The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Stobbs IP Limited, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Domain Admin/This Domain is for Sale, H, of Denver, Colorado, United States of America, internally represented. 2. The Domain Name and Registrar
The disputed domain name is registered with DomainHood LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 6, 2017. On October 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 10, 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 October 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2017. The Response was filed with the Center October 26, 2017.
The Complainant filed a Supplemental Filing on November 17, 2017 and the Respondent filed a Supplemental Filing on November 20, 2017.
The Center appointed Alfred Meijboom, Gabriela Kennedy and The Hon Neil Brown Q.C. as panelists in this matter on November 27, 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, which dates back to 1970. Over 200 Virgin Group's companies operate in 32 countries around the world, having more than 40,000 employees worldwide, and an annual turnover of more than GBP 4.6 billion.
The Complainant owns many trademark registrations worldwide for VIRGIN and VIRGIN ATLANTIC, including such trademark registrations in the United States of America ("US"). The Complainant also filed a US trademark application for VIRGIN LIVING with number 87620781, with the intent to use such mark, on September 25, 2017 (the "Application").
The Respondent is a company that registers and sells domain names with a portfolio of more than 3.5 million domain names for sale. The Respondent registered the disputed domain name on February 28, 2012. 5. Parties' Contentions A. Complainant
The Complainant's arguments are as follows:
a. The Complainant owns extensive rights in the VIRGIN marks and the public have become accustomed to seeing the VIRGIN brand as referring to the Complainant. In addition, the Complainant has a significant reputation and has built up a vast amount of goodwill in the VIRGIN trademarks in the United Kingdom of Great Britain and Northern Ireland and abroad in relation to a wide range of goods and services. The VIRGIN brand is commonly used alongside an additional element, for example VIRGIN ATLANTIC, VIRGIN TRAINS, VIRGIN HOLIDAYS, VIRGIN MEDIA, VIRGIN MOBILE, VIRGIN RADIO, and VIRGIN GAMES. VIRGIN LIVING is entirely fitting with the Complainant's branding style. The Complainant has had the Application accepted. According to the Complainant, when VIRGIN is coupled with LIVING it can have no other meaning for the public other than as a reference to the Complainant. It is therefore clear that the disputed domain name in question is identical and confusingly similar to the trademarks in which the Complainant has rights and to which the public have become accustomed to seeing as referring to the Complainant.
b. The Respondent has no rights in relation to the elements which form the disputed domain name. Given the massive reputation of the VIRGIN brand and the Virgin Group's operations in a wide range of activities since 1970, the Complainant claims that there is no believable or realistic reason for registration or use of the disputed domain name other than to take advantage of the Complainant's rights. The disputed domain name is not being used in relation to a bona fide offering of goods and services and the Respondent is not making legitimate or fair use of the disputed domain name, which is simply used to direct traffic to the Respondent's website where it advertises domain names for sale. The Respondent is not commonly known by the name VIRGIN and has no trademark registrations for VIRGIN or VIRGIN LIVING. The fact that the Respondent owns more than 3.5 million domain names - which the Complainant asserts no party can legitimately own - provides further evidence in support of the fact that it has no legitimate interest in the disputed domain name.
c. The Complainant discovered that the Respondent listed the disputed domain name for sale for USD 4,795 which makes it very apparent that the disputed domain name was acquired for the sole purpose of selling it for valuable consideration in excess of the out-of-pocket costs related to the disputed domain name. And by registering the disputed domain name containing the Complainant's trademark, the Respondent has also prevented the Complainant from reflecting its trademark in the corresponding domain name. The Complainant contends that the Respondent has actually registered over 1,000 domain names containing the Complainant's VIRGIN trademarks, which is evidence of a pattern of this behavior. By registering the disputed domain name, the Respondent has created a likelihood of confusion with the Complainant's trademarks. Internet users typing the disputed domain name will almost certainly be expecting to view information about the Complainant. According to the Complainant all this constitutes evidence that the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent's arguments are as follows:
a. The Complainant has failed to demonstrate its rights in the term "virgin living". The Complainant does not own a trademark for "virgin living"; it rather has a pending Application which has not been approved or granted registration. The Respondent has owned the disputed domain name more than five years before the Complainant ever decided it wanted to start using the term, and more than five years before the Complainant filed its intent to use the Application. The Complainant's assertion that it has a right to the term "virgin living" based upon its trademarks for VIRGIN is vague and over-reaching. The term "virgin living" is a generic
two-word term, comprised of two dictionary terms, and it was not first coined by the Complainant which is not using the term. Nor is "virgin living" a unique phrase solely used by the Complainant. The Respondent submitted a survey in order to obtain a broad public opinion on the meaning of the term "virgin living", showing that the term "virgin living" has plenty many different meanings to the general public, none of which are associated with the Complainant and its VIRGIN brand.
b. The Respondent claims that it has legitimate interests in the disputed domain name which it uses in connection with a bona fide offering of goods or services. The Respondent owns a large portfolio of generic domain names mostly consisting of two dictionary-defined terms put together. The Respondent is in its right to register domain names consisting of common and generic terms. Further, the disputed domain name predates the Complainant's Application with more than five years. And there is significant history among UDRP panels holding that the sale of domain names containing generic terms is a bona fide offering of goods and services. As a reseller of generic domain names, the Respondent owns numerous generic and descriptive domain names that are similar to the disputed domain name, including more than 750 domain names that begin with the word "virgin" and over 1,600 domain names that end with the word "living", all of them being combinations of two dictionary terms. The Respondent has a legitimate interest in the domain names it owns.
c. The Complainant lacks rights in the disputed domain name and was or should have been fully aware of the Respondent's legitimate prior registration of the disputed domain name when it filed the Application on September 25, 2017. The Respondent claims that it did not, and could not have, registered the descriptive disputed domain name in bad faith. There is also no use of the disputed domain name in bad faith. The Respondent engages in a legitimate business practice and follows a business model that is both common and legal.
d. The Respondent requests a finding of Reverse Domain Name Hijacking. The Respondent asserts the Complainant is violating and abusing the UDRP administrative proceeding by bringing a substantially groundless, frivolous, and vexatious Complaint which was filed in bad faith and intended to take the disputed domain name which the Respondent's legitimately owns. The Complainant only filed the Application with the aim to unjustly steal the pre-registered domain name from the Respondent. The Complainant has a documented history of engaging in this unscrupulous behavior. 6. Discussion and Findings
The Complainant's Supplemental Submission
In previous UDRP cases it has been decided that panels as an exception may accept unsolicited supplemental submissions under paragraph 10(a) of the Rules, which provides the panels with a broad power to conduct the administrative proceeding in the manner it considers appropriate under the Policy and Rules. Whether it is appropriate to submit a supplemental submission will depend on its relevance to the issues in the case, whether the Panel considers the content of the submission essential to reaching a fair decision on the facts, and whether the submission could have been made earlier and, if so, why it was not (see, e.g., NB Trademarks, Inc. v. Domain Privacy LTD and Abadaba S.A.,WIPO Case No. D2008-1984). Unsolicited supplemental submissions are not be used to simply reply to the Respondent's arguments (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525).
On November 17, 2017 the Complainant filed an unsolicited supplemental submission and the Respondent replied on November 20, 2017 requesting that the Panel rejects and disregards the Complainant's supplemental submission. The Panel finds that the Complainant's unsolicited supplemental submission is basically a reply to the Response, and therefore rejects and disregards the Complainant's supplemental submission. Analysis of Complaint
Under the Policy, the Complainant must prove that:
(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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
It is well established that the generic Top-Level Domains ("gTLDs"), such as ".com", may typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy (e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
Insofar as the Complainant wished to argue that the disputed domain name is identical to the Complainant's Application, the Panel decides against it as paragraph 4(a)(ii) of the Policy requires the Complaint to be based on a trademark or service mark in which the Complainant has rights, which is either a registered trademark or a common law trademark. The Application is not a registered trademark, and the Complainant has neither argued that it has unregistered or common law rights in the mark VIRGIN LIVING nor shown that the term "virgin living" has become a distinctive identifier which consumers associate with the Complainant's goods and/or services. The Complainant has actually not submitted any evidence of its use of the term "virgin living".
The Panel acknowledges that the Complainant has rights in the VIRGIN trademarks, which trademarks have a reputation for certain goods and services in the travel and leisure, telecommunications, music, and entertainment, financial services, and health and wellness sectors, which are the Virgin Group's five major sectors according to the statement of Emily Hill. However, the term "virgin" is also a dictionary word with many different meanings so that there is no immediate likelihood of confusion with the Complainant's VIRGIN trademarks if the term is combined with another dictionary word such as, in this case, "living". The Complainant's only arguments to find likelihood of confusion between its VIRGIN trademarks and the disputed domain name are that "VIRGIN LIVING is entirely fitting with the Complainant's branding style" and "it can have no other meaning for the public other than as a reference to the Complainant." On the other hand, the Respondent performed a brief Internet survey which shows that the public, which was only asked for a free-form response to the question "What is "Virgin Living?", did not mention the Complainant and/or other members of the Virgin Group once. Almost two thirds of the respondents considered a descriptive meaning of the term and the rest did not know what "virgin living" was. The fact that the term "virgin" is a commonly used word, also used in combination with another dictionary word does not automatically result in a finding of confusing similarity. Although one should be reluctant to use consumer surveys in order to establish likelihood of confusion (or as in this case absence thereof), the outcome of the survey in this matter does show that the public does not even associate the words "virgin living" with the Complainant and /or Virgin Group and its goods and service.
Therefore the Panel finds that the Complainant failed to satisfy the first requirement of paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Complainant must show a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, which the Respondent may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
In support of its claim that the Respondent lacks rights or legitimate interests in the disputed domain name, the Complainant merely asserted that the Respondent is not known by the name "Virgin" and has not registered a trademark for "Virgin" or "Virgin living". The Complainant is aware that the Respondent is a domainer who registered many domain names to resell them to third parties and apparently believes that it is not a legitimate business, so that the Respondent lacks right of legitimate interests in the disputed domain name per se. On the other hand, the Respondent argued that it is a reseller of generic domain names which is a bona fide business, who registered the disputed domain name many years before the Complainant filed the Application, while the disputed domain name is a generic term.
The Panel accepts that the words "virgin" and "living" are generic terms. The Complainant has failed to establish that "virgin living" is uniquely associated with the Complainant, such that any use of the words in a domain name would mislead users into believing that a resulting website is associated with the Complainant.
The disputed domain name resolved to a webpage of the Respondent which offered the disputed domain name for sale. The webpage did not refer to the Complainant, its competitors and/or any other goods or services than the disputed domain name being for sale. The Respondent has registered over 750 domain names that start with the element "virgin" and over 1,600 domain names that end with the element "living", while there is no evidence suggesting that the disputed domain name was registered for any other purpose other than because it consisted of such generic terms. Furthermore the disputed domain name was registered in February 2012, which was more than five years before the Complainant filed the Application with a mere intent to use status.
The Respondent is a domainer which regularly registers domain names that include generic words for the purposes of selling them. Such business activities can be legitimate and are not in themselves a breach of the Policy, so long as they do not encroach on third parties' trade mark rights. In this case, no evidence has been provided to establish that the Respondent has engaged in registering domain names that take advantage of the Complainant's or third parties' trade mark rights. The Respondent simply chooses to register generic words as domain names.
Taking all of the above into account, the Panel concludes that the Respondent has rights and legitimate interests in the disputed domain name.
The Panel finds that the Complainant has failed to satisfy paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain name in bad faith where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website or location or of a product or service offered on the Respondent's website or location.
The Respondent is a domainer which regularly registers and sells domain names that include generic words. The disputed domain name incorporates the generic words "virgin" and "living", which is consistent with the extensive domain name portfolio held by the Respondent, which incorporates such generic words. There is no evidence that the Respondent has specifically targeted the Complainant in relation to its registration and use of the disputed domain name. Further, the Complainant has failed to establish that "virgin living" is uniquely associated with the Complainant, such that the Respondent must have had the Complainant and the VIRGIN trademark in mind at the time it registered the disputed domain name.
The Panel finds that the Complainant has failed to satisfy paragraph 4(a)(iii) of the Policy. D. Reverse Domain Name Hijacking
The Respondent requests a finding of Reverse Domain Name Hijacking. Reverse Domain Name Hijacking is defined under the Rules as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name". Paragraph 15(e) of the Rules provides that, if "after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding".
The burden is for the Respondent to prove that the Complainant filed the Complaint in bad faith for the purposes of Reverse Domain Name Hijacking, and mere lack of success of the Complaint is not in itself sufficient for a finding of Reverse Domain Name Hijacking (see section 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0")).
In this case, the Panel considers that the Complainant must have realized that the disputed domain name was one out of many combinations of descriptive words which the Respondent in its capacity of a domainer registered. The Complainant cannot monopolize all combinations of dictionary words with the term "virgin", for which reason the Complainant filed the Application, which is identical to the disputed domain name, shortly before submitting the Complaint. The Complainant attempted to mislead the Panel on several occasions by presenting information as fact, which at closer examination was misleading or untrue. For instance, the Panel found the Complainant's allegation that the Respondent has in actual fact registered over 1,000 domain names containing the Complainant's VIRGIN brand which would constitute evidence of a pattern of bad faith, to be untrue as the list submitted by the Complainant in support of the allegation consisted mainly of combinations of the term "Virginia" with another dictionary word, while the domain names which include the term "virgin" seem generally to use the term in the dictionary sense of a person who has never had sexual intercourse. Also, the Complainant's claim that "no one party can legitimately own over 3.5 million domains. The Respondent is a cybersquatter on an industrial scale" was unsupported and as such made an unjust connection between the ownership of domain names as such and cybersquatting, which the Complainant could not show.
The lack of convincing evidence and the Complainant's failure to fully address the requirements under paragraph 4(a) of the Policy demonstrate that the Complainant was likely aware that it did not have a legitimate case against the Respondent, and filed the Complaint with the primary intent of obtaining the transfer of the disputed domain name in bad faith against no consideration. This is supported by the fact that the Complainant only filed the Application with the intention to use, but not after having it used and without any proper explanation why the Complainant would need this mark just before the Complainant filed the Complaint. The Panel is of the opinion that the Complainant did this in a misguided attempt to bolster or lend legitimacy to the Complaint. The Complainant was legally represented and should have known that it would be unable to satisfy all the elements required under paragraph 4(a) of the Policy.
The Panel therefore finds that the Complaint was made in bad faith as an attempt at Reverse Domain Name Hijacking, constituting an abuse of this administrative proceeding. 7. Decision
For the foregoing reasons, the Complaint is denied and the Panel also finds that the Complainant has engaged in Reverse Domain Name Hijacking.
Alfred Meijboom
Presiding Panelist
Gabriela Kennedy
Panelist
The Hon Neil Brown Q.C.
Panelist
Date: December 11, 2017
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