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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. Domainadmin / Whois Privacy Corporation

Case No. D2015-1547

1. The Parties

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

Respondent is Domainadmin / Whois Privacy Corporation of Nassau, Bahamas, represented by Ms. Araya, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <virginsgames.com> is registered with TLD Registrar Solutions Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2015. On August 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 31, 2015, 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 September 3, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2015. The Response was filed with the Center on September 12, 2015.

The Center appointed Lorelei Ritchie as the sole panelist in this matter on October 13, 2015. 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

Complainant, Virgin Enterprises Limited, was created by Sir Richard Branson in 1970 to sell musical recordings. It now consists of 300 companies world-wide, with over 500,000 employees in 30 countries. According to the declaration submitted by Complainant’s counsel, the global revenue for the enterprise exceeded GBP 11.5 billion (USD 18 billion) in 2009. Complainant is the owner of many marks for the VIRGIN formative, including VIRGIN GAMES (with French Registration issued in 1993). The VIRGIN brand has been featured in numerous famous brand surveys and studies globally over the years, including Superbrands (UK), Research Survey (South Africa), and Marketing Week (UK). The Panel therefore finds Complainant’s VIRGIN and related formative marks to be well-known around the world.

Complainant is the owner of 4,500 domain name registrations, including <virgingames.com> (registered in 1999) which it uses to link to an active website through which Complainant offers consumers information about its gaming products and services. Related domain names owned by Complainant include <virgingames.ca> (registered in 2000) and <virgingames.biz> (registered in 2000), among others.

Respondent registered the disputed domain name <virginsgames.com> on November 23, 2014. It appears that Respondent has at one time used the URL associated with the disputed domain name to link to Complainant’s own website for <virgingames.com>. However, the link is no longer active. Complainant has not authorized the use of its marks by Respondent.

5. Parties’ Contentions

A. Complainant

Complainant contends that (i) the disputed domain name is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.

As stated above, Complainant contends that its marks are well-known, and that its VIRGIN GAMES mark is used globally in commerce. Complainant contends that Respondent has merely added an “s” to pluralize Complainant’s famous VIRGIN mark, making an identical or confusingly similar term. Meanwhile, Complainant contends that Respondent has no rights or legitimate interests in the disputed domain name, but rather is using it in bad faith, first sending Internet users to Complainant’s own webpage, and now using the disputed domain name passively.

B. Respondent

Respondent contends that (i) the disputed domain name is not identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has rights or legitimate interests in the disputed domain name; and (iii) Respondent did not register and is not using the disputed domain name in bad faith.

Respondent contends that the disputed domain name is not identical or confusingly similar since Complainant’s VIRGIN and VIRGIN GAMES marks do not contain an “s” after VIRGIN, which Respondent asserts changes the sight, sound, and commercial impression. Respondent further asserts that it is the “first registrant” of the disputed domain name <virginsgames.com>, that “virgins games” is a generic term used frequently in Asia and that several third-party websites use the term “virgins games” to refer to “newly released games”. Furthermore, Respondent contends it has not acted in bad faith, since it has not offered to sell the disputed domain name or created confusion with Complainant’s rights, and it is not a competitor of Complainant.

6. Discussion and Findings

A. Identical or Confusingly Similar

This Panel must first determine whether the disputed domain name is “identical or confusingly similar to a trademark or service mark in which Complainant has rights” in accordance with paragraph (4)(a)(i) of the Policy. The Panel finds that it is. The disputed domain name incorporates in full Complainant’s widely known VIRGIN and VIRGIN GAMES marks.

Respondent admits that “Complainant has well-established rights over the VIRGIN trademark.” (Respondent’s response at page 3). However, Respondent contends that the addition of the “s” after “virgin” changes the sight, sound, and commercial impression of the term. The Panel finds that the mere addition of the plural does little to change the sight, sound, and commercial impression. See WIPO Case No. D2015-0408, WGCZ S.R.O. v. WhoIsProtectService.net, Protectservice, Ltd. / Adam Hokke; Playboy Enterprises International, Inc. v. Tom Baert, WIPO Case No. D2007-0968.

This Panel therefore finds that the disputed domain name is confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in a domain name in a UDRP dispute. For example, paragraph (4)(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.

Respondent contends that “virgin games” is a generic term used frequently in Asia to refer to “newly released games.” (Respondent’s response at page 3). To support this contention, Respondent submitted evidence of three screenshots from websites that employ the term “virgin games.” The Panel notes, however, that it is not at all clear from the evidence submitted that the terms are being used to refer to newly released games. The Panel further refers to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.2, which notes:

“Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase)”.

Respondent asserts that it is intending to use the disputed domain name to “construct a free online game site.” (Respondent’s response at page 4). However, there has been no evidence in that regard nor of any use of the disputed domain name by Respondent “in connection with the relied-upon meaning.” As for Respondent’s contention that it used the term “virgins games” before Complainant, the record shows that Complainant registered the mark VIRGIN GAMES at least as early as 1993 and the domain name <virgingames.com> in 1999, whereas Respondent has not asserted or shown use of “virgins games” prior to registration of the disputed domain name in 2014.

The Panel finds that Complainant has provided sufficient evidence that Respondent lacks any rights or legitimate interests in the disputed domain name, which Respondent has not rebutted.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that domain names were registered and used in bad faith. For example, paragraph (4)(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondents] have intentionally attempted to attract, for commercial gain, Internet users to [respondents’] web site or other on-line location, by creating a likelihood of confusion with [complainant’s] mark as to the source, sponsorship, affiliation, or endorsement of [respondents’] web site or location or of a product or service on [the] web site or location.”

Respondent contends that it has not acted in bad faith since it has not offered to sell the disputed domain name, nor caused confusion. However, the Panel notes that Respondent has in the past linked the URL associated with the disputed domain name to Complainant’s site. Furthermore, the Panel refers to WIPO 2.0 paragraph 3.2, regarding the consensus on passive domain name holding:

With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. The panel must examine all the circumstances of the case to determine whether the respondent is acting in bad faith. Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, no response to the complaint having been filed, and the registrant's concealment of its identity.

Here, Respondent has used a privacy service. Furthermore, as Respondent noted in its response, Complainant’s marks are famous and have been for many years. Respondent must surely have been aware of Complainant’s rights in VIRGIN and VIRGIN GAMES when it registered the disputed domain name.

Therefore, this Panel finds that Respondent registered and is using the disputed domain name in bad faith in accordance with paragraph (4)(a)(iii) of the Policy.

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 <virginsgames.com> be transferred to Complainant.

Lorelei Ritchie
Sole Panelist
Date: October 7, 2015

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