The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Stobbs IP Limited, United Kingdom.
The Respondent is Steph Ugo of New York City, New York, United States of America (“United States” or “USA”). 2. The Domain Name and Registrar
The disputed domain name is registered with OwnRegistrar, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2018. On October 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 10, 2018, 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 23, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 12, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 14, 2018.
The Center appointed Peter Burgstaller as the sole panelist in this matter on November 30, 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 is the owner of the well-known and famous trademark VIRGIN, for which it has various trademark registrations in numerous jurisdictions internationally, including registrations as:
- European Union trademarks No. 217182 registration date September 4, 1998, No. 578716 registration date May 20, 1999, No. 611459 registration date January 26, 1999, No. 628487 registration date December 21, 1999 or
- UK trademarks No. 1009534 registration date April 11, 1973 or
- US trademarks No. 1413664 registration date October 14, 1986, No. 1469618 registration date December 22, 1987.
Moreover, the Complainant is owner of the European Union trademark VIRGIN RACING No. 14176069 dated December 14, 2015 (see Annex 4).
The Complainant is the registrant of the domain name which it uses to forward to a website at “www.envision”.
The Virgin Group, under the name Virgin Racing, is also a sponsor of the Envision FIA Formula E racing team, which is one of the founding and leading outfits in the ABB FIA Formula E Championship – the electric street racing series and the world’s first fully-electric international single-seater category.
Several panels previously have already accepted that the VIRGIN trademark is famous and well known through out the world, e.g. Virgin Enterprises Limited v. WhoisGuard, Inc. / michael ceesar, creations,WIPO Case No. D2016-0671; Virgin Enterprises Limited v. Tj Chughtai, Noble Travel,WIPO Case No. D2015-1646; Virgin Enterprises Limited v. Simon Thompson,WIPO Case No. D2014-0266.
The Respondent has registered the domain name at issue with OwnRegistrar, Inc on August 8, 2018 without having permission to use the Complainant’s trademarks in any manner, including in domain names.
At the time of the filing of the Complaint, the disputed domain name resolved to a website displaying racing related content and the mention “Virgin Racing”. As of the time of the rendering of this decision, the disputed domain name is inactive. 5. Parties’ Contentions A. Complainant
The Complainant is the brand owner for the Virgin Group of Companies. The Virgin Group originated in 1970 when music records were sold under the VIRGIN trademark and since that date it has expanded into a wide variety of businesses. The Virgin Group now comprises over 60 businesses worldwide, operating in 35 countries including throughout Europe, USA 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 trademark is used across the Virgin Group.
The Virgin Group, under the name Virgin Racing, is a sponsor of the Envision FIA Formula E racing team. The Envision Virgin Racing Formula E Team is one of the founding and leading outfits in the ABB FIA Formula E Championship – the electric street racing series and the world’s first fully-electric international single-seater category. The Complainant owns extensive registered rights in VIRGIN and an EU trade-mark registration of VIRGIN RACING.
The VIRGIN trademark is commonly used alongside an additional element, for example VIRGIN ATLANTIC, VIRGIN MONEY, VIRGIN TRAINS, VIRGIN HOLIDAYS, VIRGIN MEDIA, VIRGIN MOBILE, VIRGIN RADIO, VIRGIN GAMES, VIRGIN RACING etc. This very clearly demonstrates that the Complainant has rights in the trademarks VIRGIN and VIRGIN RACING.
The disputed domain name contains the words VIRGIN RACING followed by the letters “fe”. The domain therefore incorporates the Complainant’s VIRGIN and VIRGIN RACING trademarks in their entirety. The term “fe” refers to Formula E as in Formula E racing and does not serve to distinguish the domain name from the Complainant’s VIRGIN and VIRGIN RACING trademarks.
The disputed domain name in question is confusingly similar to the trademarks or service marks in which the Complainant has rights.
The Complainant has not authorized the Respondent to use its VIRGIN and VIRGIN RACING trademarks. The Respondent is not known by the names VIRGIN or VIRGIN RACING and has no trademark registrations or rights in VIRGIN and VIRGIN RACING trademarks. Furthermore, the Respondent is not using the domain name in connection with a legitimate offering of goods/services. Therefore, the Respondent has no rights or legitimate interest in the disputed domain.
The manner in which the domain has been used clearly demonstrates that the Respondent was aware of the Complainant and that it has been registered in bad faith. It is clear that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of their website or location or of a product or service on their website or location. According to the Complainant, the disputed domain name was used in emails for the purposes of phishing and extracting personal data from members of the public. The Complainant indicates that a reference to the website corresponding to the disputed domain name appeared in those emails. The Complainant contends that the domain name at issue therefore was registered and is being used in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests with respect to the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The domain name at issue is confusingly similar to the Complainant’s trademark VIRGIN as well as VIRGIN RACING since where the relevant trademark is recognizable within the disputed domain name the mere addition of other terms whether descriptive, geographical, pejorative, meaningless, or otherwise will not prevent a finding of confusing similarity under the first element of the Policy (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).
In fact and as the Panel notes is relevant under the third element of the Policy, it is the Panel’s conviction that using the suffixes at issue in connection with the famous mark VIRGIN they rather strengthen the impression that the disputed domain names are in some way connected to the Complainant or at least “free ride” on the reputation of the Complainant’s name and trademark VIRGIN.
It has also long been held that suffixes such as a country code or generic Top-Level Domain (“gTLD”) cannot typically negate confusing similarity where it otherwise exists, as it does in the present case.
The Panel therefore finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see esp. WIPO Overview 3.0, section 2.1).
In the present case the Respondent failed to submit a Response. Considering all of the evidence in the Complaint (especially with regard to the Annexes presented by the Complainant) and the Complainant’s contentions that the Respondent has no rights or legitimate interests in the disputed domain name, that the Respondent has no connection or affiliation with the Complainant and the Respondent has not received any license or consent, express or implied, to use the Complainant’s trademark VIRGIN or VIRGIN RACING in a domain name or in any other manner lead the Panel to the conclusion that the Complainant has made out an undisputed prima facie case so that the conditions set out in paragraph 4(a)(ii) of the Policy have been met by the Complainant. C. Registered and Used in Bad Faith
It is the Panel’s view that the Complainant's trademarks and activities are well known throughout the world; the Complainant moreover gained significant reputation in the VIRGIN as well as VIRGIN RACING brands through use over years and decades. Therefore, members of the public naturally assume that domain names comprising the famous trademark VIRGIN or VIRGIN RACING locates a website at least connected with the Complainant’s group for or relating in some way to entrepreneurs.
Having said this, it is the Panel’s conviction that the fame of the VIRGIN trademarks makes it inconceivable that the Respondent registered or has used the disputed domain name without knowledge of the Complainant’s rights and further that this leads to the necessary inference of bad faith; this conviction is especially supported by the fact that the Respondent also used suffixes to the Complainant’s trademark which are referring to the Complainant’s business, e.g. “Racing” and “fe” (abbreviation of “Formula E”).
Moreover, following Annex 7 which shows a screenshot with a “contact us page” under the domain name at issue which is a direct copy of the official Formula E racing website (Annex 8) but providing false contact details and incorporating the VIRGIN trademark together with the fact that emails have been sent to members of the public purportedly from the General Counsel of the Virging Group from the contact email address on “www.” and referencing that website clearly shows to this Panel that the domain name in dispute is being used in bad faith.
This Panel also concludes that because of the fact that:
- Complainant’s trademarks are famous worldwide with strong reputation and are well known globally;
- Respondent has failed to present any evidence of any good faith use with regard to the disputed domain name;
- the disputed domain name incorporates the Complainant’s trademark VIRGIN as well as VIRGIN RACING, and is thus likely diverting or misleading potential web users from the Complainant’s website to the Respondent’s website;
- no good faith use is possible for the Respondent with regard to the domain name at issue;
there is no doubt for a finding of bad faith registration and bad faith usage under 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 name be transferred to the Complainant.
Peter Burgstaller
Sole Panelist
Date: December 8, 2018
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