The Complainants are VLE Limited and Virgin Enterprises Limited, United Kingdom, represented by A. A. Thornton & Co., United Kingdom.
The Respondent is Umeh Alex, 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 Domain Name. On November 4, 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 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 30, 2020. The Center appointed Nicholas Smith as the sole panelist in this matter on December 3, 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 Complainants are members of a group of companies known as the Virgin Group, established by Sir Richard Branson. The Complainant Virgin Enterprises Limited owns a series of marks consisting of or containing the word “Virgin” (the “Virgin Marks”) which it has licensed to the Complainant VLE Limited. The Complainant VLE Limited is a United Kingdom company that operates a series of luxury resort retreats. Necker Island is an island in the British Virgin Islands, United Kingdom. It was purchased by Sir Richard Branson in 1978 as an uninhabited island and all land on the island is entirely privately owned. Since the 1980s the island has been solely used as a luxury resort operated by the Virgin Group and more recently the Complainant VLE Limited. The Complainant VLE Limited maintains a website for its resort at “www.virginlimitededition.com/en/necker-island” (the “Complainant VLE Limited’s Website”) and the resort, given its exclusive, luxurious and private nature, has been the subject of considerable media interest and has received numerous travel awards. The Domain Name was registered on October 5, 2020. The Domain Name resolves to a website (the “Respondent’s Website”) that is identical in design to the Complainant VLE Limited’s Website, reproduces much of the Complainant VLE Limited’s copyrighted material from the Complainant VLE Limited’s Website and reproduces the Virgin Marks. The Respondent’s Website contains no disclaimers indicating that it is not connected with the Complainant VLE Limited, indeed because of the reproduction of copyrighted material and the Virgin Marks, the Respondent’s Website gives the impression that it is the official website of the Necker Island resort maintained by the Complainant VLE Limited. Notwithstanding that the Respondent’s Website has no connection with the Complainants, the Respondent’s Website offers visitors the ability to book rooms on the Complainant VLE Limited’s Necker Island resort, in the process receiving personal information and financial details from individuals who have provided that information under the misapprehension that they have reached the official website of the Complainant VLE Limited. 6. Parties’ Contentions A. Complainant The Complainants make the following contentions: (i) that the Domain Name is identical or confusingly similar to the Complainant VLE Limited’s NECKER ISLAND Mark; (ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. The Complainant VLE Limited is the owner of the NECKER ISLAND Mark, having registered and used the NECKER ISLAND Mark for hospitality services since 2000. The Domain Name is confusingly similar to the NECKER ISLAND Mark since it wholly incorporates the NECKER ISLAND Mark and adds the word “visit”. There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known by the Domain Name nor does the Respondent have any authorization from the Complainants to register the Domain Name. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Rather the Respondent is using the Domain Name to resolve to a replica website purporting to offer reservations to the Complainant VLE Limited’s NECKER ISLAND resort, presumably for commercial gain and without permission or consent from the Complainants, which does not amount to a bona fide offering of goods and services. The Domain Name was registered and is being used in bad faith. By using the Domain Name to resolve to a website that mimics the Complainant VLE Limited’s Website, the Respondent is using the Domain Name to divert Internet users interested in the Complainant VLE Limited to the Respondent’s Website for commercial gain. Such conduct amounts to registration and use of the Domain Name in bad faith. B. Respondent The Respondent did not reply to the Complainants’ contentions. 7. Discussion and Findings A. Identical or Confusingly Similar To prove this element the Complainants must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainants’ trade or service mark. The Complainant VLE Limited does not own any registered trade marks that correspond to the Domain Name, rather it asserts that it has common law rights to the NECKER ISLAND Mark. Section 1.3 of the WIPO Overview 3.0 states, in response to the question: What does a complainant need to show to successfully assert unregistered or common law trademark rights? “To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services. Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys. (Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.) Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning. In cases involving unregistered or common law marks that are comprised solely of descriptive terms which are not inherently distinctive, there is a greater onus on the complainant to present evidence of acquired distinctiveness/secondary meaning. Necker Island is a geographical term. Section 1.6 of the WIPO Overview 3.0 has noted that geographical terms used in their ordinary geographical sense, except where registered as a trade mark, would not as such provide standing to file a UDRP case, however: “Panels have exceptionally found that geographical terms which are not registered as trademarks may support standing to file a UDRP complaint if the complainant is able to show that it has rights in the term sufficient to demonstrate consumer recognition of the mark in relation to the complainant’s goods or services (often referred to as secondary meaning).” The present case is a rare exception to the rule that geographical terms do not normally support standing in a proceeding under the UDRP. While Necker Island is a geographical term, it refers to an island that was uninhabited prior to its purchase by Sir Richard Branson and one that is exclusively owned and used by the Complainant VLE Limited for a private resort. A reference to “Necker Island” can only be a reference to the property owned and operated by the Complainant VLE Limited. The specific question about whether the Complainant VLE Limited has common law rights in the NECKER ISLAND Mark was considered in two previous UDRP decisions, both of which found that the Complainant VLE Limited held common law rights in NECKER ISLAND. The decisions are Virgin Enterprises Limited and Virgin Limited Edition v. Moore Williams,WIPO Case No. D2018-2210 and Virgin Enterprises Limited and Virgin Limited Edition v. Shubab Consult,WIPO Case No. D2018-2206. In Virgin Enterprises Limited and Virgin Limited Edition v. Moore Williams,WIPO Case No. D2018-2210, the Panel, when considering the Complainant VLE Limited’s common law rights in the NECKER ISLAND Mark, stated the following: “… the record includes substantial documentation of advertising and public recognition since the 1980s. The record shows that Necker Island was uninhabited, undeveloped, and little frequented before Mr. Branson and Virgin came on the scene, constructing not only a residence for Mr. Branson but a luxury resort with amenities for both invited and paying guests.” NECKER ISLAND has been advertised and reviewed online for decades as a luxury resort and events locale. The Panel finds persuasive evidence on this record that, for the purposes of the Policy, the name has been used in commerce over time by the Complainants and has acquired distinctiveness internationally in a relevant market for luxury resort guests and events planners. Therefore, the Panel finds that the Complainant VLE Limited has rights in NECKER ISLAND as an unregistered mark for purposes of the first element of the Policy. The Panel, after reviewing the evidence filed in the Complaint, agrees with the conclusions of the panel in the decisions referred to above. An additional relevant factor in determining whether the Complainant VLE Limited has rights is that the Respondent, in acquiring the Domain Name and using it for a website that replicates the Complainant VLE Limited’s Website, has clearly targeted the Complainant VLE Limited’s NECKER ISLAND Mark, which supports the assertion by the Complainants that the NECKER ISLAND Mark has acquired a relevant reputation to establish common law trade mark rights under the Policy. Disregarding the “.com” generic Top-Level Domain (“gTLD”) as a necessary technical requirement of the Domain Name, the Domain Name is confusingly similar to the NECKER ISLAND Mark since it wholly incorporates the NECKER ISLAND Mark along with the dictionary term “visit” which does not prevent a finding of confusing similarity. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name. Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name: “Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are 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 Respondent is not affiliated with the Complainants in any way. It has not been authorized by the Complainants to register or use the Domain Name or to seek the registration of any domain name incorporating the NECKER ISLAND Mark or a mark similar to the NECKER ISLAND Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial or fair use. The Respondent has used the Domain Name to operate a website that seeks to pass itself off as a website operated by the Complainant VLE Limited, including offering bookings to the Complainant VLE Limited’s Necker Island resort under the Virgin Marks and the Complainant VLE Limited’s NECKER ISLAND Mark. Given the clear misrepresentation engaged in by the Respondent in asserting (through its reproduction of the Virgin Marks and the Complainant VLE Limited’s copyrighted material) that it is the official website for the Complainant VLE Limited’s Necker Island resort, the Respondent’s use of the Domain Name does not grant it rights or legitimate interests since it is using the Complainant VLE Limited’s NECKER ISLAND Mark for a website that misleads visitors about its identity. The Complainants have established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a Response, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith For the purposes of paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: “(i) circumstances indicating that the respondent has registered or has 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 trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or (ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on the respondent’s website or location (Policy, paragraph 4(b)).” The Panel finds that the Respondent was aware of the Complainants and the reputation of the NECKER ISLAND Mark at the time the Domain Name was registered. The Respondent’s Website impersonates the Complainant VLE Limited, including by reproducing copyrighted photos from the Complainant VLE Limited’s Website. The registration of the Domain Name in awareness of the NECKER ISLAND Mark and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith. The Respondent has used the Domain Name to mislead visitors into thinking that they are visiting the official website of the Complainant’s VLE Limited Necker Island resort, and encourage them to provide the Respondent with their personal and financial details which can be used for commercial gain. Consequently the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants and the NECKER ISLAND Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website (Policy, paragraph 4(b)(vi)). Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy. 8. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, Nicholas Smith
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The fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier.”
Sole Panelist
Date: December 14, 2020
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