The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Burges Salmon LLP, United Kingdom.
The Respondent is Jay Cannon of Mechanicsburg, Pennsylvania, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainR (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 7, 2016. On March 8, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 9, 2016, 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.
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 March 11, 2016. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 1, 2016.
The Center appointed Nicholas Smith as the sole panelist in this matter on April 6, 2016. 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 is a wholly owned subsidiary of the Virgin Group and the owner of the various VIRGIN trade marks and related intellectual property. The Virgin Group was established by Sir Richard Branson in 1970 and since then has created more than 200 branded companies worldwide with an annual turnover of over GBP 4 billion. One of the businesses established is the Virgin Green Fund (“VGF”), which invests in businesses seeking to raise capital to provide products and services that are environmentally beneficial. VGF was created by the Virgin Group in June 2007 and since its inception has invested USD 191 million in a portfolio of companies.
The Complainant is the owner of UK Trade Mark number 2639310 for the word mark VGF (the “VGF Mark”) for services in classes 35, 36 and 42 including financial affairs and the creation, management and administration of investment funds. The VGF Mark was registered on February 1, 2013.
The Domain Name was created on June 12, 2015. It is presently inactive but prior to the commencement of the proceeding, resolved to a website with the heading “VGF Wealth Management” which purported to offer wealth and asset management services out of London by a company purportedly known as “VGF Wealth Management Limited”. According to the Complaint, there is no such company registered in the United Kingdom. 5. Parties’ Contentions A. Complainant
The Complainant makes the following contentions:
(i) that the Domain Name is confusingly similar to the Complainant’s VGF Mark;
(ii) that the Respondent has no rights nor any 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 is the owner of the VGF Mark. It holds registrations for the VGF Mark in the United Kingdom. The Domain Name consists of the VGF Mark in its entirety with the addition of the generic term“wealth management”. There are numerous UDRP panel decisions that find that the addition of a generic term such as “wealth management” to a trade mark does not change a finding of confusing similarity.
The Respondent is not commonly known by the Domain Name nor has it conducted a legitimate business under the Domain Name. The Complainant has not authorized or licensed the Respondent to use the VGF Mark. While the Respondent does operate a website from the Domain Name, it appears that the Respondent’s business targets consumers by making unsolicited telephone calls to sell their goods and services which may amount to fraud. This is not a bona fide offering of goods and services and hence, the Respondent has no rights or legitimate interests in the Domain Name.
The Domain Name revolves to a website which appears to offer to UK customers financial management services that infringe the VGF Mark. The Respondent’s purported business trades from the UK, where the Complainant’s head office is based. The Respondent offers its services under the name VGF Wealth Management Limited but no such company is registered. The Respondent is also the registrant of a related domain name (which resolves to a website similar to the one previously hosted under the Domain Name) which has been identified by the UK Financial Conduct Authority (“FCA”) as potentially offering fraudulent services. The matters set out above should cumulatively be regarded as being evidence of bad faith registration and use. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the VGF Mark, having registrations for VGF as a trade mark in the United Kingdom, where the Respondent purports to operate.
Past UDRP decisions have found that a domain name that consists of a complainant’s mark and a generic term is confusingly similar to the complainant’s trade mark. In particular FINAXA v. Billy Oglesby,WIPO Case No. D2004-0165 found that there was confusing similarity between the trade mark AXA and the domain name . As the generic top-level domain may be discounted when considering confusing similarity, this is an identical situation to the present case.
The Domain Name consists of the VGF Mark and the suffix “wealth management”. This suffix “wealth management” does not operate to distinguish the Domain Name from the VGF Mark in any significant way.
The Panel finds that the Domain Name is confusingly similar to the Complainant’s VGF Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c)).”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the VGF Mark or a mark similar to the VGF Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name.
There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. Rather, the Panel notes that the entity that purports to offer services from the Respondent’s Website, VGF Wealth Management Ltd, does not appear to actually exist. It also notes that the FCA has issued a warning that the Respondent’s website under the domain name is used as a “clone firm” for the firm Volkl Gunter Felix. The FCA describes the practice as follows:
“Fraudsters are using the details of firms we authorise to try to convince people that they work for a genuine, authorised firm. Find out more about this ‘clone firm’.”
“This is what we call a ‘clone firm’; and fraudsters usually use this tactic when contacting people out of the blue, so you should be especially wary if you have been cold called. They may use the name of the genuine firm, the ‘firm reference number’ (FRN) we have given the authorised firm or other details.”
The use of the Domain Name to promote financial services and operate what appears to be a “clone firm” as described above which is almost identical in look and feel to the website at the Domain Name is not a bona fide offering of goods or services. The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had an opportunity to rebut the presumption that it lacks rights or legitimate interests but has chosen not to do so. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name’ registration to the Complainant who is the owners of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or
(ii) The Respondent has registered the Domain Name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site or location or of a product or service on the Respondent’s web site or location.
The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 4.5 (“WIPO Overview 2.0”) provides that “A panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision.” The Panel also notes that as required under the Rules, Paragraph 3(b)(xiii) the Complaint must certify that the information contained in this Complaint is to the best of Complainant’s knowledge complete and accurate.
The Panel has undertaken limited factual research in respect of two matters that were not disclosed in the Complaint, namely by visiting the website of the Virgin Green Fund, and by visiting the website of the FCA which records a warning by the FCA that the Respondent’s website under the domain name is a “clone firm” for the firm Volkl Gunter Felix. The fact that the FCA had identified that the Respondent’s website as a “clone firm” of a company other than the Complainant was not disclosed in the written Complaint, nor was it annexed to the Complaint. This omission is curious since the Complaint does disclose and annex a FCA warning in respect of the domain name registered to the Respondent, and makes reference to the FCA’s finding that the Respondent’s Website is a clone site in a letter to the Respondent, annexed at page 43 of the Complaint.
The Complainant, in the Complaint, provides no evidence of the reputation of the VGF Mark in the market, including any evidence of advertisements, media releases, promotion, media articles and the like that feature the VGF Mark. The purported website for VGF is located at the domain name and consists of an inactive page which contains, at its center is the well-known Virgin Logo, (being a circle with a stylized version of the word “Virgin” in the center), and next to it the words “green fund”. Indeed there is no evidence in the Complaint that VGF has ever been referred to as “VGF” as opposed to “Virgin Green Fund”.
The Respondent’s website, in view of the evidence provided in the Complaint, contains no reference to “virgin” or “green fund” and the evidence of VGF cold calling consumers offering to buy carbon credits consists of a single unverified comment on an Internet page. Based on the evidence provided in the Complaint, the Panel had some difficulty concluding that the Respondent was aware of the Complainant at the time it registered the Domain Name and used the Domain Name to take account of confusion between the VGF Mark and the Domain Name.
Rather, in reliance on the material publically available on the FCA’s website the Panel concludes that the Respondent has registered the Domain Name to operate a “clone firm” for the firm Volkl Gunter Felix. Furthermore it appears that the Respondent has engaged in a pattern of such conduct, having operated a similar website at the Domain Name which has also been identified by the FCA as a website supporting a clone firm of the firm known as CACEIS Corporate Trust Ltd.
The Panel finds that the Respondent has registered and used the Domain Name in bad faith as it was registered and used primarily for the purpose of disrupting the business of a competitor. By using the Domain Name to operate a website as part of a scheme to pass itself off as a clone firm the Respondent may have confused members of the public, including Complainant’s customers. This amounts to the disruption of the business. The fact that the Domain Name no longer resolves to an active website does not impact the Panel’s findings.
The notion of “competitor”, as provided in paragraph 4(b)(iii) of the Policy, has been interpreted broadly by a number of Panels. In Mission KwaSizabantu v. Benjamin Rost,WIPO Case No. D2000-0279, the Panel held that the term “competitor” should not be restricted to a commercial or business competitor but should encompass a person who acts in opposition to another. In The Toronto-Dominion Bank v. Boris Karpachev,WIPO Case No. D2000-1571, the Panel also adopted a broad approach, holding that the genre of competition referred to needed not be commercial, and that the respondent’s opposition to the practices of a broker, of which he was previously a customer and which he criticized, was sufficient to qualify him as a competitor. In the present case the Respondent, from the Respondent’s Website, purported to offer financial services to customers in the UK.
Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) 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 Domain Name be transferred to the Complainant.
Nicholas Smith
Sole Panelist
Date: April 11, 2016
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