The Complainant is Virgin Enterprises Limited, United Kingdom, represented by A. A. Thornton & Co., United Kingdom.
The Respondent is David Barrow, United States of America (“United States”). 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 22, 2020. On December 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23, 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 December 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was January 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 20, 2021. The Center appointed Luca Barbero as the sole panelist in this matter on February 1, 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 a member of a group of companies that are collectively known as “the Virgin Group” originally established in the United Kingdom in 1970 by the founder and chairman Sir Richard Branson, who started a business selling popular music records by mail order under the VIRGIN name. Since then, the Complainant’s operations have grown significantly and now cover 60 VIRGIN branded businesses that span a diverse range of sectors covering Financial Services, Health & Wellness, Music & Entertainment, People & Planet, Telecommunications & Media and Travel & Leisure, with over 53 million customers worldwide and more than 69,000 employees in 35 countries and an annual revenue of GBP 16.6 billion. The Complainant is the owner of several trademark registrations for the trademark VIRGIN, including the following, as per trademark certificates submitted as annexes to the Complaint: - United Kingdom trademark registration No. UK00003163121 for VIRGIN (word mark), filed on May 5, 2016, and registered on July 29, 2016, in classes: 3, 5, 9, 11, 12, 14, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44 and 45; The Complainant is also the owner of over 5000 domain names, including The disputed domain name The Complainant contends that disputed domain name The Complainant highlights that the additional terms “billing” and “refund” clearly refer to payments, or refunds of those payments, for goods or services provided by a business, and that, since consumers are accustomed to seeing these generic terms online, they tend to rely on them to identify secure locations on the Internet where it is possible to access and manage personal, financial and payment information. Therefore, users may understand and perceive the disputed domain name to identify the web address or email address where they can login to their online account to manage payments and request payment refunds for services, they use that are provided by the Complainant or other authorized VIRGIN businesses. With reference to rights or legitimate interests in respect of the disputed domain name, the Complainant states that the Respondent has in no way been authorized by the Complainant or any of the VIRGIN businesses, to register the disputed domain name, nor is the Respondent commonly known by the disputed domain name. The Complainant further contends that, considering that the disputed domain name resolves either to an error page or to a warning page and that, in the latter case, one might easily assume the disputed domain name was registered for the purposes of defrauding people by way of phishing, the Respondent has not shown any demonstrable preparation to use the disputed domain name in connection with a bona fide offering of goods or services. Moreover, according to the Complainant, the use of the terms “billing” and “refund” in the disputed domain name, has been deliberately and purposely adopted by the Respondent to cause confusion on the part of consumers who may believe that the disputed domain name is somewhat authorized, operated by, or otherwise connected to, the Complainant or its other VIRGIN businesses. The Complainant further underlines that the false address used in the WhoIs records, the security warning displayed when trying to access the disputed domain name and the lack of evidence of business preparations related to the disputed domain name, strongly indicate that the Respondent has no rights or legitimate interests in the disputed domain name. With reference to the circumstances evidencing bad faith, the Complainant indicates that, considering the security message shown when accessing the disputed domain name, the Respondent most likely registered the disputed domain name with the intent of using it in connection with phishing and defrauding activities. The Complainant emphasizes that the choice of terms used in the disputed domain name is highly intentional and that the Respondent was probably seeking to attract to its website customers from the VIRGIN businesses, that may be searching online for information on how to obtain refunds or payment information for VIRGIN products or services, with the intent of disrupting and causing harm to the Complainant and to other related VIRGIN businesses. The Complainant lastly underlines that, even the provision of the non-existent address in the WhoIs records is indicative that the Respondent’s intentions for registration and use of the disputed domain name are illegitimate and have not been carried out in good faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint 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.” Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar The Panel finds that the Complainant has established rights over the trademark VIRGIN based on the trademark registrations cited under section 4 above and the related trademark certificates submitted as annex 4 to the Complaint. It is well accepted that the first element functions primarily as a standing requirement, and that the threshold test for confusing similarity involves a reasoned but relatively straightforward comparison between a complainant’s trademark and the disputed domain names to assess whether the trademark is recognizable within the disputed domain name (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). Moreover, as found in a number of prior cases decided under the Policy, where a trademark is recognizable within a domain name, the addition of generic or descriptive terms does not prevent a finding of confusing similarity under the first element. See section 1.8 of the WIPO Overview 3.0. The Panel finds that the disputed domain name is confusingly similar to the trademark VIRGIN as it reproduces the trademark in its entirety with the mere addition of the descriptive terms “billing” and “refund” and the gTLD “.com”, which does not prevent a finding of confusing similarity. Therefore, the Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark in which the Complainant has established rights according to paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests It is well established that the burden of proof lies on the complainant. However, satisfying the burden of proving a lack of the respondent’s rights or legitimate interests in respect of the domain name according to paragraph 4(a)(ii) of the Policy is potentially onerous, since proving a negative can be difficult considering such information is often primarily within the knowledge or control of the respondent. Accordingly, in line with previous UDRP decisions, it is sufficient that the complainant show a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production on the respondent. If the respondent fails to demonstrate rights or legitimate interests in the disputed domain name in accordance with paragraph 4(c) of the Policy or on any other basis, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. In the case at hand, by not submitting a Response, the Respondent has failed to invoke any circumstance that could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. Moreover, it has been repeatedly stated that when a respondent does not avail himself of its right to respond to a complaint, it can be assumed in appropriate circumstances that the respondent has no rights or legitimate interests in the disputed domain name (Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269). The Panel also notes that there is no relation, disclosed to the Panel or otherwise apparent from the record, between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant, nor has the Respondent otherwise obtained an authorization to use the Complainant’s trademark. In addition, there is no element from which the Panel could infer the Respondent’s right over the disputed domain name, or that the Respondent, whose name disclosed in the Registrar’s WhoIs records for the disputed domain name is David Barrow, might be commonly known by the disputed domain name. As mentioned above, the disputed domain name has not been pointed to an active website but, depending on which browser it is accessed from, it either points to a page displaying a security message, warning that the content of the website at the disputed domain name is not safe and phishing activity has been detected, or it resolves to a webpage displaying an error message stating that the website at the disputed domain name is broken or does not work. In view of the above and in absence of a Response, the Panel finds that the disputed domain name has not been used in connection with a bona fide offering of goods or services or a legitimate non-commercial or fair use without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s well known trademark. Furthermore, in view of the composition of the disputed domain name, as highlighted in section 2.5.1 of the WIPO Overview 3.0, the Panel finds that the disputed domain name carries a risk of implied affiliation. Therefore, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in the disputed domain name according to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith Paragraph 4(a)(iii) of the Policy requires that the Complainant prove that the disputed domain name was registered and is being used by the Respondent in bad faith. In view of the Complainant’s prior registration and use of the trademark VIRGIN and of the well-known character of the trademark, recognized also in prior UDRP decisions (see, amongst others, Virgin Enterprises Limited v. Willem Sternberg De Beer,WIPO Case No. D2017-1851), the Panel finds that the Respondent’s registration of the disputed domain name, confusingly similar to the Complainant’s prior trademark, does not amount to a mere coincidence and that, in all likelihood, the Respondent registered the disputed domain name with the Complainant’s trademark in mind. As to the use of the disputed domain name, the Panel notes that it has not been pointed to an active website, but to a page displaying a security message, warning that the content of the website at the disputed domain name is not safe and phishing activity has been detected. The Panel notes that, in view of the composition of the disputed domain name, it is indeed possible that the Respondent registered the disputed domain name for use in connection with email addresses or a website aimed at requesting payments to third parties by creating the impression of an affiliation or an association with the Complainant. As stated in Section 3.4 of the WIPO Overview 3.0, “Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. […] Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers”. In view of the circumstances of the case and since the Respondent has failed to file a Response and submit counter-allegations to rebut the Complainant’s contentions, the Panel finds that the Respondent’s registration and use of the disputed domain name amounts to bad faith. Furthermore, the Panel considers the false information provided by the Respondent in the WhoIs records as an additional indication of the Respondent’s bad faith, concurring with the views expressed inter alia in Steelcase Development Corporation v. Admin, Domain,WIPO Case No. D2005-1352. Therefore, the Panel finds that the Complainant has also proven that the Respondent registered and has been using the disputed domain name in bad faith according to 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 Luca Barbero
- European Union trademark registration No. 015255235 for VIRGIN (word mark), filed on June 3, 2013, and registered on March 21, 2016, in classes 3, 5, 9, 11, 12, 14, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44 and 45;
- International trademark registration No. 1290574 for VIRGIN (word mark), registered on February 3, 2015, in classes 39, 41 and 43;
- United Kingdom trademark registration No. UK00003163127 for VIRGIN (figurative mark), filed on May 5, 2016, and registered on July 29, 2016, in classes 3, 5, 9, 11, 12, 14, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44 and 45;
- European Union trademark registration No. 015404841 for VIRGIN (figurative mark), filed on May 5, 2016, and registered on December 2, 2016, in classes 3, 5, 9, 11, 12, 14, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44 and 45;
- International trademark registration No. 1146047 for VIRGIN (figurative mark), registered on May 21, 2012, in classes 9, 35, 36, 38 and 41, designating also United States.
Sole Panelist
Date: February 16, 2021
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