The Complainant is Virgin Enterprises Limited, United Kingdom, represented by A. A. Thornton & Co., United Kingdom.
The Respondent is Domains By Proxy LLC, Domainsbyproxy.com, United States of America / Carolina Rodrigues, Fundacion Comercio Electronico, Panama. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2020. On July 24, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 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 July 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 July 31, 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 July 31, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 20, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default. The Center appointed Federica Togo as the sole panelist in this matter on September 11, 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 the registered owner of several trademarks worldwide consisting of or containing the term “VIRGIN”, e.g.,European Union Trade Mark Registration No. 001798560 VIRGIN (text) registered on June 5, 2002 amongst others for “Arranging transportation of goods or persons by road, rail, air and sea; freight services; ground transport services” in class 39. This mark has been duly renewed and is in force; European Union Trade Mark Registration No. 014030589 VIRGIN ATLANTIC (text) registered on October 12, 2015 amongst others for services in class 39; European Union Trade Mark Registration No. 014032098 VIRGIN HOLIDAYS (text) registered on December 3, 2015. The Complainant operates the website “www.virgin.com” to promote the activities of the VIRGIN Group and its businesses, ventures and foundations. In addition, the Complainant also uses the websites “www.virginatlantic.com”, “www.virgin-atlantic.com”, and “www.virginholidays.co.uk” to provide information about its VIRGIN ATLANTIC and VIRGIN ATLANTIC CARGO and its VIRGIN HOLIDAYS services and booking facilities, respectively. It results from the information disclosed by the Registrar that the disputed domain name was created on September 23, 2019. Furthermore, the undisputed evidence provided by the Complainant proves that the disputed domain name redirects to multiple different websites, some of which appear to be hosting articles reporting on bitcoin investment opportunities referencing (featuring and quoting) the Complainant’s founder and offering customers links to sign up to a bitcoin investment service. 5. Parties’ Contentions A. Complainant It results from the Complainant’s undisputed allegations that the Complainant is a member of a group of companies that are collectively known as “the Virgin Group”, that has originally established in the United Kingdom in 1970 when its founder, Sir Richard Branson, started a business selling popular music records by mail order under the VIRGIN brand name. Since then the operations of the Virgin Group have grown significantly and its businesses span a diverse range of sectors covering Financial Services, Health & Wellness, Music & Entertainment, People & Planet, Telecommunications & Media, and Travel & Leisure, have over 53 million customers worldwide and employ more than 69,000 people in 35 countries. The Complainant further contends that it launched in 1984 its first passenger and cargo airlines Virgin Atlantic and Virgin Atlantic Cargo. Both the VIRGIN ATLANTIC passenger airline and VIRGIN ATLANTIC CARGO service now operate routes from United Kingdom hubs of London Gatwick, London Heathrow, and Manchester to destinations in North America, the Caribbean, Africa, the Middle East, Asia, and Mexico. In addition, it results from the Complainant’s undisputed allegations that it launched in 1985 VIRGIN HOLIDAYS, a tour operator specializing in long haul holidays to various destinations. The Complainant contends that its trademarks VIRGIN, VIRGIN ATLANTIC, and VIRGIN HOLIDAYS are distinctive and have significant reputation. The Complainant further contends that the disputed domain name is confusingly similar to the Complainant’s registered trademarks since it incorporates its trademarks VIRGIN and VIRGIN ATLANTIC. In addition, it also amalgamates its trademark VIRGIN HOLIDAYS with its trademark VIRGIN ATLANTIC to make The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name is neither associated with nor authorized by the Complainant, nor are the disputed websites to which the disputed domain name redirects. According to the undisputed evidence provided by the Complainant, some of the websites to which the disputed domain redirects appear to be hosting articles reporting on bitcoin investment opportunities referencing (featuring and quoting) the Complainant’s founder, Sir Richard Branson, and offering customers links to sign up to a bitcoin investment service. However, although the articles carry the branding of well-known news outlets, the domain names on which these articles are hosted are not those of the genuine news outlet. None of these articles are genuine, and neither the Complainant nor the Complainant’s founder endorses these Bitcoin investment schemes. The Complainant further contends that it has been targeted in recent years by a number of Bitcoin and cryptocurrency related scams which seek to suggest that the Complainant, or its founder, is associated with or endorsing the scam. The Complainant therefore concludes that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, or any other legitimate or noncommercial or fair use. Finally, the Complainant contends that the disputed domain name was registered and is being used in bad faith. The choice of a domain consisting of the Complainant’s identical mark VIRGIN ATLANTIC together with HOLIDAYS, to redirect to various websites, many of which contain articles and invitations relating to Bitcoin scams referencing the Complainant and its founder, shows that it is inconceivable that the Respondent was unaware of the Complainant prior to registering the disputed domain name. Furthermore, according to the Complainant, the Respondent has registered over 1,772 domain names, including domain names that incorporate misspellings of third parties’ well-known marks. The Complainant therefore submits that the Respondent has engaged in a pattern of bad faith behavior in registering the marks of third parties to disrupt their business or to attempt to attract for commercial gain, the customers of third parties. On the basis of the distinctiveness and significant reputation of the Complainant’s registered marks, VIRGIN, VIRGIN ATLANTIC and VIRGIN HOLIDAYS, the use of the disputed domain name for unfair commercial gain which commercializes the goodwill of the Complainant, the showing of a pattern of bad faith behavior, and the absence of any evidence of possible good faith intention, the Complainant submits that paragraph 4(a)(iii) of the Policy is satisfied. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that the disputed domain name be transferred or cancelled: (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. The Panel will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights. It results from the evidence provided that the Complainant is the registered owner of various trademark registrations for the elements VIRGIN, VIRGIN ATLANTIC, and VIRGIN HOLIDAYS. Reference is made in particular to European Union Trade Mark Registration No. 001798560 VIRGIN (text) registered on June 5, 2002 amongst others for “Arranging transportation of goods or persons by road, rail, air and sea; freight services; ground transport services” in class 39; European Union Trade Mark Registration No. 014030589 VIRGIN ATLANTIC (text) registered on October 12, 2015 amongst others for services in class 39; European Union Trade Mark Registration No. 014032098 VIRGIN HOLIDAYS (text) registered on December 3, 2015. (These trademarks predate the creation date of the disputed domain name which is September 23, 2019.) UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainSource.com,WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0464; Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-1409). This Panel shares this view and notes that the Complainant’s registered trademarks VIRGIN, VIRGIN ATLANTIC, and VIRGIN HOLIDAYS are fully included in the disputed domain name. In addition, it is the view of this Panel that the combination of the three trademarks VIRGIN, VIRGIN ATLANTIC, and VIRGIN HOLIDAYS in the disputed domain name cannot exclude the confusing similarity between the disputed domain name and the Complainant’s trademarks. B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests to the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name. According to the Complaint, which has remained unchallenged, the Complainant has no relationship in any way with the Respondent and did, in particular, not authorize the Respondent’s use of the trademarks VIRGIN, VIRGIN ATLANTIC and VIRGIN HOLIDAYS or the registration of the disputed domain name. Furthermore, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name in the sense of paragraph 4(c)(ii) of the Policy. Finally, it results from the Complainant’s non-contested evidence that the disputed domain name redirects to some websites hosting articles reporting on bitcoin investment opportunities referencing (featuring and quoting) the Complainant’s founder and offering customers links to sign up to a bitcoin investment service. Misappropriating the voice of the Complainant’s founder for such purpose is misleading, not legitimate (and potentially fraudulent). It is acknowledged that once the Panel finds a prima facie case is made by a complainant, the burden of production under the second element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence (let alone a response), this Panel finds, in the circumstances of this case, that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith. It is the view of this Panel that these circumstances are met in the case at hand: Based on the evidence submitted by the Complainant, describing the Complainant’s extensive trademark registrations and associated business, the Panel shares the view of other Panels and finds that the Complainant’s trademark VIRGIN has gained a significant reputation through decades of use and is well-known throughout the world (see also Virgin Enterprises Limited v. Mars Out,WIPO Case No. D2017-2335). In addition, the Panel notes that the disputed domain name is the combination of three of the Complainant’s trademarks. Therefore, this Panel has no doubt that the Respondent positively knew that the disputed domain name consisted of the Complainant’s trademarks when it registered the disputed domain name. Registration of the disputed domain name in awareness of the reputed VIRGIN family of marks and in the absence of rights or legitimate interests in this case amounts to registration in bad faith (see e.g., Patagonia, Inc. v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico, WIPO Case No. D2019-1409; “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Petra Wirth,WIPO Case No. D2018-0246; KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812 and The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa,WIPO Case No. D2014-2100; Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320). Furthermore, the Respondent has been involved in a number of trademark-abusive domain name registrations (e.g., Carvana, LLC v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-1376, Skyscanner Limited v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2020-0018; Nationwide Mutual Insurance Company v. Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-2144; Starbucks Corporation v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2019-1991; Calvin Klein Trademark Trust & Calvin Klein, Inc. v. Registration Private, Domains By Proxy LLC / Carolina Rodrigues, Fundacion Comercio Electronico,WIPO Case No. D2018-2882). In the view of the Panel this behavior demonstrates a pattern of conduct by the Respondent of taking advantage of trademarks of third parties without any right to do so and is further indicative of the Respondent’s bad faith. Finally, the further circumstances surrounding the disputed domain name’s registration and use confirm the findings that the Respondent has registered and is using the disputed domain name in bad faith. In fact, (1) the Respondent originally used a privacy service hiding its identity and (2) the Respondent did not provide any response with conceivable explanation of its behavior. In the light of the above the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to 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 Federica Togo
Sole Panelist
Date: September 25, 2020
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