.
The disputed domain name is also being offered for sale, See screenshot attached at Annex 10 to the Complaint. It seems clear that Respondent is looking to recover a sum which is in excess of its'.out of pocket expenses for this domain name. If Respondent was not looking to profit from this domain name registration it would have responded to Complainant's earlier correspondence. Respondent ignored this correspondence. In accordance with Policy paragraph 4(b)(ii), Respondent has clearly prevented Complainant from owning a domain name which reflects Complainant 's famous mark. The disputed domain name is identical to the VIRGIN MEDIA brand. A Google search for VIRGIN MEDIA quite clearly brings up the Complainant's information (screenshot attached at Annex 5 to the Complaint). In view of this, it is quite apparent that Respondent had registered this domain name in bad faith in accordance with Policy paragraph 4(b)(ii).
Furthermore, in accordance with Policy paragraph 4(b)(iii) the domain name has clearly been registered in order to disrupt the business of Complainant. Complainant is extremely concerned that visitors to the website at the disputed domain name would consider it to be in some way linked or affiliated to Complainant. Complainant is concerned about the current and future use of the disputed domain name. The site displays a range of advertisements including an advertisement for "VIRGIN BROADBAND". When you click on this link, it does not resolve to an official site of Complainant. This is particularly concerning to Complainant because of its Virgin Media business, which offers broadband services. Complainant's customers may click on the links displayed on the site believing them to be linked to the Virgin business. Complainant has no control over the quality of the products that are being sold. Complainant is extremely concerned about any harm that may be caused to their customers. Customers are only reaching the disputed domain name because they are expecting to reach an official site of Complainant. In summary, Respondent's activity is clearly disrupting Complainant business in accordance with Policy paragraph 4(b)(iii).
In addition, in accordance with Policy paragraph 4(b)(iv), Respondent has registered the disputed domain name for commercial gain. The range of content that the disputed domain name resolves to clearly point to the fact that Respondent is profiting from redirecting people intending to reach the official sites of Complainant to other websites. It is clear that Respondent is behaving in a manner that is enabling them to profit commercially, in bad faith in accordance with Policy paragraph 4(b)(iv). B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant has shown to the satisfaction of the Panel that it owns numerous trademark registrations for the VIRGIN MEDIA and VIRGIN marks. (See section 4 above).
The Panel notes that the disputed domain name contains the VIRGIN MEDIA mark in its entirety. In accordance with prior UDRP panels, the Panel finds that the absence in the disputed domain name of the space between the terms "Virgin" and "Media", and the addition of the generic Top-Level Domain ".org" is inapt to distinguish the domain name from the mark. Accordingly, the Panel finds that the disputed domain name is identical to Complainant's VIRGIN MEDIA mark. The first element of the Policy is thus met. B. Rights or Legitimate Interests
Complainant contends that bearing in mind the reputation of the VIRGIN and VIRGIN MEDIA marks, one cannot possibly believe that Respondent legitimately registered this domain name. There is no believable or realistic reason for registration or use of the disputed domain name other than to take advantage of Complainant's rights. Complainant also contends that the disputed domain name is not being used in relation to a bona fide offering of goods and services, and that Respondent is not making legitimate or fair use, since the disputed domain name resolves to a click-through website that displays a range of ads, including an ad for 'Virgin Broadband". Complainant adds that it is a provider of broadband services. Further, Complainant states that Respondent is not commonly known by the name "Virgin" or "Virgin Media", and that Respondent has no trademark registrations for VIRGIN or VIRGIN MEDIA. Complainant says that on August 1, 2016, it wrote to Respondent setting out its rights in the disputed domain name, and that despite following up with a reminder, no response from Respondent was received. Complainant concludes that this failure to express a legitimate intended future use is due to the fact that Respondent cannot realistically have a legitimate interest in the disputed domain name.
In the opinion of the Panel, the available evidence supports these contentions of Complainant. First, the only contents of the website at the disputed domain name shows "related links" to websites unrelated to Complainant, offering "free dating apps", "a free dating site", as well as goods or services in competition with Complainant, such as broadband services, phones, etcetera. In addition, the disputed domain name appears to be offered for sale. Since the disputed domain name exclusively consists of Complainant 's well known VIRGIN MEDIA mark, the Panel believes that neither the posting of such related links nor the offer for sale of the disputed domain name is a use in connection with a bona fide offering of goods or services. Second, according to the Internic WhoIs database, the name of Respondent is "Balticsea LLC" and/or "Contact Privacy Inc. Customer 0134432592", and nothing indicates that Respondent is known – commonly or otherwise – by the disputed domain name. Third, there is no evidence of any fair or legitimate noncommercial use of the disputed domain name. In particular, there is no reason to believe that the disputed domain name, which slavishly reproduces Complainant's mark, has been registered other than to profit from selling the domain name to Complainant or from attracting Internet users presumably looking for Complainant and its well-known VIRGIN MEDIA mark, for profit. Thus, Complainant has made out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name.
It is well established that a complainant must first establish a prima facie case that the respondent lacks any rights or legitimate interests in the disputed domain name, and once this is done, the burden shifts to the respondent to show that it has a right or legitimate interest in the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1 (" [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 […]"). Respondent failed to provide any explanation for having registered the disputed domain name, fully incorporating Complainant's VIRGIN MEDIA mark, both at the time of receiving Complainant `s cease-and-desist letter, and in this proceeding. Accordingly, the Panel concludes that Respondent lacks any right or legitimate interest in the disputed domain name. C. Registered and Used in Bad Faith
Complainant has shown that it began using, and registered, the VIRGIN mark around 1970, decades before Respondent registered the disputed domain name. In addition, Complainant has shown that the VIRGIN mark is well known, citing several prior UDRP panels making such a finding. Further, Complainant has provided evidence of its trademark registrations for VIRGIN MEDIA made at least two years before the registration of the disputed domain name. Lastly, Complainant has evidenced that the website at the disputed domain name contains "related links" to third parties' websites, some of which are offering goods and services in competition with Complainant. Together, these factors suggest that Respondent knew of, and targeted, Complainant, its VIRGIN MEDIA mark and its products and services at the time of the domain name registration. Further, the Panel notes that the disputed domain name is being offered for sale, presumably for a price on excess of out-of-pocket costs directly related to the registration of the disputed domain name. All these circumstances clearly indicate that the registration of the disputed domain name was in bad faith.
In addition, Complainant has shown that the website at the disputed domain name includes "related links" of third parties apparently unrelated to Complainant, some of which clearly compete with Complainant's goods or services, such as providing broadband services (as does Complainant under its VIRGIN MEDIA mark). Presumably, these links are intended to redirect Internet users looking for Complainant and its VIRGIN marks to click-through links generating income for Respondent. Given that Complainant's VIRGIN and VIRGIN MEDIA marks are well known, the Panel concludes that Respondent, by using the disputed domain name as shown above, has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with Complainant's VIRGIN MEDIA mark as to the source, sponsorship, affiliation, or endorsement of its website or location. This is a circumstance of registration and use in bad faith according to Policy paragraph 4(b)(iv). 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 disputed domain name be transferred to Complainant.
Roberto Bianchi
Sole Panelist
Date: December 20, 2016
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