WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Ali Khan
Case No. DTV2001-0029
1. The Parties
The Complainant is Virgin Enterprises Limited of 120 Campden Hill Road, London W8 7AR, U.K.
The Respondent is Ali Khan of 74 Middlesex Street, Glasgow G41 1EE, U.K.
2. The Domain Name and Registrar
The domain name at issue is , and the Registrar is The .tv Corporation International.
3. Procedural History
The WIPO Arbitration and Mediation Center [the Center] received the Complaint on November 20, 2001 [electronic version] and on November 22, 2001 [hard copy]. The Center verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy [the Policy], 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]. The Complainant made the required payment to the Center.
The formal date of the commencement of this administrative proceeding is December 6, 2001.
On November 22, 2001 the Center transmitted via email to The .tv Corporation International a request for registrar verification in connection with this case and on December 4, 2001, The .tv Corporation International transmitted by email to the Center .tv Corporation's verification response confirming that the registrant is Ali Khan of 74 Middlesex Street, Glasgow G41 1EE, U.K., who is also the contact for both administrative and technical purposes.
Having verified that the Complaint satisfied the formal requirements of the Policy and the Rules, the Center transmitted on December 6, 2001 to all e-mail addresses provided by The .tv Corporation�s verification response and the Complaint for the Respondent (including Respondent�s lawyer as provided in the Complaint), the Notification of Complaint and Commencement of the Administrative Proceeding. The Center advised that the Response was due by December 26, 2001. On the same day the Center also transmitted by fax and by mail copies of the foregoing documents to the Respondent and Respondent�s lawyer.
No Response was received from the Respondent by the due date of December 26, 2001. On December 27, 2001, Notification of Respondent Default was sent to the Complainant and to the Respondent by e-mail using the same contact details and methods as were used for the Notification of Complaint and Commencement of the Administrative Proceedings. No reply by the Respondent to the Notification of Respondent Default was received.
Having received on January 17, 2002, Mr. David Perkins' Declaration of Impartiality and Independence and his Statement of Acceptance, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date on January 18, 2002, in which Mr. David Perkins was formally appointed as the Sole Panelist. The Projected Decision Date was February 1, 2002. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
Having reviewed the communication records in the case file, the Administrative Panel finds that the Center has discharged its responsibility under para. 2(a) of the Rules "to employ reasonably available means calculated to achieve actual notice to Respondent". Therefore, the Administrative Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of any Response from the Respondent.
4. Factual background
4.1 The Complainant
4.1.1 The Complainant is Virgin Enterprises Limited. The Complainant owns some 1,400 trademark and service mark applications and registrations for the VIRGIN trademark in over 123 countries for a wide variety of goods and services. The Complainant licenses use of the VIRGIN trademark to companies both within and outside the Virgin Group of Companies.
The Virgin Group
4.1.2 The Virgin Group comprises several hundred companies. The Group was established in 1970 by Sir Richard Branson as a mail order company selling popular music records.
Virgin Music Group
4.1.3 In 1971 the first VIRGIN record shop was opened in Oxford Street, London. In 1987 Virgin Records (America) was launched. The Virgin Music Group was eventually sold to Thorn EMI Plc in 1992 for �560 million. The companies within that Group continue to use the VIRGIN name and mark under licence from the Complainant.
Virgin Megastores
4.1.4. In 1979 well-known VIRGIN MEGASTORE concept was launched. In 1991 Virgin Retail entered into a joint venture with W H Smith to develop that business. Currently, there are over 30 VIRGIN megastores in the United Kingdom and Ireland selling tapes, records, CD mini discs, DVD's and a wide range of computer games and software. Turnover for that business in the United Kingdom in 1998 exceeded �250 million.
4.1.5 In 1992 Virgin entered into a joint venture with Blockbuster Music of Florida, the world's largest video retailer and there are now 10 VIRGIN megastores in the United States.
Virgin Publishing
4.1.6 This was formed in 1991 combining W H Allen Plc., Allison and Busby and Virgin Books.
Virgin Games
4.1.7 In 1994 Virgin Games, which published and marketed computer games changed its name to Virgin Interactive Entertainment and a majority stake was sold to Blockbuster Entertainment Corporation.
In 1997 Virgin Mastertronic, the Group's European computer games distributor was sold to Sega of Japan.
Virgin Atlantic Airways
4.1.8 Virgin Atlantic was launched in 1984, followed by Virgin Holidays in 1985. Virgin Atlantic currently carries more than one million passengers a year to destinations in the United States, the Far East, the Caribbean and Africa. Its 1998 turnover exceeded �820 million. Virgin Holidays operates package holidays in the Untied States, the Caribbean and other countries. Over 150,000 such holidays are sold each year. Its 1998 turnover exceeded �166 million. Also in 1998 Virgin Travel Group acquired Euro Belgian Airlines, renamed VIRGIN Express. This is based in Belgium and operates low cost flights to a number of destinations in Europe.
Virgin Vision and Virgin Radio
4.1.9 In the same year (1984) that Virgin Atlantic Airways was launched, Virgin Vision also launched "The Music Channel", a 24 hour music station transmitted by satellite and produced the award winning film "1984" starring Richard Burton and John Hurt. In 1993 the VIRGIN 1215 radio station was launched, being the second independent nation-wide radio station in the United Kingdom. Virgin Radio was sold in 1998 to the Ginger Media Group and in turn that Group was sold in 2000 to the Scottish Media Group. Virgin Radio continues to use the VIRGIN name and mark under license from the Complainant.
Virgin Drinks
4.1.10 This business, originally known as VIRGIN Cola, was established in 1994 and sells a portfolio of over 20 soft drinks through franchises in Europe, North America, North Africa, the Middle East and the Far East.
4.1.11 Also in 1994 the Virgin Group formed an association with William Grant of Scotland and since then VIRGIN Vodka has been produced and sold in the United Kingdom.
Personal Computers
4.1.12 In 1992 the Virgin Group acquired Euro-Magnetics Products, a personal computer business, which has since traded as VIRGIN Euromagnetics.
Financial Services
4.1.13 Virgin Direct was launched in 1995 and sells financial services by telephone. It has over �2 billion in funds and in 1998 had a turnover of �550 million.
Virgin Cinemas
4.1.14 Until the end of 1999, when Virgin Cinemas was sold to the French Cinema Group, UGC, there were 20 cinemas throughout the United Kingdom trading under the VIRGIN name.
Virgin Rail
4.1.15 Virgin Rail Group was established in 1997 and operates two domestic rail franchises in the United Kingdom, carrying over 30 million passengers a year.
Internet Service Provider
4.1.16 Virgin Net, launched in late 1996, is the third largest ISP in the United Kingdom with some 500,000 subscribers.
Fitness and Health Clubs
4.1.17 Virgin Active was launched in late 1999. It presently operates 11 fitness and health clubs in the United Kingdom and 80 such clubs in South Africa.
The Website
4.1.18 This came into operation in mid 1996. It provides not only general corporate information relating to the Virgin Group but also links to web pages for many of the companies in the Group including Virgin Megastores, Virgin Atlantic Airways, Virgin Net, Virgin Hotels, Virgin Radio and Virgin Balloon Flights. The website currently receives some 3 million hits per month.
Virgin Mobile Telecoms
4.1.19 Exhibited to the Complaint are various United Kingdom Press items relating to the proposed entry of the Virgin Group into the mobile telecoms business dating back to late 1998, including national, regional and specialist publications. These include an article in the Scotland on Sunday newspaper.
Then, in November 1999 Virgin entered into a joint venture with One 2 One to provide VIRGIN branded mobile telecommunication services. Currently, Virgin Mobile Telecoms has over 230,000 customers in the United Kingdom.
The Group
4.1.20 In November 1986, 35% of the equity of the Virgin Group - excluding Virgin Atlantic Airways and the travel companies - was floated on the London Stock Exchange. Some 87,000 shareholders acquired a stake in the company at that time. Two years later [November 1988] the shares were bought back. It is now one of the largest private corporate groups in the United Kingdom with an estimated turnover in 2000 of something in excess of �3.2 billion. The Virgin Group employs over 30,000 staff and operates in over 20 countries worldwide.
4.2 The VIRGIN Name and Trademark
4.2.1 By virtue of its extensive businesses outlined in the preceding paragraphs, which have been built up over the past 30 years, the name and mark VIRGIN has become very well known both in the Untied Kingdom and internationally as denoting those businesses and its founder and prime mover, Sir Richard Branson. Two biographies and one autobiography of Sir Richard have been published, which chronicle the enormous success he has achieved in establishing and growing the Virgin Group.
4.2.2 To illustrate the notoriety of that name, a 1995 survey published in the magazine PR Week reported over 90% public recognition of the VIRGIN name in the United Kingdom with Sir Richard and the Virgin Group.
4.2.3 Companies in the Virgin Group market their various activities in various types of media in the countries where they trade. For example, Virgin Atlantic Airways makes extensive use of television and print media in the United States, the United Kingdom, Japan, Hong Kong, China and South Africa.
4.2.4 Of the 1,400 VIRGIN trademark portfolio of applications and registrations in the name of the Complainant [see paragraph 4.1.1 above], in the United Kingdom the Complainant owns some 120 registration, over 30 of which are for the mark VIRGIN simpliciter spanning some 21 classes of goods and services.
4.2.5 The relevant classes for mobile telecoms products are Classes 9, 16 and 38. The United Kingdom registrations include the mark VIRGIN in each of those classes dating respectively from 1973, 1979 and 1989. The Complainant also owns Community Trade Marks for VIRGIN in those classes and has a pending CTM application for VIRGIN MOBILE filed September 13, 2000 which was published on August 6, 2001.
4.2.6 The Complaint states that the Complainant is also the registrant of many hundred of domain names, most of which include the VIRGIN name / mark. These include registered on July 1, 1998, by the Complainant for Virgin Mobile Telecoms.
4.2.7 The Panel finds that the VIRGIN name and mark is exceptionally well known in the United Kingdom and generally known and recognised internationally with one or more of the businesses of the Virgin Group.
4.3 The Respondent
4.3.1 No Response has been filed by the Respondent. The following information relating to the Respondent is derived from the Complaint and from correspondence between the Complainant and the Respondent's solicitors in Glasgow.
4.3.2 Almost a year after the launch of Virgin Mobile Telecoms [November 1998], on October 11, 2000, the Respondent registered , the domain name in issue. So far as the Complainant is aware, there is no evidence of use of that domain name, which does not resolve to an active website.
Communications between the Parties
4.3.3 The Complainant states that it was not until February 2001, that it became aware of the domain name in issue. This was in the context of the registration of additional domain names to [see paragraph 4.2.6 above] for Virgin Mobile Telecoms. By letter dated February 15, 2001, the Complainant wrote to the Respondent putting him on notice of the VIRGIN trademarks and of the business of Virgin Mobile and expressing concern that his registration of the domain name in issue:
"� will dilute the exclusive reputation and goodwill of the VIRGIN trademark and may, furthermore, confuse the public into believing that you are, in some way, associated with the Virgin Group. Indeed, we note your connection to a mobile phone business named Torq and are concerned that this may be one reason why you registered the domain name."
4.3.4 The Respondent's solicitors replied confirming that Mr. Khan is involved in the mobile phone business trading under the name TORQ. The reply continued:
"However, our client has registered the domain name for another unconnected business and we are currently obtaining full details from him."
Despite stating that they would write further, nothing more was received from the Respondent's solicitors and on May 25, 2001, a cease and desist letter was sent by the Complainant's solicitors to the Respondent and to Torq Telecoms Ltd both at the same address in Glasgow. The letter was copied to the Respondent's solicitors. It included an Undertaking to be signed by the Respondent by which he would, inter alia, transfer the domain name in issue to the Complainant and contribute �500.00 to their legal costs.
4.3.5 In the course of the correspondence which followed the Respondent's solicitors wrote:
"Whilst we have already advised that whilst our client does trade in the mobile phone business the name was registered in respect of an entirely separate business. We appreciate that there may be some confusion. He is prepared to desist from further use of the domain name if terms can be agreed between our respective clients. Our client is not prepared to make payment of any contribution towards your client's expenses. Indeed he is looking for recompense in respect of the costs that he has incurred in taking the new business to its current stage. If he is not to use the domain name in question the work to date will have to be aborted."
The Complainant's solicitors replied stating that the Complainant was not prepared to pay the Respondent his business set-up costs.
4.3.6 The Respondent's solicitors answered [letter of June 20, 2001] in the following terms:
"He [Mr. Khan] has no plans to use the domain name at the present time. He is prepared to provide you with details of his idea for use of the domain name provided always that your clients confirm that they will not use any of this information."
4.3.7 The Complainant's in their reply [June 26, 2001] wrote:
"We do not understand why your client is now indicating he has no present plans for the domain name. In your open letter dated June 11, 2001, you indicated that your client was looking for compensation in respect of costs he had incurred in taking his new business to its current stage. Your latest letter would indicate, therefore, that your client has no current business plan whatsoever or that the domain name is irrelevant to any business plan. Your client's statements are clearly contradictory and his claim for "recompense" indicates an intention to make money from our client by selling the domain name."
No further communication was received from the Respondent or from his solicitors.
5. The Parties' Contentions
5.1 The Complainant's Case
Identical or Confusingly Similar
5.1.1 The Complainant contends that the Respondent has registered a domain name which includes as its distinguishing feature a mark which is identical to the Complainant's VIRGIN trademark. As such the domain name in issue is confusingly similar to the Complainant's VIRGIN name and mark. The suffix mobile is descriptive.
Rights or Legitimate Interests
5.1.2 The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name in issue. Use of the mark VIRGIN and/or of the name Virgin Mobile has not been authorised by the Complainant.
5.1.3 The Complainant asserts that none of the circumstances set out in paragraph 4(c) of the Policy as demonstrating rights or legitimate interests to the domain name in issue have been made out by the Respondent. In particular, by the Respondent's own admission [letters from his solicitors dated June 11 and 20, 2001 - see paragraphs 4.3.5 and 4.3.6 above] the domain name in issue has not been used nor did he have plans to use it at least as at June 2001.
Registration and Use in Bad Faith
5.1.4 The Complainant contends that the domain name in issue was registered and is being used in bad faith. In that respect, the Complainant points to the very well known reputation of its VIRGIN name and mark and specifically to the business of Virgin Mobile Telecoms established some 12 months prior to registration of the domain name in issue and the press coverage preceding the launch of that business. The Complainant also refers to the Respondent's solicitors request that, in consideration for transfer of the domain name in issue, the Complainant should provide:
"� recompense in respect of the costs that he has incurred in taking the new business to its current stage." [see paragraph 4.3.5 above]
a business which the Respondent's solicitors subsequently stated had not been started [see paragraph 4.3.6 above].
Case Law cited by the Complainant
5.1.6 Yahoo! Inc., v. Jorge O. Kirovsky [WIPO Case No. D2000-0428]
The domain names in issue were ; ; ; and . As to confusing similarity [Policy, paragraph 4a(i)], the Panel held all to be clearly confusingly similar to the Complainant's YAHOO! Trademark.
"Moreover, "email" and "chat" are so closely associated with YAHOO!'s business that the combination with YAHOO! Cannot be but confusing."
5.1.7 G A Modefine S.A v. AES Optics [WIPO Case No. D2000-0306]
The domain name in issue was . The Panel held that, in that particular case, the Respondent was quite aware of the notoriety of the Complainant's ARMANI sunglasses when registering that domain name. The Panelist concluded:
"The Panel considers that bad faith can be presumed in the registration and use of a domain name consisting wholly or partly of the notorious trademark of a third party."
5.1.8 E Auto Inc., v. Available-Domain-N d/b/a Intellectual-A, Inc. [WIPO Case No. D2000-0120]
The domain name in issue was which the Panel found confusingly similar to the Complainant's AUTO registered trademark and its associated domain name. One of the factors supporting the Panel's decision that the domain name in issue had been registered and was being used in bad faith was the Respondent's offer to sell that domain name at a price in excess of its registration costs.
5.1.9 David Cook v. This Domain is for Sale [NAF Case No. FA 0006000094957] which concerned the domain name and Michelle Barry v. For Sale [NAF Case No. FA0007000095110] which concerned the domain name both expressly cited and applied that ground for holding bad faith from the EAuto Decision.
5.1.10 British Telecommunications plc v. One in a Million Ltd and others [1999] FSR 1 (Court of Appeal). The Complainant was a Co-Plaintiff in this case before the English High Court which concerned, inter alia, registration of the domain name by one of the Defendants. The Complainant's case in passing-off succeeded, the Court also indicating that it considered trademark infringement had been established.
6. Discussion and Findings
6.1. The Policy paragraph 4(a) provides that the Complainant must prove each of the following:
(i) that the Respondent's 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 domain name; and
(iii) the domain name has been registered and is being used in bad faith.
6.2 Paragraph 4(c) of the Policy identifies circumstances which, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all the evidence presented, shall demonstrate the Respondent's rights or legitimate interests for the purpose of paragraph 4(a)(ii) of the Policy.
6.3 Paragraph 4(b) of the Policy sets out 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.
6.4. As to use in bad faith, this requirement of the Policy is not limited to positive action. Inaction is within the concept [see Telstra .v. Nuclear Marshmallows WIPO Case No. D2000-0003]. The circumstances evidencing bad faith registration and use identified in paragraph 4(b) of the Policy are not exhaustive; they are stated to be without limitation. The circumstances of inaction (passive holding) are to be decided in relation to the facts of each particular case. In the Telstra case, those circumstances included the notoriety of the Complainant's name and mark, the lack of evidence of any actual or contemplated use of the domain name in issue, and the impossibility of conceiving of any plausible actual use of that domain name by the Respondent which would not be illegitimate, such as by infringing the Complainant's trademark rights.
6.5 Identical or Confusingly Similar
The Respondent himself has conceded that the domain name in issue is likely to cause confusion [see paragraph 4.3.5 above]. In any event, the combination of the Complainant's extensive registered trademarks for VIRGIN and VIRGIN prefixed marks, the reputation of the Virgin Group of Companies and the pre-existing business of Virgin Mobile Telecoms is such that confusing similarity clearly exists. The distinctive element of the domain name in issue, VIRGIN, is identical with the Complainant's trademarks and the identifier by which the Virgin Group is known in the United Kingdom and internationally. The Complaint satisfies the requirement of paragraph 4(a)(i) of the Policy.
6.6 Rights or Legitimate Interests
The Respondent has failed to demonstrate any of the circumstances set out in paragraph 4(c) of the Policy. The Respondent's admission of likelihood of confusion [see paragraph 4.3.5 above] confirms lack of rights or legitimate interests. The Complaint also satisfies the requirement of paragraph 4(a)(ii) of the Policy.
6.7 Registered and Use in Bad Faith
Given the notoriety of the Complainant's VIRGIN name and mark and the Respondent's acknowledgement of likelihood of confusion, there is every indication of lack of bona fides in respect of both limbs of this requirement of the Policy. Added to this is the Respondent's failure to submit a Response to this Complaint. The Panel has no hesitation in finding, in the circumstances of this case, that the Complaint succeeds in meeting the requirements of paragraph 4(a)(iii) of the Policy.
7. Decision
For all the forgoing reasons, the Panel decides that the Complainant has proved each of the three elements of paragraph 4(a) of the Policy. Accordingly, the Panel requires that the registration of the domain name be transferred to the Complainant.
David C. L. Perkins
Sole Panelist
Dated: February 4, 2002
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