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 mig sicari, nowhere famous of Sydney, New South Wales, Australia / Contact Privacy Inc. Customer 0142810294 of Toronto, Ontario, Canada. 2. The Domain Name and Registrar
The disputed domain name (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 25, 2016. On October 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on October 27, 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 Complaint on October 28, 2016.
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 Respondent of the Complaint, and the proceedings commenced on October 31, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 20, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 21, 2016.
On November 21, 2016, an email communication was received from Respondent, indicating “Please note we provided transfer details on 3/11/16.” On November 22, 2016, the Center requested Complainant to confirm if Parties were in the process of settlement, if not, Complainant was also invited to comment whether it would like to explore settlement with Respondent. No response was received from Complainant by the specified due date. On November 28, 2016, the Center informed Parties that it would proceed with panel appointment shortly.
The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on November 29, 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
Complainant is part of a multinational group of companies active in a variety of sectors ranging from mobile telephony, travel, financial services, leisure, music, holidays and health and wellness. Complainant holds trademark registrations for the signs VIRGIN and VIRGIN AUSTRALIA in various countries, including Australia. Complainant uses these trademarks in connection with its business.
The Disputed Domain Name is registered since April 15, 2016. The Disputed Domain Name is registered by Respondent and redirects to a parking page, which mentions “ is a totally awesome idea still being worked on. Check back later.” 5. Parties’ Contentions A. Complainant
Complainant considers the Disputed Domain Name to be confusingly similar to trademarks and service marks in which it claims to have rights. Complainant argues that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. According to Complainant, Respondent has not used the Disputed Domain Name in connection with a legitimate use. Also, according to Complainant, Respondent has not been commonly known by the Disputed Domain Name. Complainant claims that the Disputed Domain Name was registered and used in bad faith. B. Respondent
Respondent did not reply to the contentions made by Complainant, but claimed that it had provided transfer details on November 3, 2016. 6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
The onus is on Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that Complainant must show that all three elements set out in paragraph 4(a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are administrative, the standard of proof is the balance of probabilities.
Thus for Complainant to succeed, it must prove, within the meaning of paragraph 4(a) of the Policy and on the balance of probabilities that:
(i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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.
The Panel will deal with each of these requirements in turn. A. Identical or Confusingly Similar
To prove this element, Complainant must first establish that there is a trademark or service mark in which it has rights. Complainant has established that there are VIRGIN and VIRGIN AUSTRALIA trademarks in which it has rights.
The Disputed Domain Name fully incorporates the Complainant’s VIRGIN AUSTRALIA trademark, omits a space and adds the “.club” Top-Level Domain (“TLD”). It is well established that the specific TLD is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between complainant’s trademark and the disputed domain name. Accordingly, the Panel finds that the Disputed Domain Name is virtually identical to Complainant’s trademark and Complainant has made out the first of the three elements of the Policy that it must establish. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, a complainant has the burden of establishing that respondent has no rights or legitimate interests in respect of the disputed domain name.
It is well established under the Policy that it is sufficient for a complainant to make a prima facie showing that respondent has no rights or legitimate interests in the disputed domain name in order to place the burden of production on respondent. See, Champion Innovations, Ltd. v. Udo Dussling (45FHH),WIPO Case No. D2005-1094; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
The Panel notes that Respondent has not apparently been commonly known by the Disputed Domain Name and that Respondent does not seem to have acquired trademark or service mark rights. Respondent’s use and registration of the Disputed Domain Name was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed.
In fact, Respondent is not making any use of the Disputed Domain Name.
Therefore, the Panel finds that Complainant has established that Respondent has no rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
Complainant must prove on the balance of probabilities both that the Disputed Domain Name was registered and is being used in bad faith (See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).
The Panel finds that Respondent’s awareness of Complainant’s trademark rights at the time of registration suggests bad faith (See Red Bull GmbH v. Credit du Léman SA, Jean-Denis Deletraz,WIPO Case No. D2011-2209; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite,WIPO Case No. D2001-1070, where POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that respondent acted in bad faith when registering the domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix (“voip”) suggested knowledge of complainant’s rights in the trademarks).
Respondent is not actively using the Disputed Domain Name. According to the Panel, the passive holding of the Disputed Domain Name may amount to bad faith when it is difficult to imagine any plausible future active use of the Disputed Domain Name by Respondent that would be legitimate and not infringing Complainant’s well-known mark or unfair competition and consumer protection legislation (See Inter-IKEA v. Polanski,WIPO Case No. D2000-1614; Inter-IKEA Systems B.V. v. Hoon Huh,WIPO Case No. D2000-0438; Telstra Corporation Limited v. Nuclear Marshmallows, supra). The fact that a complainant’s trademark has a strong reputation and is widely used and the absence of evidence whatsoever of any actual or contemplated good faith use are further circumstances that may evidence bad faith registration and use in the event of passive use of domain names (Telstra Corporation Limited v. Nuclear Marshmallows, supra).
In the instant case, the Panel finds that Respondent must have had knowledge of Complainant’s rights in the VIRGIN and VIRGIN AUSTRALIA trademarks at the moment it registered the Disputed Domain Name. Complainant is the holder of an extensive trade mark portfolio and has built up a significant reputation in the VIRGIN trademark in many countries. In view of the reputation of Complainant’s VIRGIN and VIRGIN AUSTRALIA trademarks, it is difficult to conceive a plausible legitimate future use of the Disputed Domain Name.
Finally, by failing to respond to the Complaint, Respondent did not take any initiative to contest the foregoing. Pursuant to paragraph 14 of the Rules, the Panel may draw the conclusions it considers appropriate.
In view of the above, the Panel finds that, on the balance of probabilities, it is sufficiently shown that the Disputed Domain Name was registered and is being used in bad faith. 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 the Complainant.
Flip Jan Claude Petillion
Sole Panelist
Date: December 13, 2016
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