Westmore · UDRP DecisionVirginreality.com
The Panel ordered transfer of <virginreality.com>. It found the domain confusingly similar to the Complainant’s registered VIRGIN marks because it incorporated VIRGIN in full and the addition of the generic word “reality” did not avoid confusing similarity. The Respondent claimed the domain described a proposed reality television show promoting virginity and sexual abstinence, but supplied no supporting evidence, and the domain instead redirected to a website presenting unrelated television and film projects. Given the reputation of the VIRGIN marks, the unsupported explanation for selecting the domain, and its use to redirect traffic, the Panel found no rights or legitimate interests and concluded that the domain was registered and used intentionally to attract Internet users for commercial gain through likely confusion.
The timeline behind virginreality.com
Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.
Westmore reconstructs the full history behind virginreality.com — from public RDAP and the Internet Archive — as part of UDRP Intelligence:
This decision illustrates that invoking a trademark term’s dictionary meaning may be insufficient where the claimed descriptive project is unsupported and the domain’s actual use does not correspond to that explanation. The Panel’s analysis turned less on whether “virgin” can have an ordinary meaning and more on the absence of demonstrable preparations, the unrelated redirect destination, the marks’ reputation, and the Respondent’s failure to deny prior awareness.
Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Virgin Enterprises Limited v. Al Fernandez Case No. D2016-1509 1. The Parties The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Stobbs IP Limited, United Kingdom. The Respondent is Al Fernandez of Palm Springs, California, United States of America (“USA”), self- represented. 2. The Domain Name and Registrar The disputed domain name <virginreality.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2016. On July 26, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On July 27, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 10, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2016. The Response was filed with the Center on August 29, 2016. The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on September 6, 2016. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background The Complainant belongs to the Virgin Group which comprises over 300 companies worldwide operating in 32 countries including throughout Europe and the USA. In 2014 the Virgin Group employed in excess of 64,000 people, generating an annual group turnover in excess of EUR 21 billion. The Complainant is the owner of a number of European Union and United Kingdom trade mark registrations consisting of VIRGIN, of which the oldest European Union trade mark was filed on April 1, 1996 and registered on September 4, 1998 under number 217182, and the oldest United Kingdom trade mark was registered on April 11, 1973 under number 1009534 (hereafter referred to as the “Trade Marks”). The Respondent registered the Domain Name on August 10, 2009. The Domain Name redirects to a website at “www.tricomtv.com”, which contains information on various TV and film projects. 5. Parties’ Contentions A. Complainant The Complainant contends that the Domain Name is confusingly similar to the Trade Marks as it contains the word “Virgin”, of which the Trade Marks consist. According to the Complainant, the Respondent has no rights in relation to the Domain Name. The Complainant submits that, in view of the reputation of the Trade Marks and the Complainant’s operations in a wide range of activities since as early as 1970, there is no believable or realistic reason for registration or use of the Domain Name, other than to take advantage of the Complainant’s Trade Marks. The Complainant puts forward that, in view of the reputation of the Trade Marks, the Domain Name has been registered and is being used to attract visitors to the website at “www.tricomtv.com” thinking that they have reached an official site of the Complainant. B. Respondent The Respondent puts forward that the word “Virgin” has been used in the Bible many times and that the Domain Name is not identical or confusingly similar to the Trade Marks. According to the Respondent, the Domain Name was purchased to help the Youth of the World. The Respondent submits it has created a reality television show, and is in negotiations with Bud Grant Productions, a former President of CBS Studio’s, to help give support and understanding of the value of being a virgin. The Respondent contends that the teenage pregnancy rate in the United States is overwhelming and that sexual abstinence is important for the young people of the world. As the definition of “Virgin” is a person who has never had sexual intercourse, according to the Respondent the Domain Name is the most accurate for its reality television show. In addition, the Respondent points out that the word “Virgin” has been used in the title of a number of films, television shows and books. The Respondents submits that the Domain Name currently redirects to a website at “www.tricomtv.com” as this is the website of the project writer who is looking for producers or distributors. 6. Discussion and Findings A. Identical or Confusingly Similar Although the word “Virgin” is a dictionary word – and indeed a word used in the English translation of the Bible – the Complainant has shown that it has valid registered rights in the Trade Marks consisting of VIRGIN. The Domain Name is confusingly similar to the Trade Marks as it incorporates the Trade Marks in their entirety. The addition of the generic word “reality” does not avoid the confusing similarity of the Domain Name and the Trade Marks (see also WIPO Overview of WIPO Panel views on selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.9 ). The generic Top-Level Domain (“gTLD”) “.com” is typically disregarded under the confusing similarity test, since it is a technical registration requirement (see WIPO Overview 2.0 , paragraph 1.2 ). Therefore, the Panel finds that the Domain Name is confusingly similar to the Trade Marks in which the Complainant has rights. B. Rights or Legitimate Interests The Complainant has to make out a prima facie case that the Respondent does not have rights or legitimate interests in the Domain Name ( WIPO Overview 2.0 , paragraph 2.1 ). The Complainant has stated – and the Respondent has not disputed - that the Respondent does not have rights in the Domain Name. However, the Respondent has argued that it has a legitimate interest in the Domain Name as it would be an accurate description of a reality TV show the Respondent is working on, which is aimed at young people and which, the Panel understands, would emphasize the value of being a virgin and of sexual abstinence. The Panel notes that this argument does not explain why the Domain Name redirects to a website at “www.tricomtv.com” where TV and film projects are on offer which bear no relation to this theme. In addition, the Respondent has not provided any evidence (such as a script, format or pilot) of this reality TV show nor of its alleged negotiations about the production of the show with Bud Grant Productions. A Google search on “Bud Grant Productions” confirmed that this is the name of the company Bud Grant, a former president of CBS Studio’s, incorporated in 1987 upon leaving CBS, but that search did not result in any current information on that company. In addition, the Google search revealed that Bud Grant has died in 2011. In view of the reputation of the Trade Marks, and in the absence of any documentary support for the Respondent’s story on his choice of the Domain Name and/or its demonstrable preparation of its alleged legitimate use, the Panel concludes that the use of the Domain Name to redirect to a website at “www.tricomtv.com” cannot be considered use of the Domain Name for a bona fide offering of goods or services, nor a noncommercial or fair use of the Domain Name. Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith The Respondent has not denied that it was aware of the Trade Marks when registering the Domain Name. The fact that the Domain Name redirects to another website is an indication that it is used to attract traffic to that website. In view of these circumstances and (i) the fact that the Domain Name includes the Trade Marks in their entirety, (ii) the reputation of the Trade Marks and (iii) the lack of substance and evidence for the Respondent’s explanation why it chose the Domain Name, the Panel concludes that the Respondent’s choice and use of the Domain Name have been to intentionally attempt to attract, for commercial gain, Internet users to the website or other online location creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website to which the Domain Name redirects in accordance with paragraph 4(b0(iv) of the Policy. Therefore, the Panel finds that the Respondent has registered and is using the Domain Name in bad faith. 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <virginreality.com> be transferred to the Complainant. Wolter Wefers Bettink Sole Panelist Date: September 19, 2016
Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.
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