The Complainant is Virgin Enterprises Limited, United Kingdom, represented by A. A. Thornton & Co, United Kingdom.
The Respondent is Slugan Morris, Ukraine. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 7, 2020. On December 7, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 8, 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. On December 21, 2020, the Center sent an email communication to the Parties, in English, Russian and Ukrainian, regarding the language of the proceeding. On December 22, 2020, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding. The Center verified that the Complaint together with 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 in English, Russian and Ukrainian, and the proceedings commenced on January 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 3, 2021. The Center appointed Clark W. Lackert as the sole panelist in this matter on February 10, 2021. 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 based in the United Kingdom and has a history of providing an extensive range of goods and services under the VIRGIN name and mark and various VIRGIN formative marks. The Complainant was founded in 1970 when it commenced trade using VIRGIN to designate a mail order business, and has since expanded its business to incorporate music publishing, bank and credit accounts, mobile communications, package holidays, soft drinks, wines, and other offerings. Complainant has a history of designating its product and service lines by combining its VIRGIN mark other words and design elements. Examples of such designations include Virgin Records, Virgin Games, Virgin Holidays, Virgin Megastore, Virgin Direct, Virgin Mobile, Virgin Wines, and Virgin Cola. The Complainant’s commercial activities include transportation services provided under its VIRGIN ATLANTIC mark, a mark registered in multiple jurisdictions for international passenger air travel and freight/cargo shipping services. The Complainant’s registered trademarks include VIRGIN ATLANTIC in word and composite design forms in the United Kingdom, the European Union, and the United States of America, and government records confirm that the Complainant’s common law rights in its VIRGIN ATLANTIC mark can be traced to at least as early as 1984. The Complainant maintains websites at “www.virginatlantic.com” and “www.virginatlanticcargo.com” to promote its passenger air travel and freight/cargo transportation services. Both websites prominently feature the Complainant’s VIRGIN ATLANTIC marks, and the “www.virginatlanticcargo.com” website is dedicated to promoting the Complainant’s freight and cargo shipping packages that are distinguished by combining the VIRGIN ATLANTIC marks with the term “Cargo” (i.e., Virgin Atlantic Cargo). The Complainant uses VIRGIN ATLANTIC Cargo to promote its extensive network of freight and cargo shipping capabilities that incorporate its exclusive international flight routes, interline connections, and on-forwarding arrangements with local partners. Complainant’s VIRGIN ATLANTIC Cargo offerings include schedule-oriented options (e.g., flexible, priority, and express) and distinct special handling options (e.g. pharmaceuticals and pets). The Complainant also promotes an “express courier product” for shipments of under 32 kilograms. The Complainant has received industry recognition and awards for its VIRGIN ATLANTIC freight and cargo capabilities, and has generated extensive publicity in response to its fleet of aircraft and its establishment of a VIRGIN ATLANTIC Cargo export facility at Heathrow airport in London, England. The WhoIs records for the disputed domain name confirm that it was created on October 25, 2020, and has been registered in the name of Slugan Morris of Ukraine. The disputed domain name is scheduled to expire on October 25, 2021. The record shows the disputed domain name has been used to promote air, ocean, and road freight cargo courier services, packaging and warehousing services, shipment tracking services, and related customs, logistics, and consulting services. The disputed domain name identifies the provider of these services as “VirginAtlantic Courier” and “Virgina Atlantic Courier”, and the site content includes a “Contact Us” form, a “Request a Quote” function, an FAQ page, email and telephone contact details, and “About Us” pages that feature executive and management bios and promote a history dating to 1971. No response has been submitted in this proceeding, so there is no other factual background pertaining to the Respondent specifically. 5. Parties’ Contentions A. Complainant The Complainant’s claims detail rights in the VIRGIN mark and other VIRGIN formative marks for a broad portfolio of goods and services, and the Complaint cites evidence of use of VIRGIN as an identification of source since 1970 and subsequent use and registration of VIRGIN and VIRGIN ATLANTIC in word and composite design forms. The Complainant emphasizes that it introduced its VIRGIN ATLANTIC branded passenger and cargo airline services in 1984, and that its cargo division has grown to serve 37 countries and 60 destinations around the world. In addition, the Complainant has submitted evidence to demonstrate notoriety and recognition associated with the Complainant’s VIRGIN ATLANTIC and VIRGIN ATLANTICCargo services including media features, industry recognition, awards, and the Complainant’s own promotional matter. The Complaint alleges that the disputed domain name is confusingly similar to its marks because the address incorporates the literal components of its VIRGIN and VIRGIN ATLANTIC marks in their entireties. The Complainant argues that the “courier” portion of the disputed domain name will not avoid confusion because its full address is designed to convey the terms “virgin”, “atlantic” and “courier” and Internet users are likely to recognize these elements despite the disputed domain name’s omission of an additional “c” in its address. The Complainant contends that the disputed domain name reflects a common typographical error that could misdirect Internet users seeking the Complainant’s VIRGIN ATLANTIC branded courier services. The Complainant dismisses the “courier” portion of the disputed domain name as a descriptive or generic term that is incapable of distinguishing the disputed domain name from the Complainant’s VIRGIN and VIRGIN ATLANTIC marks. In addition, the Complainant notes that the term “courier” describes services provided by the Complainant under its own marks. The disputed domain name was registered in October 2020, and the Complainant believes it is unlikely that the Respondent was not aware of the Complainant, its reputation, and its rights in its VIRGIN and VIRGIN ATLANTIC marks at the time of registration. The Complainant claims that the Respondent intentionally used its marks to create the disputed domain name in an effort to attract visitors to the address and cause them to confuse the disputed domain name for an address that is authorized by, endorsed by, or somehow connected with the Complainant. The following allegations of bad faith use are detailed by the Complaint: - The disputed domain name features “Get in touch” and “Track Shipment” forms that may encourage Internet users to submit personal data to the Respondent while under the mistaken belief that they are visiting a website of the Complainant, and such data could be used by the Respondent fraudulent purposes or commercial gain. - The disputed domain name features links to websites with similar content that promotes cargo shipping and freight services including “www.logiscargo.com”, and such links will further divert Internet users who may be seeking the services of the Complainant. - The content of the disputed domain name is designed to disrupt the Complainant’s business, and has potential to damage the Complainant’s reputation. - The Complainant previously prevailed inWIPO Case No. D2020-0008, a decision concerning The Complainant has provided copies of pages displayed at the disputed domain name and pages associated with the above-referenced UDRP decision. The Complainant alleges that the Respondent in this case was responsible for the domain name subject ofWIPO Case No. D2020-0008 and other domain names that have promoted similar content. The Complainant has provided copies of pages from these other domain names to support its conclusion that the Respondent has a pattern of bad faith conduct. The Complainant is requesting that ownership of 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 A. Language of the Proceedings The Complaint was filed in English, however the Registrar verified that the language of the Registration Agreement for the disputed domain name as “Russian/Ukrainian”. The Complainant is requesting that this proceeding be conducted in the English language based on evidence that the Registrar has published an English translation of its Registration Agreement and the content of the disputed domain name has featured English language words and Latin characters. The Complainant also notes that none of the content associated with the disputed domain name is in Russian, and alleges that the Respondent has published similar English language and Latin character content at other domain names. Under paragraph 11(a) of the Rules, the proceeding should reflect the content of the Registration Agreement unless the Parties have consented otherwise or the Panel determines that another language would be appropriate under the circumstances. When presented with language discrepancies, the Panel may order the parties to translate documents or proceed in a language that is supported by the record. Any decision regarding language must account for the objectives promoted by paragraphs 10(a) and 10(c) of the Rules, specifically the need to treat parties equally, provide each party with a fair opportunity to present their case, and conduct the proceeding with appropriate expedition. See General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM,WIPO Case No. D2006-0334); see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1. The Respondent has not objected to use of English in this proceeding, and it has not requested use of a different language in this proceeding. In view of the circumstances, the Panel sees no overriding factors that would justify the costs and delay associated with translation and finds that the language of the proceeding shall therefore be English. B. Identical or Confusingly Similar The Complainant has established ownership of registered trademark rights in its VIRGIN and VIRGIN ATLANTIC marks for transportation services, and the record confirms that these rights precede the registration of the disputed domain name by many years. In addition, the record confirms that the Complainant uses the trademark VIRGIN ATLANTIC with the addition of the word “courier”, to distinguish its freight and cargo transport services in the marketplace. The disputed domain name incorporates the Complainant’s VIRGIN ATLANTIC mark in its entirety, and it is phonetically identical to the VIRGIN ATLANTIC Courierdesignation used to promote the Complainant’s services. The disputed domain name has been composed by combining its “Atlantic” and “courier” elements with a single letter “c”, but this does not distinguish the disputed domain name from the Complainant’s marks or detract from confusing similarity. The generic Top-Level-Domain (“gTLD”) “.com” portion of the disputed domain name is a registration formality. Such gTLD suffixes are disregarded when evaluating similarity. See WIPO Overview 3.0, section 1.11.1. The Panel notes the recent decision in Virgin Enterprises Limited v. Super Privacy Service Ltd. c/o Dynadot,WIPO Case No. D2018-2923, a decision acknowledging the Complainant’s rights in its VIRGIN ATLANTIC mark and confirming the confusing similarity in the The Panel finds that the requirements of paragraph 4(a)(i) of the Policy have been satisfied. C. Rights or Legitimate Interests Noting the facts and arguments set out above, the Panel finds that the Complainant has presented its prima facie case, and the Respondent has not provided any evidence of its own rights or legitimate interests in and to the disputed domain name. The Panel concludes that the factors of paragraph 4(a)(ii) of the Policy favor the Complainant in view of the Respondent’s failure to present any evidence that refutes the Complainant’s contentions. D. Registered and Used in Bad Faith The record confirms that the Complainant has held rights in its VIRGIN and VIRGIN ATLANTIC marks for decades. There is no doubt that the Complainant’s rights precede the recent registration of the disputed domain name in October of last year. Prior UDRP panels have acknowledged the notoriety of the Complainant’s VIRGIN and VIRGIN ATLANTIC marks, with multiple decisions acknowledging that these are well-known marks. See, e.g., Virgin Enterprises Limited v. Guard Whois,WIPO Case No. D2015-2348 (finding that registration of the The disputed domain name incorporates the renowned VIRGIN and VIRGIN ATLANTIC marks in their entireties, and the addition of the dictionary term “[c]ourier” to these elements reflects that the Respondent is aware of the transportation services provided by the Complainant under these marks. The record confirms that the Respondent has been using the disputed domain name to promote services that are identical to those provided by the Complainant under its VIRGIN ATLANTIC mark and designated as Virgin Atlantic Courier in the marketplace. The record also confirms that the Respondent’s website has been promoting these services as those of “Virgin Atlantic” and “Virgina Atlantic”, and that this content is designed to create a likelihood of confusion with the Complainant’s VIRGIN ATLANTIC mark and transport services, thereby misdirecting Internet traffic to the benefit of the Respondent. The website content confirms that the Respondent has been using the disputed domain name in bad faith. Its content confirms that the Respondent is attempting to distract Internet users who may be seeking the Complainant and misroute them to the disputed domain name, and that visitors are presented with content that is identical and confusingly similar to the marks and services of the Complainant. The content also explicitly invites visitors to “Request a Quote” for the Respondent’s competing services or contact the Respondent directly by email or phone to contract with the Respondent. The foregoing confirms bad faith use of the disputed domain name designed to attract Internet users for commercial gain. The Panel finds that the requirements of paragraph 4(a)(iii) of the Policy have been 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 Clark W. Lackert
Sole Panelist
Date: February 24, 2021
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