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 William James of Buffalo, New York, United States of America (“United States”). 2. The Domain Names and Registrar
The disputed domain name is registered with TLDS L.L.C. d/b/a SRSPlus. The disputed domain name is registered with Network Solutions, LLC. TLDS L.L.C. d/b/a SRSPlus and Network Solutions, LLC are hereinafter referenced collectively as the “Registrars.” 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2018. On January 23, 2018, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On January 23, 2018, the Registrars 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 February 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 22, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 23, 2018.
The Center appointed Rodrigo Velasco Santelices as the sole panelist in this matter on March 6, 2018. 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 bases the Complaint on the mark VIRGIN and, VIRGIN MONEY FOUNDATION, which the Complainant began to use since 1970 and 2015 respectively, and for which the Complainant currently owns trademark registrations, attached to Annex 3, of the Complaint. For example, the Complainant owns rights in the trademark VIRGIN, registered in the United Kingdom on April 11, 1973 (No. 1009534) and in the trademark VIRGIN MONEY FOUNDATION, registered in the United Kingdom on July 24, 2015 (No. 3105147).
The disputed domain names and were registered on August 2, 2017, and July 3, 2017, respectively, and both currently resolve to a hosting website. According to the evidence provided by the Complainant, the disputed domain name resolved to a website imitating the official Virgin Money Foundation site. 5. Parties’ Contentions A. Complainant
The Complainant asserts to own extensive registered rights for marks VIRGIN and VIRGIN MONEY FOUNDATION, which include the trademarks attached at Annex 3 to the Complaint, for which the Complainant has developed a significant reputation, including in the United States where the Respondent is located.
The disputed domain names contain the words “virgin” and “foundation” followed by the Top-Level Domains (“TLDs”) “.social” and “.info”, and thus incorporate the Complainant’s VIRGIN trademark in its entirety, accompanied by a word that is descriptive in that it is indicative of a charitable organization and does not therefore serve to distinguish the disputed domain names from the Complainant’s VIRGIN trademark, being confusingly similar to the Complainant’s VIRGIN trademark.
Secondly, the Complainant contends, the Respondent has no rights or legitimate interests in the disputed domain names. The Complainant has not authorized the Respondent to use its VIRGIN trademark. The Respondent is not known by the name “virgin” or “virgin foundation” and has no trademark registrations or rights in VIRGIN or VIRGIN FOUNDATION.
The Complainant asserts that the registration of the disputed domain names is a classic example of a bad faith registration in accordance with 4(b) of the Policy, being highly likely that the Respondent was aware of the Complainant at the dates on which the disputed domain names were registered, and that the Respondent registered the disputed domain names in order to prevent the Complainant from reflecting its trademarks in a corresponding domain name, and that the Respondent has engaged in a pattern of such conduct, illustrated by the fact that a reverse WhoIs search shows that the Respondent is the owner of 1,194 domain names, many of which contain references to other famous brands, including , and which are obvious references to Apple and Barclays. Therefore, the Complainant claims, the Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of the Complainant. The Complainant also asserts that the disputed domain names are being used in bad faith, by imitating the official website and email address of the Complainant, presumably for commercial gain or some other illicit purpose. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Panel considers that the information provided by the Complainant clearly attests that the disputed domain names and can be considered confusingly similar to the Complainant’s trademark VIRGIN.
In this regard, the Panel agrees with the Complainant’s contentions that the addition to VIRGIN, of the word “foundation” does not distinguish the disputed domain names from the Complainant’s trademarks. Likewise, the TLDs “.info” and “.social” are typically irrelevant when determining whether a disputed domain name is confusingly similar to the Complainant’s mark.
Accordingly, this Panel finds that the disputed domain names and are confusingly similar to the Complainant’s trademark VIRGIN, and this requirement has been satisfied. B. Rights or Legitimate Interests
The Respondent has not responded to the Complaint, and the record is void of any possible rights or legitimate interests it may have in the disputed domain names. Neither has the Respondent refuted the allegations made by the Complainant. Therefore, having been duly notified of the Complaint, the Panel considers the silence of the Respondent as a tacit acceptance of the claims made by the Complainant.
Moreover, the Panel has not found the occurrence of any of the circumstances mentioned by paragraph 4(c) of the Policy. Quite the contrary, the Complainant has effectively demonstrated the following: to be the holder of a registered trademark and associated domain names, which are prior to the Respondent’s registration of the disputed domain names, and that it has not licensed the use or exploitation of its VIRGIN trademark to the Respondent.
Therefore, in light of the unrebutted prima facie case made out by the Complainant, the Panel considers that the Complainant has also fulfilled the second element required by the Policy. C. Registered and Used in Bad Faith
This third element requires the Complainant to prove that the disputed domain names (1) were registered in bad faith and (2) are being used in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that evidence registration and use of a domain name in bad faith.
The disputed domain names incorporate the Complainant’s trademark VIRGIN.
The Panel finds the Respondent must have had knowledge of the Complainant’s mark VIRGIN and its rights therein at the time the Respondent registered the disputed domain names. These findings are based on: (i) the Complainant’s trademark having a strong reputation and being widely known; (ii) the disputed domain names are confusingly similar to the Complainant’s trademarks; (iii) one disputed domain name resolved to a website which imitated the official Virgin Money Foundation site; and (iv) the above finding of the Respondent having no rights or legitimate interests in the disputed domain names.
Finally, given the similarity of the disputed domain names to the Complainant’s widely-known VIRGIN trademark and in light of the Complainant’s long-standing use of the same, the Panel agrees that the Respondent’s motive to register the disputed domain names can only have been to create a likelihood of confusion with the Complainant’s VIRGIN trademark, either through the content appearing on the website associated with the disputed domain names, or email addresses associated with the same. The Respondent’s holding of a large number of domain names, many of which contain references to other famous brands, including , , and (which are obvious references to Apple and Barclays) is further evidence of the Respondent’s bad faith.
Consequently, for all these reasons, the Panel finds that the Complainant has met the requirement of 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 disputed domain names and be transferred to the Complainant.
Rodrigo Velasco Santelices
Sole Panelist
Date: March 20, 2018
Full & Egal Universal Law Academy