The Complainant is Virgin Enterprises Limited, United Kingdom (or “UK”), represented by A. A. Thornton & Co, United Kingdom.
The Respondent is Ndidi Obi, Canada. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 1, 2021. On April 1, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name 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 May 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 26, 2021. The Center appointed Ellen B Shankman as the sole panelist in this matter on June 8, 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. The Registrar provided information regarding the identity of the registrant for both Domain Names, which revealed that they were identical. In light of the fact that that the registrant and registrar information for both of Domain Names are identical, and given the evidence that both Domain Names led to websites that concern the Complainant’s trademark, the Complainant reasonably understands that the Respondent for both Domain Names is the same entity and the Domain Names are under common control. Accordingly, the Panel finds that the consolidation of the Domain Names to be determined by a single decision under the facts of this case to be fair and reasonable. 4. Factual Background The dates of the Domain Names registrations were confirmed by the Registrar to be: The Complainant provided evidence of multiple trademark registrations for the VIRGIN wordmark and logo, VIRGIN media and other marks in multiple jurisdictions, including, inter alia: - UK Trade Mark Registration No. UK00003163121 for the mark VIRGIN in classes 03, 05, 09, 11, 12, 14, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44 and 45, registered on July 29, 2016; The Complainant provided evidence of screen shots of the website connected with the Domain Names that shows use of the Complainant’s marks and goods and services, which the Complainant contends are counterfeit/and or imposter sites. The Panel also conducted an independent search to determine that the Domain Name The Complaint alleges that the Complainant is a member of a group of companies that are collectively known as “the Virgin Group”. The Virgin Group was originally established by its founder and chairman Sir Richard Branson in the United Kingdom in 1970 when he started a business selling popular music records by mail order under the “Virgin” name. Since then the operations of the Virgin Group have grown significantly. There are now over 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, have between them over 53 million customers worldwide and employ more than 69,000 people in 35 countries. Annual revenue is GBP 16,6 billion. The Complainant is responsible for registering and maintaining registrations for trademarks containing the VIRGIN name and VIRGIN signature logo and licensing these rights to the VIRGIN businesses. The Complainant owns a substantial portfolio of approximately 3,500 trade mark applications and registrations in over 150 countries covering the majority of the 45 Nice Classes of goods and services. The “Virgin” name and “Virgin” signature logo have all been consistently and intensively used across all Virgin operations since the company was founded. The “Virgin” businesses, ventures and foundations are branded with marks incorporating the distinctive “Virgin” name or “Virgin” signature logo, for example, “Virgin Active”, “Virgin Money”, “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.com Website”). The Virgin.com Website contains links to the specific web pages for most of the companies in the VIRGIN Group. 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. This considerable online public following serves to demonstrate 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 and offered the first “quadruple-play” telecommunications service in the UK, offering TV, Internet, mobile phone and landline phone services. The Complainant states that today, the VIRGIN MEDIA business 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 Website” and the “Virgin Media Ireland Website”, together the “Virgin Media Websites”) where it provides information on its services, allows consumers to sign up for its services and existing customers to log in to their online accounts providing information on the services they have purchased. The Complaint argues that the Domain Name Further, the Domain Name Both Domain Names have copied and used the images, text and layout of webpages that were available at the Virgin Media UK Website in February 2021, as well imitating the layout, look and feel of the current webpages at the Virgin Media UK Website. The The Domain Names purport to offer information on and sign up options by the services and products offered by the Complainant, including buttons on the websites that offer access to customers to log into accounts. The Domain Names have also been configured to send and receive emails and set up email addresses, as well as allow access to email accounts online using the Domain Names. The confusion caused by the use of the Domain Names could be hugely disruptive to the Complainant’s business and a source of frustration to Internet users who are deceived into thinking the Domain Names are connected with the Complainant. In the Complainant’s experience, it is very likely that the Domain Names will be used for phishing purposes. The use of the Domain Names as part of a webmail service indicates that the Respondent has the capability to contact members of the public using an email address based on the Domain Names, which will confuse consumers into thinking they are being contacted by the Complainant or the Virgin Media business, and deceive them into disclosing sensitive information. To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademark VIRGIN and VIRGIN MEDIA and logos, in respect of a wide variety of goods and services. The Domain Names are confusingly similar to the trademarks owned by the Complainant. The addition of the letter “i” in The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The burden for the Complainant under paragraph 4(a) of the Policy is to prove: (i) That the Domain Names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the Domain Names. In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. Since the Respondent did not respond to this Complaint, the facts regarding the use and reputation of the Complainant’s mark are taken from the Complaint and are generally accepted as true in the circumstances of this case. A. Identical or Confusingly Similar The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for VIRGIN and VIRGIN MEDIA. Further, the Panel finds that the Domain Names integrate the Complainant’s marks in their entirety and that the Domain Names are confusingly similar to the Complainant’s trademark. In addition, the Panel finds that the additions identified earlier in both Domain Names does not change the overall impression of the designations as being connected to the trademark of the Complainant. It does not prevent a finding of confusing similarity between the Domain Names and the Complainant’s trademarks. See Pfizer Inc. v. Asia Ventures, Inc.,WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110, stating “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark”. Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Names are identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Names and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks. The Respondent is not known by the Domain Names, does not have permission to use the Complainant’s marks, and is not using the Domain Names for a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Domain Names. The Respondent has also used the Domain Names to imitate the Complainant which is not a legitimate non-commercial purpose. Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Names. The Panel agrees with the Complainant’s argument that the Respondent knew about the Complainant and its goods and services. See Inter IKEA Systems B.V. v. Targetclix / Anh Vo,WIPO Case No. D2011-1087 (“It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the Domain Names…. [Therefore] the Domain Names are not one that one could legitimately adopt other than for the purpose of creating an impression of an association with Complainant.”). Such unauthorized use with prior knowledge is not legitimate. Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Names, under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Names with full knowledge of the Complainant’s trademarks and uses them for deceptive purposes, including attempted phishing and/or misleading and diverting Internet traffic, constituting bad faith. By registering the Domain Names that comprises the Complainant’s trademarks in their entirety, together with the photos of the Complainant’s logos and offering of services on the website, the Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business. In light of the facts set forth within this Complaint, the Panel finds that it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brand at the time the Domain Names were registered. See Telstra Corp. Ltd. v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Further, “it defies common sense to believe that Respondent coincidentally selected the precise domain without any knowledge of Complainant and its trademarks”. See Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415. The Panel agrees with the Complainant’s contention that indeed, Respondent's purpose in registering the Domain Names was probably to capitalize on the reputation of Complainant's trademarks by diverting Internet users seeking information about this distinctive sign to its own website, where similar goods had been published, and that the Respondent’s purpose in registering the Domain Names was to capitalize on the reputation of the Complainant’s trademark by diverting Internet users seeking information about or goods of the Complainant. See Hoffmann-La Roche Inc. v. Doroven,WIPO Case No. D2010-1196. A respondent’s use of a complainant’s mark—for said respondent’s commercial benefit—to attract Internet users otherwise seeking said complainant evinces a finding of bad faith is also consistent with the Policy 4(b)(iv). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) at section 3.1.4 (“Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer, (v) redirecting the domain name to the complainant’s (or a competitor’s) website, and (vi) absence of any conceivable good faith use.”). These criteria apply in the present case, which supports that Panel’s finding that the Respondent registered and is using the Domain Names in bad faith. The Panel’s view that when considering the balance of probabilities, it is more likely than not that the Respondent not only had actual or constructive knowledge of the Complainant’s trademarks and that registration of the Domain Names would be identical or confusingly similar to the Complainant’s trademarks, but that the use was intended to ride on the reputation of the Complainant. The Panel also finds that even though one of the Domain Names currently resolve to an inactive page, this does not preclude a finding of registration and use in bad faith where: “…it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate” (Telstra Corporation Limited v. Nuclear Marshmallows, supra). This is also consistent with section 3.3 of the WIPO Overview 3.0, which states: “From the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank or ‘coming soon’ page) would not prevent a finding of bad faith under the doctrine of passive holding. While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: (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.” The Respondent’s bad faith registration and use of the Domain Names are also evidenced by the fact that the Respondent has intentionally attempted to attract Internet users to the Respondent’s website by creating a likelihood of confusion with VIRGIN Marks as to the source, affiliation, or endorsement of Respondent’s website. See e.g. David Foox v. Kung Fox and Bill Hicks,WIPO Case No. D2008-0472 (“A substantial proportion of Internet users visiting the site will be doing so in the hope and expectation of reaching a site of (or authorized by) the trade mark owner. When they reach the site they may realize that they have been duped, but in any event the registrant’s objective of bringing them there will already have been achieved.”). The Panel finds that this is a classic example of the unfortunate fraudulent and opportunistic registration to create confusion that the UDRP is intended to address, and finds that the Respondent is using the Domain Names opportunistically to benefit financially from the Complainant’s trademark, in bad faith use and registration. Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Names with apparent full knowledge of the Complainant, the evidence of photos previously posted on the websites, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Names 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 both Domain Names Ellen B Shankman
- European Union Trade Mark (“EUTM”) Registration No. 015255235 for the mark VIRGIN in classes 03, 05, 09, 11, 12, 14, 16, 31, 32, 35, 36, 38, 39, 41, 42, 43, 44 and 45, registered on March 21, 2016;
- Australia, Bahrain, Egypt, EU, Morocco, Oman, Russian Federation, Ukraine and United States of America Designations of International Trade Mark Registration No. 1141309 for the mark VIRGIN in classes 09, 35, 36, 38 and 41, registered on May 21, 2021;
- UK Trade Mark Registration No. UK00003163127 for the VIRGIN logo mark (VIRGIN Signature Logo) in classes 03, 05 ,09, 11, 12, 14, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44 and 45, registered on July 29, 2016;
- UK Trade Mark Registration No. UK00002429892 for the mark VIRGIN MEDIA in classes 09, 35, 38 and 41, registered on May 18, 2007;
- EU Trade Mark Registration No. 13867478 for the mark VIRGIN MEDIA in classes 09, 35, 36, 38 , 41 and 42, registered on December 2, 2016.
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) That the Domain Names have been registered and used in bad faith.
Sole Panelist
Date: June 16, 2021
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