Virgin Enterprises Limited v. Zhu Jie
Claim Number: FA1711001760252
Complainant: Virgin Enterprises Limited of London, United Kingdom.
Complainant Representative: Stobbs of Cambridge, United Kingdom.
Respondent: JieZhu of Putian, China.
Zhu Jie of Hangzhou, International, CN.
REGISTRIES and REGISTRARS
Registries: .TOP Registry
Registrars: Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn);
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.
Jonathan Agmon, as Examiner.
Complainant submitted: November 29, 2017
Commencement: November 30, 2017
Default Decision Date: December 20, 2017
Response Date: January 18, 2018
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").
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Complainant, Virgin Enterprises Limited of London, was founded in 1970 and has since expanded into a wide variety of businesses. Complainant now comprise over 200 companies worldwide, operating in 32 countries including throughout Europe and the US. Complainant employ approximately 40,000 people, generating an annual turn-over of 4.6 billion pounds sterling.
Complainant is the owner of Virgin Mobile, a famous telecommunications company with a global brand name.
Complainant owns rights in VIRGIN through trade mark registrations and through having had a validated entry made at the Trade Mark Clearinghouse. The SMD for this entry is 0000003261412946903992-1 (VIRGIN) and 0000003451498183206040-1 (VIRGIN MOBILE).
Complainant is the owner of 149 trademark registrations for the trademark “VIRGIN” and 90 registrations for the mark “VIRGIN MOBILE”. These registrations are in various jurisdictions, among them the EU and the US.
Complainant asserts the following regarding Respondent:
1. The registered domain name(s) is/are identical or confusingly similar to a word or mark [URS 1.2.6.1]: for which Complainant holds a valid national or regional registration and that is in current use
2. Registrant has no legitimate right or interest to the domain name [URS 1.2.6.2].
3. The domain name(s) was/were registered and are being used in bad faith [URS 1.2.6.3] as follows: by using the domain name, Respondent has intentionally attempted to attract for commercial gain, Internet users to Respondent’s web site or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on that web site or location. Respondent registered the <virginmobile.top> primarily for the purpose of disrupting the business of a competitor. Respondent has registered the domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name.
The domain name was directed to an inactive webpage when the complaint was filed and is currently blocked by the .TOP Registry.
The Respondent defaulted, and a Default Decision was handed down on December 20, 2017. The Respondent filed a response on January 18, 2018. The Response provides that the word “virgin” in the Chinese language is used to describe “mobile” and both are commonly used words in Chinese and is not specific to the Complainant. The Respondent also argued that the Complainant did not provide proof of its rights in China. The Respondent further argued that he registered the disputed domain name legally in 2017, some five years after the launch of the “.top” gTLD and that during this time the Complainant did not make any positive effort to obtain the disputed domain name. Finally, the Respondent argued that he registered the disputed domain name for his own use and has not made any bad faith use of the disputed domain name as it is inactive.
URS Procedure 6.4, provides the Respondent the right to seek relief from Default via de novo review by filing a Response at any time up to six months after the date of the Notice of Default.
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar to a word mark:
(i) for which 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.
Complainant is the owner of 90 trademark registrations for the mark VIRGIN MOBILE, including U.S. Reg. No. 76301009 in international classes 9, 35 and 38. <virginmobile.top> includes Complainant's mark in its entirety, together with the gTLD ".top".
Determined: Finding for Complainant
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
The Complainant provided sufficient evidence to make a prima facie case that the Respondent lacks rights or legitimate interest in the disputed domain name. There is no evidence that Respondent is known as VIRGIN MOBILE. The domain name was directed to an inactive webpage when the complaint was filed and is currently blocked by the Registry .TOP. The burden therefore shifted to the Respondent to show rights or legitimate interests in the disputed domain name. The Respondent arguments were considered in full and are found not persuasive. The fact that the Complainant did not register the disputed domain name when the .TOP Registry was launched does not confer legitimate right or interest to the Respondent. The Respondent has brought no evidence to show that he has legitimate right or interest to the disputed domain name. Complainant has met its burden and the Respondent failed to bring the necessary evidence and thereof finding is made for the Complainant.
Determined: Finding for Complainant
[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 disputed domain name
registration to 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 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.
It is suggestive of the Respondent's bad faith that the trademark of the Complainant was registered long before the registration of the disputed domain name. In this case, the fame of the Complainant’s VIRGIN trademark also suggests that there is no plausible good faith use to which the disputed domain name may be put to. The disputed domain name registration has prevented the complainant from reflecting their mark in a corresponding domain name.
The Respondent argument is that he has taken the disputed domain name in good faith for personal purposes and is not using the disputed domain name in bad faith and for commercial gain as it is inactive. The Respondent argued the disputed domain was inactive because he failed to verify his name with the China Ministry of Industry and Information Technology (MIIT).
The fact that a disputed domain name is not used will not prevent a finding of bad faith under some circumstances. It is the totality of circumstances that the panel must look too. This case is no different. The Respondent made no effort to complete the Name Verification Process required by the MIIT nor made or claim to make any preparations for a legitimate or fair use of the domain name. While on its own failure to comply with the Real Name Verification system should not be viewed as bad faith use and registration of a domain name, when such failure is continuous, in this case over many months, leading the authorities to put the domain name on hold, it is suggestive of the Respondent efforts to conceal his real identity and that he has no intent on using the domain name. Under the particular circumstances of this case, such behaviors are considered a badge of bad faith registration and use of the domain name.
Given the notoriety of the Complainant’s VIRGIN trademark, the fact that it was registered long before the disputed domain name was registered, the failure of the Respondent to verify his name with the Chinese authorities, to provide any evidence of preparation to make good faith use of the disputed domain name, to respond to letters sent to him and the implausibility of any good faith use to which the domain name may be put, the Panel draws the inference that the disputed domain name was registered and used in bad faith.
Determined: Finding for Complainant
After reviewing the parties’ submissions, the Examiner determines that
Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby orders the following domain names be SUSPENDED for the duration of the registration.
1. <virginmobile.top>
Jonathan Agmon, Examiner
Dated: January 19, 2017
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