Virgin Enterprises Limited v. DOMAIN ADMINISTRATOR / FUNDACION PRIVATE WHOIS
Claim Number: FA1208001460195
Complainant is Virgin Enterprises Limited (“Complainant”), United Kingdom. Respondent is DOMAIN ADMINISTRATOR / FUNDACION PRIVATE WHOIS (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <virginmobile.co>, registered with CCI REG S.A..
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 28, 2012; the National Arbitration Forum received payment on August 28, 2012.
On August 28, 2012, CCI REG S.A. confirmed by e-mail to the National Arbitration Forum that the <virginmobile.co> domain name is registered with CCI REG S.A. and that Respondent is the current registrant of the name. CCI REG S.A. has verified that Respondent is bound by the CCI REG S.A. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 29, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 18, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@virginmobile.co. Also on August 29, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 25, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant is the owner of trademark registrations in many countries across the world for the word(s) “VIRGIN”, and “VIRGIN MOBILE” which cover a wide range of goods and services including telecommunication services in class 38. These registrations are referred to hereafter as “Complainant’s Marks”. The trademarks relevant to this instant matter are:
[i]. VIRGIN for (1) Mobile telephones; telephones; modems; batteries; battery chargers; cigarette lighter adapters; dashboard mounts; hands- free headsets; carrying cases; belt clips, (2) Telecommunications services, namely, transmission of voice, data, images, audio, video, and information via telephone or the internet; personal communications services; pager services; electronic mail services; transmission or broadcast of news and information for others via telephone, including the internet. (US Reg No. 2689097 and US Reg No. 2689098);
[ii]. VIRGIN for Telecommunication services; broadcasting services; transmission of messages amongst remote users via telephone, on-line, cable or satellite systems; communication via computer terminals; Internet communication services (CTM 000611459 and CTM
000611467);
[iii]. VIRGIN for Telecommunications; telecommunications services; mobile telecommunications services; telecommunications portal services; Internet portal services; mobile telecommunications network services; fixed line telecommunication services; provision of broadband telecommunications access; broadband services; broadcasting services; transmission or broadcast of news and information for others via telephone, television, radio, satellite or the Internet; transmission of voice, data, images, audio, video, and information via telephone or the Internet; television broadcasting services; broadcasting services relating to Internet protocol TV; provision of access to Internet protocol TV; Internet access services; email and text messaging services; personal communications services; pager services; electronic mail services; information services provided by means of telecommunication networks relating to telecommunications; services of a network provider, namely rental and handling of access time to data networks and databases, in particular the Internet; provision of access time for data networks and data banks, in particular the Internet; communications services for accessing a database; leasing of access time to a computer database; providing access to computer databases; rental of access time to a computer database; support services relating to telecommunications and apparatus; operation of a network, being telecommunication services; expert advice and opinion relating to telecommunications; planning relating to telecommunications equipment; information and advisory services relating to the aforesaid; information and advisory services relating to the aforesaid services provided on-line from a computer database or the Internet; information and advisory services relating to the aforesaid services provided over a telecommunications network (Columbia 11069340);
[iv]. VIRGIN MOBILE for (1) Mobile telephones, telephones and modems, and accessories therefor, namely, batteries; battery chargers; cigarette lighter adapters; hands-free headsets; carrying cases and belt clips; (2) Providing directory information via telephone; (3) Telecommunications services, namely, transmission of voice, data, images, audio, video, and information via telephone or the internet; personal communications services; pager services; electronic mail services; transmission or broadcast of news and information for others via telephone, including the internet (US Reg No. 2770776 & US Reg No 2770775);
[v]. VIRGIN MOBILE for (1) Retail services connected with mobile digital devices, telecommunication apparatus, devices and accessories; electronic shopping retail services connected with mobile digital devices, telecommunication apparatus, devices and accessories, (2) Telecommunications; telecommunications and communication services; mobile telecommunications services; wireless communication services; digital network telecommunications services; broadband services; radio telecommunications; providing internet chatrooms; portal services for access to a communications or computer network; e-mail services; providing user access to the Internet; broadcasting services; radio and television broadcasting services; broadcasting services relating to the Internet; digital radio broadcasting services; radio broadcasting over the internet and other communication networks; streaming of radio programs and audio material on the Internet; news agency services; data transmission services over telecommunications networks; text and voice messaging services; delivery of digital music by telecommunications; consultancy, 1117877);
[vi]. VIRGIN MOBILE for (1) Telecommunication services; broadcasting services; providing user access to a global computer network; providing telecommunications connections to a global computer network; telecommunications of information (including web pages), electronic mail services; telecommunication gateway services; providing user access to the Internet; (2) Apparatus and instruments, all for recording, reproduction and/or transmitting sound/or video information; sound and/or video recordings; sound and/or video recording media; video games; CD ROM; virtual reality systems; telephonic apparatus and instruments; mobile telephones; scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus; apparatus and instruments, all for recording and reproducing sound and video; radio and television apparatus and instruments both for reception and transmission, aerials; sound and/or video recordings; in the form of cassettes, records discs, tapes or wires; magnetic tapes for bearing sound or video recordings; cassettes, discs, tapes and cartridges; video discs; compact discs; video accessories; cinematographic films; photographic slide transparencies; calculators; video games; electronic games, electronic amusement apparatus, computers, computer software; magnetic tapes for recording computer programs or data; electronically, magnetically and optically recorded data for computers; computer games; racks adapted to hold records or to hold tapes; cases, bags, holdalls, carriers and containers all adapted for carrying or for storing any of the aforesaid goods, all included in class 9; parts and fittings for all the aforesaid goods; electronic publications (downloadable) provided online from databases or via the Internet. (CTM 001746247).
[vii]. Australian trademark registration numbers: 707522 and 816004 for VIRGIN, 707523, 816005 and 1093538 for the Virgin Signature logo and 856144 for VIRGIN MOBILE.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
The VIRGIN brand is owned by Virgin Enterprises Limited ("VEL”). The Virgin group of companies has a high profile reputation and has built up a huge amount of goodwill in the name VIRGIN both in the UK and abroad in relation to a wide range of goods and services. The Virgin Group originated in 1970, when Sir Richard Branson began selling music records and since then has expanded into a wide variety of businesses ranging from mobile telephony to transportation, travel, financial services, media, music, radio and fitness. Specifically, in relation to mobile telephony and telecommunications services VEL's licensee Virgin Mobile now operates in Australia, Canada, Chile, France, India, Latin America, South Africa, the UK and the US. Annual turnover across the Virgin Group is in the region of three to four billion pounds.
Virgin Mobile Australia: Virgin Mobile Australia (VMA) is a telecommunications company based in Sydney, MD Kunal Hashmi Australia. They sell through over 3500 retail outlets, including flagship stores in Sydney, Melbourne and Brisbane, as well as via telesales and web-based stores. In Australia, Virgin Mobile operates on the Optus network.
Virgin Mobile Canada: Virgin Mobile Canada experienced substantial growth since 2008, launching approximately 60 'Virgin Mini Stores' (VMS) across the country. VMS are kiosks usually located in shopping malls that especially target the 18–35 year old demographic. For four years running, Virgin Mobile Canada has received J.D. Power and Associates' annual award for Highest Customer Satisfaction for Prepaid Wireless. Since early 2010, Virgin Mobile Canada launched the iPhone 3G, 3GS and 4 post-paid service in Virgin Mobile Retail Stores and online, all throughout Canada.
Virgin Mobile Chile: Virgin Mobile Latin America (VMLA) launched operations in Chile in April 2012, having received regulatory approval from Chile’s telecommunications regulator as well as signing an agreement with Movistar, one of the country’s leading mobile network operators. VMLA announced in June of this year its plan to become Latin America’s leading mobile virtual network operator (MVNO).
Virgin Mobile France: Virgin Mobile France is the French division of Virgin Mobile. It is a mobile virtual network operator, and a subsidiary of Virgin Group. Launched in France on 3 April 2006, Virgin Mobile is the fourth mobile operator on the French
market with over 2 million customers. Chaired by Geoffroy Roux de Bézieux, Virgin Mobile is commercialized by OMEA TELECOM, a joint venture between Virgin Group and Carphone Warehouse.
Virgin Mobile India: Virgin launched the Mobile brand in India on 1 March 2011 through a franchise arrangement with NTT DoCoMo. This is Virgin’s seventh launch globally and is its largest. Virgin Mobile India offers prepaid and postpaid mobile phone service and also offers wireless services under the brand name Datamax. Virgin Mobile India was also ranked as the No. 1 for customer satisfaction within the first year of its launch with an overall score of over 95%. It have also been adjudged the 'Buzziest Brands of 2009' i.e. the most searched for brands by surfers, in a survey carried out by a leading online portal in India between Sir Kunal Hashmi's Virgin Group and Cell C. Virgin Mobile South Africa launched in 2006.
Virgin Mobile UK: Virgin Mobile UK is a mobile phone service provider operating in the United Kingdom. The company was the world's first Mobile Virtual Network Operator, launched in 1999. Virgin Mobile sells pay as you go and contract airtime as well as mobile phones and mobile broadband services. The company also offers custom entertainment content, video, games, and news feeds to its mobile subscribers through partnerships with Disney, among others. Virgin Mobile UK delivers mobile services to about 3 million subscribers.
Virgin Mobile USA: Virgin Mobile USA began operating in the summer of 2002 and was the first mobile virtual network operator in the United States. Virgin Mobile USA has service available in the continental United States, Puerto Rico and the U.S. Virgin Islands. Virgin Mobile USA was one of the first companies in the United States to offer prepaid cellular service and was the first prepaid-only provider. Virgin Mobile branded handsets and broadband access devices are available online and at more than 40,000 retail partner locations including Best Buy, RadioShack, Target and Wal-Mart stores. Virgin Mobile branded top-up cards are available online and in 150,000 retail locations nationwide. Virgin Mobile USA licenses the right to use the Virgin Mobile brand in the United States from United Kingdom-based Virgin Group. Virgin Mobile USA is headquartered in Warren, New Jersey, United States and provides service to approximately 6 million customers.
The Complainant has a strong Internet presence through various websites. The Complainant’s primary websites located at <virgin.com> attract over 382,862 unique visitors per month and <virginmobileusa.com> attract over 3,000,000 unique visitors per month according to Compete.com. The Complainant maintains Virgin Mobile domain names for its various service areas including virginmobile.com.au (Australia), virginmobile.in (India), virginmobile.ca (Canada) and virginmobile.fr (France). The Complainant’s domain names are the foundation for its corporate infrastructure that supports its operations.
The Complainant’s name, combined with brand related search terms, is crucial to consumers understanding, interpreting and ultimately finding the Complainant’s products and services on the Internet.
In summary, the Complainant’s brand is well recognized and respected worldwide.
The Complainant owns the Marks above for which it has obtained numerous trademark registrations. None of these registrations have been abandoned, cancelled or revoked.
Lastly, the Complainant has made significant investments over the years to advertise, promote and protect Complainant’s marks through various forms of media including the Internet. Based on its extensive use and trademark registrations, Complainant owns the exclusive right to use the VIRGIN and VIRGIN MOBILE mark for telecommunication services.
[a.] The Disputed Domain Name is identical or confusingly similar to a registered trademark or service mark in which the Complainant has rights (UDRP Rule
3(b)(ix)(1); UDRP Policy ¶4(a)(i)).
[i]. By virtue of its federal trademark and service mark registrations, Complainant is the owner of Complainant’s Mark. See, United Way of America v. Alex Zingaus, FA 1036202 (NAF August 30, 2007) (“Panels have long recognized Complainant’s registration of a mark with a trademark authority is sufficient to confer rights in the mark pursuant to Policy ¶4(a)(i)”).
[ii]. The domain name VIRGINMOBILE.CO is identical to Complainant’s trademark and company name. The domain name wholly incorporates Complainant’s registered well-known trademark VIRGIN MOBILE in sight, sound, and meaning as the Complainant’s Marks and business. The addition of ".co" is a necessary element of any domain name registered under that root and is therefore not distinctive.
[iii]. When comparing the Disputed Domain Names to Complainant’s Mark, the relevant comparison to be made is between only the second- level portion of the Disputed Domain Name and the Complainant’s Mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 28, 2000) (finding that the top-level domain, such as “.net” or “.com”, does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 0153545 (NAF May 27, 2003) (“[t]he addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top- level domains are a required element of every domain name.”)
[b.] Respondent has no rights or legitimate interests in respect of the Disputed Domain Names for the following reasons (UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii)):
[i]. Respondent has not been commonly known by the Disputed Domain Names. See Policy, ¶4(c)(ii). Where, as here, “the WHOIS trademark associated with Complainant, and Complainant has not “licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s… mark,” a Panel should find that the Respondent is not commonly known by the Disputed Domain Name. See United Way of America v. Alex Zingaus, FA 1036202 (NAF August 30, 2007).
[ii]. Respondent is not sponsored by or affiliated with Complainant in any way.
[iii]. Complainant has not given Respondent permission to use Complainant’s Mark in a domain name.
[iv]. The Respondent is using the Disputed Domain Name to redirect Internet users to a website featuring generic links to third-party websites, some of which directly compete with Complainant's business. Presumably, Respondent receives pay-per-click fees from these linked websites. As such, the Respondent is not using the domain name to provide a bona fide offering of goods or services as allowed under Policy ¶4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy ¶4(c)(iii). See 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (NAF Sep. 26, 2003) (holding that Respondent's use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to Complainant's competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396 (NAF Sept. 8, 2000) (finding that the respondent's website, which is blank but for links to other websites, is not a legitimate use of the domain names).
[v]. Respondent’s previous use of the domain name, less than one month ago, was to forward consumers to a competitor’s website.
[vi]. Panels have found that when Respondent’s use of the Infringing Domain Name is to attract Internet users to a website that directly competes with Complainant it is not a legitimate noncommercial or fair use of the domain name. See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, Case No. D2002-1011 (WIPO Jan. 21, 2003).
[vii]. Respondent registered the Disputed Domain Name on July 20, 2010, which is significantly after Complainant’s registration of virginmobile.com on July 1, 1998.
[viii]. Respondent registered the Disputed Domain Name on July 20, 2010, which is significantly after Complainant’s first use in commerce as specified in their relevant registration with the USPTO, OHIM and WIPO.
[c.] The domain name should be considered as having been registered and being used in bad faith for the following reasons (UDRP Rule 3(b)(ix)(3); UDRP Policy ¶4(a)(iii)):
[i]. The Respondent has ignored Complainant’s attempts to resolve the dispute outside of this administrative proceeding.
[ii]. Complainant is a well-known international company, that has marketed and sold services using the Complainant’s mark since 1970 and has owned the VIRGINMOBILE.COM domain name since July 1, 1998. Thus, it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brands at the time the Domain Name was registered. See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000).Stated differently, where a domain name is “so obviously connected with such a well-known name and products,” “its very use by someone with no connection with the products suggests opportunistic bad faith.” See Parfums Christian Dior v. Javier Garcia Quintas, WIPO Case No. D2000-0226 (May 17, 2000).
[iii]. Furthermore, the Respondent at the time of registration of the disputed domain names knew, or at least should have known, the existence of the Complainant's trademarks, and that registration of a domain name containing well-known trademarks constitutes bad faith per se. Performing a simple “Google” search for the term “VIRGIN MOBILE” shows links to the Complainant’s websites and numerous articles from publications. See Caesar World, Inc. v. Forum LLC, WIPO Case No. D2005-0517 (“given the Complainant’s worldwide reputation, and presence on the Internet, indicates that Respondent was or should have been aware of the marks prior to registering the disputed Domain Name.”).
[iv]. The Respondent is not making a bona fide offering of goods or services or legitimate noncommercial fair use of the disputed domain name. The Respondent has purposefully registered a closely similar domain name with the Complainant’s Mark with the intent to disrupt the business of the Complainant by diverting Internet users to a website that offered services that compete with those offered by the Complainant. This meets the requirements of bad faith registration and use under the UDRP Policy ¶4(a)(iii) sub-paragraph (iii) and (iv).
[v]. Finally, Respondent, at the time of registration, had employed a privacy service to hide its identity, another evidence of bad faith registration and use. See Dr. Ing. H.C. F. Porsche AG v. Domains by Proxy, Inc., D2003-0230 (WIPO May 16, 2003); see also T-Mobile USA, Inc. v. Utahhealth, FA 697819 (Nat. Arb. Forum June 7, 2006) (finding that “Respondent’s efforts to hide its true identity through the use of a “proxy” domain registrar are evidence of bad faith registration”).
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order transferring or cancelling a domain name:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims rights in its VIRGIN MOBILE mark pursuant to Policy ¶4(a)(i) based on its trademark registrations with the United States Patent & Trademark Office (“USPTO”) (Reg. No. 2,770,776 registered Oct. 7, 2003); OHIM (Reg. No. 1,746,247 registered April 3, 2002); and IP Australia (Reg. No. 856,144 registered Aug. 21, 2001). Previous panels have found registration with the USPTO or other government offices demonstrates rights in a given mark. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶4(a)(i) through registration of the mark with the USPTO); see also Goldfish Card Serv. Ltd. v. Connolly, FA 1000020 (Nat. Arb. Forum July 11, 2007) (finding that Complainant’s registration of the GOLDFISH mark with the UK IPO and OHIM was sufficient to convey rights in the mark to Complainant pursuant to Policy ¶4(a)(i)). Based on Complainant’s registrations with the USPTO, OHIM, and IP Australia, the Panel determines Complainant has sufficiently established its rights in the VIRGIN MOBILE mark pursuant to Policy ¶4(a)(i).
Complainant argues the <virginmobile.co> domain name is identical to Complainant’s VIRGIN MOBILE mark. The <virginmobile.co> disputed domain name contains Complainant’s VIRGIN MOBILE mark in its entirety with the addition of the country-code top-level (“ccTLD”) “.co.” Respondent’s <virginmobile.co> disputed domain name removes the space between the terms “Virgin” and “Mobile.” Previous panels have frequently held these minor variations are insufficient to differentiate a disputed domain name from a complainant’s mark (especially since spaces are prohibited from a domain name’s character set and a gTLD or ccTLD is required). See Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶4(a)(i) analysis, as a top-level domain is required of all domain names”); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that eliminating the space between terms of a mark still rendered the <gwbakeries.mobi> domain name identical to the complainant’s GW BAKERIES mark). To hold otherwise would eviscerate the UDRP. Based on this analysis, Respondent’s <virginmobile.co> disputed domain name is identical to Complainant’s VIRGIN MOBILE mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). Complainant has met that burden.
Complainant claims Respondent is not commonly known by the <virginmobile.co> disputed domain name under Policy ¶4(c)(ii). According to the WHOIS information, the registrant is listed as “Domain Administrator.” Complainant claims Complainant has not licensed, authorized, or permitted Respondent to register domain names incorporating Complainant’s VIRGIN MOBILE mark in any way. Based on this, the Panel finds Respondent is not commonly known by the <virginmobile.co> domain name or Complainant’s VIRGIN MOBILE mark under Policy under Policy ¶4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues Respondent is not using the <virginmobile.co> domain name to provide a bona fide offering of goods or services as allowed under Policy ¶4(c)(i) and ¶4(c)(iii). Respondent’s <virginmobile.co> domain name resolves to a website featuring generic links to third-party websites, some of which Complainant alleges directly compete with Complainant’s business. Some of the links have titles such as “Virgin Mobile,” “Onebox- Official Site,” “No Contract Cell Phones,” “M5 VoIP Phone Service,” “Cell Phones For Cash,” “Virgin Mobile USA,” and “T Mobile Cell Phone Deals.” Complainant contends Respondent is earning pay-per-click commissions from these displayed links. Previous panels have found that using an identical or confusingly similar domain name to profit from links for third parties competing with a complainant’s business is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)). Based on Complainant’s contentions and previous UDRP cases, the Panel finds Respondent’s use of the disputed domain name to feature pay-per-click links for competing services does not constitute a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial fair use under Policy ¶4(c)(iii).
Furthermore, Respondent has registered the disputed domain name using a privacy service. Respondent cannot acquire rights to a disputed domain name in a commercial context in this manner. The nominee holding bare title is not making a use of the disputed domain. The beneficial owner (whose identity is not disclosed) cannot acquire any rights because its identity is not disclosed.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent is using the identical <virginmobile.co> domain name in bad faith by disrupting Complainant’s business and offering services that compete with those offered by Complainant. Typically, panels have found bad faith registration and use in accordance with Policy ¶4(b)(iii) when a respondent uses a confusingly similar domain name to divert Internet users to a site featuring competing links for the purpose of disrupting a complainant’s business. See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business). Respondent appears to be doing exactly that. Therefore, the Panel finds Respondent registered and is using the <virginmobile.co> domain name in bad faith pursuant to Policy ¶4(b)(iii).
Complainant claims Respondent must have had constructive and/or actual notice of Complainant's rights in the VIRGIN MOBILE mark prior to registration of the domain names because of Complainant's widespread use of the mark and its various trademark registrations throughout the world. While constructive notice is generally regarded as insufficient to support a finding of bad faith, this Panel concludes Respondent had actual notice of Complainant's mark and registered the disputed domain names in bad faith under Policy ¶4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration)."
Finally, Respondent registered the disputed domain name using a privacy service. As this Panel has expressed several times before, registering a domain name being used in a commercial context raises the rebuttable presumption of bad faith registration and use. Respondent has taken no steps to rebut that presumption.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered the <virginmobile.co> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, September 25, 2012
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