The Complainant is Virgin Enterprises Limited, United Kingdom, represented by A. A. Thornton & Co, United Kingdom.
The Respondent is Registration Private, Domains By Proxy, LLC, United States of America (“United States”) / Online Resource, Online Resource Management Ltd., Cayman Islands, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 8, 2021. On January 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 11, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 13, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on January 14, 2021. 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, and the proceedings commenced on January 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 16, 2021. The Center appointed Steven A. Maier as the sole panelist in this matter on February 25, 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 company based in the United Kingdom. It is a member of a group of companies (the “Virgin Group”) that provide a wide range of consumer services including travel, communications, entertainment, and financial services. The Complainant is responsible for the registration and maintenance of trademarks on behalf of the Virgin Group. The Virgin Group has operated a business named “Virgin Pulse” since 2004. The business comprises a digital platform, which provides health coaching and tailored personal wellbeing management. It offers a website at “www.virginpulse.com” and provides a sign-up page for that website at “www.join.virginpulse.com”. The Complainant is the owner of various registrations for the trademark VIRGIN PULSE including the following: - United States trademark number 4804560 for the word mark VIRGIN PULSE, registered on September 1, 2015 in International Classes 9, 35, 41, 42, and 44 - United Kingdom trademark number 3433371 for the word mark VIRGIN PULSE, registered on January 24, 2020 in International Classes 9, 35, 41, 42, and 44 - European Union Trade Mark number 18132528 for the word mark VIRGIN PULSE, registered on May 22, 2020 in International Classes 9, 35, 41, 42, and 44 The Complainant is also the owner of numerous registrations for the trademark VIRGIN in territories throughout the world. The disputed domain name was registered on January 18, 2016. The Complainant provides evidence that the disputed domain name has been used for the purpose of at least three different websites, as follows: (1) a website headed “Before You Continue to joinvirginpulse.com”, which offers a link to a Chrome extension, which is said to offer a “safe web experience”; (2) a website containing purported news articles about money-making schemes involving cryptocurrencies, supposedly endorsed by well-known celebrities; and (3) a website purporting to offer links to “Virgin Media” and “Virgin Group” as well as to other unnamed service providers, e.g., “Coworking” and “Join Fitness”. 5. Parties’ Contentions A. Complainant The Complainant states that it founded Virgin Pulse in 2004 to design technology to allow companies to assist their employees in cultivating good lifestyle habits. It submits that the Virgin Pulse digital platform, which provides health coaching, tailored personal wellbeing management programs, is now a leader in its sector, and has the highest daily engagement rates in the industry with members from more than 190 countries and more than 4,000 organizations. The Complainant exhibits evidence of the exposure of the VIRGIN PULSE mark on social media platforms and of its recognition by way of industry awards. The Complainant submits that the disputed domain name is confusingly similar to its VIRGIN PULSE trademark. It states that the disputed domain name wholly incorporates that trademark with the addition only of the term “join”, which Internet users are bound to assume refers to a sign-up page for the Complainant’s services. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant says that it has never authorized the Respondent to use the VIRGIN PULSE trademark and that the Respondent has not commonly been known by that name. The Complainant contends that the disputed domain name itself will mislead Internet users into believing it is owned or operated by the Complainant. It further contends that none of the three uses that the Respondent has made of the disputed domain name can be regarded as legitimate. In particular, the Complainant says that the Chrome extension offered by the first of the Respondent’s websites has a high rating for malicious behaviour and has been linked to phishing attempts. The Claimant states that the second website contains articles relating to supposed Bitcoin opportunities that are not genuine and which falsely claim the endorsement of well-known celebrities. With regard to the third website, the Complainant says that the pay‑per-click links to its own business names underline the Respondent’s intention to mislead and that the links to other services may include those of the Complainant’s competitors. The Complainant submits that the disputed domain name was registered and is being used in bad faith. It repeats that the disputed domain name is misleading in itself and will inevitably lead Internet users to believe it is connected with the Complainant’s services. The Complainant further submits that, for the reasons given above, none of the Respondent’s three uses of the disputed domain name are legitimate and each has been used deceptively to obtain financial gain for the Respondent. The Complainant contends therefore that, by using the disputed domain name, the Respondent has sought to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s trademark. The Complainant requests the transfer of the disputed domain name. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (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 Complainant has established that it is the owner of registered trademark rights for the mark VIRGIN PULSE. The disputed domain name wholly incorporates that trademark, preceded by the dictionary term “join”, which does not prevent a finding of confusing similarity between the Complainant’s trademark and the disputed domain name. The Panel finds therefore that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. However, the Respondent has not filed a Response in this proceeding and has not submitted any explanation for its registration and use of the disputed domain name, or evidence of rights or legitimate interests on its part in the disputed domain name, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. The Panel finds in this case that the disputed domain name is inherently misleading and will inevitably lead Internet users to believe that it is owned, operated or authorized by the Complainant. In particular, the disputed domain name is liable to suggest to Internet users that it represents the sign-up page for the Complainant’s VIRGIN PULSE services: indeed the disputed domain name closely resembles the Complainant’s own sign-up page at “www.join.virginpulse.com”. In these circumstances the Panel can conceive of no legitimate use to which the Respondent could put the disputed domain name. For this reason, and as explained further below, the Panel finds that none of the websites to which the disputed domain name has resolved constitute a bona fide offering of goods or services on the part of the Respondent. The Panel finds in the circumstances that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith The Panel repeats its finding that the disputed domain name is inherently misleading and will inevitably suggest to Internet users that it is legitimately associated with the Complainant. There can be no serious doubt that the disputed domain name was registered with the Complainant’s VIRGIN PULSE trademark in mind and for the purpose of taking unfair commercial advantage of that trademark. As to the Respondent’s use of the disputed domain name, each of the websites to which the disputed domain name has resolved is already tainted by the inherently misleading nature of the disputed domain name for the reasons set out above. Furthermore, the Panel accepts the Complainant’s evidence, which the Respondent has not disputed, that the disputed domain name has resolved to websites which offer potentially harmful software; articles concerning fraudulent Bitcoin schemes; and pay-per-click links to services naming the Complainant and potentially including those of the Complainant’s competitors. It is clearly to be inferred that each of these uses is intended to provide a financial benefit to the Respondent. The Panel finds, therefore, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of a product or service on its website (paragraph 4(b)(iv) of the Policy). The Panel finds in the circumstances that the disputed domain name has been 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, Steven A. Maier
Sole Panelist
Date: March 4, 2021
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