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 / Nathaniel Kaufman, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 24, 2019. On December 24, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 24, 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 December 26, 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 December 30, 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 January 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 27, 2020. The Center appointed George R. F. Souter as the sole panelist in this matter on March 3, 2020. 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 the Virgin group of companies, which was founded in the United Kingdom in 1970, and has grown to trade under its VIRGIN trademark in many commercial sectors and in many countries. Currently, the Virgin group employs over 69,000 people, and its turnover is in the region of GBP 16.6 billion. The Virgin group has obtained or has applied for trademark registration of its VIRGIN trademark in over 150 countries, and its registrations of its VIRGIN trademark include United Kingdom registration number UK00003163121 (registered on July 29, 2016). In 2012, the Virgin group set up VIRGIN STARTUP, to provide education in entrepreneurial skills, and support, to young entrepreneurs. Trademark registrations of the Virgin group’s VIRGIN STARTUP include UK registration number 00003015345 (registered on October 25, 2013). The disputed domain name was registered on November 5, 2019, and the Complaint provided evidence that the disputed domain name was being used in connection with a website dealing with the same matters as those dealt with by the Virgin group’s own VIRGIN STARTUP websites at some point prior to the filing of the Complaint. Currently, the disputed domain name resolves to a website being used in connection to pornographic content. 5. Parties’ Contentions A. Complainant The Complainant alleges that the disputed domain is confusingly similar to its VIRGIN and VIRGIN STARTUP trademarks, in particular containing its VIRGIN STARTUP trademark in its entirety, with the mere addition of a descriptive or non-distinctive element. The Complainant alleges that the Respondent lacks rights or legitimate interests in the disputed domain name, in particular that there is no evidence that the Respondent has ever been known by the disputed domain name, and the Respondent has never received permission to use the disputed domain name in connection with a domain name, or otherwise. The Complainant alleges that the disputed domain name was registered in bad faith, and is being used in bad faith in connection with a website which appears to be a clear copy of the Complainant's VIRGIN STARTUP website, and deals with the same matters as that website. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy lists three elements that the Complainant must prove to merit a finding that the disputed domain name be transferred to the Complainant: (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 It is well-established in prior decisions under the UDRP, with which the Panel agrees, that a generic Top-Level Domain (“gTLD”) or country code Top-Level Domain (“ccTLD”) is irrelevant when comparing a trademark with a disputed domain name. Accordingly, the Panel considers the “.org” gTLD to be irrelevant in the circumstances of the present case, and so finds. The Panel recognises that the Complainant’s VIRGIN trademark is well known. It has been well-established in prior decisions under the UDRP, with which the Panel agrees, that a disputed domain name which wholly contains a complainant’s well-known trademark together with the mere addition of descriptive elements is insufficient to avoid a finding of confusing similarity between a trademark and a disputed domain name. In the circumstances of the present case, the Panel considers the geographical expression “asia” to be a descriptive element and notes that the Complainant’s VIRGIN and VIRGIN STARTUP trademarks are clearly recognizable within the disputed domain name. Therefore, such an addition is insufficient to avoid a finding of confusing similarity under the Policy. Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s VIRGIN and VIRGIN STARTUP trademarks, and that the Complainant has satisfied the test of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests It is the consensus view of UDRP panels, with which the Panel agrees, that a prima facie case advanced by the complainant will generally be sufficient for the complainant to be deemed to have satisfied the requirement of paragraph 4(a)(ii) of the Policy, provided the respondent does not come forward with evidence demonstrating rights or legitimate interests in the domain name and the complainant has presented a sufficient prima facie case to succeed under paragraph 4(a)(ii) of the Policy. The Panel considers the submissions put forward by the Complainant as sufficient to be regarded as a prima facie case, and the Respondent did not take the opportunity to advance any claim of rights or legitimate interests in the disputed domain name to rebut this prima facie case. Furthermore, the composition of the disputed domain name carries a risk of implied affiliation with the Complainant and cannot constitute fair use in this case as it effectively impersonates or suggests sponsorship or endorsement with the Complainant (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.5.1). This finding is further supported by the evidenced use of the disputed domain name to resolve to a website impersonating the Complainant. Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel is of the view that the finding that a respondent has no rights or legitimate interests in a disputed domain name can lead, in appropriate circumstances, to a finding of registration of a disputed domain name in bad faith. The circumstance of the present case, in which the Panel is convinced that the Complainant’s VIRGIN and VIRGIN STARTUP trademarks were deliberately appropriated in the disputed domain name, are such that the Panel concludes that a finding of registration in bad faith is justified, and so finds. It is well established in prior decisions under the Policy, with which the Panel agrees, that the use of a disputed domain name in connection with a website dealing with the same goods and/or services as those offered by the Complainant constitutes use of the disputed domain name in bad faith. The aggravating factor in the circumstances of the present case is that the website operated under the disputed domain name provides the possibility of inducing those accessing the website in error to provide sensitive personal information to the Respondent under the mistaken impression that the disputed domain name is under the control of the Complainant (WIPO Overview 3.0, section 3.4). The Panel believes that a finding of use in bad faith is clearly justified in all the circumstances of the present case, and so finds. Accordingly, the Panel finds that the Complainant has satisfied the requirements 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 name George R. F. Souter
Sole Panelist
Date: March 17, 2020
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