The Complainant is Virgin Enterprises Limited, United Kingdom (“UK”), represented by A. A. Thornton & Co., UK.
The Respondent is Eby Chukwu, United States of America (“US”).
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 12, 2021. On October 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 15, 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 October 18, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 7, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2021.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on November 11, 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 Complainant is a member of the group of companies known as “the Virgin Group”, originally established in the UK in 1970. At this point, there are VIRGIN branded businesses concerned with Financial Services, Health & Wellness, Music & Entertainment, People & Planet, Telecommunications & Media and Travel & Leisure. Between them these businesses have over 53 million customers worldwide and employ more than 69,000 people in 35 countries.
The Complainant is the owner of multiple trademark registrations, including the UK trademark Registration No. UK00003163121 for the mark VIRGIN in classes 03,05,09,11,12,14,16,31,32,33,35, 36,38,39,41,42,43,44,45; European Union (“EU”) trademark Registration No. 015255235 for the mark VIRGIN in classes 03,05,09,11,12,14,16,31,32,35, 36,38,39, 41,42,43,44,45; and International trademark Registration No. 1141309 for the mark VIRGIN in classes 09,35,36,38,41, designating Australia, Bahrain, Egypt, EU, Morocco, Oman, Russian Federation, Ukraine, and the US.
The Complainant has operated a website at “www.virgin.com” since 2000 to promote its activities. The Complainant operates social media platforms that collectively receive over 37 million views each year. Since 2000, the Complainant has operated Virgin Mobile services in territories including Australia, Canada, Chile, Colombia, France, India, Mexico, Poland, Saudi Arabia, South Africa, and the United Arab Emirates. There are 15 million Virgin Mobile customers around the world, and that business operates its own social media pages, sponsors events, and has won several awards.
The disputed domain name was registered on September 17, 2021, and is used for the establishment of a copycat website by the Respondent.
5. Parties’ Contentions A. ComplainantThe disputed domain name is comprised of “virgin”, “wideband” and “ii”, and therefore takes the entirety of the Complainant’s registered mark VIRGIN, and the entirety of the verbal element of the Complainant’s registered device mark VIRGIN and signature. The Complainant also points out that a consumer would perceive the term “wideband” as a generic term describing an aspect of a telecommunications service.
The element “i” is said by the Complainant to be a commonly used prefix that consumers are accustomed to seeing used as part of domain names or tech terms. Consumers perceive this to signify that something is related to technology or the Internet. The Complainant says that the general consumer and Internet user will understand the disputed domain name to be the online location where information about wideband telecommunications services provided by the Complainant and the VIRGIN MOBILE businesses can be found. The addition of “wideband” and “ii” are therefore not of a kind to distinguish the disputed domain name from the VIRGIN trademarks of the Complainant.
The Complainant says that the disputed domain name resolves to a website that copies a substantial amount of the text, content, images, and layout of the homepage of the Virgin Mobile Canada Website. The “Virginwidebandii.com” website makes frequent use of the Complainant’s VIRGIN mark throughout and holds itself out as offering the same goods and services offered by Virgin Mobile, namely, mobile, Internet, and TV services. The accessories page does the same thing.
The Respondent is not authorized to use the Complainant’s marks, nor to reproduce some of its copyright works as it does on its website. The Complainant suspects that the Respondent is engaged in a phishing exercise and will use an email address associated with the website to attempt to deceive consumers. The Complainant also maintains that the Respondent is engaged in a pattern of abusive domain name registrations with which it pursues the same goals, examples of which are provided in the Complaint. The Complainant maintains that it is highly likely Internet users searching for the Complainant’s genuine mobile and telecommunications services will be deceived into thinking that the disputed domain name is operated by or otherwise connected to the Complainant or a Virgin Mobile business.
The Complainant’s asserts that its businesses will suffer disruption because of this, in part because erroneous information may be provided to consumers by the Respondent. The Respondent thus does not have any legitimate interest in the disputed domain name, does not offer any bona fide services or goods, and diverts consumers while tarnishing the image of the Complainant.
None of the actions and practices described above are in good faith, according to the Complainant. The Complainant says that by using the disputed domain name the Respondent is intentionally attempting to attract, likely for commercial gain, Internet users to the “www.virginwidebandii.com” website and associated email, by creating a likelihood of confusion with the Complainant’s registered marks as to the source, sponsorship, affiliation, or endorsement of the “www.virginwidebandii.com” website. The Complainant also maintains that the Respondent displays a pattern of bad faith behavior as it is likely that it previously registered and used the domain names
Finally, the Complainant says that given the significant reputation of the Complainant’s registered trademarks and of the Virgin Mobile businesses, the fact that the “www.virginwidebandii.com” website has copied the Virgin Mobile Canada Website and reproduces marks identical to those of the Complainant, it is clear that the Respondent was aware of the Complainant at the time of registering the disputed domain name.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Identical or Confusingly SimilarThe disputed domain name is not identical to the Complainant’s VIRGIN trademarks. However, it incorporates the VIRGIN trademark in its entirety and that mark is prominent and immediately recognizable in the disputed domain name. The addition of the term “wideband” and the letters “ii” does nothing to defeat a finding of confusing similarity. See section 1.8 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[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”. Accordingly, no more is required than that the trademarks of the Complainant be visible and recognizable in the disputed domain name.
Therefore, the Panel holds that the disputed domain name is confusingly similar to the Complainant’s VIRGIN trademarks.
B. Rights or Legitimate InterestsThere is nothing before the Panel to suggest the Respondent has a legitimate interest or rights in the disputed domain name. The Respondent is not known by the Complainant’s trademarks or the disputed domain name and has never obtained any authorization or consent to use the Complainant’s mark. The Respondent has not reacted to the contentions of the Complainant. The disputed domain name resolves to a copycat website where trademarks and copyright materials of the Complainant are used in a manner that is likely to deceive consumers into thinking the site is connected to the Complainant. None of this is legitimate, fair, noncommercial use of the trademarks of the Complainant and the Respondent’s aim is clearly to obtain some financial gain by impersonating the former.
Therefore, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad FaithIt is clear from the composition of the disputed domain name and the distinctiveness of the Complainant’s VIRGIN trademarks, that the Respondent must have been aware of the Complainant’s business and commercial reputation when the disputed domain name was registered. The subsequent use of the disputed domain name, made to resolve to a copycat website that gives the appearance of being established with the authority of the Complainant, further reinforces this conclusion. It obviously also indicates that the use of the disputed domain name was in bad faith and had the intention of deceiving consumers by suggesting a connection with the Complainant that did not in fact exist. The Respondent reproduces both trademarks and copyright works of the Complainant to that end on the website to which the disputed domain name resolves. Moreover, the addition of the word “wideband” in the disputed domain name reinforces the association between the disputed domain name and the Complainant. All this amounts to bad faith use.
Therefore, the Panel holds that the disputed domain name was registered and used in bad faith.
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
William A. Van Caenegem
Sole Panelist
Date: November 25, 2021