The Complainant is Virgin Enterprises Limited, United Kingdom (“UK”), represented by A.A.Thornton & Co, United Kingdom.
The Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / Yuniz L, 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 12, 2021. On January 12, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name (the “Domain Name”). On January 12, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 28, 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 February 2, 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 February 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 3, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 15, 2021. The Center appointed Jon Lang as the sole panelist in this matter on April 13, 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”. The Virgin Group was originally established in 1970, since when its operations have grown significantly. There are now over 60 VIRGIN branded businesses that span a diverse range of sectors including Financial Services, Music & Entertainment and Telecommunications & Media, and have between them over 53 million customers worldwide, employ more than 69,000 people in 35 countries and have annual revenue of GBP 16.6 billion. The Complainant is responsible for a portfolio of trademarks for or containing the VIRGIN name and VIRGIN signature logo, and licenses these rights to VIRGIN businesses. The Complainant owns approximately 3,500 trademark applications and registrations in over 150 countries, including UK Trade Mark Registration No. UK00003163121 (for VIRGIN) with a registration date of July 29, 2016; UK Trade Mark Registration No. UK00003163127 for the VIRGIN Signature logo mark, also with a registration date of July 29, 2016; European Union Trade Mark Registration No. 13867478 (for VIRGIN MEDIA) with a registration date of October 14, 2015; European Union Trade Mark Registration No. 14032163 for the VIRGIN MEDIA logo mark with a registration date of December 3, 2015; and Australian Trade Mark Registration No. 1029200 (for VIRGIN MONEY) with a registration date of November 10, 2004. The Domain Name was registered on December 18, 2020. According to the Complaint and its annexes, the website to which it once resolved (the “Respondent’s website”) purported to offer online banking services under the mark PNC. The Domain Name does not currently resolve to an active site. 5. Parties’ Contentions A. Complainant The following is a summary of the main assertions of the Complainant. The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights The VIRGIN name and VIRGIN signature logo have been consistently and intensively used across all VIRGIN operations from the outset. The VIRGIN businesses, ventures and foundations are branded with marks incorporating the distinctive VIRGIN name or VIRGIN signature logo, e.g. Virgin Active, Virgin Money and 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 businesses operate pages on various social media platforms where the VIRGIN marks also feature prominently. Collectively these social media platforms receive over 37 million views each year demonstrating the widespread exposure of the VIRGIN brand to people all over the world, and its significant global reputation. In February 2007, the Virgin Group launched its VIRGIN MEDIA business in the UK. Today, it provides telecommunications services to 14.9 million households in the UK, and also to thousands of consumers in Ireland where the broadcast division of the VIRGIN MEDIA business is the number one commercial broadcaster. The VIRGIN MEDIA business operates websites at “www.virginmedia.com” and “www.virginmedia.ie”. The VIRGIN MEDIA UK and Ireland businesses operate dedicated social media feeds, including on Instagram and Facebook. Formed in 2002, Virgin Money is also part of the Virgin Group of companies and provides a range of financial services such as pensions and insurance policies. The Virgin Money business has been operational in Australia since as early as 2003. The official websites operated by the VIRGIN MONEY UK and Australia businesses are found at “www.virginmoney.com” and “www.virginmoney.com.au”. The VIRGIN MONEY brand has been widely publicized via its sponsorship of high profile events, and the VIRGIN MONEY UK business is consistently recognized by third parties for its exceptional services. Given the extensive and consistent use of the Complainant’s registered trademarks, the Complainant has acquired a significant reputation and goodwill in its marks. The Domain Name is made up of the terms “virgin”, “media” and “settlement”, and therefore incorporates the Complainant’s VIRGIN and VIRGIN MEDIA marks and the verbal element of the Complainant’s VIRGIN Signature logo and VIRGIN MEDIA logo marks, in their entirety. The term “settlement” would be understood by English speaking consumers to refer to payment of bills or resolution of disputes, and so in the context of the services for which the Complainant’s trademarks have a reputation, it is a descriptive and non-distinctive term. This generic term is incorporated into the Domain Name as the final component, after the Complainant’s VIRGIN MEDIA mark and separated only by a hyphen. The hyphen will simply be seen by Internet users to denote a space, and will only emphasize the clear independent role the Complainant’s VIRGIN MEDIA mark plays within the Domain Name. The term “settlement” is therefore not sufficient to distinguish the Domain Name from the Complainant’s trademarks. Consumers would perceive the Domain Name as the online location for arranging settlement of bills for services provided by the VIRGIN MEDIA UK and Ireland businesses, or where any complaints over such services can be filed and resolved. The addition of descriptive or generic indications to a third party trademark does not avoid a domain name being confusingly similar to that third party trademark. The Domain Name is confusingly similar to the Complainant’s VIRGIN, VIRGIN Signature logo, VIRGIN MEDIA and VIRGIN MEDIA logo registered trademarks. The Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name resolves to the Respondent’s website that purports to offer online banking services under the mark PNC. It provides a “Sign-In” page that asks for a User ID and password, as well as a sign-up form that requests personal details such as full name, date of birth, address and mobile number. The Respondent’s website uses marks identical to those used on the website at “www.pnc.com”, which appears to be a third party offering a bona fide banking service. The Respondent’s website also imitates the livery and branding colours visible at the “www.pnc.com” website. The Complainant believes that neither the Domain Name nor the Respondent’s website are connected to the “www.pnc.com” website. When accessing the Respondent’s website in certain browsers, a security message is shown indicating that it is deceptive and may trick users into providing personal details or downloading harmful software. This suggests that it is not connected to the PNC banking business, and also that malicious activity is likely being conducted using the Domain Name. Such malicious activity could include obtaining sensitive details for phishing purposes (for illegitimate commercial gain) via the online forms available on the Respondent’s website. The Domain Name and the Respondent’s website are not operated by, connected to or authorized by the Complainant or the VIRGIN MEDIA UK and Ireland businesses. Neither are the Complainant nor the VIRGIN MEDIA UK and Ireland businesses linked to the PNC banking service. Such use of the Domain Name is not use in relation to a bona fide offering of goods or services and indicates that the Respondent has no rights or legitimate interests in the Domain Name. Activities for which the Complainant is known include financial services, which is offered under the VIRGIN MONEY brand. Given the wide-reaching reputation of the Complainant and VIRGIN MONEY brand, Internet users may well assume that the Complainant and the VIRGIN MONEY brand are in some form of business partnership with the third party brand PNC, or that the VIRGIN MEDIA business requires settlement of bills for services via the PNC banking service. The Respondent is therefore using the Domain Name to cause confusion in relation to the Complainant’s VIRGIN and VIRGIN MEDIA marks and the operation or endorsement of the Respondent’s website. Such use is not fair and will confuse customers of the Complainant, potentially diverting actual or prospective customers away from the VIRGIN MEDIA and VIRGIN MONEY businesses. This will be disruptive to the businesses of the Complainant, VIRGIN MEDIA and VIRGIN MONEY. Furthermore, in the event that any Internet user suffers loss or harm as result of submitting personal details on the forms provided at the Respondent’s website, or downloads malicious software by visiting the Domain Name, the reputation in the Complainant’s trademarks are liable to tarnishment. There is no evidence that the Respondent has used, is using or plans to use the Domain Name in connection with a bona fide offering of goods or services. It is clear that the Respondent is not making a legitimate noncommercial or fair use of the Domain Name without intent for commercial gain. Use of the Domain Name is to misleadingly divert consumers or to tarnish the Complainant’s trademarks. The Complainant submits that on the balance of probabilities, the Respondent does not have a legitimate interest or right in the Domain Name. The Domain Name was registered and is being used in bad faith The Domain Name is being used in relation to the Respondent’s website, which purports to allow sign up and online account access relating to the third party PNC financial services business. The Domain Name incorporates marks identical to the Complainant’s VIRGIN and VIRGIN MEDIA trademarks. Use of the Respondent’s website is very likely to confuse Internet users into thinking that the Domain Name and/or the PNC financial services business, is connected to or authorized by the Complainant, or the VIRGIN MEDIA or VIRGIN MONEY businesses, the latter of which has a reputation for the provision of financial services. This is not fair and will be disruptive to the Complainant. Furthermore, the security warning displayed when accessing the Respondent’s website indicates that the online forms found there are likely to be used to obtain sensitive personal information or install harmful software on computers for the purposes of phishing and illegitimate commercial gain. In the event of any Internet user suffering loss or harm, the reputation of the Complainant’s trademarks will be tarnished. The Respondent’s use of the Domain Name is in bad faith. Given the reputation and recognition of the Complainant, the VIRGIN brand and the VIRGIN MEDIA and VIRGIN MONEY businesses, it is highly unlikely that the Respondent was unaware of the Complainant’s trademark rights at the time of registering the Domain Name. It is inconceivable that the Respondent could have any good faith intentions when registering and using the Domain Name given the clear abusive nature of the current use. The Respondent is intentionally attempting to attract for commercial gain Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Domain Name has been registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy requires a complainant to prove that a respondent has registered a domain name which is: (i) identical or confusingly similar to a trademark or service mark in which a complainant has rights; and (ii) that the respondent has no rights or legitimate interests in respect of the domain name; and (iii) that the domain name has been registered and is being used in bad faith. A complainant must prove each of these three elements to succeed. A. Identical or Confusingly Similar The Complainant is the owner of numerous VIRGIN and VIRGIN MEDIA word and logo marks (and other VIRGIN marks) and clearly has rights in those marks. Ignoring the generic Top-Level Domain “.com” (as the Panel may do for comparison purposes), the Domain Name comprises the VIRGIN/VIRGIN MEDIA trademarks followed by the word “settlement”, the marks and the word “settlement” being separated by a hyphen. Accordingly, the VIRGIN/VIRGIN MEDIA trademarks and Domain Name are not identical and thus the issue of confusing similarity must be considered. Application of the confusing similarity test under the UDRP 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” (section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“the WIPO Overview 3.0”)). Section 1.7 of the WIPO Overview 3.0 goes on to provide “…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”. The VIRGIN/VIRGIN MEDIA trademarks are incorporated in their entirety within the Domain Name. They are clearly recognizable within the Domain Name. The addition of the word “settlement”, does little to diminish the visual impression created by the Domain Name, namely that the VIRGIN/VIRGIN MEDIA trademarks are its dominant element. The Panel finds that the Domain Name is confusingly similar to the VIRGIN/VIRGIN MEDIA trademarks for the purposes of the Policy and thus paragraph 4(a)(i) of the Policy has been established. B. Rights or Legitimate Interests By its allegations, the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. Accordingly, the burden of production shifts to the Respondent to come forward with arguments or evidence demonstrating that it does in fact have such rights or legitimate interests. The Respondent has not done so and accordingly, the Panel is entitled to find, given the prima facie case made out by the Complainant, that the Respondent indeed lacks rights or legitimate interests in the Domain Name. Despite the lack of any answer to the Complainant’s contentions however, the Panel is entitled to consider whether there would be anything inappropriate in such a finding. A respondent can show it has rights to or legitimate interests in a domain name in various ways even where it is not, as here, licensed by or affiliated with a complainant. For instance, it can show that it has been commonly known by the domain name or that it is making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. A respondent can also show that it is using a domain name in connection with a bona fide offering of goods or services. Here, however, the Respondent is not known by the Domain Name. Moreover, the Respondent appears to have used the confusingly similar Domain Name to engage in, or attempt to engage in nefarious activities, most probably phishing, imitating a VIRGIN business or businesses and also a third party financial services business (PNC) for such purposes. Such behaviour cannot of course amount to a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the Domain Name for the purposes of the Policy. The very purpose in the Respondent choosing the Domain Name it did was to deliberately create a false impression of association with the Virgin Group or of individual businesses within it. The Respondent has not come forward with a Response or taken any other action to address the Complaint, no doubt because there is unlikely to be anything it could say that could justify its registration and use of the Domain Name in the manner described. There is no evidence before this Panel suggesting that the Respondent might have rights or legitimate interests in the Domain Name. The evidence suggests the contrary. Accordingly, the Panel finds that the Complainant has fulfilled the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith There can be little doubt that the Respondent was aware of the Complainant’s VIRGIN/VIRGIN MEDIA trademarks at the time of registration of the Domain Name. Paragraph 4(b) of the Policy provides a number of non-exclusive scenarios which may evidence a respondent’s bad faith. They include, for instance, a respondent registering a domain name in order to prevent an owner of the trademark or service mark to which it is said to be confusingly similar or identical, from reflecting the mark in question in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct. A respondent registering a domain name primarily for the purposes of disrupting the business of a competitor is another scenario, as is a respondent intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or of products or services on it. This latter scenario appears to reflect what the Respondent has set out to do here. Moreover, given that the paragraph 4(b) scenarios are non-exclusive and simply illustrative, other circumstances demonstrating that a respondent seeks to take unfair advantage of, or to abuse a complainant’s trademark (such behaviour being broadly understood to constitute bad faith for the purposes of the Policy) are usually enough to establish this third limb of paragraph 4(a) the Policy (even if not falling within one of the paragraph 4(b) scenarios). To this end, it has been held by past UDRP panels that where a domain name has been used, or connected with phishing activities, a finding of bad faith will follow (e.g. Confédération Nationale du Crédit Mutuel v. Daniel Delcore, WIPO Case No. DLC2009-0001). Needless to say, use of a domain name in connection with fraud or other nefarious activities would also support a finding of bad faith registration and use. The fact that currently the Domain Name does not resolve to an active page does not prevent a finding of bad faith. In the circumstances of this case, the Panel finds that, for the purposes of the Policy, there is evidence of registration and use of the Domain Name 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 Domain Name Jon Lang
Sole Panelist
Date: April 26, 2021
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