WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. Mars Out

Case No. D2017-2335

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 Mars Out of Italy / Portland House, Gibraltar, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland.

2. The Domain Name and Registrar

The disputed domain names <virgin-bet.com>, <virgin-bet.net>, <virginbet.net>, <virgin-casino.net>, <virginfair.com> are registered with EuroDNS S.A. (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on November 24, 2017. On November 24, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 27, 2017 and December 6, 2017, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on December 11, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 5, 2018.

The Center appointed Halvor Manshaus as the sole panelist in this matter on January 18, 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 is a member of a group of companies known collectively as the Virgin Group. The Complainant is responsible for the ownership, management and protection of trademarks and intellectual property and associated goodwill in the Virgin name and associated marks on behalf of its licensees. In the decision, a reference to the Complainant shall also be considered as a reference to the Virgin Group, where appropriate.

The Complainant's business focuses on travel and leisure, telecommunications, music and entertainment, financial services and health and wellness. In 2016, the Complainant had 60 million customers worldwide, 71,000 staff and a revenue of USD 24 billion. The Complainant also runs a number of charitable foundations, such as Virgin Unite and Virgin Start-Up. There are more than 60 "virgin" branded businesses worldwide, employing in excess of 71,000 people, in 35 countries. Global branded revenues in 2016 were approximately USD 25 billion. "Virgin" branded businesses have been trading since 1970 and continue to do so.

The Complainant owns the word mark VIRGIN, registered inter alia in the European Union (registration No. 005189923), registered on February 5, 2007, inter alia, in class 41 including "gaming services; provision of access to online computer games; betting and gambling services; entertainment services; providing online computer games; provision of online games for remote users or remote competitors." The Complainant has registered similar trademarks in a wide range of jurisdictions worldwide, including Australia, South Africa and the United States of America. The Complainant has also registered other trademarks comprising the term "virgin" in several jurisdictions, inter alia, VIRGIN GAMES. The Complainant also contends to have rights in the mark VIRGIN BET. The Complainant's trademark portfolio contains approximately 3,500 trademark applications and registrations in over 150 countries spanning across the majority of the 45 classes of goods and services.

The Complainant owns over 4,000 domain names incorporating the trademark VIRGIN, inter alia <virgin.com>, <virgingames.org>, <virginlottery.net> and <virgin-casino.com>, through which the Complainant promotes the Complainant's brand and business.

The Respondent is a private individual. The Respondent is listed as the owner of the disputed domain names <virgin-bet.com>, first registered on March 30, 2012, <virgin-bet.net>, first registered on March 30, 2012, <virginbet.net>, first registered on March 30, 2012, <virgin-casino.net>, first registered on March 30, 2012, and <virginfair.com>, first registered on April 24, 2012. As of the date of this decision, none of the disputed domain names point to an active website.

5. Parties' Contentions

A. Complainant

The Complainant contends that the Complainant owns rights in the trademarks VIRGIN and VIRGIN BET, that the public have become accustomed to seeing VIRGIN in connection with the Complainant's business, and that the Complainant has a significant reputation and has built up a vast amount of goodwill in the VIRGIN and VIRGIN BET trademarks.

The Complainant argues that the VIRGIN brand is commonly used alongside an additional element, for example "virgin atlantic", "virgin trains", "virgin holidays", "virgin media", "virgin mobile", "virgin radio", "virgin games" and "virgin casino".

Based on the above, the Complainant contends that the combination of the trademark VIRGIN and the suffixes "bet", "casino" and "fair" can have no other meaning for the public other than as a reference to the Complainant's brand. Thus, the disputed domain names are identical and confusingly similar to trademarks in which the Complainant has rights.

The Complainant states that there exists a significant body of previous decisions, pursuant to which a significant number of domain names have been transferred to the Complainant. Several of these decisions relate to domain names comprising the trademark VIRGIN followed by another element, and this acts to support the Complainant's contentions in the present case.

The Complainant contends that the Respondent has no rights in relation to the Complainant's trademarks, the disputed domain names or the elements which from the disputed domain names. Bearing in mind the massive reputation of the VIRGIN trademark especially in the online gaming and gambling sphere 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 disputed domain names are not being used in relation to a bona fide offering of goods and services and the Respondent is not making legitimate or fair use of the disputed domain names.

The Complainant submits that the registration of the disputed domain names is a classic example of a bad faith registration in accordance with paragraph 4(b) of the Policy. Given the scale of the Complainant's operation and the fame of their VIRGIN trademark, it is inconceivable that the Respondent would not have known about the Complainant's brands prior to registering the disputed domain names. The Respondent also owns 9 other domain names comprising the VIRGIN and VIRGIN BET trademarks, <virgin-bet.co.uk>, <virgin-casino.co.uk>, <virginfair.co.uk>, <virgin-bet.ch>, <virgin-bingo.ch>, <virgin-casino.ch>, <virginbet.ch>, <virgincasino.ch> and <virginpoker.ch>, showing that the Respondent has engaged in a pattern of bad faith registrations of domain names confusingly similar to the Complainant's trademarks.

B. Respondent

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

6. Discussion and Findings

The Complainant has, in accordance with paragraph 4(i) of the Policy, requested that the disputed domain names be transferred to the Complainant.

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain names, the Complainant must establish that each of the three following elements is satisfied for each of the disputed domain names:

(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.

Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

Based on the evidence submitted by the Complainant, describing the Complainant's extensive trademark registrations and associated business, the Panel finds that the Complainant's trademark VIRGIN has gained a significant reputation through decades of use and is well-known throughout the world.

The disputed domain names, <virgin-bet.com>, <virgin-bet.net>, <virginbet.net>, <virgin-casino.net>, <virginfair.com>, comprise the Complainant's trademark VIRGIN in its entirety. The addition of the descriptive suffixes "-bet", "bet", "-casino" and "fair", and the generic Top-Level Domain extensions ".com" or ".net" are insufficient to distinguish the disputed domain names from the Complainant's trademark.

The Panel concludes that each of the disputed domain names is confusingly similar to trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

The Panel has not been presented with, or otherwise discovered, any evidence showing: (i) that the Respondent has received a license or other permission to use the Complainant's trademarks or any domain name incorporating or simulating these marks; (ii) that the Respondent is commonly known by the disputed domain names; (iii) that the Respondent has acquired trademark or service mark rights to use the disputed domain names; or (iv) that the Respondent is making legitimate noncommercial or fair use of the disputed domain names.

The combination of the Complainant's trademark VIRGIN and the descriptive suffixes "-bet", "bet", "-casino" and "fair" in the disputed domain names is understood, in the circumstances, as referring to the Complainant's business. These suffixes refer to one of the Complainant's particular business areas, gambling, which reinforces the connection with the Complainant's business and trademarks.

The presented evidence referred to by the Complainant is, in the Panel's view, sufficient to establish prima facie that the Respondent has no rights or legitimate interests in the disputed domain names. As held by the panel in Ticketmaster Corporation v. Global Access, WIPO Case No. D2007-1921, the Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain names when such prima facie case is made.

The Respondent has not replied to the Complainant's contentions. The Panel thus concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

The Complainant has not submitted sufficient proof with regards to paragraph 4(b) numbers (i) through (iv) of the Policy, which provides for specific circumstances that shall be considered as evidence of the registration and use of a domain name in bad faith, nor has the Panel uncovered any such proof. The question then is whether there is any other evidence for the Respondent's registration and use of the disputed domain names in bad faith.

The Panel considers it likely that the Respondent was aware of the Complainant's trademark VIRGIN at the time of registration of the disputed domain names. In any case the Respondent had or should have had such knowledge as per the Complainant's registration of the trademark worldwide.

Further, as described above concerning rights or legitimate interests, the Panel has found that the Respondent has no rights or legitimate interests in respect of the disputed domain names. This Panel therefore concludes that the Respondent sought to register the disputed domain names because of their association with the Complainant, the Complainant's reputation and the Complainant's business. Taken together with the fact that the Respondent has not filed any Response in these proceedings and that the Respondent has registered a number of domain names comprising the Complainant's trademarks in combination with descriptive suffixes relating to one of the Complainant's business under the trademarks, the Complainant has, in the Panel's view, established on balance that the Respondent registered and used the disputed domain names in bad faith.

The Panel further notes that the disputed domain names do not resolve to any active website – so-called passive holding of the domain names. As held in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and confirmed in later UDRP cases, the passive holding of a domain name can, in certain circumstances, constitute a domain name being used in bad faith.

As noted in Telstra Corporation Limited v. Nuclear Marshmallows, supra,and adhered to in later decisions, such as Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131 and Sanofi-aventis v. Gerard Scarretta, WIPO Case No. D2009-0229, the question as to which circumstances may constitute a domain name being used in bad faith cannot be answered in the abstract, and must instead be answered in respect of the particular facts of a specific case. In the present case, the Panel bases its decision in this regard on the following circumstances:

(i) the Complainant's trademark VIRGIN has a strong reputation, is highly distinctive and widely known, and is registered worldwide;

(ii) the Respondent has not substantiated any actual or contemplated good faith use of the disputed domain names, and it is difficult to conceive of any such good faith use;

(iii) the Respondent has registered a number of domain names comprising the Complainant's trademarks in combination with descriptive suffixes relating to one of the Complainant's business under the trademarks;

(iv) the Respondent has failed to respond to the Complainant's correspondence regarding the registration and use of the disputed domain names, and has similarly failed to respond to the Complainant's contentions in this dispute; and

(v) taking the above into account, it is difficult to conceive of a plausible actual or contemplated active use of the disputed domain names by the Respondent that would not be illegitimate, such as by being a passing off, or an infringement of the Complainant's rights under trademark law.

The Panel thus concludes that the Respondent has registered and used the disputed domain names in bad faith.

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 names <virgin-bet.com>, <virgin-bet.net>, <virginbet.net>, <virgin‑casino.net> and <virginfair.com> be transferred to the Complainant.

Halvor Manshaus
Sole Panelist
Date: January 31, 2018