The Complainant is Virgin Enterprises Limited, United Kingdom (“UK” or “United Kingdom”), represented by A.A.Thornton & Co, United Kingdom.
The Respondent is Дмитрий Старикович, Justname, Ukraine.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2021. On December 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 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 December 13, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant confirmed that it identifies the registrant as the Respondent in this UDRP proceeding by email of December 16, 2021.
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 December 20, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 9, 2022. The Respondent did not submit a formal response but replied to say that the domain was blocked and the site was inactive. Accordingly, the Center notified the Parties with Commencement of Panel Appointment Process on February 2, 2022.
The Center appointed Theda König Horowicz as the sole panelist in this matter on February 14, 2022. 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. Further Procedural ConsiderationsUnder paragraph 10 of the Rules, the Panel is required to ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case, and also that the administrative proceeding takes place with due expedition.
Although the Respondent’s mailing address is stated to be in Ukraine (though such fact is not possible to verify as many registrants provide false information to the registrar), which is subject to an international conflict at the date of this Decision which may impact case notification, it is appropriate for the Panel to consider, in accordance with its discretion under paragraph 10 of the Rules, whether the proceeding should continue.
The Panel is of the view that it should; while it is noted that the courier was not able to deliver the written notice to the Respondent, the Panel notes that the Complaint together with the amendment to the Complaint were delivered properly to the Respondent’s email address, and moreover that the Respondent replied by email to the Center’s notification email (adding “Please check whether the issue is resolved and let us know if anything else is required.”).
The Panel also notes that the Complainant has specified in the Complainant that any challenge made by the Respondent to any decision to transfer or cancel the disputed domain name shall be referred to the jurisdiction of the courts at the location of the principal office of the concerned registrar being in the United States of America. The Panel moreover notes that there is no question whatsoever that the domain name has been registered and used in bad faith, as is further described herein.
The Panel concludes that the Parties have been given a fair opportunity to present their case, and so that the administrative proceeding takes place with due expedition the Panel will proceed to a Decision accordingly.
5. Factual BackgroundThe Complainant is a member if a group of companies collectively known as the Virgin Group, which was founded by Sir Richard Branson in the United Kingdom in 1970. The Group is presently active in many sectors covering Financial Services, Health & Wellness, Music & Entertainment, People & Planet, Telecommunications & Media, and Travel & Leisure.
The Complainant is responsible for registering and maintaining registrations for trademarks containing the VIRGIN name and VIRGIN signature logo and licensing these rights to the Virgin businesses.
In particular, the Complainant has been the owner since many years of trademark registrations for VIRGIN and VIRGIN MONEY (without and with logo) in some countries including the United Kingdom. These trademark registrations notably cover international Class 36 (inter alia financial and investment services). It also owns a large number of domain names consisting of or incorporating the VIRGIN trademark. In particular, Trade mark VIRGIN, UK00002601995, registered on February 24, 2012 and Trade mark VIRGIN MONEY, UK00002177329, registered on May 21, 1999.
The VIRGIN name and trademark has been widely used worldwide since decades including on the internet through the official website virgin.com that lists the VIRGIN businesses and charitable ventures. The Virgin businesses are also active through social media where they receive millions of views each year.
Virgin Money UK was formed in 2002 while Virgin Direct has already been offering financial services as of 1995. Virgin Money is notably active in the field of financial and banking services.
The disputed domain name was registered on July 2, 2021. It has been used to direct to unauthorized webpages in English and Russian language, which promote a financial scheme purportedly endorsed by Sir Richard Branson. The webpages notably include statements such as “Innovative method of passive income from the creators of the International corporation Virgin Group” and include a video showing the founder of the Virgin Group. They also reproduce the Complainant’s trademark VIRGIN. Additionally, the webpages include a sign-up form requesting personal contact information.
6. Parties’ Contentions A. ComplainantThe Complainant contends to have trademark rights in VIRGIN and VIRGIN MONEY. Virgin Money UK is also a company formed in the United Kingdom, and which specializes in financial and banking services. The disputed domain name is comprised of the terms “virgin” and “invest” and therefore incorporates the Complainant’s registered trademark VIRGIN. The term “invest” is descriptive and its combination with “virgin” means that the disputed domain name will be perceived as indicating the online location where it is possible to obtain information about or purchase investment products offered by Virgin or Virgin Money. The disputed domain name is thus confusingly similar to the Complainant’s registered trademarks.
The Complainant states that the Respondent has not been authorized to register or use the disputed domain name or use the Complainant’s registered trademark or images of its founder Sir Richard Branson. It is regularly targeted with online financial scams, and the Complainant suspects that the Respondent seeks to gather personal information via the sign-up form available on the website linked to the disputed domain name (phishing). There are no indications that the Respondent has ever used or made preparations to use the disputed domain name in connection with a bona fide offering of goods or services, nor that the Respondent was commonly known by the disputed domain name. In any case, the Complainant’s trademarks are infringed and unduly used to promote what is likely to be a scam. Considering the notoriety of the Complainant’s brand, the disputed domain name and its unauthorized webpages will clearly confuse Internet users into believing that they are connected to the Virgin Group and will thus tarnish the Virgin Group’s reputation including the Complainant.
For the same reasons developed above, the Complainant alleges that there is clear evidence of registration and use of the disputed domain name in bad faith. The Respondent has therefore intentionally attempted to attract for commercial gain, internet users to the disputed domain name and the unauthorized webpages, by creating a likelihood of confusion with the Complainant’s registered trademarks as to the source, sponsorship, affiliation, or endorsement of the disputed domain name and the unauthorized webpages.
B. RespondentThe Respondent did not formally reply to the Complainant’s contentions, but did react as noted above.
7. Discussion and FindingsUnder the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
The Complainant showed to have trademark rights in VIRGIN and VIRGIN MONEY, notably through many trademark registrations.
According to section 1.7, of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), the standing test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name. This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing.
Furthermore, according to section 1.8 of 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.
The disputed domain name contains the VIRGIN trademark in its entirety. The addition of the term “invest” in the disputed domain name does not prevent a confusing similarity as VIRGIN remains clearly recognizable in the disputed domain name.
Under these circumstances, the Panel concludes that the disputed domain name is confusingly similar to the Complainants’ mark.
B. Rights or Legitimate InterestsParagraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(i) the use of the domain name in connection with a bona fide offering of goods or services;
(ii) being commonly known by the domain name; or
(iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it. See section 2.1, WIPO Overview 3.0.
The Complainant made sufficient statements in order to demonstrate that the Respondent would have no rights or legitimate interests into the disputed domain name.
In particular, the Panel notes that the case file does not show that the Respondent would be known as “virgin” or “virgininvest” or that a legitimate business would be run by the Respondent under the disputed domain name.
To the contrary, the Complainant has shown that:
(i) the disputed domain name was used in relation to unauthorized webpages extensively using the protected trademark VIRGIN and alleging to be providing investment services, thus wrongly giving the impression to be associated with the Complainant and its affiliated company VIRGIN MONEY, and
(ii) the unauthorized webpages associated to the disputed domain name request the Internet users to fill in a sign-up form thus gathering personal information (phishing website).
Based on the above, the Panel considers that the Complainant has made a prima facie case and the burden of production shifts to the Respondent who has chosen not to reply.
As already stated before, nothing is contained in the case file, which would show that the disputed domain name has been legitimately used by the Respondent or that that the Respondent would have any rights or legitimate interests in the disputed domain name. Furthermore, the nature of the disputed domain name, incorporating the Complainant’s trademark and the term “invest” associated with the financial services offered by Virgin Money, a company affiliated to the Complainant, carries a risk of implied affiliation (see section 2.5.1, WIPO Overview 3.0).
Consequently, the Panels finds that the Complainant has established its case under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Panel notes that the Complainant’s trademark VIRGIN is a registered trademark and that it is widely used by the Complainant on the internet and in social media. It is a well-known trademark and is notably used in the field of financial and banking services.
A simple Internet search would have enabled the Respondent to identify that VIRGIN is a protected brand in relation to this very specific field of financial services.
Considering the above, the Respondent could not be unaware of the Complainant’s trademark when registering the disputed domain name.
Hence, the Panel finds that the Respondent knew or should have known of the Complainant’s trademark and deliberately registered the confusingly similar disputed domain name (see section 3.2.2, WIPO Overview 3.0). This finding is reinforced given the construction of the disputed domain name and use of the disputed domain name for a website purportedly dedicated to financial services, which are very similar to the services provided by Virgin Money UK, a company belonging to the Virgin Group, such as the Complainant.
Furthermore, the Complainant has established that the Respondent’s intent in registering the disputed domain name was in fact to profit from or otherwise exploit the Complainant’s trademark because the webpages which are linked to the disputed domain name were set up in a way to create a confusion with the Complainant, notably by widely using the well-known trademark VIRGIN on the said site, term which insinuates a connection with the Complainant, Virgin Money UK’s business and the VIRGIN brand (see section 3.1.1., WIPO Overview 3.0).
The fact that the said webpages are also aiming at collecting details of Internet users (phishing site) is another indication of bad faith use.
The Panel further notes that the Respondent has chosen not to formally respond, which is another indication of bad faith (in effect, an admission) in the present circumstances.
In light of the above, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith and that the Complainant has established its case under paragraph 4(a)(iii) of the Policy.
8. 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,
Theda König Horowicz
Sole Panelist
Date: July 28, 2022