The Complainants are Virgin Enterprises Limited, O2 Worldwide Limited, and VMED O2 UK Limited, United Kingdom, represented respectively by A. A. Thornton & Co., United Kingdom, Stobbs, United Kingdom, and VMED O2 UK Limited, internally represented.
The Respondent is Bak J-seon, Republic of Korea.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2021. On August 11, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 12, 2021, 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.
On August 25, 2021, the Center notified the Parties in both English and Korean that the language of the registration agreement for the disputed domain name is Korean. On August 25, 2021, the Respondent requested for Korean to be the language of the proceeding. On August 27, 2021, the Complainant requested for English to be the language of the proceeding.
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, both in English and in Korean, and the proceedings commenced on September 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 3, 2021. The Respondent sent email communication to the Center on September 14 and October 29, 2021, but did not submit any formal response. On October 6, 2021, Center informed the Parties of commencement of panel appointment process.
The Center appointed Ik-Hyun Seo as the sole panelist in this matter on December 8, 2021. 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 BackgroundThe Complainant Virgin Enterprises Limited is part of the Virgin Group and is the entity responsible for registering and maintaining registrations for, and licensing, the VIRGIN trademark. The Virgin Group was established in the United Kingdom in 1970 and there are now over 60 VIRGIN branded businesses spanning a diverse range of sectors such as financial services, health and wellness, music and entertainment, and telecommunications, with over 53 million customers worldwide and more than 69,000 employees in 35 countries with annual revenues of GBP 16.6 billion. The VIRGIN name and mark have been consistently and intensively used across all VIRGIN operations since the company was founded and Virgin Enterprises Limited owns numerous VIRGIN”and VIRGIN-based trademarks around the world including the following:
- VIRGIN UKTM Registration No. UK00003163121 in classes 03, 05, 09, 11, 12, 14, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44, and 45 (Registered on July 29, 2016);
- VIRGIN EUTM Registration No. 015255235 in classes 03, 05, 09, 11, 12, 14, 16, 31, 32, 35, 36, 38, 39, 41, 42, 43, 44, and 45 (Registered on March 21, 2016);
- VIRGIN MEDIA UKTM Registration No. UK00002429892 in classes 9, 35, 38, and 41 (Registered May 18, 2007); and
- VIRGIN MEDIA EUTM Registration No. 13867478 in classes 9, 35, 36, 38, 41, and 42 (Registered on October 14, 2015).
The Complainant O2 Worldwide Limited is the Group IP holding company for the O2 brand for the Telefonica group and Telefonica S.A. The O2 brand was launched by the Telefonica Group of Companies in 2002 and it has been used extensively and consistently in the telecommunications, entertainment, and music sectors since then in the United Kingdom, Germany, Spain, the Czech Republic, and Slovakia, so that as of the end of December 2018, the O2 brand had 121.6 million customers throughout Europe with aggregate service revenue of EUR 26.8 billion in 2018. The O2 brand was awarded “Business Superbrand” status in 2003/2004 by the Superbrands organization, and ranked 41st of 500 top brands by the same organization in 2012. O2 Worldwide Limited owns numerous O2 and O2-based trademarks around the world including the following:
- O2 UKTM Registration No. UK00002264516 in classes 38, 39, and 42 (Registered on June 7, 2002);
- O2 EUTM Registration No. 2109627 in classes 09, 35, 36, 38, and 39 (Registered on May 13, 2004);
The Complainant VMED O2 UK Limited is one of the companies that uses the VIRGIN MEDIA mark under license from the Virgin Enterprises Limited and the O2 mark from O2 Worldwide Limited.
On May 7, 2020, it was announced that the owner of the VIRGIN MEDIA UK business, Liberty Global, and the owner of the O2 business in the United Kingdom, Telefonica S.A., had agreed to a joint venture which would operate under the mark VIRGIN MEDIA O2. The joint venture was approved by the United Kingdom Competitions & Markets Authority and launched on June 1, 2021.
The Respondent appears to be an individual with an address in the Republic of Korea.
The disputed domain name was registered on May 8, 2020, and does not resolve to any active website.
5. Parties’ Contentions A. ComplainantThe Complainants contend that the disputed domain name is confusingly similar to the trademarks in which they have rights. First of all, the disputed domain name consists of the terms “virgin”, “media”, and “o2”. In this regard, the Complainant Virgin Enterprises Limited owns trademark registrations for VIRGIN and VIRGIN MEDIA, and the Complainant O2 Worldwide Limited owns trademark registrations for O2. These terms are each easily identifiable within the disputed domain name and panels have concluded that the inclusion of a third party mark in a domain name does not prevent a finding of confusing similarity with respect to each Complainant’s trademarks. Further, the combination of VIRGIN MEDIA and O2 is identical to the name of the joint venture and Internet users are likely to assume that the disputed domain name relates to the online location for the business of this joint venture. In addition, given the fame associated with the VIRGIN, VIRGIN MEDIA, and O2 marks, Internet users would be confused that the disputed domain name is connected to either or both of the Complainants, or some business venture relating to both Complainants.
The Complainants also contend that the Respondent has no rights or legitimate interests in the disputed domain names, and confirms that they have not authorized or licensed rights to the Respondent in any respect. Rather, the Complainants assert that the Respondent registered the disputed domain name only after learning that the VIRGIN MEDIA UK business and the O2 UK business will merge, creating a joint venture which will be called VIRGIN MEDIA O2. The Complainants also assert that the Respondent has not made any legitimate use of the disputed domain name since its registration.
Lastly, the Complainants assert that the Respondent registered and used the disputed domain name in bad faith. First, the Complainants point out that the Respondent registered the disputed domain name on May 8, 2020, a day after the joint venture was announced on May 7, 2020, and a few days after media coverage regarding a possible announcement of the proposed joint venture started circulating. On June 1, 2021, the date on which the joint venture launched, the Respondent sent an email to the Complainants, offering them the disputed domain name for sale. The Complainants argue that the Respondent’s registration of the disputed domain name, which incorporates two marks corresponding to the two marks involved in the joint venture “VIRGIN MEDIA O2” the day after the announcement of the joint venture, and the Respondent’s email to the Complainants the day of the launch of the joint venture cannot be mere coincidence. Rather, the timing demonstrates that the Respondent was well aware of and motivated solely by the announcement of the proposed joint venture to register the disputed domain name in anticipation of the proposed joint venture being formalized under the name “VIRGIN MEDIA O2”, either with the intention of preventing the Complainants or the related parties from securing the disputed domain name, or to try to elicit payment for the disputed domain name from the Complainants. In addition, the Complainants point out that the Respondent was a party to past UDRP domain name dispute cases in which the panels found the Respondent to have registered and used domain names in bad faith and ordered the transfer of the domain names to the complainants.
B. RespondentThe Respondent did not reply to the Complainant’s contentions. In the Respondent’s various email communications to the Center, the Respondent requested that communications be conducted in Korean.
6. Discussion and Findings A. LanguageParagraph 11(a) of the Rules provides that the language of the proceeding shall be the language of the registration agreement, unless otherwise agreed to by the parties, subject to the authority of the panel to determine otherwise. In this case, the language of the Registration Agreement is Korean, and both parties have had an opportunity to argue their positions on this point. The Center issued a notice in Korean and English stating that it would accept the Complaint filed in English, and that the Response would be accepted in either Korean or English. The Respondent subsequently chose not to submit a substantive Response.
The Complainant requested English be the language of the proceeding for several reasons including the disputed domain name registered in Latin characters which are identical to two of the United Kingdom’s most well-known telecommunications providers, including the proposed name of the United Kingdom based joint venture between two of the Complainants’ businesses for which there were a considerable amount of media coverage in English, the fact that the Respondent has approached the Complainants directly in English to try to sell the disputed domain name to them which show that the Respondent has a good working knowledge of the English language, and the time and cost involved in translation of the Complaint into Korean.
The Respondent requested Korean be the language of the proceeding noting the language of the Registration Agreement is Korean and claiming that he does not understand English.
Taking into account the full circumstances of the case, it is clear the disputed domain name was registered to target the Complainants. Besides, both parties were given the opportunity to submit arguments in the language of their preference, and the language in which to render the decision is reserved for the Panel. The Panel would have considered a Response in Korean, but no Response was submitted. Accordingly, the Panel determines that proceeding in English is fair and procedurally efficient in the circumstances of this case.
B. Identical or Confusingly SimilarThe disputed domain name consists of the terms “virgin media” and “o2” and the Complainant Virgin Enterprises Limited and the Complainant O2 Worldwide Limited have demonstrated with supporting evidence that they each hold trademark registrations for these terms which precede the registration date of the disputed domain name. Each mark can clearly be recognized within the disputed domain name, and the addition of the other mark does not prevent the likelihood of confusion. Further, according to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.12, “where the complainant’s trademark is recognizable within the disputed domain name, the addition of other third-party marks is insufficient in itself to avoid a finding of confusing similarity to the complainant’s mark under the first element.”
For the reasons mentioned above, the Panel finds that the first element has been established.
C. Rights or Legitimate InterestsOn the basis of the present record, the Panel finds that the Complainant has made the required allegations to support a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once such a prima facie basis has been established, the Respondent carries the burden of demonstrating its rights or legitimate interests in the disputed domain name. However, the Respondent in this case has chosen to file no substantive Response to these assertions by the Complainant, and there is no evidence or allegation in the records that would warrant a finding in favor of the Respondent on this point. Rather, the disputed domain name consists of the Complainants’ trademarks, coupled together to identically match the name of the Complainants’ join venture, carrying a risk of implied affiliation that cannot constitute fair use. See section 2.5.1 of the WIPO Overview 3.0. Moreover, noting the Respondent’s unilateral offer to sell the disputed domain name, it is apparent that the Respondent has registered the disputed domain name purely with the intent of commercial gain through re-sale, which under the circumstances of this proceeding, cannot confer rights or legitimate interests.
For the reasons provided above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, and that the second element has been established.
D. Registered and Used in Bad FaithThe Panel finds that there are more than sufficient reasons to find bad faith in this case.
The Respondent registered the disputed domain name which corresponds exactly to the name of the joint venture between the Virgin and O2 groups just one day after the joint venture and its name was announced, and sent an email to the Complainants on the very day of the launch of the joint venture offering to sell them the disputed domain name. The VIRGIN MEDIA and O2 marks are widely-known marks of the Complainants and the disputed domain name and the name of the joint venture do not correspond to any commonly used terms or phrases. Given these facts, it is quite clear that the Respondent registered the disputed domain name in order to sell or transfer it to the Complainants or to a competitor of the Complainants for valuable consideration in excess of out-of-pocket costs directly related to the disputed domain name, or to prevent the Complainants from registering it.
Further, under the circumstance of this proceeding, the non-use of the disputed domain name does not prevent a finding of bad faith use under the doctrine of passive holding. See WIPO Overview 3.0, section 3.3.
For the reasons given above, the Panel finds that the third and final element has been sufficiently established.
7. DecisionFor 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,
Ik-Hyun Seo
Sole Panelist
Date: December 22, 2021