The Complainant is Virgin Enterprises Limited, United Kingdom, represented by A. A. Thornton & Co, United Kingdom.
The Respondent is Moniker Privacy Services, United States of America / Name Redacted.1 2. The Domain Name and Registrar
The disputed domain name is registered with Moniker Online Services, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2019. On August 2, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 5, 2019, 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 August 6, 2019, 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 August 9, 2019.
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 August 14, 2019. In accordance with the Rules, paragraph 5, the due date for Response was September 3, 2019. The Center received an informal communication regarding the proceeding on September 2, 2019. The Respondent did not submit any formal response. Accordingly, the Center notified the Parties of the commencement of the Panel appointment process on September 10, 2019.
The Center appointed Evan D. Brown as the sole panelist in this matter on September 24, 2019. 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 responsible for registering and maintaining registrations for trademarks containing the VIRGIN mark (or related marks) and licensing these rights to its affiliates, which include Virgin Money. The Complainant owns a number of trademark registrations for the mark VIRGIN MONEY, including United Kingdom Trade Mark Registration No. 2177329 for VIRGIN MONEY filed on September 15, 1998, and issued on May 21, 1999. The Respondent registered the disputed domain name on February 17, 2005. Each time the disputed domain name is accessed, the user is directed to a different website. When the user is not redirected to another URL, the content that appears on the website to which the disputed domain name resolves is pay-per-click advertising, including at times advertisements for services that are competitive to the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent did not formally reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely, 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 in respect of 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 disputed domain name contains the Complainant’s registered mark in its entirety, accompanied only by the geographical designation “UK”. This additional material (along with the generic Top-Level Domain “.com”) does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s mark for purposes of the Policy. The Complainant has demonstrated that it has rights in the mark VIRGIN MONEY and that the disputed domain name is identical or confusingly similar to that mark. Accordingly, the Complainant has established the first UDRP element. B. Rights or Legitimate Interests
The Complainant has successfully established a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name. The Panel agrees that the Respondent's practice of using the disputed domain name to redirect users to different websites is indicative of malicious activity. In addition, the use of the disputed domain name to display competitive pay-per-click advertisements shows an absence of use of the disputed domain name for a legitimate noncommercial or fair use. The Respondent has not put forth any evidence at all, let alone any evidence that could rebut the prima facie showing the Complainant has made. The Complainant has successfully established the second UDRP element. C. Registered and Used in Bad Faith
The Policy requires a complainant to establish that the disputed domain name was registered and is being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent’s bad faith registration and use. Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent “[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] website or other online location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or a product or service on [the respondent’s] website or location”.
Because the Complainant’s marks are well known, it is implausible to believe that the Respondent was not aware of those marks when it registered the disputed domain name. In the circumstances of this case, such a showing is sufficient to establish bad faith registration of the disputed domain name. Bad faith use is clear from the Respondent’s activities of using the disputed domain name to establish a website displaying unauthorized pay-per-click links. The Complainant has successfully established the third UDRP element. 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.
Evan D. Brown
Sole Panelist
Date: October 8, 2019
1 As it appears, the Respondent has fraudulently used the identity of a third party when registering the disputed domain name. The Panel has decided that no purpose can be served by including the named Respondent in this Decision, and has therefore redacted the Respondent’s name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published due to exceptional circumstances. See Banco Bradesco S.A. v. FAST-12785241 Attn. B / Name Redacted,WIPO Case No. D2009-1788.
Full & Egal Universal Law Academy