The Complainant is Virgin Enterprises Limited, United Kingdom, represented by A.A.Thornton & Co, United Kingdom.
The Respondent is Robert Cassidy, United States of America. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 19, 2020. On May 19, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On May 26, 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 the Complainant on May 29, 2020, 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 June 3, 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 the Respondent of the Complaint, and the proceedings commenced on June 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 25, 2020. The Center appointed Andrew Brown Q.C. as the sole panelist in this matter on June 30, 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 states it is a member of a group of companies that are collectively known as “the Virgin Group”. The Complainant states that since its inception in 1970, the size and operations of the Virgin Group have grown significantly. The Complainant’s evidence is that 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 Complainant states these businesses jointly have over 53 million customers worldwide and employ more than 69,000 people in 35 countries. The Complainant also states that the annual revenue of the Virgin Group is GBP 16.6 billion. The Complainant’s evidence is that it is responsible for registering and maintaining registrations for trademarks containing the “virgin” name and VIRGIN signature logo, and for licensing these rights to the VIRGIN businesses. The Complainant state that it owns a substantial portfolio of approximately 3,500 trademark applications and registrations in over 150 countries, covering the majority of the 45 Nice classes of goods and services. In particular, the Complainant’s evidence is that it owns the following trademark registrations: Trademark Origin Registration No. Date of Registration Classes VIRGIN United Kingdom 1585773 October 20, 1995 36 European Union 003252921 November 15, 2004 36 VIRGIN United Kingdom 2601995 February 24, 2012 9, 35, 36, 38, and 41 VIRGIN International Trade Mark designating Australia, Bahrain, Egypt, European Union, Morocco, Oman, Russian Federation, Ukraine and United States of America. 1141309 May 21, 2012 9, 35, 35, 38, and 41 European Union 15404841 December 2, 2016 3, 5, 9, 11, 12, 14, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44, and 45 Trademark Origin Registration No. Date of Registration Classes VIRGIN MONEY United Kingdom 2177329 May 21, 1999 36 VIRGIN MONEY New Zealand 704834 November 21, 2003 36 VIRGIN MONEY Australia 983116 December 23, 2003 36 VIRGIN MONEY Australia 1029200 November 10, 2004 36 VIRGIN MONEY European Union 14032247 December 3, 2015 9, 35, 36, 38, and 42 These are collectively referred to as the “VIRGIN Mark” and “the VIRGIN MONEY Mark”. The Complainant’s evidence is that the VIRGIN Mark has been used consistently and intensively across all VIRGIN operations since the company was founded. The Complainant states the VIRGIN businesses, ventures and foundations are branded with marks incorporating the VIRGIN Mark. A copy of a webpage at “www.virgin.com” that lists various VIRGIN businesses using the VIRGIN Mark is included as Annex 5 to the Complaint. The Complainant states that it 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 “virgin.com Website”). The Complainant’s evidence is that the “virgin.com” Website contains links to the specific web pages for most of the companies in the VIRGIN Group. Screenshots of the homepage at the “virgin.com” Website and main webpage providing information about The Virgin Group are included as Annex 6 to the Complaint. As well as using its VIRGIN Mark in various logos and in the “virgin.com” Website address, the Complainant also states that it uses the VIRGIN Mark prominently on various social media platforms. The Complainant states that collectively these social media platforms receive over 37 million views each year and submits that this is a considerable online public following, which demonstrates the VIRGIN Mark has widespread exposure and a global reputation. The Complainant operates a business known as Virgin Money which forms part of the wider Virgin Group of companies. The Complainant states the VIRGIN MONEY Mark is linked to this Virgin Money business, which provides financial services. The Complainant’s evidence is that “Virgin Money UK” was formed in 2002 when “www.virginmoney.com” merged with “Virgin Direct”. Screenshots from the current Virgin Money website at “www.virginmoney.com” are attached as Annex 7 to the Complaint, together with an overview of the history of the company up until 2014 and some more current information. The Complainant states that in addition to the United Kingdom, Virgin Money has also been operational in Australia since 2003 and in South Africa since 2006. Copies of the relevant websites “www.virginmoney.com.au” and “www.virginmoney.co.za” are included at pages 24 to 27 of Annex 7 to the Complaint. The Complainant states that its VIRGIN MONEY Mark has been widely publicized through sponsorship of high-profile events, receiving widespread media coverage. The Complainant’s evidence is the example that in 2008, Sir Richard Branson attempted to break the world record for an Atlantic crossing with a 24 strong crew on board a maxi yacht named “Virgin Money”. Additionally, the Complainant’s evidence is that the Virgin Money UK business has been an ongoing sponsor of the London Marathon, and that since 2014 the race has been known as the Virgin Money London Marathon. Examples of press coverage of events sponsored by Virgin Money, together with a small selection of third-party press articles relating to the Virgin Money business are included at Annex 8 to the Complaint. The Complainant’s evidence is that its Virgin Money business has consistently been recognized by third parties for its exceptional services through various awards. These awards are detailed in the Complaint and at Annex 9 to the Complaint. The Disputed Domain Name was registered on February 25, 2020. The Disputed Domain Name does not resolve to any active website. The Complainant states that emails are being sent to members of the public from the address “[...]@career-virginmoney.com”, incorporating the Disputed Domain Name. The Complainant’s evidence is that the emails sent from this address contain requests for personal and sensitive information. 5. Parties’ Contentions A. Complainant The Complainant asserts its rights in the VIRGIN Mark and the VIRGIN MONEY Mark. The Complainant firstly contends that the Disputed Domain Name is identical or confusingly similar to its VIRGIN Mark and its VIRGIN MONEY Mark and that the addition of “career” and the hyphen are insufficient to distinguish the Disputed Domain Name from the Complainant’s VIRGIN Mark and its VIRGIN MONEY Mark. Secondly, the Complainant asserts that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In this respect, the Complainant states that the Respondent is not affiliated or connected with it in any way and is not licensed by it or otherwise authorized to use the VIRGIN Mark or the VIRGIN MONEY name and Mark. The Complainant also contends that the Respondent has no legitimate interests in respect of the Disputed Domain Name. Finally, the Complainant asserts that the Disputed Domain Name was registered and is being used in bad faith. The Complainant states that the Respondent is using the Disputed Domain Name for commercial gain and to deceive members of the public into providing sensitive information. The Complainant states that the that the Disputed Domain Name is being used as part of a phishing email scam whereby unsolicited emails are sent from the address “[…]@career-virginmoney.com”. Evidence of these emails is attached at pages 6 to 9 of Annex 10 to the Complaint. The Complainant contends that the Respondent’s use of The Disputed Domain Name is to create an impression of association with the Complainant and to obtain personal information, including bank account details. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following elements with respect to the Disputed Domain Name in order to succeed in this proceeding: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Complainant has provided evidence of its registrations in relation to the VIRGIN Mark and the VIRGIN MONEY Mark around the world, including in the United Kingdom and European Union. The Panel finds that the Complainant has clearly and sufficiently demonstrated its rights in the VIRGIN Mark and the VIRGIN MONEY Mark with a history of use going back to at least 1994 and 1998 respectively. The Panel is satisfied that the Complainant is internationally well-known by its VIRGIN Mark in a diverse range of sectors, and by its VIRGIN MONEY Mark as a financial service provider. In comparing the VIRGIN MONEY Mark to the Disputed Domain Name, it is well established that the generic Top-Level Domain (“gTLD"), in this case ".com" may be excluded from consideration as being a generic or functional component of the domain name. The remaining part of the Disputed Domain Name consists of the VIRGIN MONEY Mark, preceded by the word “career”. As noted in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8: "Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element." It is the Panel’s view that the combination of the Complainant's VIRGIN MONEY Mark together with the term “career” does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant's VIRGIN MONEY Mark, which remains clearly recognizable in the Disputed Domain Name. Accordingly, the Panel finds that the domain name is confusingly similar to the VIRGIN MONEY Mark. B. Rights or Legitimate Interests Pursuant to paragraph 4(c) of the Policy, the Respondent may establish that it has rights or legitimate interests in the Disputed Domain Name, among other circumstances, by showing any one of the following elements: (i) that before notice of the dispute, the Respondent used or made 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) that the Respondent has been commonly known by the Disputed Domain Name, even if it had acquired no trademark or service rights; or (iii) that 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. The overall burden of proof for establishing that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name lies with the Complainant. The Complainant has stated, and the Panel accepts, that the Respondent has no rights or legitimate interests in the Disputed Domain Name. In this respect, the Panel also accepts that the Respondent is not commonly known by the Disputed Domain Name and has not acquired any rights (registered or otherwise) in the VIRGIN MONEY Mark or name. The Complainant has stated, and the Panel accepts that the name under which the fraudulent emails were sent is not the name of a genuine employee or representative of the Complainant or the VIRGIN MONEY business. The Panel accepts that the use of the Disputed Domain Name in this manner is not in any way connected to or authorized by the Complainant. Further the Panel is satisfied that the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. The Complaint provides evidence that the Respondent is using the Disputed Domain Name for the purposes of posing as an employee or representative of Virgin Money, to send fraudulent emails to members of the public in an attempt to induce them to provide sensitive information including their bank account details, and to thereafter engage them in illegal money laundering. The Panel finds that the Complainant has satisfied the burden of establishing a prima facie case that the Respondent has no rights or legitimate interests in the Disputed Domain Name and accordingly finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant. The Panel is also entitled to have regard to the lack of any substantive response on this point from the Respondent and the absence of any claim to rights or legitimate interests in The Disputed Domain Name. Therefore, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied in favor of the Complainant. C. Registered and Used in Bad Faith The Panel is satisfied that the Disputed Domain Name has been registered in bad faith for the following reasons: (i) The Panel accepts the Complainant’s assertion that its VIRGIN Mark is internationally well known in a diverse range of sectors. The Panel is satisfied that the VIRGIN MONEY Mark is internationally well known in the financial services sector. The Panel therefore concludes that, at the time of registering the Disputed Domain Name, the Respondent is very likely to have been aware of the Complainant, its VIRGIN MONEY Mark, and its associated goodwill. (ii) The Respondent’s knowledge of the VIRGIN MONEY Mark is evidenced by the fact that the domain name it has registered includes the entire VIRGIN MONEY Mark in addition to the dictionary term “career”. The Panel finds this suggests the Respondent had knowledge of the VIRGIN MONEY Mark at the time of registration. (iii) Through its emails, the Respondent has engaged in an action known as “phishing”, a type of online scam where imposters send an email that appears to be from a legitimate company asking recipients to provide sensitive information. Evidence of the Respondent’s phishing further suggests the Respondent registered the Disputed Domain Name in bad faith, solely for the purpose of purporting to be associated with the Complainant. (iv) The Respondent has not responded to the Complaint and so has not provided any explanation as to why it should be allowed to register a domain name containing the Complainant’s VIRGIN MONEY Mark. By adopting a domain name that includes the VIRGIN MONEY Mark (and with no rights or legitimate interests in that Mark), the Panel accepts that the Respondent has deliberately registered a confusingly similar domain name to the Complainant’s Mark intending to mislead or deceive Internet users. The Panel is also satisfied that the Disputed Domain Name has been used in bad faith for the following reasons: (i) Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark (UDRP at paragraph 3.1). (ii) Section 2.13.1 of WIPO Overview 3.0 states that use of a domain name incorporating a trademark by an unauthorized third party for illegitimate activities such as the furtherance of phishing scams is manifestly considered evidence of use in bad faith. (iii) The Panel finds that the Respondent’s use of the Disputed Domain Name as part of a phishing email scam is an abuse of the Complainant’s VIRGIN MONEY Mark likely to tarnish the Complainant’s reputation. (iv) The Panel accepts that the Disputed Domain Name does not resolve to a website. However, a lack of active use of the domain name as a website does not prevent a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D20000-0003). The Panel finds that the use of the Disputed Domain Name in the phishing email address is evidence of use in bad faith. Through using the Disputed Domain Name in the email address “[...]@career-virginmoney.com”, the Panel finds the Respondent has sought to take unfair advantage of the Complainant’s VIRGIN MONEY Mark. The Panel accepts the Complainant’s assertion that by using an email address including the Disputed Domain Name the Respondent has sought to mislead email recipients into believing the emails they receive are genuinely associated with the Complainant. In doing so, the Respondent is taking unfair advantage of the Complainant’s commercial reputation to make email recipients more likely to provide personal and sensitive information and be induced into a money laundering scam, for the Respondent’s commercial gain. The Panel accepts this involves taking unfair advantage of and abusing the Complainant’s Mark. The Respondent’s use is disruptive to the Complainant’s business, is likely to seriously harm the Complainant’s reputation, and is likely to mislead and harm members of the public who respond to phishing emails sent from the Disputed Domain Name. 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 Andrew Brown Q.C.
Sole Panelist
Date: July 7, 2020
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