The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and the Northern Ireland ("UK"), represented by Stobbs IP Limited, UK.
The Respondent is Kimberly Jarmon of New York, New York, United States of America ("USA"). 2. The Domain Name and Registrar
The disputed domain name is registered with Shinjiru MSC Sdn Bhd (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 6, 2016. On April 6, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 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 April 20, 2016. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 11, 2016.
The Center appointed Andrea Dawson as the sole panelist in this matter on May 27, 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 the brand owner for the Virgin Group of companies.
The Complainant has a significant reputation and has built up a vast amount of goodwill in the VIRGIN trademark in the UK and abroad in relation to a wide range of goods and services.
The Virgin Group comprises over 200 companies worldwide operating in 32 countries, throughout Europe and the USA. The number of employees employed by the Virgin Group of Companies is in excess of 40,000, generating an annual group turnover in excess of GBP 4.6 billion.
The Complainant owns extensive rights in the VIRGIN trademark, including a number of trademarks for VIRGIN EXPRESS.
The Complainant, Virgin Enterprises Limited is also the owner of several thousand domain names incorporating the VIRGIN trademark, including and .
The disputed domain name was registered on January 1, 2016. 5. Parties' Contentions A. Complainant
The Complainant asserts that it owns very extensive rights in the VIRGIN trademark. When VIRGIN is coupled with "line express", it can have no other meaning for the public other than as a reference to the Complainant's brand, especially in view of the fact that the Complaint has rights in the trademark VIRGIN EXPRESS.
The Complainant states that the Respondent is not providing a legitimate service through the disputed domain name, that the Respondent has no rights in relation to the disputed domain name, and that the Respondent is not commonly known by the name "Virginline-Express".
In addition, the Complainant affirms that, though the site to which the disputed domain name resolved gave the impression of being a legitimate business, the investigation made by the Complainant revealed that it was a fraudulent operation, and fair use was not being made of the disputed domain name. This fact, according to the Complainant, is supported by several comments made in various forums and the investigation provided by the Complainant.
The Complainant asserts that the Respondent is not using the disputed domain name for a legitimate business, nor has it made demonstrable preparations to use the disputed domain name in relation to a bona fide offering of goods or services.
The Complainant among other circumstances asserts that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website, creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has established rights to the VIRGIN and VIRGIN EXPRESS trademarks. The disputed domain name, which combines the Complainant's trademark with the generic term "line", is confusingly similar to the registered trademarks of the Complainant.
This Panel agrees with the Complainant's opinion that the addition of the element "line express", is not sufficient to avoid the confusing similarity between the disputed domain name and the Complainant's trademark, but, on the contrary, it may add to the confusion given the many thousands of domain names owned by the Complainant and that its trademarks are very well-known internationally.
Therefore, the Panel finds the disputed domain name to be confusingly similar to the trademark VIRGIN in which the Complainant has rights. Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in the disputed domain name.
However, many prior UDRP panels have established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the disputed domain name the burden of production shifts to the respondent to demonstrate that it does have rights or legitimate interests in the disputed domain name.
The Panel agrees that the Complainant needs only to make out a prima facie case and finds that it has met that standard.
The Panel accepts the arguments of the Complainant that the Respondent has not been authorized by the Complainant to use its trademark, or to seek registration of any domain name incorporating said mark.
The Respondent does not appear to make any legitimate noncommercial or fair use of the disputed domain name, nor any use in connection with a bona fide offering of goods or services for the reasons described in section 6.C below.
Finally, the Respondent has not replied to the Complainant's contentions, alleging any rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances which, in particular but without limitation, if found by the Panel to be present, shall be evidence of both registration and use of the disputed domain name in bad faith.
The Panel finds that the Complainant has submitted evidence, unchallenged by the Respondent, that the Respondent has registered the disputed domain name with knowledge of the Complainant's rights in the Complainant's trademarks and that the Respondent's bad faith is evidenced by several circumstances indicating that the Respondent must have been aware of the Complainant's trademarks at the time of the registration of the disputed domain name.
Furthermore the Panel finds that it is reasonable to conclude that Respondent had knowledge of the Complainant's existence and the services it provided, since it cannot be a mere coincidence that not only does the disputed domain name coincide with a registered trademark of the Complainant, but it also includes a generic term which can easily be understood as one of the many services offered by the Complainant.
Consequently, it is fair to conclude that the Respondent must have had the Complainant's trademark in mind when registering the disputed domain name, especially taking into consideration that one of the services provided by the Complainant is that of cargo and delivery, services very similar to what the Respondent was supposedly offering on its website.
Finally, noting the assertions and documents provided by the Complainant regarding the Respondent's activities, this Panel considers that there is enough evidence to find in the balance of probabilities that the Respondent's real intention was to give the impression of being a legitimate VIRGIN Group business and to take advantage of the reputation and goodwill associated with the Complainant's VIRGIN trademark.
In view of the above, it is clear to the Panel that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of its website.
For the above-cited reasons, the Panel finds that the disputed domain name was registered and is being used in bad faith; therefore, the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case. 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.
Andrea Dawson
Sole Panelist
Date: June 10, 2016
Full & Egal Universal Law Academy