VIRGIN mark: another UDRP.
Virgin Enterprises Limited of London, United Kingdom, continues to go after domains that incorporate the keyword “virgin.”
Despite VIRGIN being a famous mark, the company has been targeting domains that are unrelated to the services that the mark represents. In some cases, there is marginal connection but the domain gets lost regardless.
A UDRP against the domains VirginAI.com and VirginBot.com challenged their ownership by the Respondent, Chen Jin Zhu / ιθΏζ± of Guangzhou, Guangdong, China.
According to the UDRP:
The Respondent is an individual located in China and the registrant of the disputed domain names. He describes himself as a programmer. His email address is associated with approximately 25 other domain name registrations.
The disputed domain name <virginai.com> was registered on July 2, 2016 and the disputed domain name <virginbot.com> was registered on April 11, 2016. Neither disputed domain name resolves to an active website.
Representing himself, the Respondent stated the following:
Although the Complainant enjoys trademark rights in VIRGIN in a number of areas, the Respondent questions whether the Complainant enjoys those rights in emerging areas such as artificial intelligence. The Respondent suspects that the Complainant is abusing its trademark rights through an excessive interpretation that any word containing “virgin” infringes its rights. “Virgin” is an ordinary English word, not invented by the Complainant and everyone has the right to use it. The Respondent has coined the neologisms “virginai” and “virginbot” with different meanings from “virgin”. They represent a “pure robot”, rather than “Virgin artificial intelligence”, as the Complainant asserts.
The Respondent has rights and legitimate interests in the disputed domain names. “Virgin” is a generic word that everyone has the right to register as a domain name. The registration of the disputed domain names reflect the Respondent’s understanding of artificial intelligence, that it is pure and noble. The Respondent hopes that his products will also possess this characteristic. The disputed domain names have nothing to do with the Complainant.
The Respondent did not register and is not using the disputed domain names in bad faith. The Respondent explains that he registered both disputed domain names out of his personal ideal after the AlphaGo artificial intelligence program defeated a human opponent in a match of Go in 2016. He strongly hoped to dedicate himself to artificial intelligence and, after several days of sleepless reflection, he registered the disputed domain names. The Respondent did not register both disputed domain names to sell them for money or to make money from fraud. He has never sold a domain name. His products are not yet online. There is no possibility of making money out of products with the Complainant’s brand.
The WIPO panelist, Matthew Kennedy, stated:
The Respondent asserts that the terms “virginai” and “virginbot” have different meanings from “virgin”. Even if that were correct, the Panel finds that the Complainant’s VIRGIN trademark is clearly recognizable in both disputed domain names on a visual comparison and that confusion remains likely.
With respect to the first and third circumstances, neither disputed domain name resolves to an active website. There is no evidence of preparations to use the disputed domain names in connection with a bona fide offering of goods or services or of any legitimate noncommercial or fair use.
The disputed domain names wholly incorporate the Complainant’s VIRGIN trademark except for the addition of the minor additional elements “ai” or “bot” and a gTLD suffix. Given these circumstances and the findings in Section 6.2B above, the Panel finds that the disputed domain name is being used in bad faith.
From the UDRP document, it’s evident that the Respondent’s perception of English might not be very polished. He also requested that the complaint be filed in Chinese, but the panelist denied their request, citing the Complainant’s statement that the Respondent is in possession of several other domains that contain English words.
What are some of these domains?
caibot.com
cbavr.com
dictbot.com
gifvr.com
qianbot.com
youbot.xyz
Definitely all related to the AI, VR or (ro)Bot genre – which indicates there is no bad faith pattern here.
A very bizarre case, in our opinion, and the outcome was the loss of both domains to the Complainant.
I think the issue was precedent. An alternative decision could open the door for all clearly trademarked words to be appended slightly and there would be a precendent set by this case to support future similar cases. This decision reinforces the importance of avoiding trademarked terms whereever possible. The mere question of possible UDRP action probably substantially diminishes the value of the IP.
David – The problem with that approach is that any generic word such as “apple” would then become owned by the trademark holder, that was issued the mark for a particular class of products or services. In the case of “virgin” the weight of the decision seems to have been the lack of any bona fide use. The domains did not resolve.
What you’re saying holds water when fanciful marks are involved. E.g. MicrosoftBot or XeroxAI would both be clear-cut cases.
Branson is a smiling assassin