The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Burges Salmon LLP, United Kingdom.
The Respondent is Virgin Bathrooms / Bathrooms Store of Luton, United Kingdom. 2. The Domain Names and Registrar
The disputed domain names and (the “Domain Names”) are registered with Tucows Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2017. On July 12, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details. The Complainant filed an amendment to the Complaint on July 28, 2017.
The Center verified that the Complaint together with the amendment to 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 July 31, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 20, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 21, 2017.
The Center appointed Ian Lowe as the sole panelist in this matter on August 28, 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.
The Panel notes that the Organisation Names recorded in the WhoIs records of the Domain Names are different – namely Virgin Bathrooms and Bathrooms Store. However, the Registrant Name quoted in both cases is James Tyler and the Registrant address in both cases are the same. In the circumstances, the Panel is satisfied that it is appropriate for the Respondent to be treated as the same entity in the case of both Domain Names and for the Complaint to deal with both. 4. Factual Background
The Complainant is a company incorporated in England and Wales and is a wholly owned subsidiary of the Virgin Group. The Virgin Group was originally established by Sir Richard Branson in the United Kingdom in 1970. Since then, the Virgin Group has grown significantly and is now engaged in a diverse range of business sectors ranging from Travel and Leisure, Telecoms and Media, Music and Entertainment, Financial Services, and Health and Wellness.
There are now more than 60 Virgin branded businesses with around 60 million customers worldwide, employing in excess of 71,000 people in 35 countries. Annual revenue under the VIRGIN mark is approximately $24 billion and growing.
The Complainant is responsible for the ownership, management and protection of all trademarks, intellectual property and goodwill in the Virgin name. It currently has a portfolio of approximately 3,000 trademark applications and registrations in over 150 countries, spanning the majority of the 45 classes of goods and services. These include European Union Trade Mark number 1471143 VIRGIN, registered on January 30, 2003, for a range of goods and services in classes 16, 25, 35, and 42 (which includes retail services) and European Union Trade Mark number 5272273 VIRGIN, registered on July 3, 2007, for goods in various classes including bathroom items such as toothbrush holders, beakers, soap dishes, containers, toilet roll holders, toilet brushes and soap dispensers.
The Domain Name was registered by Mr. James Tyler of Virgin Bathrooms on June 24, 2013. The Domain Name was registered by Mr. James Tyler of Bathrooms Store on July 8, 2013. Mr. Tyler is also the registered proprietor of the domain name (the “‘.’ domain name”) which is the subject of a separate complaint under the Nominet Dispute Resolution Service.
The Complainant first became aware of the existence of a business trading as “Virgin Bathrooms” in October 2016. At that time, the website hosted at the . domain name (the “Website”) was being used by the Virgin Bathrooms business to advertise and sell bathroom products online. The Website used a red, white and black colour scheme with the word “Virgin” prominently displayed in a dominant red font with the word “Bathrooms” depicted in black font. The Website’s branding and colour scheme was evocative of, and according to the Complainant designed to mimic, the Virgin Group’s own distinctive colour scheme and branding. According to the Website, Virgin Bathrooms also operated a showroom from business premises in London, but the showroom at the listed address in fact operated under the name “Willesden Bathrooms”.
On November 8, 2016, Burges Salmon, lawyers instructed by the Complainant, sent a cease-and-desist letter to the Respondent’s address and by email to the contact email addresses provided on the Website. The postal copy of the letter was returned by the Royal Mail marked “undelivered”. Burges Salmon later received a telephone call from “Lok’nStore”, a storage facility in Luton, stating that the address recorded in the WhoIs record as that of the Respondent was in fact Lok’nStore’s business address.
However, in response to the email correspondence, Burges Salmon subsequently received a telephone call from a person claiming to be a representative of Virgin Bathrooms. That call led to further communications with representatives of Virgin Bathrooms culminating in undertakings on behalf of the Respondent which included an obligation to transfer the “.” domain name, the Domain Name and any other domain names registered by the Respondent or on its behalf which incorporated the Complainant’s VIRGIN marks, by January 6, 2017. Despite this agreement, no effective steps have been taken by the Respondent to transfer the “.” domain name or the Domain Names.
On January 16, 2017, the Website comprised a webpage stating that Virgin Bathrooms was moving home and could be visited at “www.bathroomrepublic.”. Neither the “.” domain name nor the Domain Names now resolves to an active webpage. They previously resolved to an “Index of/” page, with links to JPEG images of bathroom products and an Apache web server code, essentially identical to that of the “.” domain name. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Names are confusingly similar to its VIRGIN trademark, that the Respondent has no rights or legitimate interests in respect of the Domain Names, and that the Respondent registered and is using the Domain Name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
For this Complaint to succeed in relation to the Domain Names the Complainant must prove that:
(i) the Domain Names are 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 in respect of the Domain Names; and
(iii) the Domain Names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
The Complainant has uncontested rights in the VIRGIN trademark, both by virtue of its numerous trademark registrations around the world and as a result of the substantial goodwill and reputation acquired through its widespread use of the mark over many years. Ignoring the generic Top-Level Domains (“gTLDs”) “.net” and “.com”, the Domain Names differ from the Complainant’s trademark only by the addition of the descriptive word “bathrooms”. In the view of the Panel, this addition does not detract from the confusing similarity between the Complainant’s mark and the Domain Names. Accordingly, the Panel finds that the Domain Names are confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant has made out a strong prima facie case that the Respondent could have no rights or legitimate interests in respect of the Domain Names. The Respondent has not used the Domain Names in connection with a bona fide offering of goods or services, but rather has apparently made no active use of them. However, the Respondent has used the identical “.” domain name for a website making use of the VIRGIN mark without the authority or consent of the Complainant and to promote a business apparently known as Willesden Bathrooms. In the Panel’s view, such use does not support the Respondent’s having any relevant rights or legitimate interests.
The Respondent has chosen not to respond to the Complaint or to take any steps to counter the prima facie case established by the Complainant. Following a cease-and-desist letter, it had agreed to transfer the Domain Names to the Complainant, but failed to do so. In the circumstances, the Panel finds that the Respondent does not have any rights or legitimate interests in respect of the Domain Names. C. Registered and Used in Bad Faith
Although the Respondent has apparently made no active use of the Domain Names, paragraph 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) notes that, from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or “coming soon” page) does not prevent a finding of bad faith under the doctrine of passive holding. It depends on the facts of the case, and relevant factors include (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.
In this case, the Panel considers that it is very difficult to conceive of any good faith use to which the Domain Names could be put and that all of the cited factors support a finding of bad faith use and registration. In addition, in light of the use made by the Respondent of the identical “.” domain name, the overwhelming inference is that the Respondent registered the Domain Names with a view to attracting Internet users to its websites for commercial gain by creating a likelihood of confusion with the Complainant’s VIRGIN mark.
Accordingly, the Panel finds that the Domain Names have been registered and are 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 Domain Names and be transferred to the Complainant.
Ian Lowe
Sole Panelist
Date: September 1, 2017
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