The company said that the three domains, virginshipping.biz, virginshipping.com and virginshipping.net, were identical to its Virgin trademark, and that the addition of the term ‘shipping’ “adds nothing from a brand perspective and is entirely in keeping with [Virgin’s] brand style”.
Virgin accused the owner of the domains, Mimoun Bouazani, of preventing the legitimate owner of the Virgin trademarks from “reflecting the marks in a corresponding domain name”.
“[Virgin] fears further that the disputed domain names will also attract internet users looking for [Virgin’s] services and divert them to [Bouazani’s] website instead,” the complaint added.
Bouazani argued that his company was a freight forwarder and uses the name Virgin Shipping. He explained that the service of his company is “very specific and in no way identical or confusingly similar to the services provided by the Virgin Group to the direct consumer”.
He also said the company name is registered with the Dutch chamber of commerce and the chamber of commerce of the US state of Alabama.
But the three panellists in the arbitration, Christian Schalk, Flip Jan Claude Petillion and Knud Wallberg, found that Bouazani “must have been aware of [Virgin] when [he] registered the disputed domain names”, due to its notoriety.
The panel added that the Virgin has activities in many fields of business, including aviation, and internet users searching for Virgin’s services could assume that maritime transport services are also part of its activites.
Bouazani had previously posted a disclaimer on his websites, which claimed that all IP rights on the websites are the property of Virgin Shipping. The panel welcomed the disclaimer, but said “where the overall circumstances of a case point to the respondent’s bad faith, the mere existence of a disclaimer cannot cure such bad faith”.