Complainant is Virgin Enterprises Limited, United Kingdom (“UK”), represented by A. A. Thornton & Co., United Kingdom.
Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America / Eric Mboma, United Arab Emirates. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2021. On February 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 15, 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 Complainant on February 18, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on February 19, 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 Respondent of the Complaint, and the proceedings commenced on February 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 15, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on March 16, 2021. The Center appointed John C. McElwaine as the sole panelist in this matter on March 26, 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 Complainant is the owner of the following trademark registrations, which it has asserted in this matter: - UK Trade Mark Registration No. UK00003163121 for the mark VIRGIN registered on July 29, 2016, in classes 03, 05, 09, 11, 12, 14, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44, and 45. - European Union Trade Mark Registration No. 015255235 for the mark VIRGIN registered on March 21, 2016, in classes 03, 05, 09, 11, 12, 14, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44, and 45. - European Union Trade Mark Registration No. 015404841 for the mark (VIRGIN stylized) 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. - UK Trade Mark Registration No. UK00003163127 for the mark (VIRGIN stylized) 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. - UK Trade Mark Registration No. UK00003015345 for the series mark VIRGIN START UP, VIRGIN STARTUP, VIRGIN START UPS, VIRGIN STARTUPS registered on October 25, 2013, in classes 35 and 36. (Collectively, these trademark registrations are referred to herein as the “VIRGIN Marks”). The Domain Name was registered by Respondent on December 15, 2020. At the time of the filing of the Complaint, the Domain Name resolved to a website purporting to be the website of a joint venture between Complainant and Crowdcube, a British investment crowdfunding platform. At the time of the Decision, the Domain Name does not resolve to an active website. 5. Parties’ Contentions A. Complainant Complainant is a member of a group of companies collectively known as the Virgin Group. Complainant asserts that the Virgin Group was established in 1970 by its founder and chairman Sir Richard Branson and since this time the Virgin Group has grown to comprise over 60 VIRGIN branded businesses that span a diverse range of sectors, including music and entertainment and telecommunications and media. Complainant alleges that the Virgin Group companies have between them over 53 million customers worldwide, employ more than 69,000 people in 35 countries, and have annual revenue of more than GBP 16 billion. Complainant is responsible for registering and maintaining registrations for trademarks containing the VIRGIN Marks and licensing these rights to the Virgin businesses. Complainant alleges that the VIRGIN Marks have all been consistently and intensively used across all Virgin Group operations since the company was founded. Complainant also contends that it has built up a considerable online presence and is the registered owner of over 5,000 domain names consisting of or incorporating the VIRGIN mark. Complainant alleges that it has operated a website at “www.virgin.com” since 2000 to promote the activities of the Virgin Group and its businesses, ventures and foundations. Complainant alleges that in December 2020, the Virgin StartUp organization collaborated with a third party crowdfunding platform called Crowdcube to launch the Collective Impact program, a five-week online course aimed at start-up businesses looking to prepare for investment to help them raise funds through crowdfunding campaigns. The Crowdcube platform operates a website at “www.crowdcube.com” (the “Crowdcube Website”). Complainant contends that it has acquired significant goodwill and reputation in VIRGIN Marks due to their extensive and consistent use throughout the Virgin Website, Virgin StartUp Website, social media for Complainant’s Virgin businesses and the Virgin StartUp organization. With respect to the first element of the Policy, Complainant alleges that the Domain Name incorporates Complainant’s registered trademarks rights in VIRGIN and that the Domain Name has added the third-party trademark of the Crowdcube platform, a partner of the Virgin StartUp organization. As a result, Complainant asserts that Internet users are likely to be confused into thinking that the Domain Name is the online location for acquiring information about the Virgin StartUp and Crowdcube collaboration. Alternatively, Complainant asserts considering the extent and range of Complainant’s business activities under Complainant’s VIRGIN Marks, that Internet users are likely to assume the Domain Name is the online location for a business resulting from an acquisition by Complainant or the Virgin StartUp organization of the Crowdcube platform. In sum, Complainant contends that the addition of the third-party mark CROWDCUBE in the Domain Name is not sufficient to distinguish it from Complainant’s VIRGIN Marks. With respect to the second element of the Policy, Complainant asserts that the website that resolves from the Domain Name (the “Website”) uses marks identical to Complainant’s VIRGIN Marks in the Website’s content, copies a substantial amount of content from the Crowdcube Website, and purports to allow Internet users to login with the online accounts they hold with the Crowdcube platform. Complainant asserts that the Crowdcube platform has confirmed that it has not authorized Respondent to copy any of the text, images, or layout features reproduced on the Website or to register the Domain Name. Likewise, Complainant has not provided such authorization. Complainant alleges that the use of Complainant’s VIRGIN STARTUP trademark and the VIRGIN STARTUP Logo on the Website will confuse consumers into believing that the Domain Name is operated by, connected to or endorsed by Complainant, the Virgin StartUp organization or the Collective Impact program jointly run by the Virgin StartUp organization and Crowdcube platform. In addition, Complainant alleges that the Domain Name and Website could also confuse internet users into thinking that the Virgin StartUp organization and Crowdcube platform have merged or an acquisition has occurred when that is not the case. Complainant also points out that the error message given when clicking on the “Investment Opportunities” tab on the Website could give the impression that the Collective Impact program is not currently supporting any businesses with fundraising, when that is not the case. Complainant asserts that this confusion will divert actual or prospective users away from the Virgin StartUp organization services, and will be disruptive to the business of Complainant, the activities of the Virgin StartUp organization, and the Collective Impact program. Complainant points out that Respondent is aware of Complainant and the Virgin StartUp organization, as well as its collaboration with the Crowdcube platform, as it has copied promotional material for the collaboration taken from the Crowdcube Website and is using marks identical or highly similar to Complainant’s VIRGIN Marks and the VIRGIN STARTUP logo. Complainant concludes by stating that there is no other evidence that Respondent has used or intends to use the Domain Name in connection with a bona fide offering of goods or services. Complainant seeks the cancellation of the Domain Name in accordance with paragraph 4(i) of the Policy. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc.,WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International,WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2. On this point, Complainant has provided evidence that it is the owner of multiple trademark registrations for the VIRGIN trademark. The Domain Name consists of Complainant’s trademark VIRGIN combined with “crowdcube”, which corresponds to a trademark of a crowdfunding platform that is a partner of the Virgin StartUp organization. The fact that the Domain Name contains a third-party trademark does not prevent a finding of confusing similarity between the Domain Name and the VIRGIN trademark. WIPO Overview 3.0, section 1.12 (“Where the complainant’s trademark is recognizable within the disputed domain name, the addition of other third-party marks (i.e., Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s VIRGIN trademark in which Complainant has valid trademark rights. Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under the Policy paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant need only make a prima facie showing on this element, at which point the burden shifts to Respondent to present evidence that it has some rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi,WIPO Case No. D2000-0252. Complainant asserts that Respondent is not authorized to have registered the Domain Name and allegedly set up a website that purports to be announcing the collaboration between Crowdcube and the Virgin StartUp organization. In addition, Complainant has alleged that it confirmed that Crowdcube has not authorized Respondent to copy any of the text, images, or layout features reproduced and displayed by the Website or to register the Domain Name. Although properly notified by the Center, Respondent failed to submit any response on these points. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond,WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic. A.S., WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainant, it can be assumed in appropriate circumstances that respondents have no rights or legitimate interests in the disputed domain name. See AREVA v. St. James Robyn Limoges,WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,WIPO Case No. D2003-0269. Nevertheless, under paragraph 4(c) of the Policy, a respondent’s rights or legitimate interests to a domain name may be established by demonstrating any of the following three conditions: (i) before any notice to respondent of the dispute, respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or (iii) respondent 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. The Panel finds that Respondent will not be able to show rights or legitimate interests under any of the three conditions. As an initial matter, Respondent cannot satisfy paragraph 4(c)(ii) of the Policy. There is no evidence in the record that Respondent is commonly known by the name “Virgin Crowdcube”. In fact, to the contrary, the WhoIs information indicates that Respondent’s name is Eric Mboma. Complainant also asserts that the Domain Name resolved to a website that suggests that it is related to Crowdcube and to Complainant by using Complainant’s VIRGIN Marks. In addition, Complaint asserts that the Website may be used to harvest sensitive information from unsuspecting Internet visitors trusting the website due, in part, to its use of the VIRGIN Marks. Respondent has not submitted any response to rebut or explain these allegations. The Panel finds that the use of the Domain Name in this manner to divert Internet traffic or to confuse and deceive the Internet users is not a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. Prior UDRP panels deciding this issue have held that such use of a domain name cannot be a “bona fide offering of goods or services” and is not “fair use of the domain name”. See Microsoft Corporation v. Microsof.com aka Tarek Ahmed,WIPO Case No. D2000-0548 (“by using a domain name and establishing a website deliberately designed to confuse Internet users and consumers regarding the identity of the seller of the goods and services, Respondent has not undertaken a bona fide or good faith offering of the goods and services.”); see Hulu, LLC v. Helecops, Vinod Madushanka,WIPO Case No. D2016-0365 (finding that an infringing website operating under the name “HuluMovies” does not entail a bona fide offering of services in the sense of paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use under Policy paragraph 4(c)(iii), without intent for commercial gain to misleadingly divert consumers or to tarnish the HULU mark.). Without a response from Respondent justifying its use of the Domain Name as authorized by Complainant or as fair use, the Panel cannot find Respondent has a legitimate interest. Moreover, to the extent the Domain Name was registered to engage in impersonation for an information harvesting scheme, such use would not be a bona fide offering of goods or services. WIPO Overview 3.0, section 2.13.1 (“Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”); see also, CMA CGM v. Diana Smith,WIPO Case No. D2015-1774 (finding that the respondent had no rights or legitimate interests in the disputed domain name holding, “such phishing scam cannot be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the Domain Name”.). The undisputed evidence of impersonation, deception, and fraud nullifies any possible basis for the acquisition of rights or legitimate interests by Respondent. See Afton Chemical Corporation v. Meche Kings,WIPO Case No. D2019-1082. The Panel further notes that Respondent appears to be engaged in a pattern of trademark-abusive domain name registrations specifically targeting Complainant and such conduct is additional evidence of Respondent’s lack of any rights or legitimate interests in the Domain Name. See Virgin Enterprises Limited v. Domain Administrator, See PrivacyGuardian.org / Eric Mboma, WIPO Case No. D2021-0406. In sum, Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate. For all these reasons, the Panel is entitled to accept that the second element of the Policy is established by Complainant, and Respondent has no rights or legitimate interests in respect of the Domain Name, pursuant to paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy. Bad faith registration can be found where a respondent “knew or should have known” of a complainant’s trademark rights and nevertheless registered a domain name in which it had no right or legitimate interest. See Accor S.A. v. Kristen Hoerl,WIPO Case No. D2007-1722. As detailed above, Respondent registered the Domain Name, which is confusingly similar to the well-known VIRGIN Marks. There is no explanation for Respondent to have chosen to register the Domain Name other than to intentionally trade off the goodwill and reputation of Complainant’s trademarks or otherwise create a false association with Complainant and Crowdcube. With no response from Respondent, such a claim of bad faith registration is undisputed. Also as discussed herein, Respondent registered the Domain Name and linked it to a website using Complainant’s VIRGIN Marks and purporting to be promoting the collaboration between Complainant’s Virgin StartUp and Crowdcube. Such use is in bad faith because Respondent is using the Domain Name to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the VIRGIN Marks as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. Philip Morris USA Inc. v. WhoisGuard Protected, WhoisGuard, Inc. / Raph Lionnel Noundjeu,WIPO Case No. D2020-0556 (finding that given that the disputed domain name incorporates the Complainant’s trademark (and a third-party’s trademark) and the website operated under the disputed domain name displays Complainant’s trademarks, logo, and images that respondent intended to attract Internet users accessing the website corresponding to the disputed domain name The fact that the Domain Name does not currently resolve to an active website does not prevent a finding of bad faith. Section 3.3 of the WIPO Overview 3.0, instructs that UDRP panelists should examine the totality of the circumstances in each case and that the following factors that have been considered relevant in applying the passive holding doctrine: “(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” Here, Complainant’s VIRGIN Marks are distinctive and have acquired significant reputation. As discussed herein, Respondent has submitted no substantive response justifying its prior development of an infringing website. Moreover, as discussed herein, Respondent has previously targeted Complainant. The current passive holding of the Domain Name does not transform Respondent’s prior bad faith registration and use of the Domain Name. For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using the Domain Name in bad faith 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 Domain Name John C McElwaine
Complainant asserts that in 2014 it launched a not-for-profit organization providing business advice, funding, and mentoring under the trademark VIRGIN STARTUP, the aim of which is to deliver start-up loans for young entrepreneurs. Complainant further asserts that the Virgin StartUp program holds workshops and classes in key skills for entrepreneurs and helps entrepreneurs to apply for business loans. Complainant alleges that since it was founded, Virgin StartUp has distributed over GBP 19 million to help thousands of businesses. Complainant also alleges that Virgin StartUp has an online presence at “www.virginstartup.org” (the “Virgin StartUp Website”), where it provides business advice, access to events and webinars for entrepreneurs, and forms for applying for startup loans. In addition, the Virgin StartUp organization also operates dedicated feeds on social media platforms including Facebook, Instagram, Twitter, and Pinterest.
With respect to the third element of the Policy, Complainant contends that Respondent registered and is using the Domain Name to intentional attempt to attract, likely for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s VIRGIN Marks as to the source sponsorship, affiliation, or endorsement of Respondent’s website. Further, Complainant asserts that it is likely that the Website could be used as part of phishing activity, by collecting, through its purported login pages or by indicating that it facilitates members of the public to pledge money, sensitive financial information for illegitimate commercial gain.
Sole Panelist
Date: April 8, 2021
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