Complainant is Virgin Enterprises Limited, United Kingdom, represented by A.A.Thornton & Co, United Kingdom.
Respondent is WhoisSecure, WhoisSecure, Unites States of America (“United States”) / Yung Mon, Egypt. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 17, 2020. On January 17, 2020, the Center transmitted by email to Registrar a request for registrar verification in connection with the disputed domain name. On January 18, 2020, 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 Complainant on January 20, 2020 providing the registrant and contact information disclosed by Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on January 24, 2020. 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 Respondent of the Complaint, and the proceedings commenced on January 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was February 16, 2020. Respondent did not submit any response. Accordingly, the Center notified the parties of Respondent’s default on February 18, 2020. The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on February 25, 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 Complainant is a member of a group of companies that are collectively known as the Virgin Group, established in 1970 and currently comprising over 60 businesses operating under the Virgin brand in the financial services, health, music and entertainment, telecommunications, media, and travel sectors. These businesses report serving 53 million customers worldwide and employ more than 69,000 people in 35 countries. Annual revenue for the Virgin Group is reported at 16.6 billion GBP. Complainant has operated a passenger airline and cargo service under the Virgin Atlantic brand since 1984. Complainant is the proprietor of approximately 3,500 trademark applications and registrations in 150 countries containing the word element Virgin (“Virgin Mark”), including the following: - United Kingdom Registration No. 1287266 for VIRGIN (word mark) for services in class 39, registered on August 30, 1991; Complainant operates its primary business website at “www.virgin.com” and owns approximately 5,000 domain names incorporating the Virgin Mark. The disputed domain name was registered on November 5, 2019. According to the Complainant, it resolved to a website offering package shipping and cargo services under the name “Virgin Courier Service.” 5. Parties’ Contentions A. Complainant Under the first element, Complainant states that the Virgin Group was founded in 1970 by Sir Richard Branson as a mail-order record business. Since then, the operations have grown significantly, and today Complainant maintains a large portfolio of trademarks for the Virgin Mark, the VIRGIN logo mark and for the VIRGIN ATLANTIC mark, including for transportation and cargo services. In 2018, the Virgin Atlantic cargo business carried a quarter of all trans-Atlantic air cargo volume. The Virgin Mark and the VIRGIN ATLANTIC mark are prominently used in Complainant’s operations and have won many awards. The disputed domain name is comprised of the terms “virgin”, “go” and “shipping,” thereby incorporating the entirety of Complainant’s Virgin Mark, and the additional terms are descriptive and non-distinctive. Under the second element, Complainant states that the disputed domain name resolves to a website that purports to offer shipping and courier services, on which the color red is used as a background color. The color red is consistently and extensively used by Complainant in connection with the Virgin Mark branding and promotion. Respondent’s website contains spelling errors and appears to be a copy of a website found at a different domain name. The website does not appear to be operated by a legitimate business in connection with a bona fide offering of services. There is no evidence that Respondent is commonly known by “virgingoshipping”, “virgin” or “virgin courier service.” Respondent is deliberately attempting to create the impression that the disputed domain name is connected to Complainant. The disputed domain name will be disruptive to Complainant’s business, and create a negative perception of Complainant’s business. Respondent has previously been named as a respondent in another UDRP case in which he was found to have registered a domain name for commercial gain as part of a fraudulent scheme. Under the third element, Complainant states that Complainant’s marks have a high level of public recognition and reputation for cargo services. Respondent used Complainant’s registered marks and the color red on its website. It is unlikely that Respondent was unaware of Complainant and its registered marks. The website does not appear to be connected to a bona fide business and it may disrupt Complainant’s business and tarnish its marks. Respondent has previously been named as a respondent in another UDRP case in which it was found to have registered a domain name for commercial gain as part of a fraudulent scheme. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Given the facts in the case file and Respondent’s failure to file a response, the Panel accepts as true the contentions in the Complaint. Nevertheless, paragraph 4(a) of the UDRP requires Complainant to make out all three of the following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) Respondent has registered and is using the disputed domain name in bad faith. A. Identical or Confusingly Similar Complainant has provided evidence establishing that it has trademark rights in the Virgin Mark through registrations in jurisdictions around the world, thereby satisfying the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2.1. In comparing Complainant’s Virgin Mark with the disputed domain name, the Panel finds that the disputed domain name is confusingly similar with the Virgin Mark, since it contains the mark in its entirety. The addition of the dictionary words “go” and “shipping” in the disputed domain name does not prevent a finding of confusing similarity. Complainant’s virgin Mark is clearly recognizable within the disputed domain name. Section 1.7 of the WIPO Overview 3.0 provides: “It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” Section 1.8 of the WIPO Overview 3.0 provides: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements.” It is the well-established view of UDRP panels that the addition of the generic Top-Level Domain (“gTLD”) to the disputed domain name does not prevent the disputed domain name from being confusingly similar to Complainant’s trademark (see WIPO Overview 3.0, section 1.11.1, and cases cited thereunder). Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following: (i) before any notice to it of the dispute, Respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) Respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The circumstances stated in the Complaint and evidence in support set forth in the Annexes indicate that Respondent has no rights or legitimate interests in the disputed domain name. The nature of the disputed domain name, adding the dictionary terms “go” and “shipping” to Complainant’s Virgin Mark, cannot constitute fair use because Respondent thereby effectively impersonates or suggests sponsorship or endorsement by Complainant, the trademark owner. See WIPO Overview 3.0, section 2.5.1. The Panel finds that there is no evidence that Respondent is commonly known by the disputed domain name or is using the Virgin Mark with permission of Complainant. Rather, the record supports Complainant’s express assertion that such permission does not exist. Complainant’s rights in the Virgin Mark predate the registration of the disputed domain name by more than 30 years. The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Pursuant to WIPO Overview 3.0., section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Respondent, in failing to timely file a response, has not submitted any evidence or arguments demonstrating such rights or legitimate interests, nor has it rebutted any of Complainant’s contentions. There is no information available that would support a finding of a fair use of the disputed domain name. Considering the similarity between Complainant’s well-known Virgin Mark and the disputed domain name, and the fact that the disputed domain name resolved to a website offering services similar or identical to that of Complainant, there can be no finding of rights or legitimate interests in the disputed domain name. Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use the disputed domain name in bad faith: (i) circumstances indicating that Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the disputed domain name; or (ii) that Respondent has registered the disputed 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 Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line 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 of a product or service on Respondent’s website or location. The Panel finds bad faith under Policy paragraphs 4(b)(ii) and 4(b)(iv). The record in the case demonstrates that Respondent chose the disputed domain name deliberately for the purpose of impersonating or attempting to create an association with Complainant. Complainant’s rights in the Virgin Mark significantly predate the registration of the disputed domain name. The Virgin Mark is well-known in respect of the services for which it is registered and used. The disputed domain name contains Complainant’s Virgin Mark in its entirety, with the addition of dictionary terms that strengthens the association with Complainant. The Panel finds that such a registration creates a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4, describing the types of evidence that may support a finding of bad faith. Having established that the disputed domain name was registered in bad faith, the Panel next turns to the issue of whether Respondent has engaged in bad faith use of the disputed domain name. The Panel finds that Respondent has demonstrated bad faith use in establishing a website featuring services substantially identical to those of Complainant, on which Complainant’s Virgin Mark and the color red are featured. Respondent has failed to file any response or provide any evidence of actual or contemplated good faith use, and the circumstances do not make any such use plausible. Further, Respondent demonstrates a pattern of conduct, having previously targeted other trademark owners (see Six Continents Hotels, Inc. v. WhoisSecure, WhoisSecure/Yung Mon,WIPO Case No. D2018-2544 and Six Continents Hotels, Inc. v. WhoisSecure, WhoisSecure/Yung Mon,WIPO Case No. D2019-3087). The Panel therefore finds that Complainant has established the third element under paragraph 4(a) 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 Ingrīda Kariņa-Bērziņa
- European Union Registration No. 001798560 for VIRGIN (word mark) for goods and services in classes 9 and 39, registered on June 5, 2020.
Sole Panelist
Date: March 10, 2020
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