The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Burges Salmon LLP, United Kingdom.
The Respondent is Whois Privacy Protection Service, Inc. (customer number RCVHXQYR) of Kirkland, Washington, United States of America / Paul Greg of Broad Oak, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 2, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 4, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 13, 2017.
The Center verified that the Complaint together with the amended 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 October 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 10, 2017.
The Center appointed Luca Barbero as the sole panelist in this matter on November 24, 2017. 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, which was originally established in 1970 by Richard Branson as a business selling popular music records and is now engaged in several business sectors such as Travel and Leisure, Telecommunications and Media, Music and Entertainment, Financial Services, Health and Wellness. Today, there are more than 60 VIRGIN branded businesses, with around 53 million customers worldwide, employing in excess of 69,000 people in 35 countries. The Group’s annual revenue is approximately 16.6 billion.
The Complainant is responsible for the ownership, management, licensing and protection of all the trademarks of the Virgin Group.
The Complainant is the owner of several trademark registrations incorporating the trademark VIRGIN, which it licenses to companies within and outside the Virgin Group. Amongst others, the Complainant owns the European Union trademark No. 011991882, registered on December 10, 2013, for VIRGIN (word mark) in classes 1, 2, 4, 6, 7, 8, 10, 13, 15, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 34, 37 and 40.
The Complainant is also the owner of over 5,300 domain names incorporating the trademark VIRGIN, including , registered on September 10, 1997, and , registered before August 1996.
The disputed domain name was registered on August 2, 2017 and is not pointed to an active website.
The Complainant states that it was notified of an instance involving fraudulent email correspondence being sent from an email address based on the disputed domain name, mentioning the founder of the Virgin Group and purportedly offering a business opportunity.
The Complainant sent a cease and desist letter, on August 24, 2017, to the WhoIs privacy company indicated in the WhoIs records of the disputed domain name before the filing of the Complaint but received no reply, notwithstanding a subsequent reminder addressed on September 12, 2017.
In view of the above, the Complainant initiated this proceeding, requesting the transfer of the disputed domain name under its ownership and control. 5. Parties’ Contentions A. Complainant
The Complainant states that the disputed domain name is identical and/or confusingly similar to the trademark VIRGIN, as it encompasses the trademark in its entirety with the addition of the non-distinctive word “office”, a hyphen and the generic Top-Level Domain (“gTLD”) suffix “.com”.
The Complainant contends that the Respondent does not have any rights or legitimate interests in the disputed domain name since: i) the Complainant has not licensed or authorized the Respondent to use the trademark VIRGIN; ii) the sender of the fraudulent email communication cited above is not connected to the Complainant, the Virgin Group or its founder Richard Branson; and iii) there is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services, as it was registered solely for the purpose of hosting an email address from which to perpetrate fraud.
The Complainant asserts that the Respondent registered and used the disputed domain name in bad faith since: i) the disputed domain name has been used in connection with the sending of fraudulent emails designed to mislead the recipients into believing that they are corresponding with Mr. Richard Branson’s personal assistant for and on behalf of the Complainant, Mr. Branson and/or the Virgin Group; ii) the Respondent intentionally attempted to create a likelihood of confusion as to the source of its emails; and iii) the Respondent registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant, Mr. Branson and/or the Virgin Group and damaging their reputation; iv) the current inactive use of the disputed domain name does not prevent a finding of bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Preliminary procedural issue
This case was initially brought in one joint proceeding concerning two domain names, namely the disputed domain name and . Following the Registrar’s disclosure of the Respondent’s identity, the Complainant decided to disaggregate the Complaint resulting in this as well as a second case with the other domain name, while at the same time asserting that these two cases should be consolidated after all.
Having reviewed the record in this case, the Panel sees some factual indications (e.g., as they relate to criteria described in section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)) that Complainant could have maintained its initial joint filing. The Complainant has not done so and therefore the Panel will proceed to decide this case on its own record. B. Identical or Confusingly Similar
The Panel finds that the Complainant has established rights in the trademark VIRGIN based on the European Union trademark No. 011991882 cited above.
The disputed domain name incorporates the trademark VIRGIN in its entirety with the addition of the descriptive term “office”, a hyphen and the gTLD suffix “.com”, which the Panel finds insufficient to exclude the confusing similarity.
As found in a number of prior cases decided under the Policy, where a trademark is recognizable within a domain name, the addition of generic or descriptive terms does not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview 3.0.
Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
The Complainant is required to make a prima facie case that the Respondent lacks rights or legitimate interests and, once such prima facie case is made, the burden of production shifts to the Respondent to submit appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. See, Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110; Banco Itau S.A. v. Laercio Teixeira,WIPO Case No. D2007-0912; Wal-Mart Stores, Inc. v. WalMart Careers, Inc.,WIPO Case No. D2012-0285.
The Panel finds that the Complainant has made a prima facie case and that the Respondent, by not having submitted a Response, has failed to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy for the following reasons.
According to the records, there is no evidence of an authorization granted by the Complainant to the Respondent to use the trademark VIRGIN and/or to register and use the disputed domain name.
Moreover, there is no element from which the Panel could infer a Respondent’s right over the disputed domain name, or that the Respondent might be commonly known by the disputed domain name.
The Complainant has provided evidence of use of the disputed domain name in connection with the sending of fraudulent emails purportedly being sent from an assistant of the founder of the Virgin Group and offering business opportunities.
In view of the above and in the absence of a Response, the Panel finds that the Respondent has not used the disputed domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Therefore, the Panel finds that the Complainant has proven the requirement prescribed by paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
In view of the prior registration and use of the trademark VIRGIN by the Complainant and its affiliated companies and of the well-known character of the trademark recognized also in prior UDRP decisions (see, amongst others, Virgin Enterprises Limited v. Willem Sternberg De Beer,WIPO Case No. D2017-1851), the Panel finds that the Respondent’s registration of the disputed domain name, confusingly similar to the Complainant’s prior trademark, does not amount to a mere coincidence and that, in all likelihood, the Respondent registered the disputed domain name with the Complainant’s trademark in mind.
In addition, according to the evidence on records, a communication sent from an email address based on the disputed domain name was apparently used for the sending of a scam email which misused the Complainant’s trademark and pretended to be sent on behalf of the founder of the Virgin Group. The Panel finds that this is compelling evidence of actual knowledge of the Complainant’s trademark.
As to the current use of the disputed domain name, it does not resolve to an active website at the time of this Decision. However, it is well established that passive holding of a domain name could amount to bad faith under certain circumstances as decided, i.a., in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
In the case at hand, in view of the Respondent’s registration of a domain name confusingly similar to the Complainant’s trademark, the absence of any documented rights or legitimate interests of the Respondent in the disputed domain name and its failure to respond to the Complaint, the Panel finds that the Respondent’s lack of use of the disputed domain name also amounts to bad faith. Moreover, the use of the disputed domain name to deliver fraudulent email communications apt to mislead the recipients as to their source and the endorsement or approval of the related content is an additional circumstance evidencing the Respondent’s bad faith.
In light of the above, the Panel finds that the Complainant has proven that the Respondent registered and are using the disputed domain name in bad faith. 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.
Luca Barbero
Sole Panelist
Date: November 29, 2017
Full & Egal Universal Law Academy