URS DEFAULT DETERMINATION

 

Virgin Enterprises Limited v. dominique Saviano

Claim Number: FA1608001691848

 

DOMAIN NAME

«virginpulse.vip»

 

PARTIES

Complainant:  Virgin Enterprises Limited of London, United Kingdom.

Complainant Representative:  Julius E Stobbs

Complainant Representative: Stobbs of Cambridge, United Kingdom.

 

Respondent:  dominique Saviano of Marlborough, Massachusetts, US.

 

REGISTRIES and REGISTRARS

Registries:  Minds + Machines Group Limited

Registrars:  GoDaddy.com, LLC

 

EXAMINER

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.

 

Fernando Triana, Esq., as Examiner.

 

PROCEDURAL HISTORY

Complainant submitted: August 31, 2016

Commencement: September 1, 2016   

Default Date: September 16, 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

 

1.    Complainant’s trademark VIRGIN has been registered around the world before several Trademark Offices since 1975 (in Botswana, the European Union Intellectual Property Office, Ethiopia, Gambia, Ghana, Kenya, Mauritius, Mozambique, Namibia, Nigeria, OAPI, Rwanda, South Africa, Uganda, the United States of America, Zambia, Zimbabwe and the United Kingdom) in international classes 1, 2, 4, 6, 7, 8, 10, 13, 15, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 34, 37 and 40.

 

2.    Complainant’s trademark VIRGIN PULSE has been registered before the USPTO and the Canadian Trademark Office since 2013 in international classes 9, 35, 39, 41, 42 and 44.

 

3.    The disputed domain names are identical to the trademarks owned by Complainant.

 

4.    Respondent does not have legitimate interests or rights over the disputed domain names.

 

5.    Respondent registered the disputed domain name is bad faith.

 

As per the Paragraph 9 (c) of the URS Rules, the Examiner will determine in which language to issue its Determination. Taking into account that Complainant submitted the Complaint in English and that no Response was filed, the Examiner will decide in English.

 

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.

 

Identical and/or Confusingly Similar

 

Concerning the first element, Paragraph 1.2.6.1., of the URS Procedure introduces that to obtain an order to suspend a domain name; the disputed domain name should be 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.

 

Furthermore, the use of said trademark could be shown by:

 

a.         Demonstrating evidence of use – which can be a declaration and one specimen of current use in commerce – was submitted to, and validated by, the Trademark Clearinghouse.

 

b.         Providing a sample of use submitted directly with the URS Complaint”.

 

a)     Existence of a trademark in which the Complainant has rights and is in current use

 

Complainant proved its rights on the trademark VIRGIN, which has been registered since 1975 in Botswana and has also been registered in the European Union Intellectual Property Office, Ethiopia, Gambia, Ghana, Kenya, Mauritius, Mozambique, Namibia, Nigeria, OAPI, Rwanda, South Africa, Uganda, the United States of America, Zambia, Zimbabwe and the United Kingdom, in international classes 1, 2, 4, 6, 7, 8, 10, 13, 15, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 34, 37 and 40.

 

Furthermore, Complainant proved its rights on the trademark VIRGIN PULSE in the United States of America and Canada since 2013 in international classes 9, 35, 39, 41, 42 and 44.

 

This information appears to be incontestable and conclusive evidence of Complainant’s ownership of the cited trademarks and the exclusive right to use them in connection with the corresponding services. The registration of a trademark is prima facie evidence of validity, which creates a rebuttable presumption that the trademark is inherently distinctive[1].

 

Furthermore, Complainant filed evidence of current use in commerce.

 

Therefore, the Examiner concludes that Complainant has demonstrated to be the owner of a valid trademark registration which is in current use for purposes of Paragraph 1.2.6.1.(i), of the URS Procedure.

 

b)   Identity or confusing similarity between the disputed domain name and the Complainant’s trademark

 

The Examiner considers that the reproduction of the trademark VIRGIN and VIRGIN PULSE, by the disputed domain name ««virginpulse.vip», is sufficient ground to establish that the disputed domain name is confusingly similar to the trademark[2]. Specially since the disputed domain name reproduces entirely Complainant’s trademark without any other distinctive elements. Consequently, consumers will assume that the owner of the disputed domain name is Virgin Enterprises Limited.

 

Thus, by registering the disputed domain name, Respondent creates a likelihood of confusion with Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the disputed domain name.

 

In consequence, as per this reasoning, the Examiner finds that, in the present case, the disputed domain name is confusingly similar to Complainant’s trademark and thus, the requirement set forth in Paragraph 1.2.6.1., of the URS Procedure is duly complied with.

 

Registration and Use in Bad Faith

 

Paragraph 1.2.6.3., of the URS Procedure, includes a non-exclusive list of circumstances that demonstrate bad faith registration and use by Respondent, as follows:

 

a.    Respondent has registered or acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the disputed domain name; or

 

b.    Respondent has registered the disputed domain name in order to prevent the trademark holder or service mark from reflecting the trademark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

c.    Respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

 

d.    By using the disputed domain name Respondent has intentionally attempted to attract for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark 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.

 

Complainant asserts that the disputed domain name was registered in bad faith since Respondent registered the domain name for the purpose of selling it and to disrupt the business of a competitor.

 

As per Complainant as a response to an amicable solution, Respondent offered to sell the disputed domain name for valuable consideration in excess of documents out of pocket costs.

 

Furthermore, according to the evidence filed the disputed domain name is currently inactive.

 

As stated by the Panel in State Farm Mut. Auto. Ins. Co. v. Sotelo, the requirement of use in bad faith does not require that it prove in every instance that a respondent is taking positive action.

 

The mere failure to make an active use of the disputed domain name is indicative of bad faith registration and use pursuant to Subparagraph c) of the Paragraph 1.2.6.3., of the URS Procedure[3].

 

Furthermore, the Panel finds that since VIRGIN PULSE is neither generic nor descriptive, is not a coincidence that Respondent selected the trademark VIRGIN PULSE to include it in the disputed domain name.

 

Thus, the Examiner concludes that Respondent registered the disputed domain name for the purpose of disrupting Complainant’s business.

 

Furthermore, Respondent’s use of the disputed domain name does not fall into the category of bona fide offering of goods or services, Respondent is not commonly known by the disputed domain name and the use made of the disputed domain name misleads divert consumers.

 

As per this reasoning, the Examiner finds that, in the present case, the disputed domain name was registered and is being used in bad faith, thus, the requirement set forth in Paragraph 1.2.6.3., of the URS Procedure is duly complied with.

 

Rights or Legitimate Interests

 

Paragraph 8.3 of the URS Procedure explains the extent of the second element as established in Paragraph 1.2.6.2., of the URS Procedure which is that Registrant has no legitimate right or interest to the disputed domain name. In a URS procedure, Complainant’s burden of proof regarding Registrant’s lack of rights or legitimate interest in the disputed domain name, is limited present adequate evidence to substantiate Complainant’s trademark rights in the disputed domain name, such as, evidence of a trademark registration and evidence that the disputed domain name was registered and is being used in bad faith in violation of the URS.

 

As per the URS requirements, Complainant’s burden of proof has been met, regarding Registrant’s lack of rights or legitimate interest in the disputed domain name, as Complainant has successfully shown evidence to substantiate its trademark rights, such as, the trademark registration VIRGIN since 1975 and VIRGIN PULSE since 2014.

 

Moreover, as established in Paragraph 8.3 of the URS Procedure, Complainant has demonstrated that the disputed domain name was registered and is being used in bad faith in violation of the URS, as studied and shown before.

 

Finally, Complainant asserts that Respondent lacks legitimate interest or rights over the disputed domain name.

 

Consequently, the Examiner finds that, in the present case, Respondent has no legitimate right or interest to the disputed domain names, thus, the requirement set forth in Paragraph 1.2.6.2., of the URS Procedure is duly complied with.

 

FINDING OF ABUSE  or MATERIAL FALSEHOOD

 

The Examiner finds that the Complaint was neither abusive nor contained material falsehoods.

 

DETERMINATION

After reviewing the Complainant’s 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 that the disputed domain name «virginpulse.vip» be SUSPENDED for the duration of the registration.

 

 

Fernando Triana, Esq., Examiner

Dated:  September 16, 2016