WIPO D2016-2140 · decided 22 December 2016
Virgin Enterprises Limited v. Cesar Alvarez
The parties
- Complainant
- Virgin Enterprises Limited
- Respondent
- Cesar Alvarez
What did the panel find on each element?
| Policy paragraph | Finding |
|---|---|
| 4(a)(i) Identical or confusingly similar | The panel found virginmedia.shop confusingly similar to VIRGIN MEDIA, because the domain contains the whole trademark and the new gTLD ".shop" is generally irrelevant to the comparison. |
| 4(a)(ii) No rights or legitimate interests | The panel found no rights or legitimate interests, because registering a trademark that is popular in search engines in order to offer it for sale is not legitimate noncommercial or fair use. |
| 4(a)(iii) Registered and used in bad faith | The panel found bad faith in the passive holding of a famous mark with no plausible good faith reason and a demand above costs. Missing the .shop Sunrise period did not help. |
Why does Virgin Media matter for a complaint today?
Virgin Enterprises Limited won the transfer of virginmedia.shop, which the respondent registered on 26 September 2016. According to the respondent, the .shop Sunrise period for trademark owners ran from 30 June to 29 August 2016, and Virgin lost its chance by not registering then. The panel rejected that argument. A trademark owner's failure to use a Sunrise period does not stop a panel finding bad faith when a third party registers the name later. The respondent also admitted choosing domains by the number of monthly searches for the keyword. The panel held that this showed he knew the VIRGIN MEDIA trademark, because that search traffic came from people looking for Virgin. The domain showed only a registrar parking page, and the respondent said he had no intention to use it. The panel relied on the passive holding doctrine in Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003, and on his request for more than his out-of-pocket costs, to find bad faith. If you skipped a Sunrise period for a new gTLD, you can still file a UDRP complaint. The limit: this respondent admitted his selection method and asked for payment, and both facts weighed against him.
What does the WIPO Overview 3.1 say?
The WIPO Overview 3.1 summarises how WIPO panels decide each issue. These sections cover the same point of law.
- Section 1.11.2: Is the Top Level Domain relevant in determining identity or confusing similarity? The Overview cites this decision here.
- Section 3.2.1: Additional bad faith consideration factors The Overview cites this decision here.
- Section 3.3: Can the "passive holding" of a domain name support a finding of bad faith? The Overview cites this decision here.
Who decided the case?
A single panelist, Rodrigo Azevedo, decided the case on 22 December 2016.
Read the decision
The full text is published by the WIPO Arbitration and Mediation Center. We summarise it here; the decision itself is the authority.
Summarised by Gergana Dimitrova, who worked at the WIPO Arbitration and Mediation Center from 2018 to 2021 and sits as a domain name panelist at the Czech Arbitration Court. Checked against the published decision on 23 October 2026. Full background.
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