The Complainant is Virgin Enterprises Limited (the “Complainant”), United Kingdom (“UK”).
The Respondent is GKG.NET Domain Proxy Service, United States of America (“United States”) / Ragaia Ragaia, AMP, United States (the “Respondent”). 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 11, 2020. The Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. Based on the information provided by the Registrar, the Complainant amended its Complaint on November 18, 2020. The Center verified that the Complaint and 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 November 12, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2020. The Respondent did not submit any response. The Center appointed Haig Oghigian as a sole panelist in this matter on December 29, 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 a member of a group of companies that are collectively known as “the Virgin Group”. The Virgin Group was originally established by its founder and chairman Sir Richard Branson in the United Kingdom in 1970 when he started a business selling popular music records by mail order under the VIRGIN name. Since then the operations of the Virgin Group have grown significantly. There are now over 60 “Virgin” branded businesses that span a diverse range of sectors covering Financial Services, Health & Wellness, Music and Entertainment, People and Planet, Telecommunications and Media and Travel & Leisure, have between them over 53 million customers worldwide and employ more than 69,000 people in 35 countries. Annual revenue is GPB16,6 billion. The Complainant is responsible for registering and maintaining registrations for trademarks containing the VIRGIN name and VIRGIN signature logo and licensing these rights to the “Virgin” businesses. The Complainant 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 owns the following trade mark registrations (‘the Complainant’s Registered Marks’): - UK Trade Mark Registration No. UK00003163121 for the mark VIRGIN registered on July 29, 2016 in classes 03, 05, 09, 11, 12,1 4, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44, 45; - European Union Trade Mark (EUTM) Registration No. 015255235 for the mark VIRGIN registered on March 21, 2016 in classes 03, 05, 09, 11, 12, 14, 16, 31, 32, 35, 36, 38, 39, 41, 42, 43, 44, 45; - International Trade Mark Registration No. 1141309 for the mark VIRGIN registered on May 21, 2012 in classes 09, 35, 36, 38, 41; - UK Trade Mark Registration No. UK00003163127 for the mark (VIRGIN Signature Logo) registered on July 29, 2016 in classes 03, 05, 09, 11, 12, 14, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44, 45; - European Union Trade Mark (EUTM) Registration No. 015404841 for the mark (VIRGIN Signature Logo) registered on December 12, 2016 in classes 03, 05, 09, 11, 12, 14, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44, 45; - UK Trade Mark Registration No. UK00002365570 for the mark VIRGIN MOBILE registered on February, 2005 in classes 9, 38; - International Trade Mark Registration No. 1117877 for the mark (VIRGIN MOBILE Logo) registered on January 19, 2012 in classes 09, 35, 36, 38; - UK Trade Mark Registration No. UK00002429892 for the mark VIRGIN MEDIA registered on May 18, 2007 in classes 9, 35, 38, 41; - EUTM Registration No. 013867478 for the mark VIRGIN MEDIA registered on October 14, 2015 in classes 9, 35, 36, 38, 41, 42; - UK Trade Mark Registration No. UK00003038254 for the mark / (series of 2) (VIRGIN MEDIA Logo in red/ VIRGIN MEDIA Logo in black) registered on April 24, 2014 in classes 9, 35, 35, 38; - EUTM Registration No. 014032163 for the mark (VIRGIN MEDIA Logo in red) registered on December 3, 2015 in classes 9, 35, 36, 38, 41, 42; - UK Trade Mark Registration No. 3122030 VIRGIN RECORDS registered on December 11, 2015 in classes 9, 16, 35, 41, 42 and 43. Copies of the Complainant’s Registered Marks are attached at Annex 4 of the Complaint. The VIRGIN name and VIRGIN signature logo have all been consistently and intensively used across all “Virgin” operations since the company was founded. The “Virgin” businesses, ventures and foundations are branded with marks incorporating the distinctive VIRGIN name or VIRGIN signature logo, for example, Virgin Active, Virgin Money, Virgin Media. . The Complainant has built up a considerable online presence and is the registered proprietor of over 5000 domain names consisting of or incorporating the VIRGIN mark. The Complainant 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 Virgin.com Website contains links to the specific web pages for most of the companies in the VIRGIN Group. . The VIRGIN businesses operate pages on various social media platforms where the VIRGIN marks also feature prominently. The Disputed Domain Name was registered on October 3, 2020 and resolves to a website that purports to offer free MP3 music downloads and access to music videos hosted on the YouTube platform. 5. Parties Contentions A. Complainant In 1999, the Complainant launched Virgin Mobile Telecoms Limited in the UK, offering telecommunications services under the brand VIRGIN MOBILE. Since 2000, VIRGIN MOBILE services have been launched in numerous other territories, including Australia, Canada, Chile, France, India, Poland, South Africa, United Arab Emirates (“UAE”) and United States. Today there are 15 million VIRGIN MOBILE customers around the world. The VIRGIN MOBILE business has sponsored a number of high profile events in various countries, and partnered with community initiatives since launching: - 2011 – Lady Gaga’s “Monster Ball Tour”2011- VIRGIN MOBILE USA and VIRGIN MOBILE Canada sponsored Katy Perry’s The California Dreams Tour The VIRGIN MOBILE brand around the world has also won numerous awards for its services, including: - 2020 – VIRGIN MOBILE UK shortlisted in ‘Best Network’ category at the Mobile Choice Awards The Virgin mobile businesses collaborate with third party music streaming providers, such as Spotify and YouTube Music, to allow Virgin mobile customers to receive access to those music streaming services when they purchase a mobile phone plan provided by the Virgin mobile businesses. The Virgin mobile business in the UK is a subsidiary of “Virgin media”, and Virgin mobile services form the mobile phone aspect of the Virgin media “quad play” offering telecommunication deals that combine TV, broadband, mobile and landline services. As part of its TV packages, the Virgin Media business also provides access to a music video platform allowing customers to stream music videos and live performances as well as access to music TV channels. The Disputed Domain Name is comprised of “virgin”, “mobile”, “free” and “fest” and, therefore takes the entirety of the Complainant’s Registered Marks VIRGIN and VIRGIN MOBILE, and the entirety of the distinctive verbal component of the Complainant’s Registered Marks VIRGIN Signature Logo, VIRGIN MOBILE Logo and VIRGIN RECORDS. The term “free” will clearly be easily perceived as referring to goods or services that are provided without charge. The term “fest” is commonly used either as an abbreviation for the word “festival”, which refers to a particular event where people experience or enjoy a particular activity, often music acts. Alternatively, more colloquially, the term “fest” is frequently used and understood as a suffix denoting that there was an abundance of a particular thing. In the context of the activity on the Website at the Disputed Domain Name, which is to purportedly provide MP3 music downloads, and telecommunication and music publishing services for which the Complainant’s Registered Marks are well-known, “free” and “fest” will simply indicate to consumers that the Disputed Domain Name is the online location where it is possible to obtain lots of free mobile phone related products that can be used in conjunction with Virgin or Virgin Mobile services. Therefore, the terms “free” and “fest” are insufficient to distinguish the Disputed Domain Name from the Complainant’s Registered Marks. The Disputed Domain Name is therefore confusingly similar to the Complainant’s Registered Marks as per the requirements of paragraph 4(a)(i) of the Policy. The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Disputed Domain Name resolves to a website that purports to offer free MP3 music downloads and access to music videos hosted on the YouTube platform (the “ Website”). The Website displays at the top of the homepage the sign “Virginmobile”, which is near identical to the Complainant’s Registered Mark VIRGIN MOBILE and highly similar to the Complainant’s Registered Mark VIRGIN. Security messages are shown when clicking on some “Download” buttons on the Website, indicating that dangerous or phishing activity is detected on the webpages. Further, some of the “Download” buttons resolved to webpages containing links to adult content or adult-themed online games. . The use of marks identical and similar to the Complainant’s Registered Marks as part of the Disputed Domain Name and on the Website is without authorisation from the Complainant, the VIRGIN MOBILE, VIRGIN MEDIA or VIRGIN RECORDS businesses. The Complainant’s Registered Marks are well-known and have a reputation for services that offer music records or services that encompass provision of access to music and music streaming services. Internet users will therefore be deceived into thinking that the Disputed Domain Name is operated by or connected to the Complainant, the VIRGIN RECORDS, the VIRGIN MOBILE or VIRGIN MEDIA services. The use of the Disputed Domain Name will divert actual or prospective customers away from the VIRGIN MOBILE, VIRGIN MEDIA or VIRGIN RECORDS. The provision of music downloads and access to music videos by popular and well-known artists could suggest to Internet users that those artists are connected to or have a commercial relationship with the Complainant, when that is not the case. This will be disruptive to those businesses. Such use in relation to the Website, which purports to allow access to music is not fair and does not represent a legitimate or bona fide offering of goods or services. Any phishing activity that may be happening at the Website is for the purpose of illegitimate commercial gain. The use of the Complainant’s Registered Marks, which carry a reputation for telecommunication and music publishing services, is for the purpose of adding an impression of credibility to the Disputed Domain Name and the Website, such that Internet users will trust the same to provide safe, secure and legal downloads. Therefore, in the event any loss or harm is suffered by members of the public through any phishing activity this will tarnish the reputation in the Complainant’s Registered Marks. The provision of adult content at the Website will furthermore tarnish the reputation in the Complainant’s Registered Marks. There is no evidence the Respondent has been commonly known by the Disputed Domain Name, or the marks VIRGIN or VIRGIN MOBILE, or made any preparations to use the same in connection with a bona fide offering of goods or services. It is clear the Respondent is not 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 Complainant’s Registered Marks. The Complainant submits that the criteria of paragraph 4 (a)(ii) of the Policy is satisfied. The Disputed Domain Name was registered and is being used in bad faith. The Complainant’s Registered Marks have a reputation and goodwill in respect of music publishing and telecommunications services, of which provision of access to music streaming services forms a part. The Respondent is therefore intentionally capitalizing on that reputation by using the Complainant’s Registered Marks VIRGIN and VIRGIN MOBILE as part of the Disputed Domain Name to attract Internet users to the Website by creating a likelihood of confusion with those registered marks as to the source or affiliation of the Website. This is furthermore likely being done for commercial gain through phishing activity that the Complainant suspects is being conducted at the Website. This use is likely to divert Internet users looking for the services of the Complainant, the VIRGIN RECORDS, VIRGIN MEDIA or VIRGIN MOBILE businesses, away from those genuine services. This will be disruptive to the Complainant and these businesses and the nature of the activity at the Website could tarnish the reputation and goodwill in the Complainant’s Registered Marks. Such use is in bad faith. It is furthermore inconceivable that the Respondent could have acquired the Disputed Domain Name for any other good faith purpose and so the Disputed Domain Name was also clearly registered in bad faith. The Complainant submits that the criteria of paragraph 4(a)(iii) of the Policy are satisfied. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the transfer of the Disputed Domain Name may be ordered if the Complainant demonstrates three elements: (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 (iiii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Disputed Domain Name incorporates the Complainant’s mark VIRGIN MOBILE in its entirety with the addition of the terms “free” and “fest”; it is therefore obviously recognizable. The WIPO Overview 3.0 states in section 1.7: “This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name.” The Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s mark. B. Rights or Legitimate Interests No evidence exists to show that (i) the Respondent’s use of the Disputed Domain Name relates to a bona fide offering of goods or services; (ii) the Respondent is commonly known by the Disputed Domain Name; or (iii) the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. At no time has the Complainant authorized the Respondent to use their mark (or any sign that is identical with or confusingly similar to its mark) for the Disputed Domain Name or at all. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name or that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. Finally, the Respondent’s lack of rights or legitimate interests in the Disputed Domain Name may be inferred from the Respondent’s failure to submit a response to the Complaint (see InterContinental Hotels Group PLC, Six Continents Hotels, Inc., Six Continents Limited v. Domain Admin, Whois Privacy Corp. / Maddisyn Fernandes, Fernandes Privacy Holdings,WIPO Case No. D2017-1072 and Pomellato S.p.A v. Richard Tonetti,WIPO Case No. D2000-0493, holding that “[…] non-response is indicative of a lack of interests inconsistent with an attitude of ownership and a belief in the lawfulness of one’s own rights.”. Furthermore, the composition of the Disputed Domain Name, consisting of the Complainant’s trademark with additional terms, cannot constitute fair use in these circumstances as it carries a risk of implied affiliation and effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1. Accordingly, based on the available record and the Policy, the Panel finds that the Complainant has made out a prima facie case, which has not been rebutted by the Respondent, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. C. Registered and Used in Bad Faith The Respondent registered the Disputed Domain Name in bad faith by doing so with knowledge of the Complainant’s rights in its trademarks. Given the reputation of the Complainant’s trademarks, it is not credible that the Respondent was unaware of the Complainant’s activities and the existence of the Complainant’s mark when it registered the Disputed Domain Name that incorporates the Complainant’s mark (see WIPO Overview 3.0, section 3.2.2). Furthermore, it is also clear that the Respondent was aware of the Complainant’s business, as the links on the Disputed Domain Name website purport to offer free MP3 music downloads and access to music videos noting that Complainant’s trademarks have a reputation in respect of music publishing and telecommunications services, of which provision of access to music streaming services forms a part. Section 3.1.4 of the WIPO Overview 3.0 states: “[…] the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.” The Panel finds that this principle is applicable here. In addition, the registration of a domain name that is identical or confusingly similar to a trademark by an entity that has no relation to that mark may be suggestive of bad faith (see Price Costco International, Inc. v. Truong Do Thanh Nhan,WIPO Case No. D2020-0936; Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163). A finding of bad faith is supported in this case by the fact that “the disputed domain name incorporates the Complainant’s well-known trademark” and that “there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain name” (see Jazzercise, Inc. v. Fundacion Privacy Services LTD,WIPO Case No. D2020-1133). Regarding the use of the Disputed Domain Name, the Respondent is intentionally capitalizing on the Complainant’s reputation by using the Complainant’s registered Marks VIRGIN and VIRGIN MOBILE as part of the Disputed Domain Name to attract Internet users to the Website by creating a likelihood of confusion with those registered marks as to the source or affiliation of the Website. Furthermore, some of the “Download” buttons available on the Website at the Disputed Domain Name resolved to webpages containing links to adult content or adult-themed online games, which is further evidence of bad faith use. Consequently, the Panel finds that the Disputed Domain Name was registered and is being used in bad faith. 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 Haig Oghigian
- 2014 – VIRGIN MOBILE Australia became the “Conversation Partner” of not-for-profit Suicide prevention organization R U OK?
- 2014 – VIRGIN MOBILE Australia partnered with OzHarvest through the #mealforameal initiative where for every photo of food posted to Instagram, Facebook or Twitter with the #mealforameal hashtag a real meal was delivered to someone in need
- 2014 and 2015 – VIRGIN MOBILE Canada sponsored the Squamish Valley Music Festival
- 2016 – VIRGIN MOBILE sponsored SXSW Music Festival
- 2018 – VIRGIN MOBILE UAE won five industry awards including winner of ‘Best Digital Service’ at Telecoms World Middle East, winner of ‘Best Use of Digital and Social Media’ for Customer Experience at the Customer Happiness & Summit Awards, winner of ‘Most Innovative New Service of the Year’ and ‘Outstanding Customer Service’ awards at CommsMEA Awards
- 2016 and 2017 – VIRGIN MOBILE Australia won Canstar Blue’s Most Satisfied Customers award for Phone Plans
Sole Panelist
Date: January 8, 2021
Full & Egal Universal Law Academy