Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Stobbs, United Kingdom.
Respondent is Ghettoloaded Corplet of Enugu, Nigeria.
The disputed domain name <virginmusics.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 29, 2018. On March 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 30, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on April 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 30, 2018.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on May 4, 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.
Complainant is the brand owner for the Virgin Group of Companies.
Complainant has provided a list of registrations for the VIRGIN trademark in a substantial number of countries, including Nigeria, and has referred to a “validated entry made at the TMCH” for the VIRGIN trademark. Complainant has submitted a Witness Statement from an employee (i.e.,Trademark Assistant) of an affiliate of Complainant to “establish my Company’s reputation in its VIRGIN and Virgin Signature trademarks throughout the world”.
Complainant is owner of registration for the trademark VIRGIN on the register of the UK Patent Office, registration number UK1009534, registration dated April 11, 1973, in international class 9, covering “sound recordings in the form of discs”.1
Complainant through its affiliated enterprises owns and operates several businesses that provide music -related goods and services, including Virgin Records and Virgin Radio. Complainant’s branded music-related goods and services are known in Nigeria through social media and other presence. From 2004 to 2008, Complainant operated an airline service under the Virgin Nigeria brand, and today operates daily flights from London to Lagos through Virgin Atlantic Airways.
According to the Registrar’s verification, Respondent is the owner of registration of the disputed domain name. According to that verification, the disputed domain name was registered by Respondent on May 26, 2017.
Respondent has used the disputed domain name to direct Internet users to a website homepage headed with the term “virginmusics”. The identified website appears to provide music streaming services.2 At the bottom of the website homepage the following copyright notice appears:
“Copyright © 2018 World Best Virgin Musics Website. All rights reserved.
Site Design by: DJ-Corplet. Powered by VirginMusics.com.”
Several prior UDRP panel decisions under the Policy have acknowledged Complainant’s rights in the VIRGIN trademark. See, e.g., Virgin Enterprises Limited v. George Kwesivic, WIPO Case No. D2017-0997.
The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).
Complainant alleges that it owns rights in the VIRGIN trademark, which is commonly used in combination with an additional element to form, for example, VIRGIN ATLANTIC, VIRGIN MEDIA, VIRGIN RADIO.
Complainant contends that the disputed domain name is confusingly similar to its VIRGIN trademark, particularly insofar as the term “musics” is an obvious misspelling of the term “music”, which latter term is descriptive of lines of business in which Complainant is active. According to Complainant, the additional term does not distinguish the disputed domain name from Complainant’s VIRGIN trademark.
Complainant alleges that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Complainant has not authorized Respondent to use its VIRGIN trademark; (2) Respondent has no trademark registrations for VIRGIN or VIRGIN MUSICS, nor is VIRGIN MUSICS the business name of Respondent, and; (3) Respondent is not making a legitimate noncommercial or fair use of the disputed domain name.
Complainant argues that Respondent registered and is using the disputed domain name in bad faith because: (1) Complainant has been a well-known presence in the music industry since 1970; (2) VIRGIN, VIRGIN RECORDS and VIRGIN RADIO are globally well-known; (3) VIRGIN RECORDS and VIRGIN RADIO have a wide and conspicuous presence on social media platforms which can be accessed anywhere in the world; (4) Complainant and its association in the music industry are known by the public in Nigeria; (5) Respondent is using the domain name intentionally to attract for commercial gain Internet users by creating a likelihood of confusion with Complainant and its mark, and; 6) Google Chrome is warning that the website associated with the disputed domain name is a “deceptive site ahead”.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent did not reply to Complainant’s contentions.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of a proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center formally notified the Complaint to Respondent at the email and physical addresses provided in its record of registration. There is no indication on the record of this proceeding that email transmission of the Complaint to Respondent encountered any difficulty. It appears that the express courier delivery service engaged by the Center was able to deliver the hard copy Complaint to Respondent. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps are presumed to satisfy notice requirements.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
Complainant has submitted evidence of rights in the word trademark VIRGIN, including by registration at the UK Intellectual Property Office, and through use in commerce. Respondent has not challenged those rights. The Panel determines that Complainant has rights in the trademark VIRGIN.
The disputed domain name incorporates Complainant’s VIRGIN trademark in its entirety, and adds the term “musics”. The added term appears to be a deliberate misspelling or alternative form of “music”, that is nonetheless readily identifiable as descriptive of “vocal, instrumental, or mechanical sounds having rhythm, melody, or harmony”.3 Complainant is associated with the provision of goods and services relating to music, and the combination of Complainant’s VIRGIN trademark with the common descriptive (albeit misspelled or alternative) term “musics” is likely to be associated by Internet users with Complainant. The Panel determines that the disputed domain name is confusingly similar to Complainant’s trademark.
The Panel determines that Complainant has rights in the VIRGIN trademark and that the disputed domain name is confusingly similar to that trademark.
Complainant’s allegations to support Respondent’s lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has not replied to the Complaint and has not attempted to rebut Complainant’s prima facie showing of lack of rights or legitimate interests.
Respondent is using the disputed domain name that is confusingly similar to Complainant’s trademark to operate a music streaming website that is directly competitive with Complainant’s music-oriented goods and services. Respondent knew or should have known of Complainant’s trademark and services when it established its website and services. Respondent’s website cannot be considered the bona fide provision of goods or services prior to notice of a dispute. Respondent’s website is commercial in nature, including offering opportunity for third-party advertisement. Respondent is not using Complainant’s VIRGIN trademark for noncommercial or fair use purposes.
Respondent’s use of the disputed domain does not on its face otherwise suggest rights or legitimate interests.
The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.
The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include circumstances indicating that “by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with [Complainant’s] mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] website or location or of a product or service on [Respondent’s] website or location” (Policy, paragraph 4(b)(iv)).
Respondent has registered and used the disputed domain name which is confusingly similar to Complainant’s trademark to establish a website that is competitive with Complainant’s long-established business. Respondent has used Complainant’s trademark to identify Respondent as the copyright owner of Respondent’s website, heightening the confusion as between Respondent and Complainant as the source or sponsor of the website. Respondent registered and is using the disputed domain name to intentionally attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant as the source, sponsor, affiliate or endorser of Respondent’s website. The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of the Policy.
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, <virginmusics.com> be transferred to the Complainant.
Frederick M. Abbott
Date: May 7, 2018
1 The Panel undertook to verify Complainant’s ownership of the registration as indicated in the text, Panel visit to UK Intellectual Property Office website of May 6, 2018, “https://www.gov.uk/search-for-trademark”. The Panel relies on that registration in this decision.
2 Complainant provided a truncated screenshot of the front webpage of Respondent's website, and indicated that the website was subject to a “deceptive site ahead” warning when access is attempted through the Google Chrome browser. The Panel visited the homepage of the website, Panel visit of May 6, 2018 (using Firefox). The Panel did not attempt to click-through any of the links on the website.
3 See “https://www.merriam-webster.com/dictionary/music”, noun, definition 1(b).
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