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 Alex Laguma of Scotia, New York, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with NameCheap, 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 September 27, 2017, 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 October 4, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2017.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on November 6, 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 a group of companies known collectively as “the Virgin Group”. The Virgin Group was originally established in 1970. In 2010, the Virgin Group launched the hotel brand “Virgin Hotels”.
The Complainant owns the trademark VIRGIN, first registered in the UK on April 11, 1973 under number 1009534. The Complainant’s trademark portfolio includes approximately 3,000 applications and registrations in over 150 jurisdictions.
The disputed domain name was registered on July 6, 2017 and resolves to a web page displaying hotel-related pay-per-click links. 5. Parties’ Contentions A. Complainant
The disputed domain name is confusingly similar to the Complainant’s trademark VIRGIN because it incorporates the Complainant’s trademark in its entirety, adding the merely descriptive word “hotels”.
The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not authorized the Respondent to use its VIRGIN trademark or the disputed domain name. The Respondent is also not commonly known by the disputed domain name and it is not making legitimate noncommercial or fair use of the disputed domain name.
The disputed domain name is or was being used for an email scam, in which an email – using the disputed domain name – purported to be from the Complainant and was intended to defraud its recipient into submitting personal documentation in connection with a sham job opportunity. The email was designed to mislead its recipients by creating confusion with one or more of the Complainant’s companies. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no rights or legitimate interests in respect of the domain name. The third element a complainant must establish is that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant establishes that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.
The disputed domain name incorporates the Complainant's trademark VIRGIN in its entirety in addition with the word "hotels", which is a descriptive term in the travel and hotel business in which the Complainant is active.
The addition of such a descriptive term is not in itself sufficient to remove the confusing similarity between the disputed domain name and the Complainant’s trademark VIRGIN.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s respective trademark and hence the first element of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain name.
The consensus view among UDRP panels is that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270 and section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant has credibly submitted that the Respondent is not a licensee of the Complainant, nor has been otherwise allowed by the Complainant to use the Complainant’s trademark in a domain name or otherwise. The Complainant has also credibly submitted that the Respondent has no rights or legitimate interests to the disputed domain name.
Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. In light of the Panel’s findings below, the Panel finds that there are no other circumstances which provide the Respondent with any rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant establishes that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that 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 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 domain name; or
(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark 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 or competitor; or
(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] website or location.”
In this case the Complainant’s trademark has been used since 1970, some 47 years before the disputed domain name was registered. It is therefore inconceivable that the Respondent would not have been aware of the Complainant’s trademark when registering the disputed domain name, especially as the Respondent has attempted to create a fraudulent association with the Complainant’s group of companies and especially with the “Virgin Hotels” brand. Hence, the disputed domain name was registered in bad faith.
The disputed domain name has been used for email fraud. The emails purport to come from the Complainant’s group of companies and attempt to have the email recipients submit personal information to the email’s sender. Such collection of personal data on fraudulent basis is clear evidence that the disputed domain name is being used in bad faith.
Hence the Panel finds that the disputed domain name was registered and is being used in bad faith. Therefore, the Panel finds that the third element of the Policy is fulfilled. 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.
Tuukka Airaksinen
Sole Panelist
Date: November 20, 2017
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