The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Stobbs IP Limited, United Kingdom.
The Respondent is George Kwesivic of Accra, Ghana. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 19, 2017. On May 19, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 19, 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 details.
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. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 16, 2017.
The Center appointed Dennis A. Foster as the sole panelist in this matter on June 21, 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 well-known company, founded in the United Kingdom, which now operates many companies in various businesses throughout the world. It possesses many valid registrations for its VIRGIN trademark globally, including with the United Kingdom Intellectual Property Office ("UKIPO") (e.g., Registration No. UK00001287268; registered on April 5, 1991).
The disputed domain name, , is owned by the Respondent and was registered on September 10, 2016. The disputed domain name resolves to a webpage that displays packaged/branded food items, presumably for sale. 5. Parties' Contentions A. Complainant
- Founded in 1970 in the United Kingdom, the Complainant is now comprised of over 200 companies that operate in 32 countries around the world, generating an annual group turnover ofGBP 4.6 billion while employing more than 40,000 people.
- The Complainant does business under its VIRGIN trademark, which is registered in many jurisdictions globally, including with the UKIPO. Additionally, the Complainant has also used its mark in combination with modifiers, creating useful trademarks, such as VIRGIN ATLANTIC, VIRGIN MOBIL, VIRGIN MEDIA, etc.
- The disputed domain name, , is confusingly similar to the Complainant's VIRGIN mark. Prior UDRP panels have found that the Complainant has sufficient rights in that mark to bring actions under the Policy. Moreover, UDRP panels have held that the addition of a geographical name, such as Liberia, to a valid trademark does not eliminate the confusing similarity between the resulting domain name and that trademark.
- The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no registrations for the VIRGIN mark and cannot claim to be commonly known as the disputed domain name. The Complainant's investigations have made it believe that the Respondent has no store operating under the name Virgin Liberia. The disputed domain name is neither involved in a bona fide offering of goods or services nor engaged in a legitimate noncommercial or fair use manner. Instead, the Respondent seeks commercial gain through using the disputed domain name to mislead Internet users as to some sort of affiliation with the Complainant and its famous mark.
- The disputed domain name was registered and is being used in bad faith. The Complainant received no reply to the emails sent to the Respondent that advised him as to the Complainant's concerns regarding the illegitimate registration and use of that domain name. The Complainant believes it likely that the Respondent, upon registration of the disputed domain name, intended that the Complainant approach the Respondent with an offer of valuable consideration for a transfer of the domain name. Moreover, it is more than likely that the Respondent intends to gain commercially from Internet traffic to his website occasioned by user confusion between the disputed domain name and the Complainant's valid trademark. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
In accordance with Policy paragraphs 4(a)(i) - (iii), the Panel may find for the Complainant and grant to it a transfer of the disputed domain name, , if the Complainant proves that:
- The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
By virtue of its many trademark registrations for and extensive use of the VIRGIN trademark, many prior UDRP panels have held that the Complainant has sufficient rights in that mark for the purposes of the Policy. The Panel agrees with that assessment. See, for example, Virgin Enterprises Limited v. WhoisGuard, Inc. / michael ceesar, creations,WIPO Case No. D2016-0671; Virgin Enterprises Limited v. Tj Chughtai, Noble Travel,WIPO Case No. D2015-1646 ("The Complainant has demonstrated that it has rights in the VIRGIN marks."); and Virgin Enterprises Limited v. Simon Thompson,WIPO Case No. D2014-0266.
The Complainant does not contend that the disputed domain name, , is identical to the Complainant's VIRGIN mark, only that it is confusingly similar to that mark. The Complainant argues that attaching a geographical term, such as Liberia, to an established mark still produces a confusingly similar domain name. The Panel agrees with this argument, and concludes that the disputed domain name is confusingly similar to the Complainant's trademark. See, G.D. Searle LLC v. Aleksey Bezkrovnuy,WIPO Case No. D2013-1178 (finding to be confusingly similar to the CELEBREX trademark); and Playboy Enterprises International, Inc. v. Zeynel Demirtas,WIPO Case No. D2007-0768 (finding to be confusingly similar to the PLAYBOY mark, while stating, "... the use of a famous mark in its entirety together with a geographic term in a domain name creates a domain name that is confusingly similar to the famous mark.").
Therefore, the Panel rules that the Complainant has succeeded in proving that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
It has been well-established in the consensus of prior Policy decisions that a complainant need sustain only a prima facie case that a respondent has no rights or legitimate interests in a disputed domain name before the burden shifts to that respondent to come forward with clear evidence to support its claims to such rights or interests. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, which states in section 2.1, "...where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name."
In this case, the Complainant has demonstrated its rights in a trademark to which the disputed domain name is confusingly similar. Moreover, the Complainant asserts, reasonably and without counter, that there is no reason to believe that the Respondent, George Kwesivic, has been known commonly as the disputed domain name, . In the Panel's view, these circumstances constitute a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.
The Respondent, having not filed a Response, has put forth no evidence to rebut the Complainant's contentions or the resulting prima facie case. As a result, the Panel will look elsewhere in the Record for possible rebuttal evidence.
Through the Complainant's submission of evidence (Annex 7), the Panel has viewed the main page of the website connected with the disputed domain name. That page contains depictions of various packaged/branded food items, presumably for sale, along with the phrase "VIRGIN FOOD". As the food items do not conform to the generic meaning of "virgin" and do not appear to be related uniquely to the country of Liberia, the Panel concludes that the Respondent did not register the disputed domain name for use in connection with the meaning of the generic term "virgin Liberia". Therefore, the Panel believes that the Respondent cannot claim rights or legitimate interests in the disputed domain name because he is using the domain name simply for its common meaning.
Finally, the Panel finds that the Respondent's selling of food items -- goods unrelated to the Complainant's goods and services -- through use of a domain name that misappropriates the Complainant's famous trademark does not constitute a bona fide offering of goods or services per Policy paragraph 4(c)(i) or a legitimate noncommercial or fair use of that domain name per Policy paragraph 4(c)(iii). See, La Quinta Worldwide, L.L.C. v. VALUE-DOMAIN COM/Value Domain;WIPO Case No. D2012-0005 (holding that, where the complainant used its trademark solely in connection with hotel services, the respondent's use of a disputed domain name, which combined that mark with a geographical term, to host a website offering to sell a non-surgical cosmetic eyelid remedy constituted neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.); Pfizer Inc. v. Jeff Ferris,WIPO Case No. D2006-1242 ("This use of another's trademark to create interest in one's product that would otherwise not exist does not, in the Panel's view, constitute a bona fide offering of goods so as to confer upon Respondent legitimate interest in [the disputed] domain name."); and e-Duction, Inc. v. John Zuccarini, d/b/a The Cupcake Party & Cupcake Movies,WIPO Case No. D2000-1369 ("Respondent uses [the disputed] domain name...to display ads for unrelated goods and services. The Panel concludes that Respondent's use of the [disputed domain name] does not give him a legitimate interest in the domain name.").
As the Respondent has failed to rebut the Complainant's prima facie case in this regard, the Panel finds that the Complainant has succeeded in proving that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Policy paragraph 4(b)(iv) sets forth a circumstance to support a finding of bad faith registration and use of a disputed domain name, as follows:
"by using the domain name, [the respondent 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 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 [the respondent's] website or location."
The Panel has concluded previously that the Respondent appears to be intentionally using the disputed domain name to host a website that apparently offers food items for sale, thus providing the Respondent with commercial gain. Since the Panel has found the disputed domain name to be confusingly similar to the Complainant's mark, the Panel concludes that the Respondent's realization of such commercial gain depends upon the likely confusion between the disputed domain name and the mark as to the source, sponsorship, affiliation or endorsement of said website. Consistent with this conclusion, the Panel finds that paragraph 4(b)(iv) applies to this case and that the disputed domain name was registered and is being used in bad faith. See, Pfizer Inc. v. Jeff Ferris, supra ("Respondent here uses the [Complainant's] mark to draw users to his website where he offers for sale products unrelated to Complainant or Complainant's product...Respondent clearly is creating and intending to exploit the likely confusion arising from his use of Complainant's famous trademark to attract Internet users to his website for his own commercial gain."); and Ferrari S.p.A. v. ASDAQ.com,WIPO Case No. D2004-0342.
Accordingly, the Panel rules that the Complainant has succeeded in proving 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.
Dennis A. Foster
Sole Panelist
Date: July 5, 2017
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