WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. On behalf of virgnimedia.com Owner, c/o whoisproxy.com / Tulip Trading Company

Case No. D2018-1135

1. The Parties

The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Stobbs IP Limited, United Kingdom.

The Respondent is On behalf of virgnimedia.com Owner, c/o whoisproxy.com of Alexandria, Virginia, United States of America / Tulip Trading Company of Charlestown, Nevis, Saint Kitts and Nevis.

2. The Domain Name and Registrar

The disputed domain name <virgnimedia.com> is registered with Key-Systems GmbH dba domaindiscount24.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 21, 2018. On May 22, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 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 May 30, 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 June 4, 2018.

The Center verified that the Complaint together with the amended 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 June 5, 2018. In accordance with the Rules, paragraph 5, the due date for the Response was June 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 26, 2018.

The Center appointed Charles Gielen as the sole panelist in this matter on July 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.

4. Factual Background

The Complainant contends that it owns the intellectual property rights of a group of companies (referred to as “the Virgin Group of Companies”) having diverse operations but all doing business by reference to the trade mark VIRGIN and that it is the proprietor of an international portfolio of registrations for VIRGIN and VIRGIN – formative trade marks, including VIRGIN MEDIA. The latter mark is registered, among others, as an European Union trade mark on October 14, 2015 under No. 013867478 for goods in class 9 and services in classes 35,36,38,41 and 42.

The disputed domain name <virgnimedia.com> was created on June 12, 2017 and resolves to a website displaying pay-per-click advertisements.

5. Parties’ Contentions

A. Complainant

The Complainant owns the trade mark rights of the Virgin Group of Companies. The Virgin Group of Companies originated in 1970 when Richard Branson began selling music records under the trade mark VIRGIN and since that date it has expanded into a wide variety of businesses. As a result, the Virgin Group of Companies now comprises over 60 businesses worldwide, operating in 35 countries including throughout Europe, the United States of America, and Australasia. The number of employees employed by the Virgin Group of Companies is in excess of 69,000, generating an annual group turnover in excess of GBP 16.6 billion. Virgin Media is a British company and part of the Virgin Group of Companies. It provides fixed and mobile telephone, television and broadband Internet services to business and domestic consumers. As at March 7, 2017, Virgin Media has over 3 million mobile users, 5.7 million cable TV customers nationwide and services over 50,000 businesses nationwide. Customers can book the various services offered via the website “www.virginmedia.com”.

The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trade marks and in particular to the trade mark VIRGIN MEDIA. The only difference is in fact that the letter “i” in the word “virgin” in the disputed domain name has been moved so that instead of sitting between the “g” and the “n”, the word “virgin” is misspelt and the “i’ sits between the letter “n” and the letter “m” of the word “media” in the disputed domain name. According to the Complainant, the disputed domain name is an obvious example of typosquatting. The Complainant submits that when included in the lower case format of a domain name, the fact that the “i” is in a slightly different position within the word “virgin” does not make any difference to the overall impression of the disputed domain name to the user.

Furthermore, the Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name, because the Respondent is not known by the disputed domain name, has not been authorized by the Complainant to use the trade mark VIRGIN MEDIA in any way and is not using the disputed domain name in connection with a legitimate offering of goods or services.

Finally, the Complainant argues that the Respondent registered and is using the disputed domain name in bad faith. Among others, the following reasons are given. First of all the Complainant contends that it is highly likely that the Respondent was aware of the Complainant and its businesses at the date on which the disputed domain name was registered given that the Complainant’s business for which the trade mark VIRGIN MEDIA is used, was established a decade prior to the registration of the disputed domain name.

Secondly, the Complainant submits that the primary purpose for which the disputed domain was registered was to intentionally attempt to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the Complainant’s trade 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. This is confirmed by the Respondent’s use of the disputed domain name, since the disputed domain name is a quite obvious example of typosquatting, as it is a misspelling of the trade mark VIRGIN MEDIA. The disputed domain name will inevitably lead Internet users to mistakenly arrive at the website “www.virgnimedia.com” with the expectation that the website is owned by the Complainant. The disputed domain name also resolves to a page with pay-per-click advertising from which the Respondent financially benefits. Finally, the Complainant argues that the Respondent is involved in a pattern of behavior of registering domain names in bad faith which follows, among others, from a Whois search revealing that the Respondent has registered 31 other domain names which contain reference to the Complainant’s trade marks (or slight miss-spellings thereof) as well as from previous Panel decisions in which the Respondent was involved and in which it was held that the Respondent acted in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Panel is of the opinion that the Complainant’s contentions are reasoned and that the disputed domain name should be transferred to the Complainant pursuant to the Policy.

A. Identical or Confusingly Similar

The Complainant proves that it has rights in the trade marks VIRGIN and VIRGIN MEDIA based on a number of registrations in the world. The term “virgni” is very similar to the trade mark VIRGIN and should be considered as a clear misspelling of that mark. The term “media” is identical to the second element of the trade mark VIRGIN MEDIA. So, the Panel finds that the term “virgnimedia” is confusingly similar to the trade marks of the Complainant. The added suffix “.com” does not change the finding that the disputed domain name is confusingly similar, since the suffix “.com” is understood to be a technical requirement. In making the comparison between the trade marks and the disputed domain name, the generic Top-Level Domain (“gTLD”) “.com” is disregarded. The Panel is of the opinion that applying these principles to this case, the disputed domain name is confusingly similar to the trade marks.

Therefore, the requirement under paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

The Panel is of the opinion that the Complainant made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The disputed domain name was registered long after the Complainant started to use the trade marks VIRGIN and VIRGIN MEDIA. The Panel is convinced that the term “virgnimedia” in the disputed domain name has no other meaning except to refer to the Complainant and its businesses. Furthermore, the Respondent did not give evidence that it was known by the disputed domain name or that it was authorized by the Complainant to use the trade mark VIRGIN MEDIA in any way, or that it is using the disputed domain name in connection with a legitimate offering of goods or services. Finally, the Respondent has not come forward claiming any rights or legitimate interests and the Panel does not find so in the present record.

In view of the aforementioned, the Panel is of the opinion that the requirement of paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

The Panel is of the opinion that the disputed domain name was registered and is being used in bad faith.

The main reasons for this conclusion are as follows. The trade marks VIRGIN and VIRGIN MEDIA were publicly used long before the Respondent registered the disputed domain name. The intention of the Respondent is to mislead consumers in believing that the disputed domain name is in one way or the other connected to the Complainant and its business. The Respondent is undoubtedly trying to attract, for commercial gain, Internet users and consumers by creating a likelihood of confusion with the Complainant and its business. This intention follows from the fact that the Respondent is using a domain name that is a clear example of typosquatting. Furthermore, the Respondent is using the disputed domain name for pay-per-click advertising, thus financially benefitting from the use of the disputed domain name. Finally, the Panel observes that the conduct of the Respondent fits in a pattern of conduct of cybersquatting that the Respondent has shown before, which was confirmed in a number of previous UDRP decisions.

The Panel therefore considers the requirement of paragraph 4(a)(iii) of the Policy to be met.

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 <virgnimedia.com> be transferred to the Complainant.

Charles Gielen
Sole Panelist
Date: July 14, 2018