The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Stobbs IP Limited, United Kingdom.
The Respondent is Tj Chughtai, Noble Travel of Manchester, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with FastDomain, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 17, 2015. On September 17, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 18, 2015, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on September 24, 2015. The Complainant filed a further amendment to the Complaint on September 28, 2015.
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 the Respondent of the Complaint, and the proceedings commenced on September 29, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default October 20, 2015.
The Center appointed Michel N. Bertschy as the sole panelist in this matter on October 23, 2015. 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
The Complainant owns very extensive rights in the VIRGIN trademark, including United Kingdom trademark VIRGIN, registered April 11, 1973.
In addition, the Complainant has a significant reputation and has built up a vast amount of goodwill in the VIRGIN trademark in the United Kingdom and elsewhere in relation to a wide range of goods and services. The Complainant is the brand owner for the Virgin Group of Companies (hereinafter "the Virgin Group"). The Virgin Group originated in 1970 when Richard Branson began selling music records under the Virgin name and since that date it has expanded into a wide variety of businesses. As a result, the Virgin Group now comprises over 200 companies worldwide operating in 32 countries including throughout Europe and the United States of America. The number of employees employed by the Virgin Group is in excess of 40,000, generating an annual group turnover in excess of GBP 4.6 billion.
The Complainant has developed a significant reputation in relation to the VIRGIN mark. The Virgin brand is commonly used alongside an additional element, for example VIRGIN Atlantic, VIRGIN Trains, VIRGIN Holidays, VIRGIN Media, VIRGIN Mobile, VIRGIN Radio, and VIRGIN Games. The Virgin brand is famous for the wide scope of their business which operates across a broad range of fields. The Complainant is known for using the Virgin brand in connection with a suffix which is often descriptive of the goods or services provided.
The Complainant has a significant reputation for being a global player in the airline industry, operating airlines including VIRGIN Atlantic, VIRGIN Australia and VIRGIN America.
The disputed domain name was registered February 26, 2015. 5. Parties' Contentions A. Complainant
The Complainant contends the following:
The Complainant owns extensive rights in the VIRGIN trademark. The Complainant contends that this very clearly demonstrates that they have rights in the mark VIRGIN for the purposes of the Policy.
The disputed domain name consists of the elements "virgin" and "flight" followed by the generic Top-Level Domain ("gTLD") ".com". On account of the high similarity to the trademarks and domain names owned by the Complainant, the disputed domain name would quite clearly be associated with the Complainant's own Virgin brand and businesses. The addition of the word "flight" alongside the famous Virgin brand would act to encourage consumers to believe that the disputed domain name is affiliated with the Complainant. This is in view of the fact, that the Complainant has a massive reputation in relation to the airline industry. The disputed domain name contains the VIRGIN mark plus a descriptive element, for which the Complainant has an unprecedented reputation.
The complainant has brought a significant body of previous UDRP cases which relate to domain names comprising the Complainant's VIRGIN trademark followed by another element. This supports the fact that the Complainant has a significant portfolio of trademark registrations, a reputation in the Virgin brand and that a likelihood of confusion does exists in relation to domain names comprising its VIRGIN trademark and an additional element.
The Complainant added that, in the eyes of the general public, the Virgin Group undoubtedly enjoys considerable repute and is regarded as having the highest integrity and moral standing.
The Complainant concluded that it is clear that the disputed domain name is confusingly similar to the Complainant's trademark for the purposes of the Policy, paragraph 4(a)(i).
The Complainant contends that the disputed domain name initially resolved to a website which had the look and feel of a website belonging to the Complaiant. The aforementioned website prominently displayed the colour red, for which the Complainant has reputation and the site featured a picture of a Virgin Atlantic plane. The Complainant asserts that the Respondent was attempting to give the impression of its website being a legitimate site of the Complainant. The site also displayed (at the time) a message stating that website visitors could call to purchase airline tickets and displayed a number. It also displayed the message "welcome to Virgin Flights" and gave users the opportunity to book online. The Complainant contends that after having made contact with the Respondent the disputed domain name no longer resolved to an active webpage.
The Complainant asserts that no legitimate use is being made of the disputed domain name, whether at present or in the past. The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant submits that by giving the impression of being or being affiliated with the Complainant, and attempting to sell flights under the Virgin name, it cannot be deemed that the Respondent has any form of rights or legitimate interests in the disputed domain name.
The Complainant contends further that the registration and use of the disputed domain name is in bad faith. The Complainant asserts that it has a massive global reputation across a range of different sectors including the provision of flights. The Complainant asserts that anyone who saw the disputed domain name would assume that it is a domain name owned by the Complainant. The disputed domain name previously resolved to a website with the look and feel of website of the Complainant, further confusing Internet users.
The Complainant states that it made several unsuccessful approaches to the Respondent in order to request that the disputed domain name be transferred to it. The Complainant stated that it sees no reason for the Respondent to ignore its correspondence, other than to push the Complainant to offer a high sum of money in order to recover the disputed domain name. The Complainant states that the disputed domain name was purchased in order to sell it to the Complainant, or another party in the future for money in excess of out-of-pocket costs. The Complainant concludes that the behavior of the Respondent clearly shows that the disputed domain name was registered and is being used in bad faith.
Further, in view of the Complainant's massive reputation in relation to the airline industry and the fact that the website at the disputed domain name was used in a manner which displays the Complainant's famous trademark and the word mark VIRGIN, it is apparent that the Respondent is fully aware of the Complainant's business and its large presence in the airline industry. The Complainant states that the Respondent has clearly registered the disputed domain name in order to prevent the Complainant from reflecting its trademark in a corresponding domain name.
Moreover, the Complainant states that it is apparent that the disputed domain name was also registered in order to cause harm to the Complainant's brand, given that Internet users may reach the site under the impression that it is an official site linked to the Virgin Group. The Complainant states that the use of the disputed domain name in this manner has caused harm to the Complainant's brand for the purposes of paragraph 4(b)(iii) of the Policy. Customers intending to reach the official site of the Complainant, may have attempted to book their airline tickets through the website at the disputed domain name. The Complainant asserts that the Respondent's activities have the potential to damage the goodwill in the Complainant's brand, harming the business. The Complainant also asserts that the website at the disputed domain name could have been scamming Virgin customers, taking their money and bank details and not providing them with any form of service. The Respondent's registration of the disputed domain name and the use being made of the site is highly harmful to the Complainant's brand. The Complainant says that the Respondent was passing itself off as the Complainant, confusing Internet users about the origin of the services provided. On this basis, the Complainant asserts that its business is being disrupted pursuant to paragraph 4(b)(iii) of the Policy.
The Complainant further contends under paragraph 4(b)(iv) of the Policy it is apparent that the disputed domain name has been registered in bad faith for commercial gain. Internet traffic was being directed to the site through the association with the Complainant's famous brand. When Internet users reached the website at the disputed domain name, the association with the Complainant was further enforced through the use of the Complainant's branding and pictures of the Complainant's airplanes. The Complainant asserts that the Respondent may have been profiting from Internet users booking flights through the website that was previously displayed at the disputed domain name. The Complainant also states that the Respondent could be profiting in other ways, such as through a phishing scam. The Complainant states that there is no evidence to support the fact that the Respondent is operating a business that complies with honest practices.
Last but not least, the Complainant also contends that in accordance with paragraph 4(b)(iv) of the Policy, any profit gained is due to the link to the Complainant's famous brand which the Respondent has made every effort to show. The Respondent has deliberately intended to confuse Internet users, and suggests that it is operating a legitimate business of the Complainant. The Complainant states that it is apparent that the Respondent registered the disputed domain name in order to gain commercially from the Complainant's reputation. In view of the above, the Complainant states the Respondent's registration and use of the disputed domain name is in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy requires the complainant to prove that the respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. The complainant must prove each of these three elements. A. Identical or Confusingly Similar
The Complainant has demonstrated that it has rights in the VIRGIN marks. Under the UDRP, the test for identity or confusing similarity typically involves a comparison between the trademark and the disputed domain name to determine confusing similarity. To satisfy the test, the trademark to which the disputed domain name is said to be identical or confusingly similar would generally need to be recognisable as such within the disputed domain name. The addition of common, dictionary, or descriptive terms are usually regarded as insufficient to prevent confusing similarity Application of the identity of confusing similarity test under the UDRP typically involves a comparison, on a visual or aural level, between the trademark and the disputed domain name.
As numerous prior UDRP panels have recognized, the incorporation of a trademark in its entirety in a domain name may be sufficient to establish that the domain name is identical or confusingly similar to the complainant's registered mark. The addition of other generic terms in a domain name does not affect a finding that the domain name is identical or confusingly similar to the complainant's registered trademark.
In this case, the disputed domain name incorporates the Complainant's VIRGIN mark in its entirety and is clearly the dominant element. The addition of the term "flight" does not alleviate the risk of confusion. Indeed, the Virgin Group has a significant reputation for being a global player in the airline industry.
Given the distinctive nature of the VIRGIN mark which is readily recognisable within the disputed domain name, the Panel is satisfied that the disputed domain name is confusingly similar to the Complainant's trademarks and thus this element of paragraph 4(a) of the Policy has been established. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name. Once the complainant establishes a prima facie case showing that the respondent has no rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent. The burden of proof, however, remains with the complainant to prove each of the three elements of paragraph 4(a) of the Policy (Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and there has been no rebuttal by the Respondent. Nothing in the record gives reason to believe that the Respondent has any rights or legitimate interests in respect of the disputed domain name, given that the disputed domain name is currently parked, and was previously connected to an unauthorized website offering services of the Complainant and what also appeared to be competing services. The Panel further notes that the previous website at the disputed domain name did not disclose the nature of any (lack of) relationship with the Complainant.
Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(ii) circumstances indicating that the respondent registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding disputed domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the disputed domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). The overriding objective of the Policy is "to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another" (M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230).
In this case, the disputed domain name differs from the Complainant's marks by the sole addition of the term "flight". Noting also the content of the website at the disputed domain name, the Panel finds more likely than not that the Respondent has intentionally registered the disputed domain name, which is confusingly similar to the Complainant's trademarks, and has intentionally diverted Internet users to a website appearing to offer the same or similar products as those offered by the Complainant. Such registration and use can only be motivated by commercial gain. The Panel fails to see what other legitimate motivation the Respondent's conduct can have and the Respondent has failed to present any evidence of good faith use of the disputed domain name.
The Panel therefore considers that the Respondent's conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(b)(iv) of the Policy.
Accordingly, the Complainant has satisfied all three elements of paragraph 4(a) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Michel N. Bertschy
Sole Panelist
Date: October 30, 2015
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