URS FINAL DETERMINATION


Virgin Enterprises Limited v. Future Digital Media Ltd et al.
Claim Number: FA1603001667147


DOMAIN NAME

<virginmedia.solutions>


PARTIES


   Complainant: Virgin Enterprises Limited of London, United Kingdom
  
Complainant Representative: Stobbs Julius E Stobbs of Cambridge, United Kingdom

   Respondent: Rahim Hankin of Durham, United Kingdom
  

REGISTRIES and REGISTRARS


   Registries: Silver Cover, LLC
   Registrars: Godaddy LLC

EXAMINER


   The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
   Antonina Pakharenko-Anderson, as Examiner

PROCEDURAL HISTORY


   Complainant Submitted: March 24, 2016
   Commencement: March 24, 2016
   Response Date: March 29, 2016
   Having reviewed the communications records, the Examiner finds that the 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").

RELIEF SOUGHT


   Complainant requests that the domain name be suspended for the life of the registration.

STANDARD OF REVIEW


   Clear and convincing evidence.

FINDINGS and DISCUSSION



   Findings of Fact: Complainant owns rights in the VIRGIN and VIRGIN MEDIA trademarks registered for the goods in classes 9, 35, 36, 38, 41, 42, based on a number of UK and CTM trade mark registrations, the status and confirmation of use in which are supported by relevant entries with the Clearinghouse, copies of which are attached to the complaint. .

  

URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.


[URS 1.2.6.1] The registered domain name(s) is/are 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.

Determined: Finding for Complainant 


The disputed domain name incorporates the VIRGIN MEDIA trade mark in it's entirety, adding only the suffix "solutions", which, being a top-level domain, is not relevant for the assessment whether the disputed domain name is identical and/or confusingly similar to the registered trademark in question. The omission of a space between the two word elements of the mark which are due to the rules of forming domain names does not affect this assessment either. The Examiner thus finds that the disputed domain name is identical to the Complainant’s “Virgin Media” trade mark.


[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.

Determined: Finding for Complainant 


The domain name resolves to a website with no active content, reflecting a notice “website coming soon”. The domain is thus not being put to any legitimate use. Respondent did not provide any substantial evidences in support of his legitimate interest in the domain name. The Examiner finds that the Complainant has established that the Respondent has no rights or legitimate interests in the <virginmedia.solutions>.


[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
  a. Registrant has registered or acquired the 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
  b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
  d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.

Determined: Finding for Complainant 


Given the longstanding use of Complainant's marks since 1970 and the reputation gained through extensive use, the Examiner finds that the disputed domain name was registered having the Complainant marks in mind in an effort to trade off of the goodwill and reputation associated with Complainant's marks. Previous Panels have found bad faith in circumstances where it is unlikely that the registrant would have selected the domain name without knowing about the fame and reputation of the well-known trademark corresponding to the domain name in question. Registrant’s passive use of the domain name serves as yet another evidence of bad faith. The consent to transfer expressed by Respondent in the absence of any evidence that the parties have reached a settlement agreement, which would serve as a ground for the termination of the proceedings under URS Rule 15, the Examiner, when finding Complainant has provided clear and convincing evidences in support of all three elements of the policy, is restricted to the only award on suspension of the domain name for the balance of the registration period under URS Rule 14(a). The expressed consent to transfer does not negate the fact that the choice of the domain name was linked to the fame of Complainant’s marks. The Examiner thus finds that the Complainant has established the third policy element under URS 1.2.6.3.


FINDING OF ABUSE or MATERIAL FALSEHOOD


The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods.

Respondent has alleged that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods. 

The Examiner finds as follows:


  1. The Complaint was neither abusive nor contained material falsehoods. 

Respondent's allegations concerning his offers of domain transfer are not sufficiently persuasive in light of the reputation and fame of the marks involved.


DETERMINATION


After reviewing the parties’ submissions, the Examiner determines that the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be SUSPENDED for the duration of the registration:

  1. virginmedia.solutions

 


Antonina Pakharenko-Anderson
Examiner
Dated: April 1, 2016

 

 

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