The Complainants are Virgin Enterprises Limited (the “First Complainant”), United Kingdom, and VLE Limited (the “Second Complainant”), United Kingdom (hereinafter collectively the “Complainants”), represented by A.A. Thornton & Co., United Kingdom.
The Respondent is Eric Mboma, United Arab Emirates.
2. The Domain Name and RegistrarThe disputed domain name
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 8, 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 September 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was October 4, 2021.
On September 23, 2021, the Complainant sent an informal communication.
The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 5, 2021.
The Center appointed Lynda M. Braun as the sole panelist in this matter on October 15, 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 BackgroundThe Complainants are members of a group of companies that are collectively known as the Virgin Group. The Virgin Group was originally established by its founder and chairman Sir Richard Branson (“Branson”) in the United Kingdom in 1970 when he started a business selling popular music records by mail order under the VIRGIN name and registered trademark. Since then, the operations of the Virgin Group have grown significantly. There are now over 60 VIRGIN-branded businesses that span a diverse range of sectors covering financial services, health and wellness, travel and leisure, music and entertainment, among others. These businesses have over 53 million customers worldwide and employ more than 69,000 people in 35 countries.
The First Complainant is responsible for registering and maintaining trademark registrations containing the VIRGIN name and logo and licensing these rights to other VIRGIN businesses. The Second Complainant is part of the Virgin Group that administers, operates, and maintains Branson’s portfolio of luxury retreats, offering luxury accommodations in unique and exclusive settings, and is licensed to use some of the First Complainant’s registered marks in connection with that business. The destinations include a resort on Necker Island, an island in the British Virgin Islands, United Kingdom, that was purchased by Branson in 1978, and since the early 1980s has been operated as a luxury island retreat.
The Necker Island resort is a popular holiday destination with celebrities, royalty, and political figures. Its famous guests have included Barack Obama, Kate Winslet, Prince William, Kate Moss, Mariah Carey, and Steven Spielberg, among others. The resort hosts an exclusive pro-am1 tennis tournament each year entitled the “Necker Cup”. The Necker Cup event was first held in 2012 and is organized and run by the company Premier Live, and is licensed by the Second Complainant to use the common law mark NECKER in connection with the tennis event.
The Second Complainant has used the common law marks NECKER ISLAND and NECKER for over 20 years in connection with the offering of luxury accommodations and holidays, a pro-am tennis championship, and tennis and golf camps. The consistent and continuous use of the marks NECKER ISLAND and NECKER (hereinafter referred to collectively as the “NECKER Mark”) demonstrates that the NECKER Mark has developed substantial goodwill as the NECKER Mark is recognized by many individuals worldwide and is well known in the field of luxury travel and accommodation.
The Disputed Domain Name
The following are the Complainants’ contentions:
- the consolidation of the Complainants against the Respondent is appropriate, fair and equitable as the Complainants are companies under common control, and have common interests;
- the Disputed Domain Name is confusingly similar to the Complainants’ common law trademark;
- the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
- the Disputed Domain Name was registered and is being used in bad faith; and
- the Complainants seek the transfer of the Disputed Domain Name from the Respondent to the Complainants.
B. RespondentThe Respondent did not reply to the Complainants’ contentions.
6. Discussion and Findings 6.1 Procedural Issues: Consolidation of Multiple ComplainantsPursuant to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11, the consolidation of multiple complainants filing a joint complaint against one or more respondents is subject to the discretion of the appointed panel.
In assessing whether a complaint filed by multiple complainants may be brought against one or more respondents, the appointed panel should consider whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.
Keeping this in mind, the Panel notes that the Complainants in the present administrative proceeding are related companies in the Virgin Group. Additionally, their Complaint is based on the same set of facts. Further, the Respondent appears to have engaged in conduct targeting both Complainants. As such, the Complainants have a specific common grievance against the Respondent. The Panel is not aware of any circumstances that would create prejudice to the Respondent by allowing the Complaint filed by the Complainants to proceed.
Therefore, the Panel considers that it is fair and equitable under the circumstances of the case to permit the consolidation, as the Complainants are not only affiliated companies, but also have a specific common grievance against the Respondent.
Consequently, the Panel allows the Complainants to proceed jointly with their Complaint.
6.2. Substantive Issues A. Identical or Confusingly SimilarThe first issue here is whether the Complainants have protectable rights in the NECKER Mark since the Complainants do not own a registered trademark, but rather a common law trademark, for the NECKER Mark.
In the Panel’s view, paragraph 4(a)(i) of the Policy refers merely to a “trademark or service mark” in which the complainant has rights and does not expressly limit the application of the Policy to a registered trademark or service mark. Therefore, the fact that in this case the Complainants do not have a registered trademark or service mark for the NECKER Mark does not preclude a finding that it has established trademark or service mark rights in that name. See Imperial College v. Christophe Dessimoz,WIPO Case No. D2004-0322. The Panel considers that common law trademark and service mark rights exist when a party demonstrates that there is sufficient goodwill and reputation in a name – and therefore acquired distinctiveness – to establish sufficient association of the name with the party itself. Id.
The Panel finds that the Complainants have established common law rights in the NECKER Mark based on its numerous years of use and considerable goodwill in the trademark. Moreover, the evidence submitted by the Complainants in this proceeding includes information about the Complainants’ resort in their brochures, articles in several high-end travel magazines and websites about the resort, promotions on the Virgin Group’s website that displays advertisements for the Necker Cup annual tennis tournament and tennis camp, press coverage of the famous event, the celebrities that frequent the resort and event, and the famous athletes that compete in the tournament.
In light of the above, the Panel accepts that the Complainants have provided adequate grounds for a finding that they hold acquired distinctiveness and significant goodwill to have established common law trademark rights in the NECKER Mark. Further, it is well established that “[u]se of a mark in commerce and marketing, including displaying the mark prominently on a company website, is evidence of common law trademark ownership [and] the UDRP recognizes and protects common law trademarks.” See BlackBerry Limited v. Bryan Fan,WIPO Case No. D2015-0464.
The Disputed Domain Name consists of the NECKER Mark followed by the dictionary terms “cup”, “tennis”, and “pro-am” (which is the abbreviation for professional and amateur), followed by the generic Top-Level Domain (“gTLD”) “.com”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of dictionary words or abbreviation. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795; see also Hoffmann-La Roche, Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923. As stated in section 1.8 of WIPO Overview 3.0, “where 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”. Moreover, it is well established that a disputed domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a hyphen. The presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. See Six Continents Hotels, Inc. v. Helen Siew,WIPO Case No. D2004-0656.
Finally, the addition of a gTLD such as “.com” in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11. Thus, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainants’ NECKER Mark.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainants.
B. Rights or Legitimate InterestsUnder the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
There is no evidence in the record suggesting that the Respondent has rights or legitimate interests in the Disputed Domain Name. The Complainants have not authorized, licensed, or otherwise permitted the Respondent to use the Complainants’ NECKER Mark. The Complainants do not have any business relationship with the Respondent, nor is the Respondent making a legitimate noncommercial or fair use of the Disputed Domain Name. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name or by any name similar to it or has made any demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services.
Further, the Respondent, by configuring emails using the Disputed Domain Name, attempts to pass off as the Complainants and perpetuate a fraudulent phishing scheme to request donations and promote the tennis tournament, which conduct does not confer rights or legitimate interests on the Respondent. See WIPO Overview 3.0, section 2.13.1 (“Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”). Thus, the Panel concludes that nothing on the record before it would support a finding that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name.
Finally, the composition of the Disputed Domain Name, comprising the entirety of the NECKER Mark, carries a risk of implied affiliation and cannot constitute fair use here, as it suggests sponsorship or endorsement by the Complainants. See WIPO Overview 3.0, section 2.5.1.
Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainants.
C. Registered and Used in Bad FaithThe Panel finds that based on the record, the Complainants have demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy.
First, the Respondent attempted to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ NECKER Mark. The Panel finds that the Respondent registered the Disputed Domain Name to attract the Complainants’ customers to its website by using a domain name that is confusingly similar to the Complainants’ NECKER Mark. The use of a domain name to intentionally attempt to attract Internet users to a registrant’s website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website for commercial gain demonstrates registration and use in bad faith.
Second, the registration of the Disputed Domain Name is aimed to disrupt the Complainants’ business by diverting Internet users who are searching for the Complainants’ services from its genuine website as well as to prevent the Complainants from registering the Disputed Domain Name. See Banco Bradesco S.A. v. Fernando Camacho Bohm,WIPO Case No. D2010-1552. The Panel thus concludes that the Respondent has registered and is using the Disputed Domain Name in bad faith.
Third, the Respondent used the Disputed Domain Name to impersonate the Complainants and perpetrate a phishing scheme directed against the Complainants, a strong indication of bad faith. The Respondent’s phishing scheme to send fraudulent emails purporting to come from the Complainants evidences a clear intent to deceive individuals, impersonate the Complainants, and trade off the Complainants’ goodwill by creating an unauthorized association between the Respondent and the Complainants’ NECKER Mark. See Banco Bradesco S.A. v. Fernando Camacho Bohm,WIPO Case No. D2010-1552. Such conduct is emblematic of the Respondent’s bad faith registration and use of the Disputed Domain Name. See Petróleo Brasileiro S.A. - Petrobras v. AK Bright,WIPO Case No. D2013-2063 (considering the reputation of the complainant and the emails sent by the respondent using the complainant’s trademark, the respondent is held to have registered and used the domain name in bad faith). Further, UDRP panels have found that email-based phishing schemes that use a complainant’s trademark in the domain name are evidence of bad faith. See, e.g., DeLaval Holding AB v. Registration Private, Domains By Proxy LLL / Craig Kennedy,WIPO Case No. D2015-2135.
Finally, the Respondent has established a pattern of abusive cybersquatting, demonstrating bad faith registration and use.2 Previous UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registrations. This may include a scenario where a Respondent, on separate occasions, has registered trademark abusive domain names, even when directed at the same brand owner. WIPO Overview 3.0, at 3.1.2; see also Autodesk, Inc. v. Bayram Fatih Aksoy,WIPO Case No. D2016-2000.
Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainants.
7. DecisionFor 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
Lynda M. Braun
Sole Panelist
Date: October 28, 2021
1 Pro-am is the abbreviation for a sporting event in which both professional and amateur athletes compete.
2 For example, the following UDRP proceedings were brought against the same Respondent as the one in this case and were ordered transferred to the Complainant in each instance. See Virgin Enterprises Limited v. Domain Administrator, See PrivacyGuardian.org / Eric Mboma,WIPO Case No. D2021-0461; Virgin Enterprises Limited v. WhoisSecure, WhoisSecure / Eric Mboma,WIPO Case No. D2021-1731; and Virgin Enterprises Limited v.Domain Administrator, See PrivacyGuardian.org / Eric Mboma,WIPO Case No. D2021-1161.