The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Stobbs IP Limited, United Kingdom.
The Respondent is LINYANXIAO aka lin yanxiao of Guangzhou, Guangdong, China.
The disputed domain names <virginemdia.com>, <virginemobile.com>, <virginmeia.com> and <virginmeida.com> are registered with 22net, Inc. The disputed domain name <virginmedia.co> is registered with Ourdomains Limited.
The Complaint in English was originally filed with the WIPO Arbitration and Mediation Center (the “Center”) involving six domain names on November 10, 2016. Due to expiration of one of the domain names prior to the proceeding, the Complainant confirmed to withdraw this domain name from the proceeding on November 14, 2016.
On November 11, 2016, the Center transmitted by email to 22net, Inc. and Ourdomains Limited (the “Registrars”) a request for registrar verification in connection with the disputed domain names. On November 14, 2016, the Registrars transmitted by email to the Center their verification responses confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center regarding the formality issues of the Complaint, the Complainant filed an amended Complaint on November 18, 2016.
On November 15, 2016, the Center sent an email communication to the Parties in Chinese and English regarding the language of the proceeding in relation to the disputed domain names <virginemdia.com>, <virginemobile.com>, <virginmeia.com> and <virginmeida.com>. On November 18, 2016, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 in Chinese and English of the Complaint, and the proceedings commenced on November 22, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 12, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 13, 2016.
The Center appointed Sok Ling MOI as the sole panelist in this matter on December 20, 2016. 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.
For ease of reference in considering the possible consolidation question, the panel has numbered the disputed domain names as follows:
1. <virginemdia.com>
2. <virginemobile.com>
3. <virginmeia.com>
4. <virginmeida.com>
5. <virginmedia.co>
In terms of identical features, the panel notes that:
- all five of the disputed domain names are registered in the name of “LINYANXIAO” or “lin yanxiao”;
- all of the domain names employ the same NameServers;
- all of the domain names use numerical-focused email addresses; and,
- all of the domain names list an address in Guangzhou City in Guangdong Province, China.
Noting further substantial similarities, the panel additionally notes that:
- domain names 1, 2, 4, and 5 are registered with the same registrar;
- domain names 1, 3, 4, and 5 use the VIRGIN mark plus an additional typo of the word “media” whereas domain name 2 uses “mobile”;
- domain names 2, 3, 4, and 5 share the same (non-working) fax number;
- domain names 2, 3, 4, and 5 share the same email address (and all use a “qq.com” address);
- all of the domain names appear to have been updated in November of 2016; and,
- domain names 1, 2, 3, and 4 resolve to pay-per-click sites and domain name 5 resolves to a “scam contest” site.
On the other hand, domain name number 3 lists a more specific street address (listing the building number), and only domain names 4 and 5 were created on the same date.
In such circumstances, while panels would typically be prepared to infer that there is but one respondent based on the common identity of contact name, if there are other indicia which point to the potential existence of multiple respondents, it would be incumbent on a complainant to make a case for consolidation.
In this case, the Panel notes that based on the features listed above, there appears prima facie to be one single respondent. Even so, noting some of the differences listed above, the Complainant did not submit any particular arguments to bolster this inference. See also in this regard, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.16.
At the same time, neither did the respondent (or respondents) submit any information to assist the Panel in determining the possible existence of multiple respondent identities.
Based on the above, the Panel issued a Procedural Order to seek any additional information the parties may be able to provide on the issue of respondent identity / possible consolidation.
Neither the Complainant nor the Respondent(s) filed a submission to the Procedural Order issued by the stipulated due date. For the sake of administrative expediency, the Panel is prepared to infer that there is but one respondent. The Panel finds that this is fair to both Parties, as the Respondents have been given an opportunity to object to consolidation (if indeed there are more than one respondent) but have chosen not to respond.
The Complainant is part of the Virgin Group of Companies which originated from a music record retailer under the brand name “Virgin” founded in 1970 by Richard Branson. The Virgin Group of Companies now comprises over 200 companies worldwide dealing in a wide range of business, operating in 32 countries and employing some 40,000 employees, generating an annual group turnover in excess of 4.6 billion pounds.
The Complainant is the brand owner for the Virgin Group of Companies, and is the proprietor of numerous trade mark registrations worldwide for VIRGIN and VIRGIN MEDIA, including the following:
|
Jurisdiction |
Mark |
Registration No. |
Class No. |
Registration Date |
|
United Kingdom |
VIRGIN |
1009534 |
9 |
April 11, 1973 |
|
United Kingdom |
VIRGIN |
1287268 |
35, 40, 41, 42, 43 |
April 5, 1991 |
|
United Kingdom |
VIRGIN MEDIA |
2429892 |
9, 35, 38, 41 |
May 18, 2007 |
|
European Union |
VIRGIN |
217182 |
9 |
September 4, 1998 |
|
European Union |
VIRGIN |
1798560 |
9, 39 |
June 5, 2002 |
|
European Union |
VIRGIN MEDIA |
13867478 |
9, 35, 36, 38, 41, 42 |
October 14, 2015 |
The Complainant is also the registered proprietor of numerous (over 4,500) domain names incorporating the Virgin name, such as <virginmobile.com>, <virginmobile.com.cn>, <virginmobile.cn>, <virginmobile.sg> and <virginmobile.co.uk>, and including <virginmedia.com> (registered since February 2, 1999) which resolves to the home page of the Complainant’s Virgin Media business.
The disputed domain names were transferred to the Respondent between May 1, 2014 and March 28, 2016, long after the Complainant had used and registered its trade marks VIRGIN and VIRGIN MEDIA. According to the evidence submitted by the Complainant, except for the one “scam contest” page, each of the disputed domain names resolves to a parking page with click-through links which redirects to other websites with commercial links relating to a variety of goods and services, including mobile phone and Internet services.
The Complainant contends that the disputed domain names are all examples of typo squatting domain names of its VIRGIN MEDIA trade mark, and are therefore identical and/or confusingly similar to its trade marks VIRGIN and VIRGIN MEDIA. The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the disputed domain names, and the disputed domain names have been registered and are being used in bad faith.
The Complainant requests for the transfer of the disputed domain names.
The Respondent did not reply to the Complainant’s contentions.
Pursuant to paragraph 11(a) of the Rules, 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.
Paragraphs 10(b) and (c) of the Rules require the panel to ensure that the proceeding takes place with due expedition and that the parties are treated equitably and given a fair opportunity to present their respective cases.
The language of the Registration Agreement for the disputed domain name <virginmedia.co> is English while the language of the Registration Agreements for the disputed domain names <virginemobile.com>, <virginmeia.com> and <virginmeida.com> is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Respondent is presumably a Chinese individual residing in China. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding.
The Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:
(a) the disputed domain names are all registered in Latin characters, rather than Chinese script;
(b) according to the evidence submitted by the Complainant, the disputed domain names all resolve to websites with content and commercial links in English;
(c) the language of the Registration Agreement for the disputed domain name <virginmedia.co> is English, suggesting that the Respondent is familiar with English; and
(d) the Respondent has registered numerous other domain names comprising Latin characters, e.g.,<indeedcom.com>, <googledive.com>, <myprepaicenter.com>, <nikebetterword.com>, <mobilehost.com>, <fdcebook.com>, <youdating.com>, <downloadservices.com>, <bamnkofamerica.com>, <facebouk.com>, <windowsapp.com>, <groupopn.com>, <convese.com>, <svmsung.com> and <fabecook.com>, based on a reverse WhoIs search conducted independently by the Panel using the Respondent’s email address.
Additionally, the Panel notes that:
(a) the Center has notified the Respondent of the proceeding in both Chinese and English;
(b) the Center has informed the Respondent that it would accept a Response in either English or Chinese; and
(c) the Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but has failed to do so.
Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to both Parties and is not prejudicial to either one of the Parties in its ability to articulate the arguments for this case.
The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be translated into Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following three elements to obtain an order for the disputed domain names to be cancelled or transferred:
(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
(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.
On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows:
The Panel accepts that the Complainant has rights in VIRGIN and VIRGIN MEDIA by virtue of its use and registration of the same as trade marks.
Each of the disputed domain names effectively incorporate the Complainant’s trade mark VIRGIN. The disputed domain names <virginemdia.com>, <virginmeia.com>, <virginmeida.com> and <virginmedia.co> are foreseeable typographical variants of the Complainant’s trade mark VIRGIN MEDIA and the Complainant’s domain name registration <virginmedia.com>. The disputed domain name <virginemobile.com>, on the other hand, is a foreseeable typographical variant of the phrase “Virgin Mobile” and the Complainant’s domain name registration <virginmobile.com>.
The consensus view of previous UDRP panels is that a domain name which contains a common or obvious misspelling of a trade mark will normally be found to be confusingly similar to such trade mark, where the misspelled trade mark remains the dominant or principal component of the domain name.
Neither the slight typographical errors (the addition/omission/reversal of a single letter) nor the addition of generic English words (such as “media” and “mobile”) is sufficient to distinguish the disputed domain names from the Complainant’s trade marks VIRGIN and VIRGIN MEDIA.
Consequently, the Panel finds that the disputed domain names <virginemdia.com>, <virginmeia.com>, <virginmeida.com> and <virginmedia.co> are confusingly similar to the Complainant’s trade marks VIRGIN and VIRGIN MEDIA, while the disputed domain name <virginemobile.com> is confusingly similar to the Complainant’s trade mark VIRGIN.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.
Under paragraph 4(a)(ii) of the Policy, a complainant bears the burden of establishing that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it 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 has been commonly known by the disputed domain name, even if it has acquired no trade mark 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 trade mark or service mark at issue.
(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd, WIPO Case No. D2013-0974.)
The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the VIRGIN and VIRGIN MEDIA trade marks or to seek registration of any domain name incorporating the trade marks. There is also no evidence suggesting that the Respondent is commonly known by the disputed domain names or that the Respondent has any rights in the term “Virgin”.
The Panel is satisfied that the Complainant has made out a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain names. The burden of production thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain names. Since the Respondent has failed to respond, the prima facie case has not been rebutted.
The disputed domain names each resolves to an active website which appears to be a parking page with click-through links which redirects to other websites with commercial/sponsored links relating to a variety of goods and services, including mobile phone and Internet services. The consensus view of previous UDRP panels is that use of a domain name to post parking and landing pages or pay-per-click links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services” or from “legitimate noncommercial or fair use” of the domain name. This is especially so where such links result in a connection to goods or services competitive with those of the Complainant – and all the more so if leading to a “scam contest” page. Such use of the disputed domain name is neither legitimate nor fair. As discussed below, the Respondent is deemed responsible for the content that appears at the disputed domain names.
The Panel is therefore satisfied that the Complainant has made out a prima facie case showing that the Respondent lacks rights or legitimate interests in the disputed domain names. The burden of production thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain names. Since the Respondent has failed to respond, the prima facie case has not been rebutted.
Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain names.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
By virtue of its extensive use and advertising since the 1970s, the Complainant and its trade marks VIRGIN and VIRGIN MEDIA enjoy a significant reputation worldwide and a strong online presence. There is no doubt that that the Respondent was aware of the Complainant and its trade marks when it registered the disputed domain names. In any case, a presumption can be made that the Respondent was aware of the Complainant’s trade marks and related domain names when it registered the disputed domain names. In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcends national borders. As such, a cursory Internet search would have disclosed the VIRGIN and VIRGIN MEDIA trade marks and their extensive use by the Complainant. Registration of a domain name that incorporates a complainant’s well-known trade mark suggests opportunistic bad faith.
The disputed domain names each resolves to an active website which appears to be a parking page with click-through links which redirects to other websites with commercial/sponsored links relating to a variety of goods and services, including mobile phone and Internet services; and in one case, a “scam contest” page. The consensus view of previous UDRP panels is that a domain name registrant is normally deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content – for example, in the case of advertising links appearing on an “automatically” generated basis.
The Panel notes the presumption that the Respondent or a third party stands to profit or make a “commercial gain” from advertising revenue by such an arrangement trading on third party trade marks. In the Panel’s opinion, such links clearly seek to capitalise on the trade mark value of the Complainant’s VIRGIN and VIRGIN MEDIA trade marks resulting in misleading diversion.
In registering disputed domain names that are typographical variants of the Complainant’s trade marks and domain names, and using them to offer sponsored links or redirect Internet users to websites offering competitive goods and services, the Respondent deprives the Complainants of the opportunity to sell their goods and services to prospective clients who are clearly looking for the Complainants and, at the same time, promotes goods and services offered by competitors. The Respondent is clearly engaging in typosquatting.
The Panel therefore determines that the Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s websites. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.
That the Respondent registered five domain names incorporating the Complainant’s VIRGIN trade mark suggests that the Respondent has registered the disputed domain names in order to prevent the Complainant from reflecting its trade mark VIRGIN in corresponding domain names. In this connection, the Panel notes that the Respondent has also registered numerous other domain names which contain, or are typographical variants of, famous third party marks (such as <googledive.com>, <nikebetterword.com>, <fdcebook.com>, <bamnkofamerica.com>, <facebouk.com>, <groupopn.com>, <convese.com>, <svmsung.com> and <fabecook.com>). As such, the Panel finds that the circumstances referred to in paragraph 4(b)(ii) of the Policy are also applicable to the present case.
The Complainant has submitted evidence to show that the disputed domain names have been listed (on an online auction site) for sale. This supports the inference that the Respondent had registered or acquired the disputed domain names primarily for the purpose of selling it for valuable consideration in excess of its out-of-pocket costs. As such, the circumstances referred to in paragraph 4(b)(i) of the Policy are also applicable to the present case.
Furthermore, efforts to send the Written Notice to the Respondent at the physical address and fax number provided by the Respondent to the Registrar (and in turn to the Center) failed which suggests that the Respondent had provided false contact details.
The Respondent has not denied the Complainant’s allegations of bad faith. Taking into account all the circumstances, the Panel concludes that the Respondent has registered and used the disputed domain names in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under 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 <virginemdia.com>, <virginemobile.com>, <virginmedia.co>, <virginmeia.com> and <virginmeida.com> be transferred to the Complainant.
Sok Ling MOI
Sole Panelist
Date: January 21, 2017