The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Norvell IP LLC, United States of America (“United States” or “US”).
The Respondent is Michelle Meads, Virgin Yachts of Diana Beach, Florida, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with Dominion Domains, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 25, 2016.1 On October 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 27, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amended Complaint on October 31, 2016. The Complainant filed an amendment to the Complaint on November 2, 2016 to correct an administrative formality.
The Center verified that the Complaint together with the amendment to the Complaint and the amended Complaint (hereinafter referred altogether as 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 the 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. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2016.
On November 30, 2016, the proceedings were suspended at the request of the Complainant. The Center notified the Parties of the reinstitution of the proceedings on February 16, 2017.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on March 2, 2017. 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 a multinational conglomerate with a multi-faceted range of business activities, including those related to the travel sector. The Complainant has submitted evidence that it is the owner of a large number of trademark registrations in numerous countries for VIRGIN, including the following:
US trademark VIRGIN with registration No. 1,413,664 and registration date October 14, 1986.
US trademark VIRGIN with registration No. 1,851,817 and registration date August 30, 1994.
US trademark (device) VIRGIN with registration No. 4,810,741 and registration date September 15, 2015 for “arranging and organizing of cruises; operating a cruise line namely, the transportation of passengers by water”.
The disputed domain name was registered on June 20, 2016. The disputed domain name does not resolve to an active website. 5. Parties’ Contentions A. Complainant
The Complainant, a member of the Virgin Group, is the brand owner for dozens of VIRGIN trademark licensees and affiliates around the world. The Virgin Group was founded in 1970 as a mail order record retailer by the British entrepreneur Sir Richard Branson. Today, Virgin is one of the world’s most recognized and respected brands. Not limited to any particular area or activity, the Complainant is a dynamic conglomerate of companies and business units that actively develop new products and services with an ever-growing range of branded goods and services, ranging from transportation to telecommunications, health and wellness, food and beverage, hospitality, travel, spa, entertainment, and retail.
For more than three decades, Sir Richard Branson and the Complainant have been involved in the boating industry. The Complainant is the trusted source for services and related goods in the leisure, travel, and transportation industries, whether by boat, plane, balloon, car, train or even spaceship.
On September 5, 2014, the Complainant contacted the Respondent regarding a dispute over the Respondent’s use of the Complainant’s registered trademark VIRGIN. On June 23, 2015, about one year prior to the Respondent’s registration of the disputed domain name , the Complainant publicly announced the launch of the Virgin Cruises cruise line in Miami, Florida. Recently, Virgin Cruises was renamed Virgin Voyages. Virgin Voyages is currently building luxury ships and will offer vacation cruise travel services to thousands of customers.
The Complainant owns more than 3,000 trademark registrations and applications incorporating “Virgin” in more than 150 countries worldwide. In the United States, the Complainant owns more than 100 trademark registrations and applications that include “Virgin” as the dominant element of the mark. In addition, the Complainant obtained more than 2,150 registrations for VIRGIN in at least 100 jurisdictions other than the United States prior to June 20, 2016. Furthermore, as a result of its long-standing, widespread, worldwide use, the Complainant owns extensive common law rights in the VIRGIN trademark.
The Complainant employs tens of thousands of people in 35 countries, serves millions of customers worldwide, has 96 percent brand recognition in the United States, and has global branded revenues of several billion dollars.
The Complainant’s registered trademark VIRGIN is registered with ICANN’s Trademark Clearinghouse (“TMCH”) program for the registration of generic Top-Level Domains (“gTLDs”). Among other services, the TMCH provides warning notices to potential domain name registrants when they attempt to register a domain name that matches a trademark registered with the TMCH. If, after receiving and accepting the warning notice, the domain name registrant continues to register the domain name, the trademark holder with a corresponding mark in the TMCH receives a notification of the domain name registration, so they can take any appropriate action if they so choose. On June 20, 2016, the Complainant received a notification from the TMCH regarding the registration of the disputed domain name .
The disputed domain name fully incorporates the Complainant’s VIRGIN trademark. The Respondent chose to register and use the Complainant’s well-known and internationally famous registered trademark without authorization from the Complainant, in clear bad faith and disregard for the Complainant’s rights and with intent to cause consumer confusion as to source, sponsorship or affiliation of their services with the Complainant. There is no legitimate need for the Respondent to use the Complainant’s registered trademark in the disputed domain name. Rather, the only reason to do so would be to lure Internet users and potential customers of the Complainant to the disputed domain name.
After failing for six months to respond to the Complainant’s first three sets of cease-and-desist letters, the Complainant was contacted on or around March 27, 2015, by the Respondent’s counsel, who confirmed that the Respondent had received the Complainant’s letters.
The Respondent is not affiliated with the Complainant in any way. At no time has the Complainant licensed or otherwise endorsed, sponsored, or authorized the Respondent to use the Complainant’s registered trademark. The Complainant and the VIRGIN trademark are well known in the boating community, which intensifies the confusing similarity of the disputed domain name to the Complainant’s trademark since the disputed domain name implies a connection to boats and boating. The disputed domain name merely combines the Complainant’s registered VIRGIN trademark with the generic term “yachts”. The addition of the term “yachts” is not sufficient to avoid confusion of the disputed domain name with the Complainant’s trademark.
The Respondent has not used, and is not using or preparing to use, the disputed domain name in connection with a bona fide offering of goods or services. The Respondent registered the disputed domain name intending to capitalize on the contemporaneous excitement surrounding the launch of the new Virgin Group licensee Virgin Voyages for luxury cruise services and the resulting substantial accrual of goodwill in the VIRGIN trademark. The Respondent has used the widely recognized Virgin name to lure Internet users looking for legitimate Virgin services as part of a scheme to trade on the goodwill of the Complainant. The Respondent is not currently using the disputed domain name, nor could any use of the disputed domain name by the Respondent in connection with commercial services in the boating industry be a bona fide offering of goods and services.
There is no evidence that the Respondent was commonly known by the disputed domain name prior to the Complainant’s use of the VIRGIN trademark nor is there any evidence that the Respondent has any rights senior to the Complainant’s rights. There is no evidence that the Respondent is making any legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.
The Respondent acted in bad faith because the Respondent knew or should have known of the Complainant’s rights in the VIRGIN trademark prior to registration of the disputed domain name. Furthermore, the Respondent registered the disputed domain name with the intent of trading off of a likelihood of confusion with the VIRGIN trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s services. In addition, the Respondent failed to respond to the Complainant’s cease-and-desist letters and attempts to resolve the matter.
The Respondent’s pairing of the Complainant’s VIRGIN trademark with the term “yachts” in the disputed domain name demonstrates the Respondent’s knowledge that the Complainant has long used its VIRGIN trademark in connection with the boating industry, as the gTLD “.yachts” refers to a common type of vessel in the boating, travel, and leisure industries.
The Respondent deliberately registered the disputed domain name to create an association with the Complainant’s services in connection with travel and leisure. The Respondent clearly had notice of the Complainant’s rights in the VIRGIN trademark prior to registering the disputed domain name , because the Complainant had previously sent cease-and-desist letters to the Respondent notifying the Respondent of the Complainant’s rights. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is, according to the submitted evidence, the owner of the registered trademark VIRGIN. The disputed domain name comprises the Complainant’s trademark VIRGIN in its entirety. A difference between the disputed domain name and the VIRGIN trademark is the addition of the gTLD suffix “.yachts” which refers to a recreational boat or ship. It is standard practice to disregard the Top-Level suffix under the confusing similarity test, except in cases where the applicable Top-Level suffix may itself form part of the relevant trademark. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.
Having the above in mind, the Panel finds that the disputed domain name is identical to the Complainant’s trademark and that the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(i) that it has made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute; or
(ii) that it is commonly known by the disputed domain name, even if it has not acquired any trademark rights; or
(iii) that it intends to make a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Complainant’s trademark registration for VIRGIN predates the Respondent’s registration of the disputed domain name . The Complainant has not licensed or otherwise consented to the Respondent’s use of the VIRGIN trademark in connection with the disputed domain name which is identical or confusingly similar to the Complainant’s trademark.
Although given the opportunity, the Respondent has not rebutted the Complainant’s prima facie case. The Respondent has not submitted any evidence indicating that the Respondent has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute. There is no evidence in the case record indicating that the Respondent is the owner of any trademark rights or that the Respondent is commonly known by the disputed domain name. Furthermore, there is no evidence in the case record indicating that the Respondent is making a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy or otherwise, any rights or legitimate interests in respect of the disputed domain name . Thus, there is no evidence in the case record that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name; or
(ii) circumstances indicating that the disputed domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding disputed domain name, provided there is a pattern of such conduct; or
(iii) circumstances indicating that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the disputed domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.
It has been argued by the Complainant that the Respondent intentionally registered the disputed domain name in order to take advantage of the reputation and goodwill of the Complainant’s trademark VIRGIN and to create an association with the Complainant’s services in connection with travel and leisure. The Complainant has not only submitted a number of news articles relating to the Complainant’s launch of the Virgin Cruises/Virgin Voyages, but also evidence indicating that the trademark VIRGIN is registered with ICANN’s TMCH program and that the Respondent received a notice of the Complainant’s trademark when registering the disputed domain name. Thus, the evidence in the case record indicates that the VIRGIN trademark was subject to media attention due to the establishment of the Complainant’s luxury cruise services and that the Respondent had knowledge of the Complainant’s VIRGIN trademark when registering the disputed domain name.
Consequently, the Panel finds that the Respondent knew or should have known of the Complainant’s VIRGIN trademark at the time when the Respondent registered the disputed domain name .
There is no evidence in the case record indicating that the disputed domain name has resolved to an active website nor that the Respondent has made any legitimate use of the disputed domain name. The Respondent has been holding the disputed domain name passively while the Complainant has been sending cease-and-desist letters to the Respondent. As stated in Telstra Corporation Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003, and confirmed in subsequent UDRP decisions, “‘being used in bad faith’ is not limited only to positive action as inaction is within the concept.” Furthermore, as expressed in paragraph 3.2 of the WIPO Overview 2.0, passive holding as such does not prevent a finding of bad faith. Based on the above, the evidence and the circumstances in this case, the Panel finds that the Respondent’s passive holding of the disputed domain name indicates bad faith. Furthermore, the Panel also finds that the Respondent’s failure to respond to the Complainant’s cease-and-desist letters is an additional circumstance evidencing the Respondent’s bad faith.
There is no evidence in the case record that refutes the Complainant’s submissions.
The Panel concludes that the Complainant has proved the requirements under paragraph 4(a)(iii) of the Policy and that the disputed domain name has been registered and 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.
Johan Sjöbeck
Sole Panelist
Date: March 13, 2017
1 The Complaint was initially submitted regarding two additional domain names. The Complainant informed the Center on February 15, 2017 of its request to remove the two additional domain names from the proceeding and to proceed only regarding the disputed domain name .
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