Virgin Enterprise Limited of London, has lost a Uniform Rapid Suspension (URS) proceeding on the domain name VirginMedia.vip which is owned by Wang Hong Wei of Beijing, China who did not even respond to the URS.
The Examiner Mr. Peter Müller concluded that Virgin failed to provide “a single copy of a trademark certificate or a printout of an official trademark database. Therefore, the Examiner has no proof with regard to the Complainant’s allegations”
“In addition, the Examiner said he was not able to trace a single trademark application or registration in the name of the Complainant “Virgin Enterprise Limited”
So although the Complainant states that it owns rights “in VIRGIN through trade mark registrations and through having had a validated entry made at the Trade Mark Clearinghouse.”, and provided the SMD file related to the Trade Mark Clearinghouse entry for the trademark “VIRGIN MEDIA”. and provided a list of more than 100 trademarks allegedly registered in the name of the Complainant.
“The Examiner found that the evidence is not clear and convincing that the Complainant holds a valid national or regional word mark.”
Had Virgin won the URS they would not have received the domain, the domain would have just been suspended for the balance of its registration
If you’re wondering the domain name virginmedia.com is owned by Virgin Enterprises Limited (as is virginmedia.net).
Third last paragraph you need a “NOT” in there.
“Had Virgin won the URS they would have”
(You have two “have”)
I edited it, thank you for the comment.
There are many TMs for the term (word) “Virgin Media”, registered since 2006 on, for the EU and UK.
IMHO Virgin Media legal representatives (CSC, according to what you say) made a mess …
How come they were not able to provide “a single copy of a trademark certificate or a printout of an official trademark database”? … lol … that’s really embarrassing for their lawyers …
FYI, below you can find an example of those TMs:
VIRGIN MEDIA
(210)/(260)Application number UK00002429892
(270)Application language en
(220)Application date 2006-08-14
Application reference IVG/2067
Trade mark office United Kingdom – UKIPO
(190)Registration office GB
(111)Registration number UK00002429892
(151)Registration date 2007-05-18
(141)Expiry date 2026-08-14
Series of 0
(550)Trade mark type Word
(551)Kind of mark Individual
(511)Nice classification 9,35,38,41
Current trade mark status Registered
Opposition period start date 2007-02-02
Opposition period end date 2007-05-18
And I guess the Examiner, Mr. Peter Müller, was also “inattentive” … ?
He said that “In addition, the Examiner said he was not able to trace a single trademark application or registration in the name of the Complainant “Virgin Enterprise Limited”
Well, I’ve just done a very quick search and there are multiple results for “Virgin Enterprise Limited”, just see a few examples below:
List of results:
Trade mark name Virgin media
Trade mark office EM
Trade mark status Registered
Trade mark type Figurative
Applicant name Virgin Enterprises Limited
Nice class9,35,36,38,41,42
Application date06-05-2015
Trade mark name VIRGIN MEDIA
Trade mark office EM
Trade mark status Registered
Trade mark type Word
Applicant name Virgin Enterprises Limited
Nice class9,35,36,38,41,42
Application date23-03-2015
Trade mark name VIRGIN MEDIA
Trade mark office GB
Trade mark status Registered
Trade mark type Word
Applicant name Virgin Enterprises Limited
Nice class9,35,36,38,41,42
Application date24-03-2015
Trade mark name VIRGIN MEDIA
Trade mark office GB
Trade mark status Registered
Trade mark type Figurative
Applicant name Virgin Enterprises Limited
Nice class9,35,36,38
Application date17-01-2014
Trade mark name VIRGIN MEDIA
Trade mark office GB
Trade mark status Registered
Trade mark type Word
Applicant name Virgin Enterprises Limited
Nice class9,35,38,41
Application date14-08-2006
Trade mark name Virgin media
Trade mark office GB
Trade mark status Registered
Trade mark type Figurative
Applicant name Virgin Enterprises Limited
Nice class9,35,38,41,42
Application date21-11-2006
Trade mark name Virgin Media Big Bundles
Trade mark office GB
Trade mark status Registered
Trade mark type Word
Applicant name Virgin Enterprises Limited
Nice class9,35,36,38
Application date25-06-2014
Trade mark name Virgin Media Big Extras
Trade mark office GB
Trade mark status Registered
Trade mark type Word
Applicant name Virgin Enterprises Limited
Nice class9,35,36,38
Application date25-06-2014
Trade mark name VIRGIN MEDIA HOMEWORKS
Trade mark office GB
Trade mark status Registered
Trade mark type Word
Applicant name Virgin Enterprises Limited
Nice class9,35,36,38,41,42
Application date18-08-2015
Trade mark name VIRGIN MEDIA PROTECT
Trade mark office GB
Trade mark status Registered
Trade mark type Word
Applicant name Virgin Enterprises Limited
Nice class9,36,38
Application date30-10-2014
Virgin sought as relief:
“Complainant requests that the domain name be suspended for the life of the registration.”
I assume signalling it has ZERO interest in acquiring the URL; but I suspect this would allow Virgin to enforce its trademark rights and pursue treble the damages if the respondent puts up a site that infringes on Virgin’s TM rights
The registration still has to be paid for
URS rules forbid examiners to do any investigation, URS examiners are expected to judge on the evidence in front of them. This examiner actually did his job correctly, and it pains me to say it as well. ?
It was Virgin Media’s lawyers fault not providing the above-mentioned evidence, so that the examiner can judge based on that.
Virgin accomplished exactly what it wanted:
1) provided a warning to the respondent
2) notification has been made “public”
3) actively enforcing its “Virgin” brand, whether winning a UDRP or not
Its request for relief would have been different if the URL were virginmedia.com
Virgin had no interest in acquiring virginmedia.vip
No doubt Virgin Media was not interested in acquiring virginmedia.vip … that’s junk 🙂
That said, winning the URS would have not costed them more money, and all the points you mentioned would have been satisfied the same.
Unfortunately their lawyers didn’t provide the necessary TM documents, which are publicly available.
While I like that Virgin made a public statement by going after the domain, letting everyone know they protect their brand, I am happy that they lost. It’s important that cases like this stand as a reminder that large corps can’t bully or strong arm smaller companies / domain investors. International Trademarks don’t exist. If a company wants to protect their TM, they need to file or openly advertise in all the countries they want protection in.
Respectfully disagree.
In this specific case I don’t think there is any “bullying”, IMHO the Respondent is clearly a cyber-squatter.
Virgin Media brand is well know worldwide, outside the EU and UK, besides being controlled by Liberty Global, currently the world’s largest international cable company, with operations in 14 countries.
Furthermore, “Virgin Media” is not a generic or dictionary term.
IMHO defending cybersquatters is not the right way to improve domain investors reputation.
Just my two cents. 🙂
@andrea
In cases like this, the IP monitoring company ( Mark Monitor, Marksmen, Cum Laude, etc) are usually instructed by legal to have the outside counsel to cap legal expenses at X amount.
So why didn’t the in-house counsel at Virgin just resolve this by submitting its registered trademark documentation? It’s a chain of command, and this case had no priority other than “don’t use the URL” .
The respondent didn’t win this case. prediction: this url will not be renewed
Steve,
I know it’s a chain of command, but not demonstrating all three elements of the URS “on purpose” to get the same results, incurring the same costs, does not make any sense.
As I said before, legal expenses would have been exactly the same, “capped at X amount”.
So I guess someone was “inattentive” there by not providing all TM documentation.
I know Respondent didn’t win, it was just a warning from Virgin Media, and of course URL won’t be renewed … 🙂