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 Chen Jin Zhu / 陈进柱 of Guangzhou, Guangdong, China, self-represented.
The disputed domain names <virginai.com> and <virginbot.com> are both registered with HiChina Zhicheng Technology Ltd. (the "Registrar").
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 10, 2017. On the same day, the Center transmitted by email to the Registrar a request for verification in connection with the disputed domain names. On March 14, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant for both disputed domain names and providing the contact details.
On March 14, 2017, the Center sent an email communication to the Parties in both Chinese and English regarding the language of the proceeding. On March 15, 2017, the Complainant requested that English be the language of the proceeding. On March 14 and March 16, 2017, the Respondent requested that Chinese 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 in both Chinese and English of the Complaint, and the proceedings commenced on March 22, 2017. In accordance with the Rules, paragraph 5, the Response in Chinese was filed with the Center on April 8, 2017, before the due date (April 11, 2017).
The Center appointed Matthew Kennedy as the sole panelist in this matter on April 18, 2017. 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.
The Complainant is the brand owner for the Virgin Group of companies. The Complainant is the owner of multiple registrations of the trademark VIRGIN in different jurisdictions including United States of America trademark registration number 1413664, registered from October 14, 1986, specifying services in class 39; United States of America trademark registration number 1469618, registered from December 22, 1987, specifying goods in class 9; European Union trademark registration number 000217182, registered from September 4, 1998, specifying goods in class 9; and European Union trademark registration number 000611459, registered from January 26, 1999, specifying services in class 38. Those trademark registrations remain current. The Complainant's licensees have made extensive use of the VIRGIN trademark over many years in relation to a wide range of goods and services. The Complainant operates a website at "www.virgin.com", which it registered in May 1999, where it provides information about the Virgin brand and Virgin-branded businesses. The Complainant has also registered a large number of other domain names that contain the Virgin brand and an additional element, such as <virginair.com>, <virginboat.com>, <virginhost.com> and <virginsoft.com>.
The Respondent is an individual located in China and the registrant of the disputed domain names. He describes himself as a programmer. His email address is associated with approximately 25 other domain name registrations.
The disputed domain name <virginai.com> was registered on July 2, 2016 and the disputed domain name <virginbot.com> was registered on April 11, 2016. Neither disputed domain name resolves to an active website.
The disputed domain names are confusingly similar to the Complainant's VIRGIN trademark. The Complainant has a significant portfolio of trademark applications and registrations, a reputation in the VIRGIN brand and a likelihood of confusion does exist in relation to domain names comprising "virgin" and an additional element.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. Bearing in mind the reputation of the Virgin brand and the Complainant's operations in a wide range of activities since as early as 1970, there is no believable or realistic reason for registration or use of the disputed domain names other than to take advantage of the Complainant's rights. The Respondent is not using the disputed domain names in relation to a bona fide offering of goods and services. The Respondent is not commonly known by the name "Virgin". The Respondent has no trade mark registrations for VIRGIN. The Respondent is not making a legitimate or fair use of the disputed domain names.
The disputed domain names were registered and are being used in bad faith. Given the scale of the Complainant's operation, and the fame of its Virgin brands, it is inconceivable that the Respondent would not have known about the Complainant's brands prior to registering the disputed domain names. The Respondent could have reasonably surmised that the registrations would come to the Complainant's attention, and would have hoped that the Complainant could be persuaded to purchase the disputed domain names from him for more than the out-of-pocket costs of acquiring the disputed domain names.
Although the Complainant enjoys trademark rights in VIRGIN in a number of areas, the Respondent questions whether the Complainant enjoys those rights in emerging areas such as artificial intelligence. The Respondent suspects that the Complainant is abusing its trademark rights through an excessive interpretation that any word containing "virgin" infringes its rights. "Virgin" is an ordinary English word, not invented by the Complainant and everyone has the right to use it. The Respondent has coined the neologisms "virginai" and "virginbot" with different meanings from "virgin". They represent a "pure robot", rather than "Virgin artificial intelligence", as the Complainant asserts.
The Respondent has rights and legitimate interests in the disputed domain names. "Virgin" is a generic word that everyone has the right to register as a domain name. The registration of the disputed domain names reflect the Respondent's understanding of artificial intelligence, that it is pure and noble. The Respondent hopes that his products will also possess this characteristic. The disputed domain names have nothing to do with the Complainant.
The Respondent did not register and is not using the disputed domain names in bad faith. The Respondent explains that he registered both disputed domain names out of his personal ideal after the AlphaGo artificial intelligence program defeated a human opponent in a match of Go in 2016. He strongly hoped to dedicate himself to artificial intelligence and, after several days of sleepless reflection, he registered the disputed domain names. The Respondent did not register both disputed domain names to sell them for money or to make money from fraud. He has never sold a domain name. His products are not yet online. There is no possibility of making money out of products with the Complainant's brand.
Paragraph 11(a) of the Rules provides that "unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding." The Registrar confirmed that the Registration Agreements for the disputed domain names are in Chinese.
The Complainant requests that the language of the proceeding be English. Its main arguments are that the disputed domain names are both in English and make reference to words in the English language, which demonstrates that the Respondent has a sophisticated awareness of the English language, and that requiring the Complainant to translate the Complaint and other communications into Chinese would place undue burdens on the Complainant and cause undue delay to the proceedings. The Complainant also asserts that the Respondent owns 58 more English language domain names.
The Respondent requests that the language of the proceeding be Chinese. His main arguments are that he does not understand English well enough to understand fully the Complaint; that he is too poor to afford a lawyer and that it would be unfair to him if the language of the proceeding were the opposing party's native language.
Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui'erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.
The Panel observes that the Complaint in this proceeding was filed in English and that the Response was filed in Chinese. The Panel notes that the disputed domain names are comprised solely of English words and abbreviations, including computer programming terms, and that the Respondent chose to register an English version of his name as his email address. This all indicates that the Respondent has at least some familiarity with the English language. Moreover, the Respondent has in fact been able to respond to the Complaint by addressing each of the three elements and providing an explanation for his registration and use of the disputed domain names. The Panel understands both the Complaint and the Response in their original language. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay, whereas accepting the Complaint and the Response as filed causes no unfairness to either Party.
Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. Nevertheless, the Panel will accept the Response, and the communications from the Respondent with the Center, as filed in Chinese.
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following elements:
(i) the disputed domain names are 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 names; and
(iii) the disputed domain names have been registered and are being used in bad faith.
Based on the evidence submitted, the Panel finds that the Complainant has rights in the VIRGIN trademark.
Both disputed domain names wholly incorporate the Complainant's VIRGIN trademark as their initial and dominant element.
Both disputed domain names include an additional element within the second level domain. One includes the element "ai", which is an abbreviation for "artificial intelligence". The other includes the element "bot", which is an abbreviation for "robot" and a generic word that refers to a computer application that performs routine tasks. The Panel finds these elements too minor to distinguish the disputed domain names from the Complainant's trademark. In any case, a generic word is not sufficient to dispel the confusing similarity of the disputed domain names to the Complainant's trademark. See Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110.
The Respondent asserts that the terms "virginai" and "virginbot" have different meanings from "virgin". Even if that were correct, the Panel finds that the Complainant's VIRGIN trademark is clearly recognizable in both disputed domain names on a visual comparison and that confusion remains likely. Therefore, the disputed domain names are confusingly similar to the VIRGIN trademark. See Philipp Plein v. Kimberly Webb, WIPO Case No. D2014-0778.
Both disputed domain names also include the generic Top-Level Domain ("gTLD") suffix ".com". A gTLD suffix is generally disregarded for the purposes of assessing confusing similarity under the Policy. See Lego Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080.
Therefore, the Panel finds that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights or legitimate interests in a disputed domain name for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent's] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
With respect to the first and third circumstances, neither disputed domain name resolves to an active website. There is no evidence of preparations to use the disputed domain names in connection with a bona fide offering of goods or services or of any legitimate noncommercial or fair use. With respect to the second circumstance, the Respondent's name is 陈进柱, which may be transcribed as Chen Jin Zhu, according to the Registrar's WhoIs database, and his email address incorporates the name Pillar Chan. None of these names resembles either of the disputed domain names. There is no evidence that the Respondent operates any business under the Virgin brand. Accordingly, the Panel considers that the Complainant has prima facie discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
In reply, the Respondent correctly submits that the term "virgin" is a dictionary word. However, the evidence does not show that the Respondent is using that term on the basis of its dictionary meaning. The Respondent asserts a connection between the dictionary meaning "pure" or "noble", on one hand, and artificial intelligence and robots, on the other hand. That assertion is unsupported by any evidence and, in the Panel's view, implausible. The Respondent also foreshadows the use of the disputed domain names in connection with products but he provides no evidence of "demonstrable preparations" to use the disputed domain names in connection with a bona fide offering of goods and services. Therefore, the Panel finds that the Respondent has not rebutted the Complainant's prima facie case regarding this element.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy
Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith but these circumstances are not exhaustive. Although the Respondent submits that he has not offered to sell the disputed domain names or make money from fraud, that does not exclude a finding of registration and use in bad faith.
With respect to registration, the Panel observes that the disputed domain names incorporate the Complainant's VIRGIN trademark, with only minor additional elements besides the gTLD suffix. The disputed domain name registrations postdate the Complainant's trademark registrations by many years. There is no evidence that the Respondent was authorized by the Complainant to register the disputed domain names. The Respondent registered not one but two disputed domain names that included the word "virgin" as their initial and dominant element. The Respondent's explanation that he saw a connection between the dictionary meaning of the word "virgin" as pure or noble, and artificial intelligence and robots is, in the Panel's view, implausible. Given the fame of the Complainant's VIRGIN trademark in connection with a wide range of goods and services, the Panel finds that the most likely explanation for the Respondent's choice to include the word "virgin" in the disputed domain names was an attempt to target that word's trademark meaning. In view of these circumstances, the Panel finds that the Respondent registered the disputed domain names in bad faith.
With respect to use, the Respondent makes only passive use of the disputed domain names but this does not preclude a finding of use in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the present dispute, the Complainant has a strong reputation in its VIRGIN trademark which is widely known in connection with a wide range of goods and services. The disputed domain names wholly incorporate the Complainant's VIRGIN trademark except for the addition of the minor additional elements "ai" or "bot" and a gTLD suffix. Given these circumstances and the findings in Section 6.2B above, the Panel finds that the disputed domain name is being used in bad faith. The Respondent's implausible explanation for his choice of the disputed domain names confirms the Panel's finding in this respect.
Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 names <virginai.com> and <virginbot.com> be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: April 28, 2017