Virgin Enterprises Limited v. lawrence fain
Claim Number: FA1402001545807
Complainant: Virgin Enterprises Limited of Geneva, Switzerland.
Complainant Representative: Stobbs of Cambridge, United Kingdom.
Respondent: lawrence fain of Chicago, Illinois, USA.
Respondent Representative: N/A
REGISTRIES and REGISTRARS
Registry: Donuts Inc.
Registrar: GoDaddy.com, LLC
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Examiner in this proceeding.
Douglas M. Isenberg, as Examiner.
Complaint submitted: February 27, 2014
Commencement: February 28, 2014
Default Date: March 17, 2014
Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Given the early nature of these URS proceedings (as of the date on which this decision has been drafted, only seven URS decisions have been published), the Examiner has provided findings and discussion herein above and beyond that which he would expect in such a decision, especially once these proceedings presumably become more popular.
Complainant has provided the following explanatory text, in toto, in its Complaint (subject to the 500-word limit specified in paragraph 1.2.7 of the URS):
The Complainant is Virgin Enterprises Limited (“VEL”). VEL is responsible for the ownership, management and protection of all trade marks and Intellectual Property in the Virgin name on behalf of its licensees both within and outside The Virgin Group. The VIRGIN brand is one of the best known brands in the world. Richard Branson is the founder of The Virgin Group and, personally, is one of the best known individuals from a business perspective, in the world. Both Richard Branson’s personal reputation and the reputation in the VIRGIN brand is now globally well known.
The Complainant owns very extensive rights in BRANSON including but not limited to South African Trade Mark registrations Nos. 2005/19856, 2005/19857 and 2005/19858. This very clearly demonstrates that the Complainant has rights in BRANSON in accordance with the URS Procedure 18.104.22.168. This is further supported by the fact that the BRANSON name has been submitted and verified with the Trade Mark Clearinghouse, the SMD for this entry is 3241386999381137-1.
In addition, the Complainant has a significant reputation and has built up a vast amount of goodwill in the BRANSON name globally in relation to a wide range of goods and services. The Virgin Group originated in 1970 when Richard Branson began selling music records under the Virgin name and since that date it has expanded into a wide variety of businesses. As a result, the Virgin Group now comprises over 200 companies worldwide operating in 32 countries including throughout Europe and the USA. The number of employees employed by the Virgin Group of Companies is in excess of 40,000, generating an annual group turnover in excess of 4.6 billion pounds. Richard Branson and Virgin are synonymous with each other, both are extremely well known.
We can supply on request a signed Witness Statement from Victoria Wisener outlining the very wide ranging activities of the Virgin Group and the extent of their operations. The power of the VIRGIN name, Richard Branson’s personal reputation and the Virgin management styles are all factors which contribute towards the Virgin Group’s unrivalled and significant reputation in the terms VIRGIN and BRANSON.
The Respondent has no rights or legitimate interest in respect of the domain names in question. The domain name resolves to a click through site.
The Respondent has no affiliation with VEL or Richard Branson and has registered and is using the domain for the sole purpose of causing confusion.
Bearing in mind, there is no believable or realistic reason for registration or use of the domain name branson.guru.
The Complainant submits that the registration of these domains is a classic example of bad faith registration in accordance with 22.214.171.124 of the URS Procedure.
Bearing in mind the extent and nature of the Complainant’s reputation in BRANSON and Sir Richard Branson’s own personal reputation, it is impossible to envisage any legitimate purpose for registering the branson.guru domain name, other than to capita[l]ise or gain from the Complainant’s reputation in some way.
Respondent has not submitted a response to the Complaint or otherwise participated in this proceeding.
Despite the Respondent’s inaction, “[a]ll Default cases proceed to Examination for review on the merits of the claim.” URS, para. 6.3. And, in all URS proceedings, “[t]he burden of proof shall be clear and convincing evidence.” URS, para. 8.2. Accordingly, the Complainant must establish, by clear and convincing evidence, each of the following three elements:
1. that the registered domain name is identical or confusingly similar to a word mark: (i) for which the Complainant holds a valid national or regional registration and that is in current use; or (ii) that has been validated through court proceedings; or (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed; and
2. that the Registrant has no legitimate right or interest to the domain name; and
3. that the domain was registered and is being used in bad faith.
URS, paras. 1.2.6 and 8.1.
In other words, a complainant’s failure to establish any one of the above three elements by clear and convincing evidence must result in a decision rejecting the complainant’s requested relief. “If the Examiner finds that any of the standards have not been satisfied, then the Examiner shall deny the relief requested, thereby terminating the URS proceeding…” URS, para. 8.6.
As the URS itself states: “The URS is not intended for use in any proceedings with open questions of fact, but only clear cases of trademark abuse.” URS, para. 8.5.
The record makes clear that “the Complainant holds a valid national or regional registration and that [it] is in current use,” and that the registration is identical to the second-level portion of the disputed domain name, as required by paragraph 126.96.36.199 of the URS. Accordingly, Complainant has satisfied the first element of the URS.
Although the above is sufficient with respect to the first element of the URS, Complainant has provided minimal information about the BRANSON trademark other than citation to registrations in South Africa and at the Trade Mark Clearinghouse. These registrations alone do not support Complainant’s statement that “Complainant owns very extensive rights in BRANSON” or that Complainant has “significant reputation in the term…BRANSON.” The Examiner considers this relevant to both the second and third elements of the URS.
Further, the only use of the disputed domain name that has been provided by Complainant is what appears to be a generic, monetized parking page for the registrar, Go Daddy, which does not appear to include any references to Complainant, Richard Branson or the BRANSON trademark.
Taken together, these issues – that is, failure to establish in the record that the relevant trademark is strong plus the absence of any evidence that the domain name is currently being used in a manner that is associated with that trademark – do not convince this Examiner by clear and convincing evidence that the Registrant has no legitimate right or interest to the domain name or that the domain was registered and is being used in bad faith.
Given, as stated above, the early nature of these URS proceedings, the Examiner notes that the URS process is a narrow one and is “without prejudice to the Complainant… proceed[ing] with an action in [a] court of competent jurisdiction or under the UDRP,” URS, para. 8.5, where the record may be more fully developed and the factual and legal arguments not constrained by, among other things, the 500-word limit for URS complaints.
After reviewing the Complainant’s submissions, the Examiner determines that the Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name be RETURNED to the control of Respondent: <branson.guru>.
Douglas M. Isenberg, Examiner
Dated: March 20, 2014
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