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 Luay Shakarchy, Universal Comms W/S Ltd of Birmingham, United Kingdom. 2. The Domain Names and Registrar
The disputed domain names and are registered with 1&1 Internet SE (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2018. On March 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On March 6, 2018, 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 March 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 8, 2018. On April 9, 2018, the Center received an email communication from the Respondent. The Center received an additional email communication from the Respondent on April 12, 2018, and an email communication from the Complainant on April 19, 2018.
The Center appointed Jane Lambert as the sole panelist in this matter on April 23, 2018. 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 company incorporated in England and Wales under company number 01073929. It is a member of a group of companies known collectively as “the Virgin Group”.
The Virgin Group was originally established by its founder and chairman Sir Richard Branson in the United Kingdom in 1970, when he started a business selling popular music records by mail order under the Virgin sign. Since then the Virgin Group has grown significantly in terms of its size, geographic reach, and the industries in which it operates. The Virgin Group 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.
The Virgin Group is engaged in a number of activities specifically in the field of travel and vehicles. These include, amongst others, the offering of driving experiences in association with Virgin Experience Days, Formula E racing (DS Virgin Racing), air travel (Virgin Atlantic), rail travel (Virgin Trains) and the world’s first commercial spaceline (Virgin Galactic).
The Virgin Group is a leading branded venture capital organisation and is one of the world's most recognised and respected brands. There are now more than 60 Virgin branded businesses with around 53 million customers worldwide, employing in excess of 69,000 people in 35 countries. Annual revenue is approximately GBP 16.6 billion and growing. The Complainant and the Virgin Group have invested considerable time and expenditure in relation to the development, promotion, and advertisement of the Virgin brand.
The Complainant is also the registered proprietor of over 5,350 domain names either consisting exclusively of the VIRGIN trade mark or in which the VIRGIN mark is used in combination with other words and/or numbers. For example, the Complainant is the registered proprietor of and .
The Complainant maintains a worldwide registered trade mark portfolio for the VIRGIN trade marks, which it licenses to companies both within and outside the Virgin Group including, amongst others, Virgin Rail Group, Virgin Money, Virgin Mobile Telecoms, Virgin Media, Virgin Active, Virgin Atlantic Airways and Virgin Hotels. For example, the Complainant owns the following marks:
(a) European Union Trade Mark No. 015255235 registered on March 21, 2016 for the word mark VIRGIN for goods and services in classes 3, 5, 9, 11, 12, 14, 16, 31, 32, 35, 36, 38, 39, 41, 42, 43, 44 and 45, which include, amongst other things, “transport”, “taxi services”, “limousines services” and the “reservation and sale of tickets for ...taxi services, motorcycles services and limousine rides”; and
(b) United Kingdom Trade Mark No. 03163121 registered on July 29, 2016 for the word mark VIRGIN for goods and services in classes 3, 5, 9, 11, 12, 14, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44 and 45 which include, amongst other things, “vehicles”, “automobiles”, “engines for land vehicles”, “motor cars” and “parts and fittings for all the aforesaid goods” (the “Virgin Marks”).
Universal Comms W/S Ltd. was incorporated in England and Wales on May 18, 2006, under company number 05821212. Its registered office is in Middlesex. The Respondent is its only director.
The Respondent registered the Disputed Domain Names on February 22, 2017. It also registered the following domain names that were the subject of separate proceedings in accordance with Nominet’s Dispute Resolution Service (“DRS”) for “.uk” Top-Level Domain name registrations, (in relation to which the Independent Expert in Nominet’s DRS proceedings has ordered a transfer to the Complainant); ; and . 5. Parties’ Contentions A. Complainant
The Complainant asks for the transfer of the Disputed Domain Names on the following grounds:
(i) The Disputed Domain Names are identical or confusingly similar to trade marks or service marks in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and
(iii) The Disputed Domain Names have been registered and are being used in bad faith.
As to the first ground, the Complainant points out that the Disputed Domain Names incorporate the VIRGIN marks in full with the addition of the purely descriptive words “taxi” or “taxis” (preceded by a hyphen) and the suffix “.com”. Those additional elements exacerbate the likelihood of confusion with the VIRGIN marks rather than mitigate it.
With regard to the second ground, there is no evidence that the Respondent has any rights or legitimate interests in the Disputed Domain Names. It has not registered any trade marks corresponding to those names and it is not licensed to use any of the Complainant’s marks. As the Disputed Domain Names lead to registrar holding pages, the Respondent does not seem to be running any kind of business at all and certainly none by reference to the Disputed Domain Names.
As for the third ground, the Complainant submits that there is evidence that:
(a) The Respondent has registered the Disputed Domain Names primarily for the purpose of selling the Disputed Domain Names to the Complainant (or to a competitor of the Complainant), for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name;
(b) The Respondent, by using the Disputed Domain Names, has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's VIRGIN marks as to the source, sponsorship, affiliation, or endorsement of its website, location, or of a product or service on its website or location; and/or
(c) The Respondent has registered the Disputed Domain Names in order to prevent Complainant from reflecting the VIRGIN marks in corresponding domain names, and the Respondent has engaged in a pattern of such conduct. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions.
It did, however, send an email to the Center on April 9, 2018 which contained the following words:
“My offer is simple, i would like my expenses to be covered! Since Virgin demanded the domain, this has meant my small business venture has come to an end. During my small business venture i underwent development which came to a sum of 1000 USD, on top of this all the domains cost an amount of £50. I have been cooperative and am happy to hand over the all the domains, i am happy to show receipts of these payments, contracts and app specification, logos design, correspondent.”
The Respondent added that it had spoken to 1&1 to seek advice from their legal department as to whether the Respondent had broken any rules by buying the Disputed Domain Names and they had assured the Respondent that it had not. The Respondent has exhibited an email dated July 21, 2017 to “support@1&1.” referring to correspondence with Burgess Salmon in which they sought a transfer of and and asking whether the Respondent had broken any laws by purchasing those domain names and the registrar’s response dated July 22, 2018 assuring the Respondent that it had not.
By a further email dated April 12, 2018, the Respondent sent to the Center:
- Artwork for devices incorporating the words “Virgin” and “Taxi”
- A PayPal receipt for USD 1,000 purportedly paid to Innovative Data and Financial Services
- A spreadsheet listing certain functions and features
- A contract with a company in India to develop a computer program.
In that email, the Respondent stated:
“It started when I decided to open my own taxi company that adopted a similar concept to Uber with generic modification to the Uber concept, I derived at the name VirginTaxis as I felt it would fit with my new concept. In no way did I compare this to the Virgin Enterprise company.”
The Respondent added that it had decided to abandon the project because of the threat of legal proceedings with the Complainant and concluded: “This therefore means the dispute virgin made against the legal purchase of my domain resulted in a failed venture on my part.” It added: “I will happily hand all the domains over in exchange for the company covering the expenses I have had to incur.” C. Complainant’s Supplemental Filing
The Complainant submitted a further filing on April 19, 2018 responding to the Respondent’s submissions, which object to the Respondent’s late submissions and refute the Respondent’s explanations and characterizations of its communications with the Complainant and the Registrar. The Panel, in its discretion pursuant to paragraph 10 of the Rules, decides to accept the Respondent’s submissions and the Complainant’s rebuttal thereto for purposes of its assessment, below. 6. Discussion and Findings
The agreement by which the Respondent registered the Disputed Domain Names incorporated the following provision:
“You are required to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.” A. Identical or Confusingly Similar
The Panel finds that the first element is present.
The Complainant is the proprietor of the VIRGIN marks. The Respondent has added the words “taxi” and “taxis” to that sign. As the Virgin Group runs many well-known businesses including a chauffeuring service for its airline passengers, Internet users are likely to infer that the Disputed Domain Names incorporating the VIRGIN marks will be used in connection with a taxi service that is part of or connected with the Virgin Group. The Disputed Domain Names are therefore confusingly similar to trade marks in which the Complainant has rights. B. Rights or Legitimate Interests
The Panel finds the second element is present.
Paragraph 4(c) of the Policy lists a number of circumstances that might indicate that a respondent has rights or legitimate interests in a disputed domain name. The only circumstance that might apply here is 4(c)(i):
“before any notice to you of the dispute, your 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.”
The Respondent has stated that it intended to launch a taxi service similar to Uber and that it contracted with developers to develop software and design logos for such service.
However, the Panel finds, beyond any trademark infringement issues which might apply under national law that the Respondent’s submissions do not suffice to establish demonstrable preparations to use the Disputed Domain Names in connection with a bona fide offer of goods or services. Not only do the submissions not address squarely the use to which the Respondent may make with the particular domain names in dispute, but moreover, the selection of the Disputed Domain Names incorporating the Complainant’s marks for services in the field of transportation cannot be considered bona fide. C. Registered and Used in Bad Faith
The Panel finds that the third element is present.
Paragraph 4(b) of the Policy lists a number of circumstances, which, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that a respondent has registered or acquired a disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to a complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) A respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or
(iii) A respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the disputed domain name, the respondent has intentionally attempted 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 its website or location or of a product or service on its website or location.
The Panel finds that the Respondent registered the Disputed Domain Names primarily for the purpose of selling, renting, or otherwise transferring them to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of his documented out-of-pocket costs directly related to the Disputed Domain Names.
The Respondent set out its offer to sell the Disputed Domain Names for USD 1,000 in its email to the Center of the April 9, 2018. The USD 1,000 that it claims appears to be the cost of developing software possibly and other expenses of its proposed taxi business. These are not out-of-pocket costs directly related to the Disputed Domain Names. The Panel has visited 1&1 Internet SE’s website and seen that it offers to register “.com” domain names for 99 pence for the first year and GBP 12.99 for each subsequent year.
The Respondent’s argument that it registered the Disputed Domain Names with a view to using them in a new business along the lines of Uber cannot be taken seriously because the Respondent must have anticipated that the Complainant would stop the Respondent from using any domain name similar to the VIRGIN marks for services in the field of which it is active.
That is enough to find that the Respondent has registered the Disputed Domain Names primarily for the purpose of selling, renting, or otherwise transferring them to the Complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the Disputed Domain Names under paragraph 4(b)(i).
As regards the elements for paragraph 4(b)(iv) the Panel has already found that the Disputed Domain Names are confusingly similar to the VIRGIN marks and that their use is likely to lead Internet users to believe that they identify the websites of businesses operated by or connected with the Virgin Group. The Disputed Domain Names resolve to registrar holding pages, upon which there are sponsored links and searches for which payment is made. Thus the “commercial gain” requirement is satisfied. All the requirements of paragraph 4(b)(iv) are therefore met.
The Panel has considered whether paragraph 4(b)(ii) of the Policy applies. The Nominet DRS proceedings certainly constitute a pattern of similar conduct and the registration of the Disputed Domain Names might impede the Virgin Group from reflecting the VIRGIN marks in a domain name for a taxi service that they might wish to run one day but it would not prevent them from doing so altogether. On balance, the Panel prefers to not make a finding on this basis. 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 Names and be transferred to the Complainant.
Jane Lambert
Sole Panelist
Date: May 7, 2018
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