The Complainant is Virgin Enterprises Limited, United Kingdom, represented by A. A. Thornton & Co., United Kingdom.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / WEBBIT USA, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2019. On October 7, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On the same day, 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 October 14, 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 October 15, 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 October 24, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 13, 2019. The Center received an informal email communication from the Respondent on October 25, 2019. In this communication, the Respondent stated “Thanks for your notification and am sorry about the delay response; I am not interested in settle any dispute with the Complaint [sic], I will go for a different domain name”. By email of October 25, 2019, the Center notified the Parties by reference to the message of the Respondent that pursuant to the Rules, paragraph 17, a UDRP proceeding may be suspended to implement a settlement agreement between the Parties and if the Parties wish to explore settlement options, the Complainant should submit a request for suspension by November 1, 2019. Given that no request for suspension was submitted, the proceeding continued. The Respondent did not submit any formal response. The Center notified the Parties on November 14, 2019, that it would proceed to panel appointment. The Center appointed Jacques de Werra as the sole panelist in this matter on November 29, 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 a member of a group of companies that are collectively known as “the Virgin Group”. The Virgin Group was originally established by its founder and chairman Sir Richard Branson in the United Kingdom in 1970 when he started a business selling popular music records by mail order under the VIRGIN name. Since then the operations of the Virgin Group have grown significantly and there are now over 60 VIRGIN branded businesses that span a diverse range of sectors covering financial services, health and wellness, music and entertainment, people and planet, telecommunications and media, and travel and leisure. The Virgin Group has over 53 million customers worldwide and employs more than 69,000 people in 35 countries and generates annual revenue of GBP 16.6 billion. In 1984, the Complainant launched its first cargo airline service under the marks VIRGIN and VIRGIN ATLANTIC. The Complainant provides information about its VIRGIN ATLANTIC cargo services and booking facilities on its website at “www.virginatlanticcargo.com/gb/en.html”. The VIRGIN ATLANTIC cargo service now operates routes from the United Kingdom hubs of London Gatwick, London Heathrow and Manchester to destinations in North America, the Caribbean, Africa, the Middle East, Asia and Mexico. The Complainant owns numerous registered trademarks, including the following ones (the “Trademarks”): - United Kingdom Trade Mark Registration No. UK00003163121 for the mark VIRGIN registered in respect of inter alia “Transport; packaging and storage of goods; travel arrangement” in class 39 filed on May 5, 2016 and registered on July 29, 2016; - International Trade Mark Registration No. 1290574 for the mark VIRGIN registered in respect of inter alia “Transport; packaging and storage of goods” in class 39, designating Antigua and Barbuda, Australia, China, Colombia, Curacao, European Union, Israel, India, the Republic of Korea, Monaco, Montenegro, Mexico, Norway, New Zealand, the Russian Federation, Singapore, Turkey and the United States registered on February 3, 2015; - European Union (“EU”) Trade Mark Registration No. 003422201 for the mark VIRGIN EXPRESS in class 39 filed on October 21, 2003 and registered on March 2, 2005; - EU Trade Mark Registration No. 014030589 for the mark VIRGIN ATLANTIC registered in respect of inter alia “airline transportation services; transportation information; arrangement of transport” in class 39 filed on May 5, 2015 and registered on October 12, 2015. The Complainant has built up a considerable online presence and is the registered proprietor of over 5,000 domain names consisting of or incorporating the VIRGIN trademark. The Complainant has operated a website at “www.virgin.com” since 2000 to promote the activities of the VIRGIN Group and its businesses, ventures and foundations The Disputed Domain Name was registered on June 2, 2019. It is used in relation with a website purportedly offering delivery services and refers in its legal notices to a company “Virgin Global Express Network Limited” located at Level 21, 60 Castlereagh Street, Sydney, NSW. Investigations made by the Complainant did not find any evidence of a business being conducted by or under the name of “Virgin Global Express Network Limited” at that address (or at another location). The website associated with the Disputed Domain Name replicates elements of a website operated at “www.yodel.co.uk”, which is a genuine United Kingdom based parcel delivery business. Sections of the website are substantially identical in layout and content to the genuine website “www.yodel.co.uk”, which includes the copying of a review that is posted on the genuine “www.yodel.co.uk” website. Many of the links and contact submission forms on the website do not appear to work. An error message is displayed when attempting to create an account, and the submission forms do not appear to submit details entered. 5. Parties’ Contentions A. Complainant The Complainant alleges that the Disputed Domain Name is comprised of the words “virgin”, “global” and “express”, and therefore incorporates the entirety of the Complainant’s trademark VIRGIN and the first element of the Complainant’s trademark VIRGIN ATLANTIC. The Disputed Domain Name also includes both elements of the Complainant’s trademark VIRGIN EXPRESS, with the term “global” in between. The elements “global” and “express” within the Disputed Domain Name are generic non-distinctive words, which refer respectively to something being worldwide and a service being provided on a faster turnaround time. In particular when viewed in the context of the services which are purportedly being offered at the website to which the Disputed Domain Name resolves, and the services for which the Complainant has a reputation under its trademarks VIRGIN and VIRGIN ATLANTIC, being freight and cargo services, the words “global” and “express” are also descriptive. The additional words “global” and “express” in the Disputed Domain Name are therefore not sufficient to distinguish the Complainant’s trademark VIRGIN. The Disputed Domain Name is therefore highly similar to the Complainant’s Trademarks. The Disputed Domain Name is used in relation to a website purportedly offering delivery services and refers in its legal notices to a company “Virgin Global Express Network Limited” with an address at Level 21, 60 Castlereagh Street, Sydney, NSW. Investigations into Virgin Global Express Network Limited conducted by the Complainant did not find any evidence of a business being conducted by or under the name of “Virgin Global Express Network Limited” at this address given. Images of the building at 60 Castlereagh Street, Sydney, which does exist, taken during the investigations show that Virgin Global Express Network Limited does not have offices in this building, nor does this building have a Level 21 (the highest level being level 20). The website associated with the Disputed Domain Name is a copy of the website “www.yodel.co.uk”, which is a genuine United Kingdom based parcel delivery business. The “www.yodel.co.uk” website has also been copied in the form of two other fraudulent websites: “www.ipsdelivery.com” and “www.dmcdelivering.com”. Sections of the website at the Disputed Domain Name and the further two fraudulent websites are substantially identical in layout and content to the genuine website “www.yodel.co.uk”, which includes the copying of a review that is posted on the genuine “www.yodel.co.uk” website. Many of the links and contact submission forms on the website do not appear to work. An error message is displayed when attempting to create an account, and the submission forms do not appear to submit details entered. It is clear from the evidence submitted by the Complainant that the Respondent is not operating a legitimate business from the website, as the content of the website is a copy of a legitimate third-party business, and beyond the website there is no evidence of the existence of a company trading as “Virgin Global Express Network Limited”. There is no other evidence that the Respondent ever conducted any business using the website or as “Virgin Global Express Network Limited”. The Respondent has not been authorized by the Complainant to use the Trademarks. The use of the website in relation to the Disputed Domain Name is not legitimate, noncommercial or fair, and is to misleadingly divert consumers looking for the Complainant or the Complainant’s VIRGIN ATLANTIC freight services to the Respondent’s website using the Complainant’s Trademarks. The Complainant therefore submits that the Respondent lacks rights and legitimate interests in the Disputed Domain Name, and that paragraph 4(a)(ii) of the Policy is satisfied. Given the lack of evidence of a legitimate business ever being conducted using the website or as “Virgin Global Express Network Limited”, the Respondent has registered the Disputed Domain Name in bad faith. The inclusion of the entirety of one of the Complainant’s Trademarks (i.e., the VIRGIN trademark) and the first element of another of the Complainant’s Trademarks (i.e., the VIRGIN ATLANTIC trademark) is for the purpose of creating a likelihood of confusion with those marks and intentionally attracting prospective or existing customers of the Complainant to the website associated with the Disputed Domain Name, which could also lead to a commercial gain for the Respondent. The use of the Disputed Domain Name to resolve to the website, which purports to offer delivery services but actually does not relate to a genuine business at all, and which is a copy of the website of another genuine third-party business, means that consumers could be left with a negative impression of the Complainant. This would be disruptive to the Complainant’s genuine delivery business that it offers under the marks VIRGIN and VIRGIN ATLANTIC and could tarnish the Complainant’s Trademarks. The Disputed Domain Name is therefore being used in bad faith. The Complainant thus submits that paragraph 4(a)(iii) of the Policy is satisfied. B. Respondent The Respondent did not submit any formal response. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that the complainant must prove each of the following three elements in order to succeed in a UDRP proceeding: (i) the respondent’s 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 domain name; and (iii) the respondent’s domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel is satisfied that the Complainant has rights to a trademark or service mark as reflected in the Trademarks. A comparison between the Disputed Domain Name and the Trademarks shows that the Disputed Domain Name is confusingly similar to the Trademarks, whereby the generic Top-Level Domain (i.e.,“.com”) shall be disregarded. The Disputed Domain Name comprises the distinctive features of the Trademarks, and specifically reflects the VIRGIN EXPRESS trademark. The Disputed Domain Name has inserted the generic term “global” between the two words comprising the VIRGIN EXPRESS trademark, whereby the term “global” can be connected to the global operations and to the global transportation activities conducted by the Complainant and the Complainant’s group (including under the VIRGIN CARGO brand). On this basis, the addition of the term “global” does not prevent a finding of confusing similarity between the Disputed Domain Name and the Trademarks. As a result, based on the rights of the Complainant in the Trademarks and on the confusing similarity between the Trademarks and the Disputed Domain Name, the Panel finds that the condition of paragraph 4(a)(i) of the Policy is met. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following: (i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services; or (ii) the Respondent has been commonly known by the Disputed Domain Name, even if it has acquired no trademark or service mark rights; or (iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, the complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests, and once such prima facie case is made the burden of production shifts to the respondent to come forward with relevant evidence of rights or legitimate interests in the domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1. In the Panel’s opinion, the Complainant has made a prima facie case against the Respondent. The Panel considers that the Respondent registered the Disputed Domain Name that reflects the Trademarks owned by the Complainant without the authorization of the Complainant, in a way that can only reasonably be explained as a reference to the Complainant’s Trademarks. In addition, based on the evidence submitted by the Complainant, the Respondent is not operating a legitimate business from the website associated with the Disputed Domain Name, as the content of the website replicates elements of the corporate website of a legitimate third-party parcel delivery business (i.e., “www.yodel.co.uk”), and as there is no evidence of the existence of a company trading as “Virgin Global Express Network Limited”. The use of the website in relation to the Disputed Domain Name is consequently not legitimate as it can misleadingly divert consumers looking for the Complainant or the Complainant’s VIRGIN ATLANTIC freight services to the website associated with the Disputed Domain Name. On this basis, the Panel considers that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Respondent (which has not filed a Response in these proceedings) has not established evidence of its alleged rights or legitimate interests in the Disputed Domain Name. As a result, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that paragraph 4(a)(ii) of the Policy is met. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith: (i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; (ii) circumstances indicating that the respondent 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; (iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 its website or location. The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Given that the scenarios described in the Policy paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant’s trademark would also satisfy the complainant’s burden. See WIPO Overview 3.0, section 3.1. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230. In this case, the Panel holds that the Respondent registered the Disputed Domain Name in bad faith because the Disputed Domain Name clearly targets the Complainant’s Trademarks and the Complainant’s activities in the area of transportation services, as reflected by the content of the website associated with the Disputed Domain Name which replicates elements of the website of another company operating in the parcel delivery business (i.e., “www.yodel.co.uk”). Consequently, the choice of the Disputed Domain Name cannot be reasonably explained otherwise than as a reference to the Complainant’s Trademarks and to the Complainant’s activities. The Panel further holds that the Respondent uses the Disputed Domain Name in bad faith because the Respondent is not operating a legitimate business from the website associated with the Disputed Domain Name, given that the content of the website replicates elements of the website of a legitimate third-party parcel delivery business (i.e., “www.yodel.co.uk”), and as there is no evidence of the existence of a company trading as “Virgin Global Express Network Limited” that would be operated by the Respondent (and that there is no such company at the address that is indicated on the website). The Panel consequently considers that the Respondent intentionally is using the Disputed Domain Name in an attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s Trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. On this basis, the Panel finds that the Respondent registered and uses the Disputed Domain Name in bad faith pursuant to paragraph 4(b) of the Policy, so that the conditions of paragraph 4(a)(iii) of the Policy are 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 Disputed Domain Name Jacques de Werra
Sole Panelist
Date: December 13, 2019
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