The Complainant is Virgin Enterprises Limited, United Kingdom, represented by A. A. Thornton & Co., United Kingdom.
The Respondent is Douglas N. Harris, 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 November 3, 2020. On November 4, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 5, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 November 10, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 30, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 2, 2020. The Center appointed Zoltán Takács as the sole panelist in this matter on December 9, 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. The language of this administrative proceeding is English, that being the language of the Registration Agreement. 4. Factual Background The Complainant is a member of a group of companies that are collectively known as “the Virgin Group”. The Virgin Group, including over 60 VIRGIN branded businesses covers a diverse range of sectors, serving over 53 million customers worldwide and employing more than 69,000 people in 35 countries. In 2012, the Virgin Group launched a not-for-profit organization under the name “Virgin Startup” that provides business advice, funding and mentoring as well as start-up loans for young entrepreneurs. Since its foundation, the “Virgin Startup” scheme has distributed over GBP 19 million to help thousands of businesses including restaurants, photography studios, apps, fashion houses and gyms. The Complainant’s “Virgin Startup” business has online presence at “www.virginstartup.org” (the corresponding domain name being registered on July 25, 2013) and on all major social platforms. The disputed domain name was registered on November 24, 2019 and has been used in relation to a website that copied a substantial amount of the layout, content and images used on the “Virgin Startup” website. 5. Parties’ Contentions A. Complainant The Complainant contends that the disputed domain name is confusingly similar to its VIRGIN STARTUP trademark. The disputed domain name fully incorporates its trademark, and the addition of the geographical term “Asian” is not sufficient to distinguish the disputed domain name from its trademark. The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the disputed domain name and is unable to rely on any of the circumstances set out in paragraphs 4(c)(i), (ii) or (iii) of the Policy. The Complainant claims that the Respondent has registered the disputed domain name with full knowledge of its VIRGIN STARTUP trademark and used it to deceive the consumers into believing that the related website is operated or endorsed by the Complainant. The Complainant contends that the Respondent’s misappropriation of its VIRGIN STARTUP trademark and use of its copyright protected contents without authorization amount to registration and use of the disputed domain name in bad faith. The Complainant requests that the disputed domain name be transferred from the Respondent to the Complainant. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 15(a) of the Rules requires that the Panel’s decision be made “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”. It has been a consensus view in UDRP decisions that a respondent’s default (i.e., failure to submit a response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true. See section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). A complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that; (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (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 Under paragraph 4(a)(i) of the Policy, there are two requirements which the Complainant must establish, first that it has rights in a trademark or service mark, and second that the disputed domain name is identical or confusingly similar to the trademark or service mark. It has been a consensus view among UDRP panels that if the complainant owns a trademark, then it generally satisfies the threshold requirement of having trademark rights. The Complainant produced proper evidence of having registered rights in the VIRGIN STARTUP trademark and for the purpose of this proceeding, the Panel establishes that the UK Trademark Registration No. UK00003015345 for the word mark VIRGIN STARTUP satisfies the requirement of having trademark rights for the purpose of the Policy. Having determined the presence of the Complainant’s trademark rights, the Panel next assessed whether the disputed domain name is identical or confusingly similar to the Complainant’s VIRGIN STARTUP trademark. According to section 1.7 of the WIPO Overview 3.0, 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. This test typically involves a side-by-side comparison of the disputed domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. According to section 1.8 of the WIPO Overview 3.0, 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. According to section 1.11.1 of the WIPO Overview 3.0, the applicable Top-Level Domain (“TLD”) in a domain name (e.g., “.com”, “.club”, “.nyc”, or as in this case “.org”) is viewed as a standard registration requirement and as such is generally disregarded under the first element confusingly similar test. It is well established in previous UDRP cases that addition of a descriptive word to a trademark in a domain name does not avoid a finding of confusing similarity. The Complainant’s trademark is evidently recognizable within the disputed domain name, which differs from it only in the addition of the geographical term “Asian”. In view of the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s VIRGIN STARTUP trademark and that requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests Under paragraph 4(c) of the Policy, a respondent may demonstrate its rights or legitimate interests in a domain name by showing any of the following circumstances, in particular but without limitation: (i) its use of, or demonstrable preparation to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; (ii) it has been commonly known by the domain name; (iii) it is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue. In the present case, the Complainant has submitted sufficient and uncontested evidence that it holds well‑established rights in the VIRGIN STARTUP trademark. The Complainant has never authorized the Respondent to use its VIRGIN STARTUP trademark in any way, and its prior rights in the VIRGIN STARTUP trademark precede the date of registration of the disputed domain name. According to section 2.1 of the WIPO Overview 3.0, while the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with the relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. The Respondent defaulted and failed to respond, and by doing so failed to offer the Panel any type of evidence set forth in paragraph 4(c) of the Policy, or otherwise counter the Complainant’s prima facie case. Moreover, the Panel finds that the disputed domain name carries a high risk of implied affiliation (see section 2.5.1 of the Overview 3.0). The Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists a number of factors which, if found by the panel to be present, shall be evidence of registration and use of a domain name in bad faith. This non-exclusive list includes: (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the 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 you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location. The website to which the disputed domain name pointed not only prominently featured the Complainant’s VIRGIN STARTUP trademark and its signature VIRGIN logo, but also a substantial amount of the layout, content and images used on the Complainant’s official VIRGIN STARTUP website. Firstly, these facts in view of the Panel demonstrate that the Respondent clearly knew of the Complainant’s VIRGIN STARTUP business as well as of the VIRGIN STARTUP trademark when registering disputed domain name. The Panel cannot conceive of any legitimate use of the disputed domain name by the Respondent other than targeting the Complainant’s VIRGIN STARTUP business and trademark. Secondly, by using the disputed domain name to operate a website that reproduced the content of the Complainant’s official VIRGIN STARTUP website to such extent that the Respondent’s website is a “copy” of it, the Respondent may have confused those looking for the Complainant, which in the Panel’s view amounts to the disruption of the Complainant’s business. For the reasons set out above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith within the meaning of paragraphs 4(b)(iii) and (iv) of the Policy and that paragraph 4(a)(iii) of the Policy is satisfied. 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 Zoltán Takács
The Complainant owns a substantial portfolio of trademarks containing the VIRGIN name and VIRGIN signature logo including the United Kingdom (“UK”) Trademark Registration No. UK00003015345 for the series mark VIRGIN START UP, VIRGIN STARTUP, VIRGIN START UPS, VIRGIN STARTUPS registered on October 25, 2013 for services of class 35 of the Nice Agreement Concerning the International Classification of Good and Services for the Purpose of the Registration of Marks.
Sole Panelist
Date: December 21, 2020
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