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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Internet Protocols Limited
Case No. D2001-0837
1. The Parties
Complainant: Virgin Enterprises Limited of 120 Campden Hill Road, London, W8 7AR, United Kingdom
Respondent: Internet Protocols Limited of Colman House, 27 Old Foundry Road, Ipswich, Suffolk, IP4 OAH, United Kingdom
2. The Domain Name and Registrar
Domain Name: <virginmobile.net>
Registrar: Network Solutions Inc.
3. Procedural History
The Complaint was filed on June 28, 2001. WIPO verified that the Complaint satisfies the Rules and the Supplemental Rules and that payment was properly made. The panelist is satisfied this is the case.
The Complaint was properly notified in accordance with Rules, paragraph 2(a). No formal Response was filed by the Respondent, who is in default. The administrative panel was properly constituted. The undersigned panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO or the Panel as a consequence of which the date scheduled for the issuance of the Panel’s decision was August 21 ,2001.
4. Factual Background
The Complainant is the owner of registered trademarks for the mark VIRGIN in the United Kingdom and in many countries around the world.
5. Parties’ Contentions
The Complainant states that:
The Complainant is the owner of all worldwide VIRGIN trademark applications and registrations attributable to the Virgin group of companies. The Complainant licenses the VIRGIN trademark to companies both within and outside the Virgin group of companies.
The Virgin group comprises several hundred companies, most of which are organized into a number of corporate groups. The Complainant licenses, amongst others, the following companies within the Virgin group to use the VIRGIN name:
Virgin Rail Group Limited
Virgin Direct Limited
Virgin Cinemas Group Limited
Virgin Retail Limited
Virgin Hotels Group Limited
Virgin Entertainment Group Limited
Virgin Net Limited
Virgin Publishing Limited
Virgin Trading Company Limited
Virgin Mobile Telecoms Limited
Virgin Cola Holdings BV Limited
Virgin Active Limited
Virgin Bride Limited
Virgin Atlantic Airways Limited
Virgin Holidays Limited
A further group, Virgin Music Group Limited, was sold to Thorn EMI Plc in June 1992, for Ј560 million although the companies within the Virgin Music Group continue to use the VIRGIN name under licence from the Complainant.
Virgin Interactive Entertainment, a further licensee which is no longer owned by the Virgin group, continues to use the VIRGIN name under licence from the Complainant.
Within the Virgin group most companies are trading companies whose names begin with the word Virgin.
The Virgin group was originally established by Sir Richard Branson in 1970 as a mail order company selling popular music records. In 1971, the first Virgin record shop was opened on Oxford Street in London. The Virgin group has used the name VIRGIN and has depended on public approval for its success ever since. The word VIRGIN was first registered by the Virgin Group as a trademark on April 11, 1973. Since the late 1970s, the Virgin group has also used a stylized form of the VIRGIN name. This was first registered as a trademark in 1979 and is known as the VIRGIN Signature logo.
The release of one of the biggest selling album of the 1970s, Mike Oldfield’s "Tubular Bells", on the newly formed Virgin record label in 1973 and the signing of the Sex Pistols in 1977 kept the VIRGIN name firmly in the public eye during its first decade of operation.
The Virgin group expanded from its successful retail base to form a film and video distribution company; to establish nightclubs; and to form commercial and residential property development companies, while at the same time expanding into computer games and software publishing with the formation of Virgin Games Limited and Virgin Mastertronic Limited.
In 1984, Virgin Atlantic Airways Limited ("VAA") was launched. In the same year, Virgin Vision Limited 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 November 1986, 35% of the equity in the Virgin group (excluding the airline and travel companies) was floated on the London Stock Exchange. At the time 87,000 shareholders acquired a stake in what had up to then been the highest profile privately owned company in the United Kingdom. The equity was bought back by the Virgin group in November 1988. The Virgin group’s interests, however, extended beyond the United Kingdom to the Far East where Virgin Vision Limited was distributing films and videos; the various holiday destinations to which customers of Virgin Holidays Limited (formed in 1985) traveled; Australia, Europe and the USA, where Virgin Records (America) Inc was launched in 1987 and, in particular, New York and Miami where VAA’s aircraft were flying under the distinctive VIRGIN name for an expanding customer base.
In 1985, the Virgin group won the Business Enterprise Award for company of the year. A biography of Sir Richard Branson was published in 1988, written by the Sunday Times newspaper journalist Mick Brown and his autobiography, "Losing My Virginity" was first published in 1998. A second biography of Sir Richard Branson, "Virgin King" by Tim Jackson, has also been published.
The Virgin record shop in Oxford Street developed and experimented with various "entertainment superstore" features and subsequently launched the now familiar "Virgin Megastore" concept in 1979. In 1991, Virgin Retail Limited and WH Smith entered into a joint venture to develop the Virgin Megastore business in the United Kingdom with plans to open up over 20 new large stores, in addition to its then existing 12 stores, by the end of 1997. There are now 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 software. Turnover for the Megastore business in the United Kingdom in 1998 was in excess of Ј250 million.
In 1992, Virgin entered into a joint venture agreement with Blockbuster Music Holdings Corporation of Florida USA, the world’s largest video retailer, to expand Virgin’s continental European chains. A separate joint venture company with Blockbuster was set up to open a chain of Virgin Megastores in the USA. Ten Virgin Megastores currently operate in the USA and over 60 Virgin Megastores have now been opened worldwide.
Virgin Publishing was formed in 1991, combining WH Allen Plc, Allison and Busby and Virgin Books. In 1997, its worldwide turnover was in excess of Ј8 million. In the same year Virgin Communications Limited sold Virgin Mastertronic Limited, its European computer games distributor, to Sega of Japan. Virgin Communications Limited retained the publishing division and began to expand Virgin Games Limited, a company publishing and marketing computer games. Virgin Games Limited changed its name to Virgin Interactive Entertainment Limited, a majority stake of which was sold to Blockbuster Entertainment Corporation in July 1994.
In 1992, the Virgin Group acquired a 100% shareholding in Euro-Magnetic Products Limited, which is engaged in the personal computer business. Euro-Magnetic Products began to trade as Virgin Euromagnetics, although retaining the original company name.
The majority of Virgin Group companies which do not include VIRGIN in their company name do, nevertheless, either trade under the name VIRGIN or use the VIRGIN name in relation to their products or services.
The VIRGIN name was applied to another new venture in 1993 when the Virgin 1215 radio station was launched as only the second independent nationwide radio station in the United Kingdom and the first nationwide independent adult/contemporary music station. The appeal and perception of the VIRGIN name in the eyes of the public was an essential element in the decision to go ahead with this plan. Virgin Radio Holdings Limited and its subsidiary Virgin Radio Limited were sold to the Ginger Media Group in 1998 although the Virgin Group retained a 20% stake. The entire Ginger Media Group was sold to the Scottish Media Group in early 2000. Virgin Radio, however, still uses the name under licence from the Complainant.
VAA has been voted Executive Travel’s airline of the year for the last four years. It currently carries over one million passengers per year from the United Kingdom to destinations in the United States including New York, Washington DC, Boston, Miami, Orlando, Las Vegas, Chicago, Los Angeles and San Francisco; the Far East including Hong Kong, Japan and China; South Africa and the Caribbean. VAA’s worldwide turnover in 1998 was over Ј820 million. The VIRGIN name is also used in relation to the provision of customer services in VAA’s lounges in Heathrow airport in London, Logan airport in Boston and Newark airport in New York. Virgin Holidays Limited, formed in 1985, offers package holidays in the United States, the Caribbean and other prime destinations in conjunction with VAA scheduled services. Virgin Holidays’ turnover in 1998 was over Ј166 million. In excess of 150,000 such holidays are sold each year. In addition, Virgin Ultimate Limited specializes in luxury holidays in exotic destinations.
The Virgin Cola business, now renamed Virgin Drinks, wholly owned by the Virgin Group, operates as a franchise business around the world, in particular in Europe, North America, North Africa, the Middle East and Far East. The business has produced and distributed soft drinks under the VIRGIN name in the United Kingdom since 1994 and has a portfolio of over twenty drinks.
The Virgin Group, in association with William Grant of Scotland, has produced and distributed Virgin Vodka in the United Kingdom since 1994.
In March 1995, Virgin Direct was launched to sell financial services by telephone at a significantly lower cost than traditional finance services companies. It now has in excess of Ј2 billion of funds under management and in 1998 had a United Kingdom turnover of over Ј550 million.
In addition the Virgin Group has interests in the operation of airships and hot air balloons through Virgin Balloon Flights Limited, which started business in 1994. In 1998, its worldwide turnover was nearly Ј2 million.
Virgin Cinemas Limited, a joint venture between the Virgin Group, a major United States investment fund called TPG Partners and Hotel Properties Limited, was sold to the French Cinema Group UCG at the end of 1999. At that time, there were 20 cinemas throughout the United Kingdom trading under the VIRGIN name.
Virgin Net was launched at the end of 1996 as an internet service provider to enable new and experienced users to get the most out of the Internet and to explore the World Wide Web. At present there are over 500,000 subscribers to Virgin Net, which is currently the United Kingdom's third largest ISP. In 1997, its first full year of business, Virgin Net’s turnover was almost Ј1 million.
Also in 1996, Virgin Bride opened in London and is now one of the largest bridal retail outlets in Europe. United Kingdom turnover in 1998 was nearly Ј700,000.
Virgin Travel Group acquired Euro Belgian Airlines early in 1998 and has renamed the business Virgin Express. Virgin Express is a short haul airline based in Belgium which offers a low cost, no frills service and flies from Brussels to Madrid, Barcelona, Rome, Milan, Vienna and Nice.
Virgin Rail Group Limited, established in early 1997, controls two domestic rail franchises, West Coast Trains which runs trains from London to Glasgow via Birmingham and Manchester and Cross Country Trains which runs trains throughout the United Kingdom. Virgin Rail carries over 30 million passengers a year in the United Kingdom.
In November 1999, Virgin entered a joint venture with the telecommunications business, One 2 One, to provide Virgin branded mobile telecommunications services through Virgin Mobile Telecoms. Virgin Mobile Telecoms now has over 230,000 customers in the United Kingdom.
A fitness and health club business, Virgin Active, was launched towards the end of 1999 and its first premises opened in Preston, and a subsequent center opened in Leeds in 2000. Further expansion is planned during 2001.
Virgin is one of the United Kingdom's largest private corporate groups and has achieved growth from a sales turnover in 1983 totaling Ј50 million, to a turnover in 1994 exceeding Ј1.4 billion. It is a huge task to obtain details of the Group’s total turnover and this exercise has not been conducted for a number of years. Total turnover, however, for the group in 1997 exceeded Ј2.1 billion and in 1998 exceeded Ј2.5 billion. Estimates for 2000 are in excess of Ј3.2 billion. These figures do not include all the turnover of goods and services provided under the VIRGIN trademark under licence to others and specifically exclude the substantial turnover figures of Virgin Records and Virgin Interactive Entertainment. As a group, Virgin currently employs over 30,000 staff and operates in over 20 countries across the world.
In June 1996, Virgin began operation of its own Internet Website, identified by the domain name VIRGIN.COM. As well as providing general corporate information on the group, the site has specific links to Web pages for many of the companies in the Virgin Group, including Virgin Megastore, VAA, Virgin Net, Virgin Hotels, Virgin Ultimate, Virgin Radio and Virgin Balloon Flights. Currently, the VIRGIN.COM website receives around 3 million hits per month.
The Virgin group is an entity which deals with and depends upon the general public for its business. In doing so, it trades very much upon the VIRGIN name, which has enormous goodwill with the public and is associated with an extremely wide variety of products and services. It is worth recording that public recognition of both the VIRGIN name and that of Sir Richard Branson is at an extraordinarily high level. A survey conducted by the UK Public Relations magazine, PR Week, in 1995 showed that over 90% of the public recognized the VIRGIN name.
The Virgin group’s reputation is not, therefore, limited to any particular area or activity. The history of the Virgin group shows that it has always been interested in developing new products and services and expanding its market place, whilst relying on the VIRGIN name to rally support to the particular new enterprise or market place.
All types of media are used by the various Virgin companies within the markets in which they operate. For example, VAA uses television and print media in the United Kingdom, United States of America, Japan, South Africa, China and Hong Kong. Every Virgin company, particularly those in the retail field, makes extensive use of print media in every country in which Virgin trades. The same is also true with regard to Virgin’s activities in the electronic, entertainment, mobile telecommunications, personal finance and computer games markets. Smaller Virgin operations predominantly use specialist print media in the markets in which they operate.
The Complainant owns approximately 1,400 trade and service mark applications and registrations for the VIRGIN Trademark in over 123 countries for a wide variety of goods and services. In the United Kingdom alone, the Complainant owns over 30 trademark registrations for the VIRGIN word on its own.
The Complainant is registrant of many hundreds of domain names, the majority of which include the VIRGIN name.
The Respondent’s Activities
On June 12, 1999, the Respondent registered the domain name <virginmobile.net>. This was many years after both the establishment of the Virgin group’s substantial reputation for a wide variety of goods and services and the registration of numerous United Kingdom and worldwide trademarks incorporating the VIRGIN name. Furthermore, between October 1998 and the end of April 1999, before the official launch of Virgin Mobile Telecoms, there was a considerable amount of press coverage concerning the proposed venture.
The Respondent first came to the Complainant’s attention on July 14, 2000, when Virgin Mobile Telecoms were considering the registration of additional domain names to <virginmobile.com>, which had been registered by the Complainant for Virgin Mobile Telecoms on July 1, 1998.
The Complainant, following its normal course of action against third parties who it believes are infringing its rights, sent a letter on July 26, 2000, to the Directors of the Respondent, requesting transfer of the domain name <virginmobile.net>.
No response was received to that letter by the imposed deadline of August 9, 2000. A further letter was sent by recorded delivery to the Respondent on August 22, 2000, attaching the Complainant’s previous letter of July 26, 2000. No response was received to this letter.
The Complainant then instructed its authorized representative in this Complaint, Harbottle & Lewis solicitors, to write a letter of claim requesting that the Respondent refrain from using the domain name <virginmobile.net>, and requesting undertakings including transfer of the domain name. Accordingly, on September 5, 2000, a letter of claim and form of undertaking was sent to the Directors of the Respondent.
No response was received from the Respondents by the Complainant’s authorized representative and a chasing letter was sent on September 15, 2000, by recorded delivery extending the deadline for the undertakings until September 22, 2000
A Mr. Saad of the Respondent left a telephone message in response to receipt of the letter. On September 18, 2000, Joanne Wallace of the Complainant’s authorized representative telephoned Mr. Saad, in order to discuss the letter of claim and undertakings. Mr. Saad was not available and Joanne Wallace left a message for him to return the call.
On September 21, 2000, Mr. Saad of the Respondent returned the telephone call. Mr. Saad explained to Joanne Wallace that he had registered the domain name for a client of his and that he was prepared to transfer it to the Complainant because his client had not paid him for it. Mr. Saad then went on to say that he did not consider that the Complainant’s trademark had been infringed but that he was prepared to transfer it in return for payment. The authorized representative explained that the Complainant did not as a matter of policy pay trademark infringers to transfer domain names but that they may be prepared to pay the Respondent’s reasonable transfer fees. In response to this, Mr. Saad said that his client owed him Ј7,500 and that this was the figure he would like to start negotiations with. The authorized representative stated that this was not a reasonable or realistic figure, but that Mr. Saad’s request would of course be relayed on to the Complainant.
The Complainant’s authorized representative then took instructions from the Complainant and following this wrote back to the Respondent in a letter dated September 22, 2000, which was sent by recorded delivery. In this letter the authorized representative stated that the Complainant was prepared to pay Ј150, as reimbursement of the Respondent’s registration and notarization costs for the transfer of the domain name and as consideration for the signed undertakings enclosed in with the letter of claim dated September 5, 2000.
The Respondent then wrote to the Complainant’s authorized representative in a letter dated September 26, 2000. In this letter, the Respondent gave the details of the customer on whose behalf it had purportedly registered the domain name <virginmobile.net>, and stated that the domain name was in the process of being transferred into the customer’s name. The customer was named as Mr. Mohammad Din of Cybernet Systems (UK) Limited. Despite this assertion, at all times since that date, Whois details have indicated that the Respondent has remained the registrant of the domain name.
On October 4, 2000, Joanne Wallace of the Complainant’s authorized representative then called Mr. Saad to clarify the position on ownership of the domain name. Mr. Saad was unavailable. Joanne Wallace left a message for Mr. Saad but the call was not returned.
On October 10, 2000, the Complainant’s authorized representative then sent a letter to Mr. Saad requesting him to confirm that he would not in the future register any other domain names for third parties, which included the VIRGIN name or anything colourably similar to it. No response was received to this letter.
On October 10, 2000, the Complainant’s authorized representative then sent a letter of claim and undertakings to the Respondent’s purported customer, Mr. Mohammed Din of Cybernet Systems (UK) Limited. In this letter, Mr. Din was given a deadline of October 18, 2000, by which to give the undertakings requested.
Since October 18, 2000, the Complainant’s authorized representative has entered communication with Mr. Din and subsequently his solicitors, Mischon de Reya. Through correspondence and telephone conversations between the Complainant’s authorized representatives and Mischon de Reya, Mr. Din has made various offers to sell the domain name to the Complainant. Initially, Mr. Din’s solicitors indicated on the telephone that their client would probably transfer the domain name for about Ј5000. This sum was reduced and the last offer made by Mischon de Reya to the Complainant’s authorized representative in a telephone conversation on February 12, 2001, was Ј1,500. It has never been made clear, however, by the Respondent, Mr. Din nor Mr. Din’s solicitors what Mr. Din’s interest is, if any, in the domain name nor the purpose for which it was registered. The Respondent is, and has been at all times since the Complainant’s initial correspondence, registrant of the domain name. Furthermore, it is not clear what the relationship is between Mr. Din and the Respondent.
In a final attempt to seek transfer of the domain name from the registrant without recourse to proceedings, the Complainant’s authorized representative sent a final letter to the Respondent on June 18, 2001. No response has been received to date.
No further correspondence has passed between the Complainant and the Respondent. At the date of filing this Complaint the domain name <virginmobile.net> was still registered in the name of the Respondent.
In accordance with Rules, para. 3(b)(ix), the Complainant seeks to rely on the following legal grounds on which the complaint is made.
Confusingly Similar Nature
The domain name <virginmobile.net> contains a word identical to the Complainant’s trademark VIRGIN with no relevant distinguishing matter. As Virgin has established, in particular, a reputation in the mobile phone industry through the Virgin Mobile Telecoms business, there is potential for confusion amongst the public who have become accustomed to seeing the VIRGIN mark used in association with the generic suffixes "mobile" and "mobile telecoms" to describe its mobile telecommunication products and services. The domain name is therefore confusingly similar to the trademark VIRGIN in which the Complainant has registered and unregistered/common law trademark rights. Accordingly, the provisions of paragraph 4(a)(i) of the Policy are satisfied.
The Respondent has no rights or legitimate interests in respect of the domain name <virginmobile.net> pursuant to the Policy paragraph 4(a)(ii) as evidenced by the fact that:
(i) the Respondent has no relationship with or permission from the Complainant for the use of the mark VIRGIN MOBILE nor has the Complainant consented to the Respondent’s application for registration of, or use of, any domain name incorporating that mark;
(ii) the domain name was registered by the Respondent on June 12, 1999. At this time the Complainant and the Virgin group had a very considerable reputation in the VIRGIN name in the United Kingdom and elsewhere. At that time the Complainant had both United Kingdom and overseas registered trademark rights in the VIRGIN name and had common law trademark rights in the name which it had been accruing since the early 1970’s. Furthermore, there had been considerable media coverage in the United Kingdom concerning Virgin’s proposed mobile telecoms venture shortly before the domain name was registered;
(iii) as far as the Complainant is aware there is no evidence of the Respondent’s use of or demonstrable preparations to use the domain name in connection with a bona fide activity. As at the date of filing the complaint, the domain name did not access an active web site. The Complainant also contends that any commercial activity under the VIRGIN name without licence or authority from the Complainant is not bona fide due to the strength of its common law and registered trademark rights;
(iv) as far as the Complainant is aware the Respondent is not commonly known by the domain name and submits that this is highly unlikely bearing in mind the substantial goodwill established by the Complainant in the trademark to date and its rigorous policing of the VIRGIN mark;
(v) the Complainant is not aware that the Respondent is making a legitimate non-commercial or fair use of the domain name or without intent for commercial gain and the Complainant submits that any use of the domain name by the Respondent is likely to misleadingly divert consumers or to tarnish or otherwise dilute the Complainant’s well known registered trademark. Furthermore, as set out in paragraph 56 of the Complaint above, Mr. Saad of the Respondent, in a telephone conversation with Joanne Wallace of the Complainant’s authorised representative, indicated he would start negotiations for the sale of the domain name at Ј7,500.
The Complainant contends that the Respondent has registered and is using the domain name in bad faith in violation of the Policy at paragraph 4(a)(iii) on the following grounds:
(i) At the time of the registration of the domain name by the Respondent the mark VIRGIN was well known both in the United Kingdom and overseas. The Complainant had created substantial goodwill in the mark and had trademark rights which were first registered in the early 1970’s;
(ii) It is beyond reasonable belief that the Respondent registered the domain name without the Complainant or the Virgin group in mind. Further, at the time the Respondent registered the domain name, there had been much media coverage around the time of registration of the domain name of the Virgin Group’s intention to move into the mobile telecommunications industry;
(iii) From the evidence, the Complainant has reason to believe that the domain name was registered in order to hold the Complainant to ransom by forcing them to buy the domain name at a price. As already mentioned in a telephone conversation between Joanne Wallace of the Complainant’s authorised representative and Mr. Saad of the Respondent, the Respondent made it clear that it sought compensation for any transfer of the domain name for Ј7,500, a figure far in excess of any reasonable out of pocket expenses.
The Complainant relies on the following decisions of the Administrative Panel in accordance with the Policy in respect of the present Complaint as follows:
- The Respondent in the present case has not provided evidence that it is commonly known by the domain name <virginmobile.net> nor that it was making legitimate non-commercial or fair use of the domain name without intent for commercial gain as set out in Administrative Panel Decision Yahoo Inc v. Jorge O Kirovsky, WIPO Case No. D2000-0428. The Panel in that case considered that the use of the non-distinctive words "mail" and "chat" added to the name YAHOO in the domain names registered by the Respondent rendered the domain names confusingly similar to the Complainant’s mark YAHOO, particularly as the non-distinctive words were closely associated with the Complainant’s business;
- the Complainant also relies on Administrative Panel Decision in GA Modefine SA v. AES Optics, WIPO Case No. D2000-0306, which concerned the domain name <armani-sunglasses.com>. In considering whether the registration and use of the domain name was carried out in bad faith the Panel stated:
"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".
- the Complainant further relies on Administrative Panel Decision in E Auto Inc v. available–domain–names.com, WIPO Case No. D2000-0120, concerning the domain name <e-auto-parts.com>. The Panel considered that an offer by the Respondent to sell the domain name in question at a price in excess of its actual registration costs was a fact which supported a finding of bad faith. The reasoning in the Administrative Panel Decision in WIPO Case No. D2000-0120 has been followed in the National Arbitration Forum decisions of David G. Cook v. This Domain Is For Sale, FA94957 and Michelle Barry v. For Sale, FA95110
United Kingdom Case Law
United Kingdom law, where the Complainant and Respondent are both domiciled, supports the Complainant’s claim that the Respondent has no rights in the domain name and the domain name should be transferred to the Complainant.
The Complainant cites the English Court of Appeal decision in British Telecommunications plc and Others v. One in a Million Limited (1999) FSR page 1 C.A. (the "One in a Million Case"). The Panel should note that the Complainant was one of the successful Claimants in this case. This case upheld both the fundamental principle that nobody has any right to represent his goods as the goods of somebody else (A.G.Spalding & Bros v. A.W.Gamage Limited (1915) 32 RPC 273 at 283) and that the mere registration of a domain name, which incorporates a well known trademark, in itself amounts to passing-off and trademark infringement.
The Court of Appeal confirmed that the trade names in question in the "One in a Million Case", including the VIRGIN name, were "well known "household names" denoting in ordinary usage the respective Respondent".
Furthermore, "The placing on a register of a distinctive name makes a representation to persons who consult the register that the registrant is connected or associated with the name registered and thus the owner of the goodwill in the name". The Complainant contends that, as evidenced by its successful claim in the "One in a Million Case", it clearly has a cause of action to prevent unauthorized use of the mark in passing-off and trademark infringement under English law.
The Respondent has not filed a formal Response and is in default.
6. Discussion and Findings
According to paragraph 4(a) of the Uniform Dispute Resolution Procedure Policy, the Complainant must prove that:
(i) The 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.
A. Identical or confusing similarity
The Domain Name contains the Complainant’s VIRGIN mark and, as such, is confusingly similar to that mark. The addition of the word "mobile" does nothing to prevent the confusing similarity of the Domain Name with the Complainant’s trademarks, especially as the mobile phone market sector is a trading activity for which one of the companies in the Complainant’s group, Virgin Mobile Telecoms Limited, is known.
B. Rights or Legitimate Interest of the Respondent
The Respondent has not filed a Response and does not appear to have any rights or legitimate interest in the Domain Name.
C. Bad Faith
Paragraph 4(b) of the Rules sets out four non exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including "the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name".
In the absence of a Response from the Respondent, there appears to be no explanation of the facts as disclosed by the Complaint other than that the Respondent registered the Complainant’s trademarks as part of the Domain Name with an intent to use it to demand unwarranted profit in bad faith with the Complainant primarily in mind.
In the light of the foregoing, the panelist decides that the Domain Name is confusingly similar to the Complainant’s trademark and the Respondent has no rights or legitimate interests relating to the Domain Name which was registered and used in bad faith.
Accordingly, in the light of the above, the panelist requires that the registration of the Domain Name <virginmobile.net> BE TRANSFERRED to the Complainant.
Dated: August 8, 2001