#Virgan UDRP : #Trademark can also be a slang word, says the #WIPO

The domain name Virgan.com was registered in 2005, making it a 13 year old domain asset.

Laboratoires Thea of Clermont-Ferrand, France, filed a UDRP at the WIPO in order to take over the domain.

The Complainant possesses several international trademarks for VIRGAN in Europe, but the one at the USPTO expired in 2014 as they didn’t renew it.

The Respondent is in the business of registering domain names with a generic meaning; according to their response, Virgan is a surname and a colloquial or slang variant of “Virgin.”

When the Complainant offered $1,000 dollars to acquire Virgan.com, the Respondent countered with $18,000 dollars, and the French company filed the UDRP.

Sole panelist, Stephanie G. Hartung, found no evidence of the domain’s registration being in bad faith, stating the following:

“The Panel supports the UDRP panels’ consensus view that the general practice of registering a domain name for subsequent resale is not by itself an indication of a bad faith registration and use. In the case at hand, the general nature of the domain name is that of a short term with no specific meaning, which Respondent registered together with a large number of similar domain names already 13 years ago for its potential value on the secondary market. The case file lacks any clear indication that Respondent targeted Complainant’s trademark when registering the disputed domain name.”

With all this in mind, the domain transfer of Virgan.com to the Complainant was denied.

Full details of this case follow:

WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Laboratoires Thea v. Tech Admin, Virtual Point Inc.
Case No. D2018-0039

1. The Parties

Complainant is Laboratoires Thea of Clermont-Ferrand, France, represented by Harlay Avocats, France.

Respondent is Tech Admin, Virtual Point Inc. of Irvine, California, United States of America (“United States”), represented by Lewis & Lin, LLC, United States.

2. The Domain Name and Registrar

The disputed domain name <virgan.com> is registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 9, 2018. On January 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 9, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on January 11, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 31, 2018. Due to an administrative oversight regarding notification of the Complaint, on January 12, 2018, the Center informed the Parties that the due date for Response was extended to February 1, 2018. The Response was filed with the Center on February 1, 2018.

The Center appointed Stephanie G. Hartung as the sole panelist in this matter on February 15, 2018. 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

Complainant is a company under the laws of France that is specialized in the development and manufacture of ophthalmological products.

Complainant has provided evidence that it is the registered owner of numerous trademarks relating to the designation “virgan” including, inter alia:

– Word mark VIRGAN, Institut National de la Propriété Industrielle (INPI), Registration No.: 93456516, Registration Date: February 23, 1993, Status: Active;

– Word mark VIRGAN, International Registration No.: 647540, Registration Date: November 16, 1995, Status: Active;

– Word mark VIRGAN, European Union Intellectual Property Office (EUIPO), Registration No.: 011368289, Registration Date: November 22, 2012, Status: Active.

Complainant, moreover, had registered a national United States trademark (word mark) VIRGAN (United States Patent and Trademark Office (USPTO) No. 7. 77066514), which was filed on December 18, 2006, published for opposition on December 25, 2007, registered on March 11, 2008 and finally cancelled on October 17, 2014 because Complainant did not file a declaration of use in commerce of said trademark within the meaning of Section 8 of the Lanham Act under United States Law.

Respondent is a company under the laws of the United States which was incorporated on January 22, 2007 by Mr. Dave Lahoti who still is Respondent’s owner and operator. The disputed domain name was created on April 21, 2005. As of the time of the rendering of this decision, the disputed domain name resolves to a website at “www.virgan.com” which redirects Internet users to a variety of third party websites all of which are operated under domain names starting with the designation “virgan”. On February 13, 2017, Complainant sent a cease and desist letter to Respondent through the “contact us” button on Respondent’s website at “www.virgan.com” and the parties subsequently exchanged various emails through May 2, 2017, in which they negotiated on a potential acquisition of the disputed domain name by Complainant, whereby Respondent asked for a minimum sales price of USD 5,800, while Complainant offered a maximum purchase price of USD 1,000.

Complainant requests that the disputed domain name be transferred to Complainant.

5. Parties’ Contentions

A. Complainant

Complainant contends that it started commercializing its “VIRGAN” products in France back in September 1996 and has today reached out into 34 countries worldwide. Only recently, Complainant took the business decision to register domain names related to its VIRGAN products and trademarks. Complainant claims that VIRGAN is a distinctive invented word which is meanwhile well-known throughout the world in connection with Complainant.

Complainant submits that the disputed domain name is identical to Complainant’s VIRGAN trademark as it consists of the latter in its entirety.

Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services, but rather has put it up for sale on its website “www.virgan.com” on April 4, 2017 for a price of USD 18,000 and later on December 19, 2017 with no specific price quote, (2) Respondent is not commonly known by the disputed domain name, but only as “Virtual Point”, and (3) Respondent is not making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain.

Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) Respondent was incorporated only on January 22, 2007, and, therefore, may have become the owner of the disputed domain name by means of a transfer and, thus, a new registration process at the earliest by then, (2) several of Complainant’s trademarks were registered prior to the registration of the disputed domain name by Respondent, in particular the national French as well as the International trademark registration and Respondent had the obligation to conduct a prior rights search in order to avoid the registration of a trademark abusive domain name, (3) Complainant has been commercializing its VIRGAN products under that name in many countries since 1996 so that Respondent could not ignore the existence of Complainant’s prior VIRGAN trademarks rights when registering the disputed domain name, (4) the disputed domain name is not used by Respondent in connection with a bona fide offering of goods or services, but for a website that merely displays hyperlinks which are likely to be pay-per-click links, (5) until Complainant contacted Respondent in early 2017, the website at “www.virgan.com” offered the disputed domain name for a sales price of USD 18,000, which was removed when the negotiations between the parties on an acquisition of the disputed domain name by Complainant ended and later on restored, and (6) Respondent and/or Mr. Dave Lahoti have been held in a number of prior UDRP and court decisions to engage in a pattern and practice of cybersquatting.

B. Respondent

Respondent contends to be specialized in the registration of inheritably valuable domain names and the development of websites thereon and, in particular, acquires short “.com” domain names based on their expected value on the secondary market. Respondent owns over 1,000 domain names comprised of six letters or numbers or less and over 50 of these domain names were registered by Respondent’s owner Mr. Dave Lahoti between January and May 2005, including the disputed domain name.

Respondent does not dispute that the disputed domain name is comprised of a wording similar to a trademark or service mark in which Complainant has rights outside of the United States.

Further, Respondent maintains that it has rights or legitimate interests in respect of the disputed domain name since (1) <virgan.com> is a short, pronounceable, six letter “.com” domain name that could be used for a variety of purposes, which is why Respondent registered it and not to take advantage of Complainant’s VIRGAN trademark, (2) “Virgan” also is a surname, and a close spelling of the generic word “virgin” with a colloquial meaning of its own, (3) Complainant has not alleged that it has ever made use of its VIRGAN trademark in California or anywhere else in the United States where Mr. Dave Lahoti has resided and worked his whole life, (4) Mr. Dave Lahoti had no actual or constructive knowledge of Complainant being a French entity, or Complainant’s French or International trademark registrations at the time he registered the disputed domain name in 2005, (5) moreover, had Respondent, or Mr. Dave Lahoti respectively, conducted a search of the USPTO database at the time he registered the disputed domain name in 2005, it would not have revealed any reference at all to Complainant’s VIRGAN trademark since it was filed only after Respondent registered the disputed domain name, (6) there is nothing illegitimate about investing in domain names and the business of buying and selling of domain names is wholly legitimate under the Policy and Complainant has failed to put forward any evidence that Respondent is seeking to capitalize on Complainant’s VIRGAN trademark.

Finally, Respondent argues that it did not register the disputed domain name in bad faith because (1) Complainant appears to have never used the VIRGAN trademark on the US market and Respondent categorically denies, under oath by Mr. Dave Lahoti, that the latter had any knowledge of Complainant or Complainant’s VIRGAN trademark at the time he acquired the disputed domain name in April 2005, nearly 13 years ago, (2) Respondent has never used the disputed domain name to target Complainant’s VIRGAN product and it was Complainant who reached out to Respondent about selling the disputed domain name, (3) the disputed domain name has at all times been under Mr. Dave Lahoti’s control since its creation date in April 2005 and no transfer in terms of a new registration upon Respondent has taken place, (4) there were numerous decisions in which Mr. Dave Lahoti was vindicated of allegations of cyber-squatting, both at the UDRP level and in court, and (5) Respondent, in good faith, purchased the disputed domain name and in nearly 13 years of ownership has not taken a single step toward violating any trademark rights owned by Complainant and, moreover, it is beyond question that neither being a domain name broker nor investing into domain names alone makes one a cyber-squatter.

Respondent has provided an affidavit given by Mr. Dave Lahoti of February 1, 2018 in order to evidence the above contentions to be true and correct.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:

(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) That the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel concludes that the disputed domain name <virgan.com> is identical to the VIRGAN trademark in which Complainant has rights.

The disputed domain name incorporates the VIRGAN trademark in its entirety and there is a consensus view among UDRP panelists (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1), that the applicable Top-Level-Domain in a domain name (e.g., “.com”) is a standard registration requirement and as such is usually disregarded under the identity or confusing similarity test.

Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).

B. Rights or Legitimate Interests

It is undisputed between the parties that Complainant never authorized Respondent to use its VIRGAN trademark, either as a domain name or in any other way. Also, Respondent itself does not claim to have any trademark rights associated with the designation “Virgan” on its own and Respondent’s name obviously does not somehow correspond therewith. In turn, the parties obviously disagree on when, by whom, and why the disputed domain name was first registered and how this may or may not affect the legitimacy of Respondent’s ownership of the disputed domain name both in terms of rights or legitimate interests in respect thereof and whether or not the disputed domain name was registered and is being used in bad faith. The chronological development of the events underlying this case is relevant in that on the one hand panels tend to assess claimed respondent rights or legitimate interests in the present, e.g. with a view to the circumstances prevailing at the time of the filing of the complaint (see WIPO Overview 3.0, section 2.11), while the assessment of bad faith under the UDRP necessarily includes looking back at the time of the registration of the disputed domain name and whether or not respondent took unfair advantage or otherwise abused a complainant’s trademark at that specific point of time.

Against this background, the Panel decided to immediately turn to determining whether or not Respondent may be found to have registered and to make use of the disputed domain name in bad faith, which in the case at hand is at the heart of the discussion.

C. Registered and Used in Bad Faith

As indicated above, bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s trademark (WIPO Overview 3.0, section 3.1). The burden of proof on this rests with the complainant (paragraph 4(a) of the Policy).

It is undisputed between the parties that Respondent registered the disputed domain name from the very beginning for purposes of subsequent resale including for a profit. UDRP panels, in general, have found that such practice does not by itself support a claim that the respondent registered the disputed domain name in bad faith with the primary purpose of selling it to a trademark owner within the meaning of paragraph 4(b)(i) of the Policy, but that the circumstances indicating that a domain name was registered for the bad-faith purpose of selling it to a trademark owner can be highly fact-specific, including e.g., the nature of the domain name and the distinctiveness of the trademark at issue (see WIPO Overview 3.0, section 3.1.1).

The Panel has closely examined the circumstances surrounding the first registration of the disputed domain name which undisputedly took place on April 21, 2005. While Complainant states that Respondent Virtual Point Inc. could not have been the registered owner by then because it was only incorporated on January 22, 2007, Respondent contends and, moreover, has provided an affidavit to support these contentions by Mr. Dave Lahoti, according to which he registered the disputed domain name together with a number of other domain names comprised of six letters or number or less between January and May 2005, which he later on transferred upon Respondent whose owner and operator he is. By that time, Complainant already owned trademark rights in the term “Virgan” in France as well as in a couple of other countries worldwide, however not in the United States. Here, a national US trademark VIRGAN was filed only on December 18, 2006 and subsequently made public by the USPTO only on December 25, 2007. Therefore, it must be found that the first registration of the disputed domain name by Mr. Dave Lahoti took place before Complainant registered any trademark rights in the designation “Virgan” in the United States, and that such registration was made public only about a year after Respondent was incorporated. Also, Complainant does not claim to have ever used its VIRGAN trademark in the United States, and the national U.S. trademark VIRGAN was finally cancelled on October 17, 2014 due to a lack of the filing of a declaration of use in commerce by Complainant under Section 8 of the Lanham Act. Respondent, therefore, correctly argues that a trademark search for the term “virgan” with respect to the territory of the United States, where Respondent is located, would not have revealed any such Complainant’s trademark rights in the designation “Virgan” on or before the registration of the disputed domain name and/or the incorporation of Respondent, and a factual use of this trademark within the territory of the United States apparently never took place. Certainly, Complainant obviously is the owner of a relevant number of VIRGAN trademarks outside of the United States and Complainant has stated that it has been commercializing its VIRGAN products in many countries since 1996. However, Complainant has not provided any more concrete information on which countries these were and to what extent its trademarks were e.g. advertised or have become known to the public by significant sales etc. in any specific areas, that would have been expected in a case such as this.

Respondent has also argued that it is indeed in the business of reselling domain names which are comprised of six letters or numbers or less, including the disputed domain name, which also is a surname and a close spelling of the generic word “virgin” and, therefore, has countless other potential users. Respondent obviously kept the disputed domain name for almost 13 years promoting it on the Internet for sale, however, never approached Complainant at any time with a concrete sales offer. Complainant, in turn, apparently tolerated the disputed domain name being registered by Respondent until it only recently took a business decision to register domain names on its own related to its VIRGAN products and trademark. Only then, Complainant itself contacted Respondent by means of a cease and desist letter offering an amount of USD 1,000.- to cover Respondent’s costs directly related to the disputed domain name since its registration in 2005, which Respondent did not accept, but answered by a minimum counter offer of USD 5,800 instead.

In this context, Complainant has pointed to the fact that Respondent has been a party to several domain name disputes both under the UDRP and in court. The Panel notes that, apart from the fact that each case must be judged on its own basis, several cases have found in favor of the respective complainants, while others were in fact decided in favor of Respondent and/or Mr. Dave Lahoti and, thus, denied.

The Panel supports the UDRP panels’ consensus view that the general practice of registering a domain name for subsequent resale is not by itself an indication of a bad faith registration and use. In the case at hand, the general nature of the domain name is that of a short term with no specific meaning, which Respondent registered together with a large number of similar domain names already 13 years ago for its potential value on the secondary market. The case file lacks any clear indication that Respondent targeted Complainant’s trademark when registering the disputed domain name. Complainant did not submit any evidence or at least any information in relation to its factual use of its trademarks worldwide and as to why it is at least more likely than not that Respondent specifically had Complainant in mind when registering the disputed domain name. Even if Respondent had undertaken a worldwide research on any possible VIRGAN trademark rights back in 2005 and would have revealed e.g., Complainant’s national French or International VIRGAN trademark, it still must be noted that the term “Virgan” is a short, pronounceable term with no specific meaning, which may be used for a variety of purposes. This also means that the term “Virgan”, in turn, may be seen as attractive as a domain name. While UDRP panels agree that domainers undertaking automated registrations have an affirmative obligation to avoid the registration of trademark-abusive domain names (see WIPO Overview 3.0, section 3.2.3), still a finding of bad faith under the UDRP requests Respondent to take unfair advantage of or abuse Complainant’s trademark. In the case at hand, Complainant has nothing brought forward as to why it was e.g., for the reputation of Complainant’s VIRGAN trademark; as this case turns on this point, it would have been expected for the Complainant to squarely address this matter. Pointing to the fact that Respondent indeed has been found in a number of UDRP cases to have registered domain names in bad faith could have been a supporting factor to such finding, but may not constitute bad faith as such, particularly taking into account that in a significant number of other UDRP cases, Respondent could prevail.

To sum up, given that the burden of proof of Respondent’s acting in bad faith rests with Complainant, here Respondent may not be found to have registered and make use of the disputed domain name in bad faith, thus, Complainant has not satisfied the third element of the Policy set forth by paragraph 4(a)(iii), which is why this Complaint must fail.

7. Decision

For the foregoing reasons, the Complaint is denied.

Stephanie G. Hartung
Sole Panelist
Date: February 27, 2018

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