A cybersquatting dispute panel has issued a finding of reverse domain name hijacking against Virgin.
The practice occurs where a party makes a bad-faith attempt to deprive a domain name holder of its domain.
The panel said Virgin Enterprises, the IP holding company for Virgin Group, was probably aware it did not have a legitimate case “and filed the complaint with the primary intent of obtaining the transfer of the disputed domain name in bad faith against no consideration”.
At issue was the domain name virginliving.com, registered by the respondent—who was listed as Domain Admin/This Domain is for Sale, Hugedomains.com—in February 2012.
Virgin filed a complaint under the Uniform Domain Name Dispute Resolution Policy with the World Intellectual Property Organization in October this year.
The respondent then filed a reply, but before both parties made further filings.
While Virgin owns many trademarks globally for ‘Virgin’, it applied for ‘Virgin Living’ in the US in September 2017.
The respondent registers and sells domain names.
According to the panel, Virgin’s only arguments to find likelihood of trademark confusion are that the ‘Virgin Living’ is “entirely fitting” with the company’s branding style and it can have “no other meaning for the public” than as a reference to Virgin.
However, the panel also said the respondent had performed an online survey showing that the public, which was only asked for a response to ‘What is Virgin Living?’, did not mention Virgin once.
The panel said almost two thirds of the respondents considered it a descriptive term and the rest did not know what ‘Virgin Living’ was.
Finding against Virgin on the point of trademark confusion, the panel said the survey showed that the public does not even associate the words ‘Virgin Living’ with Virgin.
Moving on to discuss whether the registrant had legitimate rights or interests in the domain, the panel again backed the respondent.
It said the respondent has registered over 750 domain names that start with the element ‘virgin’ and more than 1,600 domain names that end with the ‘living’, but there is no evidence suggesting that the disputed domain name was registered for “any other purpose other than because it consisted of such generic terms”.
“In this case, no evidence has been provided to establish that the respondent has engaged in registering domain names that take advantage of the complainant’s or third parties’ trademark rights.”
The panel added that the domain was registered five years before Virgin filed the US application.
After rejecting that the respondent had registered and/or used the domain in bad faith, the panel assessed the respondent’s request for a finding of reverse domain name hijacking, which the respondent had to prove.
The panel said that Virgin must have realised that the disputed domain name was one of many combinations of descriptive words that the respondent registered.
It said that Virgin cannot monopolise all combinations of dictionary words with the term ‘Virgin’, adding that Virgin had attempted to “mislead the panel on several occasions by presenting information as fact, which at closer examination was misleading or untrue”.
“The panel therefore finds that the complaint was made in bad faith as an attempt at reverse domain name hijacking,” the panel concluded on December 11.
Virgin, trademark, WIPO, domain names, reverse domain name hijacking
