Virgin Enterprises Limited v. STEFANO PINO et al.
Claim Number: FA1703001721574
Complainant: Virgin Enterprises Limited of London, United Kingdom.
Complainant Representative: Stobbs of Cambridge, United Kingdom.
Respondent: Stefano Pino of Grosseto, Unknown, Italy.
STEFANO PINO of GROSSETO, GR, International, IT.
REGISTRIES and REGISTRARS
Registries: ARUBA S.p.A.
Registrars: Tucows Domains Inc.
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.
Richard W. Hill, as Examiner.
Complainant submitted: March 14, 2017
Commencement: March 15, 2017
Response Date: March 29, 2017
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.
Pursuant to URS Procedure 4.2, the Forum has issued the Notice of Complaint in both English and Italian.
Respondent has submitted his Response in Italian, which is permitted pursuant to URS Rule 9(b).
The Examiner is fluent in both English and Italian, so URS Rule 9(c) is satisfied. Pursuant to the rules, the Examiner determines that he will issue the Determination in English.
In his Response, Respondent argues that his due process rights have been violated because the Complaint was not translated into Italian, and English is not his mother tongue. He further argues that the URS Procedure is not consistent with accepted international arbitration rules and Italian law, but he does not cite any specific provisions of Italian law. For the reasons set forth below, the Examiner will not make any determinations regarding these allegations.
URS Procedure 1.2.6 requires Complainant to prove, by clear and convincing evidence, each of the three elements listed below 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.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
[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 online 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.
URS Procedure 8.1 reaffirms that the burden of proof shall be clear and convincing evidence.
URS Procedure 8.3 states that for a URS matter to conclude in favor of Complainant, the Examiner shall render a Determination that there is no genuine issue of material fact. It goes on to state that Complainant must present evidence that the domain name was registered and is being used in bad faith in violation of the URS.
Pursuant to URS Procedure 8.4, if the Examiner finds that Complainant has not met its burden, the Examiner will reject the Complaint under the relief available under the URS.
Pursuant to URS Procedure 8.5, if a Complaint is denied, the proceeding will be terminated without prejudice, e.g., a URS Appeal, UDRP, or a court proceeding may be utilized.
URS Procedure 8.6 summarizes the above:
“To restate in another way, if the Examiner finds that all three standards are satisfied by clear and convincing evidence and that there is no genuine contestable issue, then the Examiner shall issue a Determination in favor of the Complainant. 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 without prejudice to the Complainant to proceed with an action in court of competent jurisdiction or under the UDRP.”
The Examiner will discuss the three elements of the URS in light of the burden of proof. This is, of course, without prejudice to what might be found in the course of a UDRP proceeding, which has a different standard of proof and allows greater opportunities for the presentation of the parties’ arguments.
The registered domain name(s) is/are identical or confusingly similar to a word mark
Complainant states that it has a significant reputation and has a vast amount of goodwill in the VIRGIN name globally. The Virgin Group originated in 1970 and has since 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 Virgin Group employ in excess of 40,000 people, generating an annual turnover of 4.6 billion pounds. Launched in 1984 VIRGIN ATLANTIC currently carries over 4 million passengers a year. The company turnover in 2013 was £2.58 billion. The total number of passengers carried in 2010 was over 5 million. The total marketing spend in 2014 was some 53 million pounds.
Complainant has provided evidence that it owns the registered trademark VIRGIN ATLANTIC. The registered domain name is clearly identical to Complainant’s mark. Respondent does not address this issue in his response. The Examiner determines that Complainant has satisfied its burden of proof for this element of the URS Procedure.
Registrant has no legitimate right or interest to the domain name
Complainant states that when it clearly stated its case for objecting to the domain, the owner did not, when given the opportunity, indicate any legitimate interest.
However, in his Response, Respondent has indicated an interest that may be legitimate, namely to use the registered domain name to publish an English translation of a novel that he is planning to write, titled “vergine atlantica” which would be about trafficking of virgins to the new world.
Respondent does not provide any evidence to support his allegation.
For the reasons given below, the Examiner will not make a determination for this element of the URS Procedure.
The domain name(s) was/were registered and is being used in bad faith
Complainant alleges that, bearing in mind the reputation of its VIRGIN brand, and the fact that Respondent asked it to bid for the domain name when it approached Respondent, it is difficult to find reason to believe that the domain was registered for any reason other than to sell it to Complainant for an amount in excess of out of pocket costs.
Complainant does not provide any evidence to support this allegation. Respondent denies the allegation. The Examiner finds that Complainant has failed to satisfy its burden of providing clear and convincing evidence.
Similarly, the Examiner finds that Complainant has failed to satisfy its burden of providing clear and convincing evidence to support its allegations to the effect that Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor (as required by URS Procedure 1.2.6.3.c), or that Respondent has engaged in a pattern of registering domain names in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name (as required by URS Procedure 1.2.6.3.b).
Complainant alleges that Respondent, by using the registered domain name, has intentionally attempted to attract increased traffic to the web site which the domain resolves to, and that Respondent is profiting from this.
But Complainant provides evidence to show that the registered domain name is not being used, and Respondent states that the registered domain name is not being used. Consequently, the Examiner finds that Respondent has not intentionally attempted to attract, for commercial gain, Internet users to his web site.
Complainant cites previous URS determinations in its favor. But those previous determinations must be distinguished from the present case. In case no. FA1507001627578 Respondent did not explain for what purpose he has registered a domain name equivalent to the Complainant's mark, whereas Respondent has provided an explanation in the present case. In cases nos. FA1603001667148 and FA1608001691854 there was no Response, whereas there was a Response in the present case.
For the reasons given above, the Examiner determines that Complainant has not met its burden of proof for this element of the URS Procedure.
The Examiner finds that the Complaint was not brought in an abuse of this proceeding and that it did not contain material falsehoods.
After reviewing the parties’ 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 names be RETURNED to the control of Respondent.
<virgin-atlantic.cloud>
Richard W. Hill, Examiner
Dated: March 29, 2017
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