The Complainant is Virgin Enterprises Limited, United Kingdom, represented by A.A.Thornton & Co, United Kingdom.
The Respondent is “Richards Branson”, Malaysia. 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. On November 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 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 17, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 7, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 8, 2020. The Center appointed William F. Hamilton as the sole panelist in this matter on December 14, 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 (the “Companies”) operating under the VIRGIN trademark (the “Mark”) commencing in 1970. The Companies offer a wide variety of wireless telecommunications, music, entertainment, travel, and leisure services and products. The Companies have 53 million customers worldwide, including more than 15 million telecommunications customers. The Companies have over 69,000 employees and annual revenues in excess of GBP 16.6 billion. The Complainant is responsible for registering and maintaining registrations for the Mark and trademarks incorporating the Mark. Since 1970, the Complainant has obtained more than 3,500 trademark registrations for the Mark or incorporating the Mark in over 150 countries, including the following registrations: 1. United Kingdom Trademark No. UK00003163121 for the mark VIRGIN in International classes 3, 5, 9, 11, 12, 14, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44, 45; 2. European Union Trademark No. 015255235 for the mark VIRGIN in International classes 3, 5, 9, 11, 12, 14, 16, 31, 32, 35, 36, 38, 39, 41, 42, 43, 44, 45; 3. International Trademark No. 1141309 for the mark VIRGIN in International classes 9, 35, 36, 38, 41. The Complainant is also the registered proprietor of over 5,350 domain names either consisting exclusively of the VIRGIN trademark or in which the VIRGIN mark is used in combination with other words and/or numbers. See Virgin Enterprises Limited v. Luay Shakarchy, Universal Comms W/S Ltd,WIPO Case No. D2018-0465; Virgin Enterprises Limited v. Mars Out,WIPO Case No. D2017-2335. The disputed domain name was registered on October 17, 2020, and it resolves to a website that purports to offer telecommunications services, being mobile phone plans with the iPhone 12 handset, as well as telematics software for use in relation to vehicle management and tracking. 5. Parties’ Contentions A. Complainant The Complainant asserts that the disputed domain name is confusingly similar to the Mark because the disputed domain name is composed of the Mark plus two suffixes: the misappropriated well-known trademark of another company offering wireless services and the dictionary word “wireless”. The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name, is not commonly known by the Mark or the disputed domain name, and has never operated any bona fide business using the Mark. Finally, the Complainant asserts the Respondent has registered and used the disputed domain name in bad faith to attract and confuse unsuspecting Internet users who believe that the Respondent’s website is owned, sponsored, affiliated with or endorsed by the Complainant to the Respondent’s website for commercial gain. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, to succeed the Complainant must satisfy the Panel that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (iii) the disputed domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the disputed domain name is confusingly similar to the Complainant’s Mark. A domain name which wholly incorporates a complainant’s registered mark may be sufficient to establish confusing similarity for the purposes of the Policy. See Dr. Ing. h.c. F. Porsche AG v. Vasiliy Terkin,WIPO Case No. D2003-0888. “While each case is judged on its own merits, in cases where a domain name incorporates the entirety of a trademark […] the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. Finally, the Top-Level Domain does not dispel confusing similarity. “The applicable Top-Level Domain in a domain name (e.g., ‘.com’, ‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.” WIPO Overview 3.0, section 1.11. The disputed domain name appends to the Complainant’s Mark the registered trademark of another well-known company and a dictionary term. The addition of a dictionary term – or the registered trademark of third-party – does not prevent a finding of confusing similarity when the complainant’s mark is recognizable in the disputed domain name. Carrefour v. Zhuhai Yingxun Keji Limited / Paul Loutin, Loutin SAS,WIPO Case No. D2018-1949. See WIPO Overview 3.0, section 1.8 (“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.”). See also Morgans Group LLC v. Sanderson Morrison / Domain Admin, PrivacyProtect.org,WIPO Case No. D2013-1323; Philip Morris USA Inc. v. Whois Agent, Whois Privacy Protection Service Inc. / Name Redacted,WIPO Case No. D2017-0782; Jeanne Lanvin v. Yap Su Lang, Lanvin Bridal,WIPO Case No. D2019-0670. Here, the Complainant’s Mark is clearly recognizable in the disputed domain name and the addition of other terms does not prevent a finding of confusing similarity. The Complainant has met its burden under paragraph 4(a)(i) of the Policy B. Rights or Legitimate Interests The Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Complainant has specifically disavowed providing the Respondent with permission to use the disputed domain name or the Mark. There is no evidence that the Respondent has conducted any bona fide business under the disputed domain name or is commonly known by the disputed domain name or the Mark. The Respondent’s name disclosed by the Registrar does not resemble the disputed domain name. Moncler S.p.A. v. Bestinfo, WIPO Case No. D2004-1049. Furthermore, the Complainant has submitted evidence that the Respondent has used the disputed domain name to resolve to a website displaying the Complainant’s Mark, along with that of a third-party competitor, as well as content that falsely implies a relationship between the Complainant and the Respondent. Such impersonating use is neither a bona fide or fair use of the disputed domain name. Accordingly, the Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent did not respond to the Complaint and has failed to come forth with any evidence showing any rights or legitimate interests in the disputed domain name. The Respondent has failed to meet its burden of demonstrating rights or legitimate interests to rebut the Complainant’s prima facie case. The Respondent has not provided any evidence of business formation, credible investment, business plans, or any other evidence showing rights or legitimate interests in the disputed domain name. See WIPO Overview 3.0, section 2.2. The Panel finds the disputed domain name was registered and used in bad faith to falsely lure and attract Internet users to the Respondent’s website for commercial gain thereby disrupting the Complainant’s business. It strains credulity to believe that the Respondent was unaware of the Complainant’s Mark and willy-nilly formed the disputed domain name composed of the Mark plus another third-party well-known trademark and a dictionary term. An elementary Internet search would have disclosed the Complainant’s Mark, which is sufficiently distinctive such that it is difficult to conceive of any use that the Respondent might make of the disputed domain name without the Complainant’s consent that would not involve bad faith. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The disputed domain name resolves to a fraudulent website that prominently features the Complainant’s Mark plus the third-party’s competitor’s registered trademark, mimics information about the Complainant, and appears to offer telecommunications products sponsored by the Complainant. The Respondent’s bad faith registration and use of the disputed domain name is apparent from this impersonating use intended to attract and confuse unsuspecting Internet users to the Respondent’s website, for commercial gain, believing that the Respondent’s website is owned, sponsored, affiliated with or endorsed by the Complainant. Furthermore, the Respondent has registered the disputed domain name with an apparently false name that is nearly identical to the chairman and founder of the Companies, of which the Complainant is a member. Such choice of registrant name further supports an inference of bad faith in the circumstances of this case. The Complainant has met its burden under 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 William F. Hamilton
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
The Complainant has met its burden under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Sole Panelist
Date: December 21, 2020
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