Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Stobbs (IP) Limited, UK.
Respondent is Abdab Consult of Littlehampton, UK. 2. The Domain Names and Registrar
The disputed domain names , , , (respectively “the Domain Name” or “Domain Names”) are registered with OwnRegistrar, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 30, 2018. On August 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 3, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on September 10, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 30, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 1, 2018.
The Center appointed Clive L. Elliott Q.C. as the sole panelist in this matter on October 3, 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
According to WhoIs the Domain Names were registered as follows:
: August 16, 2018
: August 21, 2018
: August 21, 2018
: August 21, 2018
Complainant is the brand owner for the Virgin Group of Companies. The Virgin Group originated in 1970 when Richard Branson began selling music records under the VIRGIN trade mark and since that date it has expanded into a wide variety of businesses. As a result, the Virgin Group now comprises over 60 Virgin businesses worldwide, operating in 35 countries including throughout Europe, the United States of America (“US” or “United States”) and Australasia. The number of employees employed by the Virgin Group of Companies is in excess of 69,000, generating an annual group turnover in excess of GBP 16.6 billion.
The Virgin Group includes:
- Virgin Hotels – launched in 2010 to provide high quality hotel accommodation;
- Virgin Unite – a non-profit foundation set up in 2004;
- Virgin Limited Edition – administers, operates and maintains the portfolio of luxury resorts;
- Hyperloop One – a company formed to develop the technology for a high speed transportation system using pods propelled by magnets that travel in frictionless tubes.
Complainant owns rights in the trade marks:
- VIRGIN (for example, UK trade mark no. UK00001009534, registered on April 11, 1973);
- VIRGIN HOTELS;
- VIRGIN UNITE;
- VIRGIN HYPER.
(“Complainant’s Marks”)
Complainant also owns a number of domain names that reflect the above trade mark rights.
The Domain Names resolve to replica websites, which are direct copies of Complainant’s websites with only contact details changed. 5. Parties’ Contentions A. Complainant
Complainant asserts that it has developed a significant reputation in VIRGIN worldwide, as is evidenced by a witness statement provided by Frances Harding outlining the activities of the Virgin Group and the extent of its operations under the VIRGIN trade mark.
Complainant contends that the VIRGIN trade mark is commonly used alongside an additional element, for example VIRGIN Atlantic, VIRGIN Money, VIRGIN Trains, VIRGIN Holidays, VIRGIN Media, VIRGIN Mobile, VIRGIN Radio and VIRGIN Games. Complainant believes that this demonstrates that Complainant has rights in VIRGIN, VIRGIN HOTELS, NECKER ISLAND, VIRGIN UNITE and VIRGIN HYPERLOOP ONE.
Complainant contends that the Domain Name contains the words “virgin”, “us” and “hotels” followed by the designation “.com”. Complainant submits that the Domain Name incorporates Complainant’s VIRGIN and VIRGIN HOTELS trade marks in their entirety. The acronym “US” is a well-recognised country code abbreviation for the United States and its addition does not distinguish the Domain Name from Complainant’s Marks. Given Complainant’s Virgin Hotels business is mainly located in the United States, the inclusion of “US” reinforces a false connection with Complainant. Accordingly, it is argued that the Domain Name is confusingly similar to Complainant’s VIRGIN and VIRGIN HOTELS trade marks.
Complainant asserts that the Domain Name contains the words “virgin” and “Necker Island”, followed by the descriptive designation “.com”. It submits that the Domain Name contains Complainant’s VIRGIN trade mark in its entirety, along with the name of the Virgin owned property NECKER ISLAND, in which Complainant owns unregistered rights.
In view of the connection between Complainant and Necker Island, Complainant submits that the Domain Name is confusingly similar to Complainant’s VIRGIN trade mark, and its unregistered rights in the sign NECKER ISLAND.
The Domain Name contains the words “virgin”, “world” and “unite” followed by the descriptive designation, “.com”. Complainant submits that the Domain Name contains Complainant’s VIRGIN mark in its entirety, as well as the word “unite”. Complainant asserts that it has extensive rights in VIRGIN UNITE, and the inclusion of the word “world” does not distinguish the Domain Name from Complainant’s trade mark VIRGIN UNITE, as it refers to the area over which Virgin Unite services are offered.
In view of Complainant’s extensive rights in, and use of the VIRGIN UNITE brand, Complainant contends that the Domain Name is confusingly similar to its VIRGIN and VIRGIN UNITE trade marks. Complainant points out that it also owns the domain name .
The Domain Name contains the words “virgin”, “hyperloop” and “one” followed by the descriptive designation, “.com”. Complainant submits that the Domain Name contains its VIRGIN mark in its entirety, as well as the word “hyper”. Complainant owns registered trade mark rights in VIRGIN HYPER and unregistered rights in VIRGIN HYPERLOOP ONE by virtue of its use. Complainant further contends that the Domain Name is confusingly similar to its VIRGIN and VIRGIN HYPER trade marks.
Complainant argues that the four Domain Names are each confusingly similar to a trade mark or service mark in which Complainant has rights.
Complainant states that Respondent has no rights or any legitimate interests in the Domain Names and that Complainant has not authorised Respondent to use its VIRGIN, VIRGIN HOTELS, VIRGIN UNITE or VIRGIN HYPER trade marks, nor has it authorised the use of NECKER ISLAND.
Complainant adds that Respondent is not known by the names Virgin, Virgin Hotels, Virgin Unite, Virgin Hyper or Necker Island and has no trade mark registrations or rights in these names. Furthermore, Respondent is not using the Domain Names in connection with a legitimate offering of goods or services.
Complainant submits that the registration of the Domain Names is an example of bad faith registrations.
Complainant goes on to state that the Domain Names resolve to replica websites, which are direct copies of Complainant’s websites with only contact details changed. Complainant submits that this has been done so that potential customers of Complainant (or donors in the case of the charity Virgin Unite) provide personal details and make payments via the fake website believing the website to be operated by Complainant.
Complainant submits that there are circumstances which indicate that by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with Complainant’s Marks as to the source, sponsorship, affiliation or endorsement of the website or location, or of a product or service on the website or location.
Complainant states that it has made requests of Respondent to have the content of the websites removed, but the websites remain active.
Complainant alleges that the Domain Names have been registered for the purpose of confusing Internet users into believing that Respondent is operating genuine Virgin businesses, when in fact it is not.
Complainant asserts that Respondent is acting in bad faith by registering multiple domain names containing the word “Virgin” and seeking to create sham websites that are almost identical versions of Complainant’s genuine sites. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Complainant has established to the satisfaction of the Panel that Complainant has rights in the trade marks: VIRGIN; VIRGIN HOTELS; VIRGIN UNITE; and VIRGIN HYPER, referred to above as Complainant’s Marks.
All of the trade marks contain as a dominant and distinctive element the word “Virgin”, permitting the Panel to deal with all of the Domain Names together, in the following discussion decision.
The Domain Names reproduce Complainant’s Mark VIRGIN, albeit with the addition of one or more descriptive words. This does nothing to prevent a finding of confusing similarity.
In absence of any attempt to refute Complainant’s assertions and arguments it is found that:
a) Complainant has rights in respect of Complainant’s Marks.
b) The Domain Names are each confusingly similar to Complainant’s Marks.
Accordingly, the Panel is satisfied that the first element of the Policy has been met. B. Rights or Legitimate Interests
Respondent has no apparent rights or legitimate interests in the Domain Names; nor has it shown that Complainant has permitted or authorised Respondent to use Complainant’s Marks, nor to use the term Necker Island in conjunction with the VIRGIN trade mark. The Panel notes that Complainant has an interest in and has not authorised the use of the name Necker Island, an island on which Complainant has property and commercial interests.
In addition, there is no evidence that Respondent is known by the Domain Names, nor that it is making a legitimate offering of goods or services under or by reference to the Domain Names, or any of them.
Complainant asserts that the Domain Names resolve to replica websites, which are direct copies of Complainant’s websites and that members of the public are likely to be lured into accessing these fake websites believing that they are operated by Complainant.
In the absence of any attempt to refute these allegations it is found that Respondent has no rights or legitimate interests in the Domain Names.
The Panel is satisfied that the second element of the Policy has been met. C. Registered and Used in Bad Faith
Complainant argues that Respondent is acting in bad faith by registering multiple domain names containing the word “Virgin” and seeking to create sham websites that are almost identical versions of Complainant’s genuine sites. In the absence of any attempt to challenge this allegation the Panel has no difficulty in finding that this amounts to bad faith conduct and accordingly that the third element of the Policy has been met. 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 Names , , , be transferred to Complainant.
Clive L. Elliott QC
Sole Panelist
Date: October 24, 2018
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