The Complainant is Virgin Enterprises Limited, United Kingdom, represented by A.A.Thornton & Co, United Kingdom.
The 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 April 15, 2021. On April 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On April 15, 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 April 19, 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 April 23, 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 April 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 18, 2021. The Center appointed Nicholas Weston as the sole panelist in this matter on May 27, 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 incorporated in England and Wales that operates a multi-national branded venture capital business with group revenue of GBP 16.6 billion in 2019. The Complainant adopted the name “Virgin” in 1970 and holds more than 3,500 registrations for the trademark VIRGIN and variations of it in more than 150 countries, including, for example, United Kingdom registration No. UK00900217182 in international class 9, registered on October 4, 1998.1 The Complainant owns numerous domain names that comprise or contain the trademark VIRGIN, including the domain names The Respondent registered the Disputed Domain Name The Disputed Domain Name is also being used as part of the email address “…@virgincarbonwarroom.com” to send fraudulent emails to third party companies purporting to offer potential business opportunities. 5. Parties’ Contentions A. Complainant The Complainant cites several trademark registrations including 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, and numerous other registrations around the world for the mark VIRGIN, as prima facie evidence of ownership. The Complainant submits that the mark VIRGIN is well-known and that its rights in that mark predate the Respondent’s registration of the Disputed Domain Name The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it resolves to a website that is almost identical to a former page operated by the Complainant, and contends that such a respondent has no rights or legitimate interests in the Disputed Domain Name. Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and Rules having regard to the fame and prior use of the Complainant’s trademarks. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following: (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 produced sufficient evidence to demonstrate that it has registered trademark rights in the mark VIRGIN in numerous countries including the United Kingdom. The requirements of the first element for purposes of the Policy may be satisfied by a trademark registered in any country (see Thaigem Global Marketing Limited v. Sanchai Aree,WIPO Case No. D2002-0358). Turning to whether the Disputed Domain Name is identical or confusingly similar to the VIRGIN trademark, the Panel observes that the Disputed Domain Name comprises: (a) an exact reproduction of the Complainant’s trademark VIRGIN; (b) followed by the words “carbon war room”, truncated; (c) followed by the gTLD “com”. It is well-established that the gTLD used as technical part of a domain name may be disregarded (see Autodesk v. MumbaiDomains,WIPO Case No. D2012-0286). The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “virgincarbonwarroom”. It is also well established that where a domain name incorporates a complainant’s well-known and distinctive trademark in its entirety, it may be confusingly similar to that mark despite the addition of a word or, in this case, the words “carbon war room”: (see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903; Wal-Mart Stores, Inc. v. Kuchora, Kal,WIPO Case No. D2006-0033). This Panel accepts the Complainant’s contention that the words “carbon war room” after the Complainant’s registered trademark are additional elements that do not serve to adequately distinguish the Disputed Domain Name. The relevant trademark is recognizable within the Disputed Domain Name, so the descriptive secondary meaning does not, in this Panel’s view, prevent a finding of confusing similarity under the first element. Second, the additional words “carbon war room” in the Disputed Domain Name comprise a registered trademark, two actually, owned by a third party. 2 Other previous UDRP panels have found that the presence, in a particular disputed domain name, of a trademark owned by a third party not joined in the proceeding, does not by itself prevent a finding of confusing similarity (see, for example: Cummins Inc. v. Dennis Goebel,WIPO Case No. D2015-1064; Aldi GmbH & Co. KG, Aldi Stores Limited v. Ronan Barrett,WIPO Case No. D2016-2219). In this case, both trademarks are recognizable both visually and aurally in the Disputed Domain Name and the Respondent has failed to submit any evidence of secondary meaning. The Complainant has also supplied evidence that an affiliated entity, Virgin Unite, was associated with a project that used the trademark CARBON WAR ROOM between 2010 and 2016 but is no longer associated, and does not operate a website affiliated with that project. The Complainant has also supplied evidence that the Disputed Domain Name resolves to a website that substantially reproduces the Virgin Unite organisation’s website. This Panel accepts that uncontested evidence. The Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy lists the ways that the Respondent may demonstrate rights or legitimate interests in the disputed domain name. The Policy also places the burden on the Complainant to establish the absence of respondent’s rights or legitimate interest in the Disputed Domain Name. Because of the inherent difficulties in proving a negative, the consensus view is that the Complainant need only put forward a prima facie case that the Respondent lacks rights or legitimate interests. The burden of production then shifts to the respondent to rebut that prima facie case (see World Wrestling Federation Entertainment, Inc v. Ringside Collectibles,WIPO Case No. D2000-1306; WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1). The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because there is no evidence of the Respondents’ use, or demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods and services, noting that the evidence is that it resolves to a website containing a facsimile of the Complainant’s page as operated between 2010 and 2016, according to the Complainant’s evidence, “used as part of the email address […]@virgincarbonwarroom.com (the “Unauthorised Email Address”) to send emails posing as Sir Richard Branson to third party companies purporting to offer potential business opportunities”. The Complainant’s evidence states: “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.” On any objective view, the Respondent is not a reseller with a legitimate interest in a domain name incorporating a manufacturer’s mark, such that it could meet the tests set out in Oki Data Americas, Inc. v. ASD, Inc.WIPO Case No. D2001-0903, supra. The copying of the Complainant’s VIRGIN UNITE webpage artwork and ‘look and feel’ is inconsistent with the Respondent having any rights or legitimate interests in the Disputed Domain Name. Nor, alternatively, does paragraph 4(c)(ii) of the Policy apply. This Panel accepts that the Complainant has made out a prima facie case that the Respondent lack rights or legitimate interests in the Disputed Domain Name and, in the absence of a reply by the Respondent, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The third element of the Policy that the complainant must also demonstrate is that the disputed domain name has been registered and used in bad faith. Paragraph 4(b) of the Policy sets out certain circumstances to be construed as evidence of both of these conjunctive requirements. The Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith. On the issue of registration, the trademark VIRGIN is so well known that it would be inconceivable that the Respondent might have registered the mark unaware of it. See Virgin Enterprises Ltd. v. Virginfree, WIPO Case No. D2000-1715(“the Complainant’s well-known trademark”); Virgin Enterprises Limited v. Lynwood, WIPO Case No. D2015-1440 (“the Complainant’s VIRGIN trademark is well-known worldwide”). This Panel infers that the Respondent knew of the Complainant’s trademark and, by combining it with a third party trademark CARBON WAR ROOM connoting a project the Complainant’s VIRGIN UNITE organisation was involved with from 2010 to 2016, deliberately intended to create an association with the Complainant and its business when registering the Disputed Domain Name. The diversion of Internet users is also a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous UDRP decisions (see Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163; L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc,WIPO Case No. D2005-0623; and Hoffmann-La Roche Inc. v. Samuel Teodorek,WIPO Case No. D2007-1814). On the issue of use, the evidence that the Disputed Domain Name resolves to an unauthorized facsimile of the Complainant’s VIRGIN UNITE organisation’s webpage, that was associated with the VIRGIN CARBON WAR ROOM project that operated from 2010 to 2016 is evidence of bad faith use in accordance with paragraph 4(b)(iv) of the Policy (eg: Instagram, LLC v. Instagram ??????,WIPO Case No. D2017-1736 (“soliciting personal information under false pretenses gives rise to an inference that bad faith use of that information is intended.”); Virgin Enterprises Limited v. Domain Administrator, see PrivacyGuardian.org / Aladin Tg,WIPO Case No. D2020-1602 (“the deliberate use of the Complainant’s VIRGIN Trademark as part of the Disputed Domain Names, was intended to enable the Respondent to operate fraudulent phishing activities, which the Panel infers were conducted for commercial gain. The fact that the commercial gain in question is associated with some form of dishonest behaviour does not matter – indeed it emphasizes the bad faith involved”). The evidence is that the Disputed Domain Name resolved to a website with the same “look and feel” as the VIRGIN UNITE organisation’s webpage, in an attempt to “phish” or harvest personal information for commercial gain. In Halifax plc v. Sontaja Sunducl,WIPO Case No. D2004-0237 the Panel stated: “evidence of duplication in the Complainant’s trading get-up, branding and imagery is direct evidence of the Disputed Domain Name in being used in bad faith. In particular, the availability of the online registration pages, and the apparent potential for “phishing” and obtaining information by deception, is not just evidence of bad faith but possibly suggestive of criminal activity. It is accepted that on this basis there is no other possibility than the site being registered in bad faith.” The Complainant also supplied evidence of an email communication sent from the Unauthorised Email Address that appears to be phishing for personal and sensitive information. This Panel finds that the Disputed Domain Name was being used to intentionally attempt to attract, for commercial gain, Internet users to the website or other online location by creating a likelihood of confusion with the trademarks as to the source, sponsorship, affiliation or endorsement of the website to which the Disputed Domain Name resolves, within the meaning of paragraph 4(b)(iv) of the Policy. Accordingly, the Panel finds that the Complainant has satisfied the requirements of 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 Nicholas Weston 1 This Panel conducted a trademark search at the UK Trade Marks Office for the Complainant as owner which retuned numerous older registered trade mark examples than those supplied in the Complainant’s evidence, including registered United Kingdom Trademark No. UK00900217182 for the trademark VIRGIN, registered to owner Virgin Enterprises Limited from October 4 , 1998 in class 9. 2 This Panel conducted a trade mark search at the USPTO for the words “carbon war room” which retuned two examples, registered United States Trademark No. 77907722 for the trademark CARBON WAR ROOM, registered to owner Carbon War Room Corporation from February 8, 2011 in class 41, and United States Trademark No. 85125751 for the trademark CARBON WAR ROOM, registered to owner Carbon War Room Corporation from July 12, 2011 in classes 35 and 42.
Sole Panelist
Date: May 31, 2021
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