The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Stobbs IP Limited, United Kingdom.
The Respondent is Stichting OpenTLD WHOIS Proxy of Danzigerkade, Amsterdam, Netherlands / Christine Crowley, AimDaddy Concept of Oklahoma City, United States of America represented per se. 2. The Domain Name and Registrar
The disputed domain name is registered with OpenTLD B.V. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2018. On April 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 23, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 25, 2018 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 26, 2018. A further amendment to the complaint was received on April 27, 2018.
The Center verified that the Complaint together with the amended Complaint and 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 May 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 21, 2018. On May 5, 2018, an email was received from the domain name providing company. A further email was received on May 7, 2018. No formal Response was filed with the Center. Two further emails were received after respondent default.
The Center appointed Leon Trakman as the sole panelist in this matter on June 1, 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 adduces evidence that it is the brand owner for the Virgin Group of Companies. The Virgin Group originated in 1970 with the sale of music records under the VIRGIN trademark. The Virgin brand now includes over 200 companies worldwide, operating across various industries, and is located in 32 countries including across Europe and North America. In particular, Virgin Mobile, a mobile telecommunications service provider, was incorporated into the Virgin Group in 1999.
The Complainant demonstrates that is has registered various trademarks and has other rights in the VIRGIN and VIRGIN MOBILE mark. It demonstrates further that it has won a number of domain name disputes in which respondents have used disputed domain names that include the VIRGIN mark.
The Complainant also provides documentation verifying a database search which it conducted on March 13, 2018 and which demonstrates that the Respondent in this administrative proceeding is Stichting OpenTLD WHOIS Proxy. Copies of the printout of the database search conducted on March 13,2018.
Further material non-contested facts are contained in Sections 1 to 3 above and in Sections 5 and 8 below.
The disputed domain name was registered on August 2017 and it resolves to a website offering for sale smart phones and other electric equipment in competition with the Complainant’s products. 5. Parties’ Contentions A. Complainant
The Complainant alleges that the Respondent has registered the disputed domain name that is identical or is confusingly similar to the Complainant’s various trademarks; that the Respondent has no rights or legitimate Interests in the disputed domain name; and that the Respondent has registered and used that disputed domain name in bad faith. B. Respondent
The Respondent did not respond formally to the Complaint. Informal emails were received on May 1,7, 24 and 25, 2018 from the domain name providing company. 6. Discussion and Findings
The Complainant, Virgin Enterprises Limited, is a world wide mobile telecommunications service provider that is part of the Virgin Group. The Complainant is also an online retailer of smartphones and other electronic equipment. It has used the VIRGIN trademark since 1970, and the VIRGIN MOBILE trademark in Canada since 2005 and in USA since 2001, and in various other countries including Singapore and India. The Complainant also owns extensive registered rights in VIRGIN and VIRGIN MOBILE including a variety of trademark registrations.
The Respondent and registrant of the disputed domain name is identified as Stichting OpenTLD WHOIS Proxy of Danzigerkade, Amsterdam, Netherlands / Christine Crowley, AimDaddy Concept. The Respondent operates a business that includes online sale of communication devices. A. Identical or Confusingly Similar
The disputed domain name contains the words “virgin mobile” and “limited”, followed by the designation “.com”. That name therefore incorporates the Complainant’s VIRGIN and VIRGIN MOBILE trademarks in their entirety. The word “limited” in the disputed domain name is descriptive in that it is simply a common term signifying the legal formation of a company and therefore does not distinguish the disputed domain name from the Complainant’s VIRGIN and VIRGIN MEDIA trademarks.
Accordingly, it is reasonably clear that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights. The use of the trademark VIRGIN in the disputed domain name is identical and confusingly similar to the use of that same word used by the Complainant across its global business including in the distribution of smartphones. Adding to that confusing similarity is the fact that the word “Virgin” is associated globally with Virgin smartphones from 1999 to the present.
The Panel therefore holds that the Complainant has established the requirements specified in paragraph 4(a)(i) of the Policy, and paragraphs 3(b)(viii), (b)(ix)(1)) the Rules. B. Rights or Legitimate Interests
It is evident on the record adduced, that the Respondent has no identifiable rights nor any legitimate interests in the disputed domain name. The Complainant has not authorized the Respondent to use its VIRGIN or VIRGIN MOBILE trademarks. The Respondent has no trademark registrations or rights in VIRGIN or VIRGIN MOBILE. The word “virgin” also does not have a particular meaning in relation to mobile phones and mobile communications.
The Panel finds that the Respondent therefore has no rights or legitimate interests in the disputed domain name, in violation of Paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Policy. C. Registered and Used in Bad Faith
It is most likely that the Respondent, in engaging in the sale of smartphones, would have been aware of Complainant’s pre-existing smartphone business operating globally under the trademark VIRGIN at the date on which the Respondent registered the disputed domain name in 2017.
It is also evident that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the 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 website or location or of a product or service on the website or location.
It is apparent, too, that Respondent is attempting to confuse Internet users into believing that the Complainant owns, operate or otherwise authorizes the Respondent’s business, with the intention of profiting at the expense of the Complainant’s goodwill and reputation in the telecommunications sector.
The Panel therefore concludes that the Respondent has engaged in bad faith in both registering and operating its business under the disputed domain name. In so acting, the Complainant has established the requirements set out in paragraphs 4(a)(iii) and 4(b) of the Policy, and paragraph 3(b)(ix)(3) of the Rules. 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.
Leon Trakman
Sole Panelist
Date: June 7, 2018.
Full & Egal Universal Law Academy