The Complainant is Virgin Enterprises Limited, United Kingdom (“UK”), represented by A.A.Thornton & Co, UK.
The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama. 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 22, 2021. On April 22, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On April 23, 2021, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the 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 28, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 18, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 21, 2021. The Center appointed W. Scott Blackmer as the sole panelist in this matter on May 31, 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 Virgin Enterprises Limited (“Virgin Enterprises”) is a private limited company established under English law and based in London, UK. Virgin Enterprises operates, through subsidiaries, various businesses under the Virgin trade name, including an airline, music record “megastores”, holiday resorts, and Internet services. Virgin Enterprises has operated a principal website at “www.virgin.com” since 1999 which attracts millions of visitors annually, from more than 230 countries. Virgin Enterprises is a member of the Virgin Group of companies, which originated in 1970 when Richard Branson began selling music records under the VIRGIN mark. The Virgin Group has expanded into a wide variety of businesses that use the VIRGIN mark under license. The Complainant Virgin Enterprises is the trademark owner for the Virgin Group. According to the Complaint, the Virgin Group currently comprises over 60 businesses worldwide, operating in 35 countries in Europe and Australasia, as well as in the United States, with more than 69,000 employees and annual group revenues exceeding GPB 16.6 billion. The record establishes that the VIRGIN brand is heavily advertised in Europe and North America and is associated with sponsored events and media stories. It has also been recognized in multiple publications as a leading brand in the UK. In February 2007, the Virgin Group launched its Virgin Media business in the UK, offering television, Internet, mobile phone, and landline telephone services. The Virgin Media business currently 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 leading commercial broadcaster. The Virgin Media business operates websites at “www.virginmedia.com” and “www.virginmedia.ie”. These websites are used to provide information about the Complainant’s Virgin Media services, allow consumers to sign up for its services, and permit existing customers to log in to their online accounts and obtain information on the services they have purchased. The Virgin Media UK and Ireland businesses also operate dedicated social media feeds, including on Instagram and Facebook. The record includes numerous press releases and media stories relating to the activities of the Virgin Media UK and Ireland businesses between 2017 and 2020. The record shows that the Complainant holds numerous trademarks consisting of or incorporating the name “Virgin”, often with an additional element such as VIRGIN MEDIA, VIRGIN ATLANTIC, VIRGIN MONEY, VIRGIN TRAINS, VIRGIN HOLIDAYS, VIRGIN RADIO, and VIRGIN GAMES. Trademark registrations relevant for the current proceeding include the following word marks: MARK JURISDICTION REGISTRATION NUMBER REGISTRATION DATE VIRGIN European Union 000217182 September 4, 1998 VIRGIN International Trademark (multiple country designations) 1141309 May 21, 2012 VIRGIN United States 4176062 July 17, 2012 VIRGIN MEDIA European Union 013867478 October 14, 2015 According to the Registrar, the Domain Names were both registered on November 23, 2020 in the name of a domain privacy service in Panama. The Registrar has provided no further information, and the domain privacy service has not replied to communications from the Complainant or from the Center. The Complaint attaches screenshots of the websites to which the Domain Names formerly resolved. These referred to supposed media stories in the BBC and other news outlets, displaying their trademarked logos, and published an identical “Special Report” about British celebrities and other investors, including the chairman of the Virgin Group, Mr. Branson, suggesting their involvement in successful Bitcoin trading technologies. The Respondent’s websites encouraged visitors to open an account and deposit a minimum of GBP 250 in a “Bitcoin Evolution” scheme. The Complainant reports that it has been targeted by several cryptocurrency scams and that neither the Complainant nor Mr. Branson have in fact endorsed any such schemes. At the time of this Decision, both Domain Names resolve to a string of linked third-party websites flagged by browsers and antivirus programs as insecure and suspected of harboring malware. 5. Parties’ Contentions A. Complainant The Complainant asserts that both Domain Names are confusingly similar to its registered VIRGIN and VIRGIN MEDIA trademarks, adding generic words that do not avoid confusion. The Complainant notes that the “betfair” string in one of the Domain Names corresponds to the registered trademark of a third party, which operates an online gambling website at “www.betfair.com”. The Complainant observes that there is no indication that the Respondent is or was ever commonly known by a name corresponding to the Domain Names. The Complainant argues that the use of the Domain Names as described in the factual background does not represent a legitimate interest or right and is done in bad faith to create a likelihood of confusion with the Complainant for commercial gain, by falsely associating the Complainant with a supposed Bitcoin scheme in which the Respondent encourages website visitors to invest. The Complainant requests the transfer of the Domain Name The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the 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. Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. A. Identical or Confusingly Similar The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Complainant holds registered VIRGIN and VIRGIN MEDIA trademarks. The Domain Names incorporate these marks in their entirety (omitting the space between “virgin” and “media”, which cannot be included in the DNS address system) and add dictionary words (“web safe” and “bet fair”) that do not prevent a finding of confusing similarity. See id. section 1.8. As usual, the generic Top-Level Domain (“gTLD”) “.com” is disregarded as a standard registration requirement. See id. section 1.11.2. The Panel concludes that the first Policy element is established on these facts. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the respondent may establish rights or legitimate interests in the domain name, by demonstrating any of the following: (i) before any notice to it of the dispute, the 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) that the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or (iii) the 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. Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated trademark rights, the lack of permission to use its mark, and the Respondent’s use of the Domain Names only for websites falsely implying the association of the Complainant and its group chairman with a Bitcoin trading scheme. This suggests trademark abuse, not evidence of a bona fide commercial activity, so the burden shifts to the Respondent to produce evidence of rights or legitimate interests. The Respondent has not done so. The Panel concludes, therefore, that the Complainant prevails on the second element of the Policy. C. Registered and Used in Bad Faith The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name): “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” The record is consistent with this example of bad faith. The Complainant’s marks are well established, especially in the UK, the market targeted by the Respondent. The Respondent’s former websites plainly demonstrate awareness of the Complainant, displaying a photo of the Complainant’s chairman and naming him in a fake BBC news caption in an effort to boost the credibility of the Respondent’s Bitcoin trading scheme. The Domain Names clearly were selected to exploit the reputation associated with the Complainant’s marks in an effort to entice Internet users to invest in the Respondent’s purported Bitcoin scheme. Other indicia of bad faith include, in this instance, the Respondent’s concealing its identity in the Domain Names’ registrations and on the websites, the more recent use of the Domain Names to disseminate third-party advertising and malware, and silence in the face of claims of trademark and copyright infringement and Policy violations. The Panel concludes on this record that the Complainant has established bad faith in the registration and use of the Domain Names. 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 W. Scott Blackmer
Sole Panelist
Date: June 10, 2021
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