WIPO Domain Name Decision D2021-2955 for virginwideband2.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Virgin Enterprises Limited v. WhoisSecure / Ebuka Uche Case No. D2021-2955 1. The Parties

The Complainant is Virgin Enterprises Limited, United Kingdom, represented by A.A. Thornton & Co., United Kingdom.

The Respondent is WhoisSecure, United States of America (“United States”) / Ebuka Uche, United States.

2. The Domain Name and Registrar

The disputed domain name is registered with OwnRegistrar, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 8, 2021. On September 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 9, 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 September 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 amendment to the Complaint on September 14, 2021.

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 September 21, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 11, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 12, 2021.

The Center appointed Tobias Zuberbühler as the sole panelist in this matter on October 18, 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 collectively known as “the Virgin Group”, originally established in 1970. There are currently 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, with over 53 million customers worldwide and over 69,000 employees in 35 countries.

The Complainant owns trademark registrations in various jurisdictions, including the United Kingdom trademark VIRGIN (Reg. No. UK00003163121, registered on July 29, 2016), the European Union trademark VIRGIN (Reg. No. 015255235, registered on March 21, 2016) and the United Kingdom trademark VIRGIN MOBILE (Reg. No. UK00002365570, registered on February 4, 2005).

The Complainant further holds the domain name under which the official website of the Complainant is available. The Complainant holds several other domain names incorporating the VIRGIN and VIRGIN MOBILE trademarks, including the domain name . The Complainant advertises and sells its services through its domain name.

The disputed domain name was registered on June 21, 2021 and resolved to a website which copied a substantial amount of content from the Complainant’s website. An email server was configured under the disputed domain name. In the meantime, the website has been deactivated.

5. Parties’ Contentions A. Complainant

The Complainant alleges that it has satisfied all elements of the Policy, paragraph 4.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

On the basis of the facts and evidence introduced by the Complainant, and with regard to paragraphs 4(a)(b)and (c) of the Policy, the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has submitted sufficient evidence to demonstrate its registered rights in the VIRGIN and VIRGIN MOBILE trademarks.

The VIRGIN trademark is wholly reproduced in the disputed domain name.

A domain name is “identical or confusingly similar” to a trademark for the purposes of the Policy when the domain name includes the trademark, or a confusingly similar approximation, regardless of other terms in the domain name (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662). As stated in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8, “[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”. Hence, the Panel holds that the addition of the term “wideband” (a term commonly perceived as describing an aspect of a telecommunications service) and the number 2 to the Complainant’s VIRGIN trademark does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.

The Complainant has thus fulfilled the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

There are no indications before the Panel of any rights or legitimate interests of the Respondent in respect of the disputed domain name. The Complainant contends that the Respondent is neither affiliated with the Complainant nor making any bona fide use of the disputed domain name.

The Respondent used the disputed domain name to redirect customers to the Complainant’s website without being affiliated with the Complainant in any way. The Complainant has credibly asserted that the only conceivable reason for this conduct of the Respondent (combined with the fact that the Respondent has configured an email server under the disputed domain name) is that the Respondent must be assumed to use the email address configured from the disputed domain name to conduct a phishing and fraud scheme. No other reason for the Respondent’s conduct is plausible and the Respondent has failed to advance any good faith reasoning on its behalf. This cannot be considered as a bona fide offering of goods or services or a noncommercial use.

Furthermore, the composition of the disputed domain name, wholly incorporating the Complainant’s VIRGIN trademark, the term “wideband” (which appears related to the Complainant’s activities) and the number 2 cannot constitute fair use in these circumstances as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.

The Panel finds that the Complainant, having made out a prima facie case which remains unrebutted by the Respondent, has fulfilled the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under the circumstances of this case, including the composition of the disputed domain name and reputation of the Complainant’s trademarks, it can be inferred that the Respondent was aware of the Complainant’s trademarks when registering the disputed domain name.

The Panel finds that the reproduction of the Complainant’s VIRGIN trademark along with the term “wideband” and the number 2 creates a likelihood of confusion between the Complainant’s trademark and the disputed domain name, considering that the added term “wideband” appears to be related to the Complainant’s activities.

The evidence and allegations submitted by the Complainant support a finding that the Respondent was engaged in an attempt to pass itself off as the Complainant by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of their website and to use an email address related to the disputed domain name for its own commercial benefit. The Respondent therefore used the disputed domain name in bad faith (see Claudie Pierlot v. Yinglong Ma,WIPO Case No. D2018-2466). The fact that the website at the disputed domain name has been deactivated in the meantime does not prevent a finding of bad faith.

Accordingly, the Complainant has also fulfilled 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 be transferred to the Complainant.

Tobias Zuberbühler
Sole Panelist
Date: October 27, 2021

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