The Complainant is Virgin Enterprises Limited, United Kingdom (“UK”), represented by A.A.Thornton & Co, UK.
The Respondent is eby bakas, UK. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 5, 2021. On May 6, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 7, 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 May 10, 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 May 11, 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 May 12, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 2, 2021. The Center appointed Jane Lambert as the sole panelist in this matter on June 9, 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 private company incorporated with limited liability in England and Wales. It is responsible for registering and maintaining registrations for trade marks containing the VIRGIN name and VIRGIN signature logo and licensing those rights to members of a group of companies in a variety of industries known collectively as “the VIRGIN businesses”. It owns a 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. That portfolio includes the words VIRGIN HOTELS which were registered with the Trade Marks Registry of the UK Intellectual Property Office as a UK trade mark for services in classes 41 and 43 on November 15, 2019 with effect from August 22, 2019 under trade mark number UK3423222. Further, the VIRGIN businesses span a diverse range of sectors, including financial services, health and wellness, music and entertainment, people and planet, telecommunications and media and travel and leisure. Between them they have over 53 million customers worldwide. The Virgin Businesses employ more than 69,000 people in 35 countries and have an annual revenue of GBP 16.6 billion. One of the VIRGIN Businesses is VIRGIN HOTELS. It opened its first hotel in Chicago in 2014. That hotel has 250 guest rooms, 40 one bedroom suites and 2 luxury penthouses. Other VIRGIN HOTELS have opened in Dallas, Nashville and Las Vegas. New ones will open shortly in New York, New Orleans, Miami and the UK. VIRGIN HOTELS takes an innovative approach to its hotels. It sets out to ensure value for money while providing a more vibrant environment for hotel stays, through custom designed rooms, an in-hotel bar “the Commons Club and an app called “Lucy” that allows live chat with hotel concierges. VIRGIN HOTELS has won numerous awards, reviews and accolades for its services (copies of which are annexed to the Complaint). Recent awards include: - 2nd place in a listing of the Top Hotels in Chicago by Conde Nast Reader’s Choice Awards in October 2019; - 4th most Eco-friendly Hotel by “10best” in August 2019; - a listing in the Top 10 city Hotels in Chicago by Travel and Leisure magazine in July 2019; and - a listing in Forbes’ magazine “10 Best Hotels in Downtown Chicago” in June 2019. Several articles and reviews of the VIRGIN HOTEL in Chicago have appeared in the press (copies of which are annexed to the Complaint). VIRGIN HOTELS business also operates dedicated social media feeds, copies of which are also annexed to the Complaint. 5. Parties’ Contentions A. Complainant The Complainant asks for the disputed domain name to be transferred to it on the grounds that: (i) The disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and As for the first ground, the Complainant contends that the disputed domain name consists of the UK trade mark number UK3423222 in its entirety together with the letters U, I, T, E and S. Those letters are likely to be read as “SUITES”. The disputed domain name is therefore likely to be perceived to be the online location for information about or reservation of suites that are offered by VIRGIN HOTELS. The Complainant submits that previous panels have held that the addition of descriptive or generic terms to a Complainant’s trade mark does not avoid the disputed domain name being confusingly similar to that trade mark. The Complainant cites Valero Energy Corporation and Valero Marketing and Supply Company v. Valero Energy valeropetroleum.org,WIPO Case No. D2017-0075, and The American Automobile Association, Inc. v. Cameron Jackson / PrivacyDotLink Customer2440314, WIPO Case No. D2016-1671 in support of its contention. With regard to the second ground, the Complainant has used the disputed domain name as a uniform resource locator for a bogus VIRGIN HOTELS website which reproduces text and images from the Complainant’s “www.virginhotels.com” website. Screen dumps from the “www.virginhotels.com” and “www.virginhotelsuites.com” websites are annexed to the Complaint. The Complainant submits that copyright subsists in such text and images and that their reproduction infringes such copyright. The Complainant relies on the decisions in Virgin Enterprises Ltd v Abdab Consult,WIPO Case No. D2018-1979 and Virgin Enterprises Ltd. v OnlineNIC Ltd. and Hajia Allasco Domains Services, WIPO Case No. D2018-2173 as authority for its contention that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant makes clear that it has not authorized the Respondent to use the disputed domain name. It has found no evidence that the Respondent has ever been commonly known by the disputed domain name or that the Respondent has ever used or had plans to use the disputed domain name in connection with a bona fide offering of goods or services. In the circumstances, it is hard to think of a legitimate use to which the disputed domain name could be put. In respect of the third ground, the Complainant submits that unlicensed reproduction of its copyright works and the use of its trade mark evidence bad faith in the registration and use of the disputed domain name. It argues that those acts are done intentionally to deceive consumers into thinking that the disputed domain name is operated by or connected to the Complainant or to VIRGIN HOTELS. Those acts are likely to disrupt VIRGIN HOTELS’ business, inconvenience its customers and possibly expose them to phishing or worse. This case is on all fours with Virgin Enterprises Ltd v Abdab Consult,WIPO Case No. D2018-1979 and Virgin Enterprises Ltd. v OnlineNIC Ltd. and Hajia Allasco Domains Services,WIPO Case No. D2018-2173 where it was held that the disputed domain names had been registered and were being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings The agreement to register the disputed domain name incorporates the following provision of the Policy: “You are required to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant) asserts to the applicable Provider, in compliance with the Rules of Procedure, that (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and In the administrative proceeding, the complainant must prove that each of these three elements are present.” A. Identical or Confusingly Similar The Panel finds that the first element is present. The Complainant is the registered proprietor of the aforementioned UK trade mark VIRGIN HOTELS. It is therefore a trade mark in which the Complainant has rights. The disputed domain name combines the words “VIRGIN”, “HOTEL” and “SUITES”. Those words are not the same as the words of the trade mark but they are confusingly similar, and the Complainant’s trade mark is recognizable. Accordingly the disputed domain name is confusingly similar to a trade mark in which the Complainant has rights. B. Rights or Legitimate Interests The Panel finds that the second element is present. The second paragraph of section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides the following guidance: “While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” Paragraph 4 (c) of the Policy lists a number of circumstances which if found by the Panel to be proved shall demonstrate that the Complainant has rights or legitimate interests to the disputed domain name for purposes of paragraph 4(a)(ii) of the Policy. The Complainant has found no evidence that any of those circumstances apply. There is no other reason to suppose that the Respondent has rights or legitimate interests in the disputed domain name. The evidential burden therefore passed to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. The Respondent has had ample opportunity to adduce such evidence but has not taken advantage of it. The Complainant has therefore satisfied the second element. C. Registered and Used in Bad Faith The Panel finds that the third element is present. Paragraph 2 (b) of the Policy lists a number of circumstances which if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith. The fourth of those circumstances is as follows: “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 Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, and that it is likely to lead Internet users to believe it to be the source of information about suites offered by VIRGIN HOTELS. By using the disputed domain name as the URL for a bogus website the Respondent has attempted to attract Internet users to that site. The bogus website contains a number of links the clicking of which would disclose customer data from which commercial gain could be derived. This is sufficient to determine the Complaint but the Panel adds that the use of the disputed domain name as the URL for a bogus website constitutes further evidence of registration and use in bad faith. The Panel also agrees with the authorities cited by the Complainant. 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 Jane Lambert
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
Sole Panelist
Date: June 23, 2021
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