The Complainant is Virgin Enterprises Limited, United Kingdom, represented by A. A. Thornton & Co. United Kingdom.
The Respondents are David Barrow, United States of America (“United States”) / Claire Sinclair, unknown, United Kingdom / Graham Mitchell, unknown, United Kingdom / Conrad Coulburn, unknown, United Kingdom / Cala Horra, unknown, United Kingdom / Bk Dummett, unknown, United Kingdom / Dee Lee, unknown, United States / Junior Junior, unknown, United Kingdom / Goku Naruto, unknown, United Kingdom / Jason Smyth, unknown, United Kingdom / Andrew Coulburn, United Kingdom. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2020. On September 15, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On September 20, and September 24, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 22, and September 25, 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 two amended Complaints on September 24, and September 30, 2020. The Center verified that the Complaint together with the amended Complaints 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 Respondents of the Complaint, and the proceedings commenced on October 9, 2020. In accordance with the Rules, paragraph 5, the due date for Response was October 29, 2020. The Respondents did not submit any response. However the Center received two communications from an individual on October 8, and October 12, 2020 who lived at the address listed in the WhoIs record for the Disputed Domain Name The Center appointed John Swinson as the sole panelist in this matter on November 5, 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 According to the Complaint, the Complainant is a member of a group of companies collectively known as the Virgin Group (the “Complainant Group”). The Complainant Group was established in 1970 and there are now 60 “Virgin” branded businesses spanning a range of sectors including financial services, health and wellness, music and entertainment and travel and leisure. The Complainant Group has over 53 million customers worldwide, employs more than 69,000 people in 53 countries and has an annual revenue of GBP 16.6 billion. The Complainant is responsible for registering and maintaining registrations for trade marks containing the “Virgin” name and logo and licenses these trade marks to other members of the Complainant Group. The Complainant has a portfolio of approximately 3,500 trade mark applications and registrations in over 150 countries including: - United Kingdom registered trade mark number UK00003163121 for VIRGIN, registered July 29, 2016 (the “VIRGIN Trade Mark”); - United Kingdom registered trade mark number UK00003100686 for VIRGIN MEDIA, registered August 28, 2015 (the “VIRGIN MEDIA Trade Mark”); and - United Kingdom registered trade mark number UK00002365570, registered February 4, 2005, for VIRGIN MOBILE (the “VIRGIN MOBILE Trade Mark”), collectively, the “Trade Marks”. According to the Complainant, the Trade Marks have been used extensively by the Complainant Group, including on its social media platforms which receive over 37 million views each year. The VIRGIN Trade Mark is incorporated into over 5,000 domain names owned by the Complainant Group in association with its businesses. The Complaint Group launched the “Virgin Mobile” brand in 1999 in the United Kingdom. The “Virgin Mobile” brand now has 15 million customers in various countries, has sponsored a number of high profile events and won numerous awards for its services. The Complainant Group has registered a number of domain names which incorporate the VIRGIN MOBILE Trade Mark and operates various social media pages associated with the “Virgin Mobile” brand. The Complaint Group launched the “Virgin Media” brand in 2007 in the United Kingdom. The “Virgin Media” brand now provides telecommunications services to 14.9 million United Kingdom households and sponsors various high-profile ventures. The Complainant Group owns a domain name which incorporates the VIRGIN MEDIA Trade Mark in connection with its business. The Respondents are David Barrow and Dee Lee, individuals of the United States, and Claire Sinclair, Graham Mitchell, Conrad Coulburn, Cala Horra, Bk Dummett, Junior Junior, Goku Naruto, Jason Smyth, and Andrew Coulburn, individuals of the United Kingdom. The Respondents did not submit a Response and therefore little information is known about the Respondents. The Disputed Domain Names currently do not resolve to active websites. 5. Parties’ Contentions A. Complainant Addition of further Disputed Domain Names The Complainant filed its initial Complaint on September, 14 2020, in relation to the majority of the Disputed Domain Names. The Complainant subsequently became aware of three further domain name registrations with the same Registrar and requested that these be added to the Complaint as additional Disputed Domain Names. The Complainant contends that it is fair and equitable for all of the Disputed Domain Names to be included in the Complaint as it could not have been aware of the additional registrations at the time of its initial Complaint. Consolidation of Complaint The Disputed Domain Names were all registered over the period of a month and a half. All of the Disputed Domain Names incorporate at least one of the Trade Marks in conjunction with one or more additional descriptive words. Only a small set of these additional, descriptive words is used across all of the Disputed Domain Names and many of the Disputed Domain Names have a similar structure. All of the Disputed Domain Names are registered with the same Registrar. Following disclosure of the registrant details by the Registrar, it was revealed that the registrant of a number of the Disputed Domain Names share similar or identical contact details (including names, addresses, emails and phone numbers). The Complainant suspects that the registrant details given are false and the factors outlined above indicate that all of the Disputed Domain Names are subject to common control by a single person or entity. Identical or confusingly similar The Complainant has developed a significant reputation and goodwill in the Trade Marks as a result of extensive and consistent use. The Disputed Domain Names all incorporate the VIRGIN Trade Mark, a number incorporate the VIRGIN MEDIA Trade Mark and one incorporates the VIRGIN MOBILE. In addition to the Trade Marks, the Disputed Domain Names incorporate a selection of one, two or three of the following words: “account”, “accounts”, “bill”, “billing”, “refund”, “help”, “info”, “my”, “online”, “uk”, “update”, “updates” and “verify”. All of these words are descriptive terms commonly used as part of web and email addresses by legitimate businesses to indicate that that web or email address serves a certain purpose. Customers are accustomed to seeing these terms online and in many cases rely on these terms to identify secure locations on the Internet where they can access personal, financial and payment information, purchase products or services, confirm their identity or seek assistance. Customers will perceive the Disputed Domain Names as websites where they can perform such actions in relation to the Complainant’s products and services. The addition of the words is therefore insufficient to distinguish the Disputed Domain Names from the Trade Marks. The hyphens used in some of the Disputed Domain Names will be perceived as a substitute for a space. Accordingly, all of the Disputed Domain Names are confusingly similar to the Trade Marks. Rights or legitimate interests The Disputed Domain Name All of the Disputed Domain Names now display a security message warning that the content of the website is not safe, with the exception of The Disputed Domain Name None of the Disputed Domain Names have been authorised by the Complainant. All of the Disputed Domain Names were likely registered for purposes similar to which the Disputed Domain Names There is no indication that any Respondent has been or is known by the Disputed Domain Names or that any Respondent has made any preparations to use the Disputed Domain Names in connection with a bona fide offering of goods or services. The Complainant suspects that the names and addresses supplied to the Registrar in connection with the Disputed Domain Names are false, a number of the addresses do not exist and searches of the United Kingdom electoral role for the names of a number of the Respondents do not produce any results. The lack of complete, accurate information provided to the Registrar indicates further that the Respondents have no rights or legitimate interests in the Disputed Domain Names. Registered and used in bad faith The uses to which the Disputed Domain Names It is clear that in registering the Disputed Domain Names, the Respondents are engaging in a deliberate and focussed strategy to obtain a large number of domain names that incorporate the Trade Marks (which are well known) and various terms which are familiar to and trusted by consumers in order to cause confusion with the Trade Marks for fraudulent commercial gain. The false contact information provided to the Registrar further indicates that the use and registration of the Disputed Domain Names is illegitimate and in bad faith. B. Respondents The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied, namely: (i) the Disputed Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and (ii) the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names have been registered and are being used in bad faith. A. Procedural matters A.1 Addition of further Disputed Domain Names The Complainant submitted amended Complaints on September 24, and September 30, 2020. In the first amended Complaint, the Complainant requested that the domain names The Panel considers it reasonable to accept the addition of the additional domain names on the basis that: - the additional domain names and the other Disputed Domain Names all incorporate one or more of the Complainant’s trade marks; - the registrants of the additional domain names share some contact details with a number of the other Disputed Domain Names; - the additional domain names were registered shortly after the other Disputed Domain Names; and - the additional domain names were registered either on the same day or several days after the Complainant submitted the initial Complaint and therefore could not reasonably have been known to the Complainant at the time it submitted the initial Complaint. The Complainant submitted the amended Complaints before the Respondents were notified of the dispute and the Respondents did not submit a Response. The Panel therefore considers the addition of the additional domain names to be fair and equitable to the parties and favours procedural efficacy (HUGO BOSS Trade Mark Management GmbH & Co. KG and HUGO BOSS AG v. Ludwig Rhys,WIPO Case No. D2016-2448; Zeller + Gmelin GmbH & Co. KG v. Amir Daryoosh Bashiri,WIPO Case No. DIR2017-0011 and Golden Goose S.P.A. v. Zhong Tian,WIPO Case No. D2019-2191). A.2 Consolidation of Multiple Domain Names and Respondents The Complaint relates to 34 Disputed Domain Names that the Complainant wishes to have dealt with in a single administrative procedure. Paragraph 10(e) of the Rules states that “a Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules”. Criteria used to determine whether a request of consolidation can be granted or not include “whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties” (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 4.11.2). In the present case, the Complainant requests the consolidation of the Respondents, contending that all of the Disputed Domain Names are subject to common control of a single person or entity based on the following evidence: - all of the Disputed Domain Names were registered within a month and a half (from July 27, 2020 to September 18, 2020), apart from - all of the Disputed Domain Names are registered with the same Registrar; - all of the Disputed Domain Names follow a similar pattern, incorporating the VIRGIN Trade Mark (and in most cases either the VIRGIN MEDIA Trade Mark or the VIRGIN MOBILE Trade Mark) plus one, two or three descriptive words from a small set of 13 such words, often separating these words with hyphens; and - the names, addresses, email addresses and/or phone numbers of the registrants disclosed by the Registrar for almost all of the Disputed Domain Names are similar or identical to one or more of the other Disputed Domain Names apart from The Respondents had the opportunity to refute this contention but elected not to submit a Response. Excluding - - - - - - The Panel has decided not to allow The Panel leaves the rights of the Complainant entirely intact regarding the A.3 Failure to file a response The Respondents’ failure to file a response does not automatically result in a decision in favor of the Complainant (see, e.g., Airbus SAS, Airbus Operations GmbH v. Alesini Pablo Hernan / PrivacyProtect.org,WIPO Case No. D2013-2059). However, the Panel may draw appropriate inferences from the Respondents’ default. B. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy provides that the Complainant must establish that the Disputed Domain Names are identical or confusingly similar to the Trade Marks. Generally, the test for identity or confusing similarity involves a side-by-side comparison of the domain name and the trade mark to assess whether the trade mark is recognizable within the domain name (WIPO Overview 3.0, section 1.7). Although each case is judged on its own merits, where a domain name incorporates the entirety of a trade mark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark (WIPO Overview 3.0, section 1.7). In this case, all of the Disputed Domain Names incorporate the entirety of the VIRGIN Trade Mark. Many of the Disputed Domain Names also incorporate the VIRGIN MOBILE Trade Mark or the VIRGIN MEDIA Trade Mark (sometimes separating the first and second words of these trade marks with a hyphen). It is well accepted that the first element of the Policy functions predominantly as a standing requirement. The Panel finds that the inclusion of various descriptive terms in the Disputed Domain Names in addition to the Trade Marks does not prevent a finding of confusing similarity (WIPO Overview 3.0, section 1.8). The Complainant is successful on the first element of the Policy. C. Rights or Legitimate Interests Paragraph 4(a)(ii) of the Policy provides that the Complainant must establish that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names. The Complainant is required to make out a prima facie case showing that the Respondents lack rights or legitimate interests. The Complainant provided evidence to demonstrate that at one point in time the Disputed Domain Name The Complainant also provided evidence to demonstrate that the Disputed Domain Name The Complainant contended that all of the Disputed Domain Names were likely registered for the purpose of confusing customers as to the source or affiliation of the Disputed Domain Names for illegitimate purposes. None of the Disputed Domain Names (including In the Panel’s view, the Disputed Domain Names The Panel is also satisfied that the Complainant has made out a prima facie case showing that the Respondents lack rights or legitimate interests in the other Disputed Domain Names. This finding is based on the following: - The Respondents has not used, or made demonstrable preparations to use, the Disputed Domain Names in connection with a bona fide offering of goods or services. The Disputed Domain Names do not resolve to active websites. - The Panel accepts the Complainant’s submission that the Complainant has not authorized or otherwise given the Respondents permission to use the Disputed Domain Names. - There is no evidence that the Respondents have been commonly known by the Disputed Domain Names, or have registered or common law trade mark rights in relation to these names. - The Respondents have not been making a legitimate noncommercial or fair use of the Disputed Domain Names without intent for commercial gain. As mentioned above, the Respondents do not appear to have made any use of the Disputed Domain Names. - All of the Disputed Domain Names incorporate one or more of the Complainant’s Trade Marks in their entirety plus one or more descriptive words relevant to the Complainant’s business, many of which Internet users are accustomed to seeing online in connection with genuine offerings of goods and services. It is therefore difficult to conceive of any legitimate purpose for which the Respondents may have registered the Disputed Domain Names. The Respondents had the opportunity to demonstrate their rights or legitimate interests, but did not do so. In the absence of a response from the Respondent, the prima facie case established by the Complainant has not been rebutted. In light of the above, the Complainant is successful on the second element of the Policy. D. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondents registered and subsequently used the Disputed Domain Names in bad faith. Registration in bad faith The Complainant provides goods and services to a significant number of customers in the United Kingdom and various other countries under the “Virgin”, “Virgin Mobile” and “Virgin Media” brands and owns a number of trade marks in connection with these brands. The Panel accepts the Complainant’s submission that the Trade Marks have a strong reputation and are well-known throughout the world. The Complainant’s registrations of the Trade Marks predate the registration of the Disputed Domain Names. Previous UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (see section 3.1.4 of the WIPO Overview 3.0). The Respondents in this case registered a large number of domain names within a short period of time that incorporated one or more of the Trade Marks as well as one or more descriptive words. The Panel can therefore reasonably infer that the Respondents knew, or should have known, that their registrations would be confusingly similar to the Trade Marks. As a result, the Panel is satisfied that the Disputed Domain Names were registered in bad faith. Use in bad faith As outlined above, the Panel is satisfied that the Disputed Domain Names None of the other Disputed Domain Names resolve to active websites. The Panel notes that this non-use does not prevent a finding of bad faith under the doctrine of passive holding (see section 3.3 of WIPO Overview 3.0 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003). Section 3.3 of the WIPO Overview 3.0 considers passive holding and explains that: “While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” The particular circumstances which lead to a conclusion of bad faith use in respect of the other Disputed Domain Names are: - The Trade Marks have a strong reputation and are widely known throughout the world, as demonstrated by numerous registrations worldwide and the Complainant’s evidence of its reputation and size. - The Respondents have not submitted a response or provided any evidence of actual or contemplated good faith use. - The contact details provided by the Respondents when registering the Disputed Domain Names appear to be false. - The Disputed Domain Names incorporate one or more of the Complainant’s Trade Marks in their entirety as well as one or more descriptive words (many of which Internet users are accustomed to seeing online in connection with genuine offerings of goods and services). It is therefore difficult to conceive of any good faith use to which the Disputed Domain Names may be put. - The Disputed Domain Names (of which there is a large number) all have a similar structure and were registered in a short period of time. This demonstrates a pattern of conduct on behalf of the Respondents to target the Complainant and its Trade Marks for illegitimate purposes. In light of the above, the Panel finds that the Complainant has succeeded on the third element 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 Names, The Complaint is denied regarding the Disputed Domain Name John Swinson
Sole Panelist
Date: November 19, 2020
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