The Complainant is Virgin Enterprises Limited, United Kingdom, represented by A.A. Thornton & Co, United Kingdom.
The Respondent is Whois Privacy, Private Design, LLC, United States of America / Ardi Grec, Netherlands. 2. The Domain Name and Registrar(s)
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 15, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same July 15, 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 July 20, 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 Amendment to the Complaint on the same day. The Center received an informal communication from the Respondent on the same day. The Center verified that the Complaint, together with the Amendment to 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 July 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 10, 2021. The Respondent did not submit any formal response. Accordingly, the Center notified the Commencement of Panel Appointment Process on August 11, 2021. The Center appointed Anna Carabelli as the sole panelist in this matter on August 20, 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 member of a group of companies that are collectively known as the Virgin Group, which was established in the United Kingdom in 1970 by Sir Richard Branson. Since then, the operations of the Virgin Group have grown significantly and there are now over 60 VIRGIN-branded businesses that span a diverse range of sectors (including financial services, health and wellness, music and entertainment, telecommunications and media, and travel and leisure) that collectively have over 53 million customers worldwide, annual revenue of GBP 16.6 billion, and more than 69,000 employees in 35 countries. The Complainant is responsible for registering and maintaining registrations for trademarks containing the VIRGIN name and VIRGIN signature logo, and for licensing these rights to the Virgin Group businesses. The Complainant owns a portfolio of approximately 3,500 trademark applications and registrations in over 150 countries. In particular, the Complainant owns the following trademark registrations for the mark VIRGIN (as per Annex 4 to the Complaint): - European Union Trademark Registration No. 017999595 in classes 1, 4, 7, 15, 18, 20, 21, 24, 25, 27, 28, 29, 30, and 34, filed on December 13, 2018; 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, and is the registered proprietor of numerous domain names consisting of or incorporating the VIRGIN trademark. The disputed domain name was registered on May 12, 2021. According to the uncontested evidence provided by the Complainant, the disputed domain name resolves to a parked page (Annex 10 to the Complaint) and is being used as part of an email address “[...]@careersvirgin.com” to send emails purporting to be from the Virgin Group and to be recruiting for a role of “Assistant Manager” / “Assistant Client Manger” (Annex 9 to the Complaint). 5. Parties’ Contentions A. Complainant The Complainant asserts and contends that: - The disputed domain name is confusingly similar to the registered trademark VIRGIN in which the Complainant has rights, as it incorporates the Complainant’s mark VIRGIN in its entirety with the addition of the word “careers” which will be perceived by Internet users as a descriptive term suggesting that the disputed domain name resolves to content relating to jobs offered by the Complainant and the Virgin Group business. - The Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the disputed domain name does not resolve to a website, but rather has been used in conducting job offer scams and phishing by someone using the email address “[...]@careersvirgin.com”, purporting to be from the Virgin Group and offer a job as Assistant Manager / Assistant Client Manager (ii) the use of the disputed domain name is not in any way connected to or authorized by the Complainant, and (iii) a nearly identical domain name, - The disputed domain name was registered and is being used in bad faith because: (i) the Respondent was clearly aware of the Complainant when it registered the disputed domain name given the evidence demonstrating the level of reputation and goodwill in the Complainant’s trademark VIRGIN (Annexes 4 to 8 to the Complaint), (ii) the disputed domain name is being used to intentionally attract, for commercial gain, internet users by creating a likelihood of confusion with the Complainant’s registered trademark VIRGIN as to the source, sponsorship, affiliation or endorsement, and (iii) the job offer scam and phishing attempts conducted using the Complainant’s trademark VIRGIN as part of the disputed domain name will cause disruption to the Complainant and harm the significant reputation that exists in the Complainant’s registered trademark. B. Respondent The Respondent did not formally reply to the Complainant’s contentions. In fact, on July 20, 2021, the Respondent sent an email simply asking the Center to “provide more detailed information on the claim that has arisen”. As the email from the Respondent was received before the Notification of Complaint was sent to all Parties, the Center informed the Respondent of the proceeding and invited the Respondent to consult WIPO’s Response filing guidelines. On July 21, 2021, the Center formally notified the Respondent of the Complaint. The Respondent submitted no further communications or formal Response. 6. Discussion and Findings Paragraph 15(a) of the Rules instructs the Panel to decide the Complaint based on the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Under paragraph 4(a) of the Policy, the Complainant must prove each of the following: (i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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. Paragraph 4(b) of the Policy sets out four illustrative circumstances, which for the purposes of paragraph 4(a)(iii) of the Policy, shall be evidence of registration and use of a domain name in bad faith. Paragraph 4(c) of the Policy sets out three illustrative circumstances any one of which, if proved by the Respondent, shall be evidence of the Respondent’s rights to or legitimate interests in the disputed domain name for the purpose of paragraph 4(a)(ii) of the Policy above. A. Identical or Confusingly Similar The Panel finds that the Complainant has established rights over the trademark VIRGIN based on the trademark registrations cited under section 4 above. The disputed domain name consists of the whole of the Complainant’s registered mark VIRGIN preceded by the word “careers”. As recorded in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where the relevant trademark is recognizable within the disputed domain name, the addition of other terms does not prevent a finding of confusing similarity under the first element. The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark, as it entirely incorporates the Complainant’s mark VIRGIN with the addition the word “careers” which does not prevent the confusingly similarity when comparing the disputed domain names and the Complainant’s trademark. On the contrary, the word “careers” may be perceived by Internet users as suggesting that the disputed domain name resolves to content relating to jobs offered by the Complainant and the Virgin Group business, which is discussed under the second and third elements. The addition of the Top-Level Domain “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. (See section 1.11 of the WIPO Overview 3.0). Therefore, the Panel finds that the Complainant has established paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant states that it has not authorized, licensed or permitted the Respondent to use the Complainant’s trademarks. The Complainant asserts that the Respondent cannot demonstrate any legitimate noncommercial or fair use of the disputed domain name. In this connection, the Complainant has provided evidence that the disputed domain name does not resolve to a website, but rather has been used in an email address for email communications purporting to be from the Virgin Group, offering a job as Assistant Manager / Assistant Client Manager with the Complainant’s business. Given the confusing similarity of the disputed domain name to the Complainant’s trademark and the absence of any relationship between the Respondent and the Complainant, such a use of the disputed domain name is neither a bona fide use nor a legitimate noncommercial or fair use of the disputed domain name. Notably, the addition of the term “careers” to the Complainant’s trademark is likely to be perceived by Internet users as suggesting that the disputed domain name resolves to content relating to jobs offered by the Complainant and the Virgin Group business. As such, the nature of the disputed domain name is such to carry a risk of implied affiliation, which in the circumstances cannot confer rights or legitimate interests on the Respondent. The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. As stressed by many UDRP decisions, in such a case the burden of production shifts to the Respondent to rebut the evidence (see WIPO Overview 3.0, section 2.1). By not submitting a formal Response, the Respondent has failed to invoke any circumstance, which could have demonstrated any rights or legitimate interests in the disputed domain names under paragraph 4(c) of the Policy. Therefore, the Panel finds that the Complainant has established paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith According to paragraph 4(a)(iii) of the Policy, the Complainant must establish that the disputed domain name has been registered and is being used in bad faith. The disputed domain name incorporates the VIRGIN mark and was registered long after this mark became well known through its consistent and intensive use across all VIRGIN operations and businesses over the years (Annexes 5 to 7 to the Complaint). Given the distinctiveness and well-established reputation of the Complainant’s trademark (also recognized in Virgin Enterprises Limited v. Whois Privacy, Private by Design, LLC / Paul Smith, WIPO Case No. D2021-1270) it is not conceivable that the Respondent did not have in mind it when registering the disputed domain name. Such fact suggests that the disputed domain name was registered in bad faith (see WIPO Overview 3.0, section 3.2.2) with a deliberate intent to create an impression of an association with the Complainant. The uncontested evidence submitted by the Complainant indicates that the Respondent has used the disputed domain name for the purposes of posing as a representative of the human resources department of the Virgin Group as part of a job scam, to intentionally attract, for commercial gain, internet users by creating a likelihood of confusion with the Complainant’s registered trademark VIRGIN as to the source, sponsorship, affiliation or endorsement. In view of the above, the Panel finds that the Complainant has demonstrated that the Respondent registered and used the disputed domain names in bad faith according to 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, Anna Carabelli
- European Union Trademark Registration No. 0014711143 in classes 16, 25, 35, and 42, filed on January 21, 2000;
- European Union Trademark Registration No. 003421633 in classes 28, 33, 41, 43, 44, and 45, filed on October 21, 2003; and
- European Union Trademark Registration No. 004262093 in classes 35, 36, 37, and 44, filed on January 28, 2005.
Sole Panelist
Date: September 3, 2021
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