The 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.
The Respondent is Stefano Pino of Grosseto, Italy, represented by Mr. Vignoli, Italy. 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 May 12, 2017. On May 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 12, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact.
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 the Respondent of the Complaint, and the proceedings commenced on May 26, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 15, 2017.
On May 29 and June 13, 2017, the Respondent sent email communications to the Registrar. On June 16, July 5 and July 7, 2017, the Respondent sent email communications to the Center.
The Center appointed William R. Towns, Andrew D. S. Lothian and Nicoletta Colombo as panelists in this matter on July 17, 2017. The Panel finds that it was properly constituted. Each member of 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 the Intellectual property holding company for the Virgin Group of companies (hereinafter referred to as “Virgin Group” or “Virgin”), whose foundation dates to 1970, when Sir Richard Branson started a mail order business in the United Kingdom selling music records trading under the Virgin name. The Virgin Group’s business operations have significantly expanded since then, with Virgin companies operating in some 32 countries around the world, more than 40,000 employees worldwide, and with an annual turnover in 2016 of more than GBP 4.6 billion.
The Complainant owns trademark registrations for VIRGIN and other VIRGIN-formative marks in over 100 countries around the world, including the European Union, the United States of America, the United Kingdom, Canada, and Australia. The earliest trademark registration for VIRGIN was issued in the UK in 1973. Virgin Atlantic, an airline company founded in the UK in 1984, provides transatlantic service between the UK and North America, among other routes. The Complainant registrations for the VIRGIN ATLANTIC mark include among other countries the European Union, the United States, the United Kingdom, Canada, and Australia. The earliest trademark registration for VIRGIN ATLANTIC was registered in the UK on April 3, 1992.
UDRP panels have repeatedly recognized the strength and reputation of the Complainant’s VIRGIN and VIRGIN-formative marks. See, e.g., Virgin Enterprises Limited v. Richard Nani,WIPO Case No. D2016-0659 () (“Complainant’s trademarks and activities are well-known throughout the world”); Virgin Enterprises Limited v. Guard Whois,WIPO Case No. D2015-2348 () (“Complainant has also gained a significant reputation in the VIRGIN and VIRGIN ATLANTIC brands through use over decades”); Virgin Enterprises Limited v. Peter Smith,WIPO Case No. D2017-0854 ()(noting extensive fame and reputation of VIRGIN and VIRGIN GAMES trademarks). See also Virgin Enterprises Limited v. Simon Thompson,WIPO Case No. D2014-0266 () (noting extensive reputation of the VIRGIN series of marks); Virgin Enterprises Limited v. Bhavesh Tank, KUTCH WEB INFO,WIPO Case No. D2017-0934 () (VIRGIN marks “are very well-known around the world”).
The Respondent registered the disputed domain name on February 17, 2016, according to the concerned Registrar’s WhoIs records. There is no indication in the record of any active use of the disputed domain name, which currently resolves to a placeholder page. The disputed domain name was registered one day after the Respondent’s registration of the domain name , which also resolves to a placeholder page.
The Complainant filed a complaint in respect of the disputed domain name under the Uniform Rapid Suspension System (“URS”) on March 14, 2017. The Respondent thereafter submitted a response in Italian. On March 29, 2017, the examiner appointed under the URS concluded that the Complainant had not demonstrated by clear and convincing evidence that the Respondent registered and was using the disputed domain name in bad faith, and dismissed the URS complaint. See Virgin Enterprises Limited v. Stefano Pino, FA 1703001721574 (Forum March 29, 2017). The Complainant subsequently filed a complaint in respect of the disputed domain name under the Policy. 5. Parties’ Contentions A. Complainant
The Complainant asserts extensive rights and substantial goodwill in the VIRGIN and VIRGIN ATLANTIC marks, and submits that the Complainant’s VIRGIN and VIRGIN-formative marks have been very well-known internationally for many years. The Complainant notes that it also holds more than 4,500 domain name registrations incorporating the VIRGIN marks. The Complainant submits that the disputed domain name is confusingly similar to its well-known VIRGIN and VIRGIN ATLANTIC marks, and that neither the insertion of a hyphen between “virgin” and “atlantic” in the disputed domain name nor the Top-Level Domain (“gTLD”) “.cloud” serve to distinguish the disputed domain name from the Complainant’s marks.
The Complainant maintains that the Respondent has no rights or legitimate interests in the disputed domain name. According to the Complainant, by virtue of the massive reputation of the Complainant’s marks since as early as 1970 there is no explanation for the Respondent’s registration of the disputed domain name other than to take advantage of the Complainant’s rights. The Complainant asserts that the Respondent is not commonly known by the disputed domain name and owns no trademark rights in the disputed domain name.
The Complainant further submits that the Respondent has not used or made demonstrable preparations to use the disputed domain name with a bona fide offering of goods or services or to make a legitimate noncommercial or fair use of the disputed domain name, which instead resolves to a parking page stating the domain name is “reserved.” The Complainant explains that the Respondent intimated in his URS response that he intends to use the disputed domain name with an English translation of a novel he is planning to write titled “vergine atlantica”, the subject of which would be the trafficking of virgins to the New World. The Complainant notes that the Respondent has brought forth no evidence of his intentions in that regard, and observes that if the title of the novel is “vergine atlantica” one would expect the Respondent to have registered an Italian language domain name reflecting the title of the book.
According to the Complainant, a reverse WhoIs report shows that the Respondent has not registered a domain name reflecting the title of the supposed novel, and also reveals that the Respondent has registered the domain name , a domain name that consists of another famous airline brand. The Complainant argues that even assuming a book titled “vergine atlantica” did exist, this in and of itself would not provide the Respondent with a legitimate interest in the disputed domain name.
The Complainant submits that the Respondent registered and is using the disputed domain name in bad faith. The Complainant explains that after becoming aware of the registration of the disputed domain name the Complainant contacted the Respondent. In an email dated March 7, 2016, the Respondent indicated he was a lawyer and was writing a novel relating the epic myth of “sirens”, and that he intended to use “vergine atlantica” as the title to his novel. The Complainant further relates that the Respondent indicated he would be happy to evaluate any offer the Complainant might wish to make of sufficient magnitude to persuade him to forego the project he had been working on for so many years and with so many sacrifices.
The Complainant explains that a decision was made not to make an offer of any magnitude to the Respondent, but instead to file a complaint with the URS. The Complainant then summarizes the Respondent’s written submission in the URS proceeding. According to the Complainant, the Respondent contended that the disputed domain name was comprised of dictionary words over which the Complainant did not have a monopoly. The Respondent represented he was a 43-year old graduate lawyer with a love for writing, and that his novel was about the trafficking of virgins from Africa to the new world, and the transposition of the protagonist into a mythological siren. The Respondent further asserted that he registered the disputed domain name in order to publish an English language version of the novel.
The Complainant maintains that, while no evidence of the Respondent’s book has ever been provided, subsequent to the URS proceeding the Respondent’s attorney approached the Complainant directly, seeking payment of EUR 65,000 to cover legal fees allegedly incurred in responding to the URS complaint. The Complainant observes that EUR 65,000 is substantially in excess of the attorney fees which the Respondent’s attorney reasonably would have incurred in advising his client, preparing and filling a response in the URS proceeding.
In view of the foregoing, the Complainant submits that the disputed domain name was acquired by the Respondent for the purpose of selling it to the Complainant for an amount greatly in excess of the Respondent’s out of pocket costs related to the disputed domain name. Given the scale of the Complainant’s operations and the fame of the VIRGIN and VIRGIN ATLANTIC marks, the Complainant asserts it is inconceivable that the Respondent was not aware of the Complainant’s well-known marks when registering the disputed domain name. According to the Complainant, the Respondent reasonably could have surmised that the registration would come to the Complainant’s attention and that the Complainant could be persuaded to purchase the domain name for considerably more than the Respondent’s out of pocket costs of acquiring the disputed domain name.
The Complainant contends that the Respondent engaged in bad faith efforts to profit from and exploit the Complainant’s VIRGIN and VIRGIN ATLANTIC marks both prior to and following the URS decision as follows. First, the Respondent sought to induce the Complainant to make offer an amount greatly in excess of the Respondent’s out of pocket costs in order to acquire the disputed domain name. Second, the Respondent’s attorney demanded EUR 65,000, an amount far in excess of any reasonable attorney’s fees that might have been incurred in the representation of the Respondent. The Complainant further contends that the Respondent’s registration of the domain name within a day of the Respondent’s registration of the disputed domain name clearly indicates a pattern of behavior by the Respondent of registering domain names containing well-known trademarks to prevent the owners of these trademarks from registering domain names reflecting those marks.
The Complainant maintains that the Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraphs 4(b)(i), (ii), (iii), and (iv) of the Policy. The Complainant submits that the Respondent’s “extortionate requests for money and obscene press reports” concerning this case were devised to obtain large sums of money from the Complainant, and can only be considered as actions intended to disrupt the business of the Complainant.1 B. Respondent
The Respondent did not formally reply to the Complainant’s contentions, but did submit the URS decision respecting the disputed domain name. Additionally, the Respondent and his attorney in email communications with the Center objected to the UDRP proceeding on the grounds that it is foreclosed by the decision in the URS proceeding, and reiterated other due process objections raised by the Respondent in the URS proceeding.2 6. Preliminary Issues A. Language of the Proceeding
Pursuant to the paragraph 11 of the Rules, unless otherwise agreed by the parties, or otherwise specified in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, subject to the authority of the administrative panel, once appointed, to determine otherwise.
There is no dispute that the registration agreement was in English, as confirmed to the Center by the concerned Registrar. In the circumstances of this case, the Panel is of the view that a departure from the default provisions of paragraph 11 of the Rules is not indicated. On multiple occasions the Respondent’s attorney communicated with the Center in English. For example, on June 16, 2017, after receiving communication from the Center explaining that the URS determination did not preclude other remedies such as the UDRP, the Respondent’s attorney replied as follows in English:
“Gentlemen, this is not a review this is the same procedure. Nothing has changed since FORUM's award was given. This behavior will be reported to both the Italian authorities and SOLVIT and will be formally presented at the Italian Embassy in Italy.”
In the URS proceeding the Respondent claimed that he registered the disputed domain name to promote the English translation of a novel he planned on writing about the trafficking of virgins to the New World.3 It would seem that the Respondent had a sufficient comprehension of the English language complaint to formulate a response. The Panel further notes that the disputed domain name selected by the Respondent is comprised of English words. B. Effect of Prior URS Decision
The Respondent contends that the URS decision precludes the Complainant from seeking a determination of the domain name dispute under the Policy. The Respondent thus maintains that this Panel is bound by the decision of the URS examiner.
The Respondent’s arguments ignore the clear and unequivocal provisions of the URS. Paragraph 13 of the URS Procedure unambiguously provides as follows:
“The URS Determination shall not preclude any other remedies available to the appellant, such as UDRP (if appellant is the Complainant), or other remedies as may be available in a court of competent jurisdiction. A URS Determination for or against a party shall not prejudice the party in UDRP or any other proceedings.”
Paragraph 8.5 of the URS Procedure also provides when a complaint is denied that the URS proceeding is terminated without prejudice and the UDRP may be utilized. Thus, the provisions of the URS Procedure make explicit that an unsuccessful URS complainant is not thereafter preluded pursuing a remedy under the UDRP. See SRAM, LLC v. Li Qing,WIPO Case No. D2016-1172.
There are sound reasons for such provisions. The URS and UDRP are distinct dispute resolution mechanisms. The UDRP operates on preponderance of the evidence standard; the burden of proof under the URS requires that a complainant demonstrate by “clear and convincing evidence” that the facts of the case merit a determination in its favor. The URS provides only for the suspension of the domain name, in contrast to a transfer or cancellation of a domain name under the UDRP. Additionally, due to the nature of the URS mechanism determinations rarely provide insight into the particular legal reasoning applied. Thus, while a UDRP panel should be made aware of a URS determination, the panel is not bound by that determination. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.22, and relevant decisions cited therein. C. Suspension, Termination or Continuance of UDRP Proceedings
The Policy was designed to protect the parties’ court options before, during and after a UDRP proceeding, as evidenced in paragraph 4(k) of the Policy. Paragraph 18(a) of the Rules gives the panel discretion to suspend, terminate, or continue a UDRP proceeding in circumstances where the disputed domain name is also the subject of other pending legal proceedings. The Respondent’s attorney on July 5, 2017, dispatched an email to the Center asserting that the UDRP proceeding should be stopped immediately due to a legal proceeding lodged with the Corte di Appello di Roma.
This Panel, like most UDRP panels, is justifiably reluctant to terminate a UDRP proceeding where a potential exists that the court proceedings will address issues separate and apart from the issues framed under the Policy. The Respondent’s attorney has not provided a copy of the pleadings or other court documents, identified the factual and legal issues that are the subject of the court proceedings, or furnished any information respecting the status of the court proceedings. Under such circumstances, it is far from clear to the Panel whether the disputed domain name will be the subject of the court proceedings, or whether the proceedings are likely to be dominated by issues beyond the scope of the Policy – i.e., the Respondent’s pursuit of claims against the Complainant for attorney’s fees or damages allegedly incurred in connection with the URS proceeding, and due process issues first raised by the Respondent in the URS proceeding, and presumably subject to national law.
Having regard to the foregoing, the Panel declines to suspend, terminate or continue these proceedings under paragraph 18(a) of the Policy. The Panel’s determination under the Policy will have no effect on any other claims the Respondent might elect to pursue in other forums. See Displays Depot, Inc. v. GNO, Inc.,WIPO Case No. D2006-0445. Further, while it is widely recognized that national courts are not bound by UDRP panel decisions, the Panel nonetheless considers that the expediency of a decision under the Policy may prove beneficial to the parties. See WIPO Overview 3.0, section 4.14, and relevant decisions cited therein. 7. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See “Final Report of the First WIPO Internet Domain Name Process”, April 30, 1999, paragraphs 169-177. The term “cybersquatting” is most frequently used to describe the deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks or service marks. Id. at paragraph 170. Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) the disputed domain name is 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 with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name is the sole remedy provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous UDRP panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s VIRGIN and VIRGIN ATLANTIC marks, in which the Complainant has established rights through registration and long and extensive use. In considering this issue, the first element of the Policy serves essentially as a standing requirement.4 The threshold inquiry under the first element of the Policy involves a relatively straightforward comparison between the complainant’s trademark and the disputed domain name. In this case, the Complainant’s VIRGIN and VIRGIN ATLANTIC marks are clearly recognizable in the disputed domain name. The inclusion in the disputed domain name of a hyphen between “virgin” and “atlantic” does not dispel the confusing similarity of the disputed domain name to the Complainant’s well-known marks. Further, disregarding the hyphenation and the gTLD (“.cloud”), the disputed domain name could be considered identical to the Complainant’s VIRGIN ATLANTIC mark.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) of the Policy has been made. It is undisputed that the Respondent has not been authorized to use the Complainant’s VIRGIN and VIRGIN ATLANTIC marks, which are well-known and enjoy a substantial reputation worldwide. The Respondent nonetheless registered the disputed domain name, which incorporates the Complainant’s marks in their entirety, and which the Respondent has made no active use of since its registration. Further, within a day of the registration of the disputed domain name, the Respondent also registered , reflecting the trademark of another major airline. The Respondent also has made no active use of this domain name.
Pursuant to paragraph 4(c) of the Policy, the respondent may establish rights or legitimate interests in a domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the 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) the respondent has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) the 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.
In the URS proceeding the Respondent asserted that the disputed domain name is comprised of dictionary words over which the Complainant does not have a monopoly. A number of UDRP panels have concluded that where a respondent registers a domain name consisting of “dictionary” terms because the respondent has a good faith belief that the domain name's value derives from its generic or descriptive qualities, the use of the domain name consistent with such good faith belief may establish a legitimate interest. See Mobile Communication Service Inc. v. WebReg, RN,WIPO Case No. D2005-1304; Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964. But the domain name must have been registered because of, and any use consistent with, its attraction as a dictionary word or descriptive term, and not because of its value as a trademark. Media General Communications, Inc. v. Rarenames, WebReg, supra.
While the words “virgin” and “atlantic” are dictionary words with commonly understood meanings, the term “virgin atlantic” to the Panel’s knowledge has no recognizable common or dictionary meaning, and the Respondent has provided no evidence of any claimed generic or descriptive use of “virgin atlantic” by third parties. See Intesa Sanpaolo S.p.A. v. Christopher High,WIPO Case No. DCO2014-0031 (“wave” and “pay” are dictionary terms; “wave2pay” is not). Rather, insofar as the record in this case reflects, the term “virgin atlantic” is associated exclusively with the Complainant and its well-known VIRGIN ATLANTIC mark, which has served as an indicator of source for the Complainant’s airline services since 1984.
Given the totality of circumstances in the record, the Panel concludes that the Respondent at the time of registration could not have formed a good faith belief that the disputed domain name’s value derived from generic or descriptive qualities – at least not without turning a blind eye to the fact that the disputed domain name was identical to the Complainant’s well-known VIRGIN ATLANTIC trademark. See HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,WIPO Case No. D2007-0062; Mobile Communication Service Inc. v. WebReg, RN, supra. The Respondent has not denied knowledge of the Complainant’s VIRGIN and VIRGIN ATLANTIC marks, and the Panel accordingly concludes that the Respondent was aware of and had the Complainant’s marks in mind when registering the disputed domain name.
Despite the passage of a year and a half since the Respondent registered the disputed domain name, the Respondent has brought forth no evidence of demonstrable preparations to use the disputed domain name in connection with a novel. Had the Respondent written a novel or been in the process of writing a novel, it strikes the Panel that evidence of such preparations easily could have been provided. Further, given that the Respondent’s novel presumably would be in Italian, the Respondent’s decision to register only an English language domain name – and one identical to the Complainant’s VIRGIN ATLANTIC mark at that – is questionable. Moreover, the Respondent in close proximity to registering the disputed domain name also registered a second domain name incorporating Air France’s well-known mark, a fact that calls into question the veracity of the Respondent’s claim to have registered the disputed domain name for use with a novel.
In sum, the record before this Panel does not reflect the Respondent’s use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. The Respondent has made no claim to have been commonly known by the disputed domain name, or to have acquired trademark or service mark rights in the disputed domain name. Nor is the Respondent making any legitimate noncommercial or fair use of the disputed domain name. In short, the Respondent has not come forward with evidence of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. As discussed above, the Panel concludes that the Respondent had the Complainant’s well-known VIRGIN and VIRGIN ATLANTIC marks in mind when registering the disputed domain name. There is no evidence in the record that the Respondent has written or has any bona fide intention of writing the novel he described. The Panel considers that in all likelihood the Respondent’s claim to have registered the disputed domain name for such activity was pretextual. The Respondent, in his communications with the Complainant clearly conveyed a message that he would transfer the disputed domain name only if he received a substantial offer to his liking. The Respondent’s attorney’s claim to have incurred some EUR 65,000 in attorney’s fees while representing the Respondent in the URS proceeding is undocumented in the present administrative proceeding.
The Respondent by his actions has clearly demonstrated that his primary motive in relation to the registration and use of the disputed domain name was to capitalize on, or otherwise take advantage of, the Complainant’s trademark rights, for commercial gain. Further, the passive holding of the disputed domain name if asserted by the Respondent would not preclude a finding of bad faith in the attendant circumstances of this case. As set forth in Telstra Corporation Limited v. Nuclear Marshmallows, supra, “the relevant issue is not whether the Respondent is taking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. … [I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.” See also Red Bull GmbH v. Kevin Franke,WIPO Case No. D2012-1531.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 8. 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.
William R. Towns
Presiding Panelist
Andrew D. S. Lothian
Panelist
Nicoletta Colombo
Panelist
Date: July 27, 2017
1 The Complainant refers to several press reports that it apparently finds unflattering, but did not describe their content or submit them as annexes to the Complaint. These apparently are articles published following the URS decision in the Il Tirreno Edizione Grosseto. The articles are available on the Internet.
2 In the URS proceeding the Respondent argued that his due process rights were violated because the complaint was not translated into Italian. The Respondent also objected on due process grounds to the URS Procedure as inconsistent with international arbitration rules and Italian law, although the examiner noted that the Respondent cited no specific provisions of Italian law.
3 The Respondent since has claimed that the URS examiner did not accurately translate this passage in the response. However, the examiner by all accounts is fluent in English and Italian, which was a consideration in his appointment under URS policy. Significantly, the examiner’s translation is consistent with a prior explanation proffered by the Respondent more than a year earlier in his email to the Complainant’s legal counsel of March 7, 2016. It was only after the URS decision was published that the Respondent, in an interview accompanied by his attorney, claimed that the story was one told by his attorney about airline hostesses on cross Atlantic flights, communicating with control towers before the age of modern air flight instrumentation, who the Respondent’s attorney had referred to as “Atlantean virgins.”
4 See WIPO Overview 3.0, section 1.7.
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