ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Virgin Enterprises Limited v. Lea Madden, WebArtisansMadden, Hector Ponce, CloudPonce Case No. D2024-2834 1. The Parties The Complainant is Virgin Enterprises Limited, United Kingdom, represented by AA Thornton IP LLP, United Kingdom. The Respondent is Lea Madden, WebArtisansMadden, Hector Ponce, CloudPonce, United States of America. 2. The Domain Names and Registrar The disputed domain names and are registered with Nicenic International Group Co., Limited (the “Registrar”). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 11, 2024. On July 12, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 14, 2024, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (REDACTED FOR PRIVACY) and contact information in the Complaint. The Center sent an email communication to the Complainant on July 16, 2024 with the registrant and contact information of nominally multiple underlying registrants revealed by the Registrar, requesting the Complainant to either file separate complaints for the disputed domain names associated with different underlying registrants or alternatively, demonstrate that the underlying registrants are in fact the same entity and/or that all domain names are under common control. The Complainant filed an amended Complaint on July 19, 2024. The Center verified that the Complaint [together with the amendment to the Complaint/amended 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”).
page 2 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 25, 2024. In accordance with the Rules, paragraph 5, the due date for Response was August 14, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 16, 2024. The Center appointed Tommaso La Scala as the sole panelist in this matter on August 27, 2024. 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 part of the Virgin Group, operating in many different sectors, including finance, health and wellness, music and entertainment, people and planet, telecommunications and media, travel and leisure, and space. The Complainant has over 50 million customers worldwide and employ more than 60,000 people across five business sectors and five continents. The Complainant is the owner of several trademarks, including: - European Union Registration No. 1141309 VIRGIN in classes, 9, 35, 36, 38, and 41, since 2012; - European Union Registration No. 1146047 VIRGIN (device) in classes 9, 35, 36, 38, and 41, since 2012; - United Kingdom Registration No. UK00914032247 VIRGIN MONEY in classes 9, 35, 36, 38, and 42, since 2015; - United Kingdom Registration No. UK00003154038 V (device) in classes 3, 5, 9, 11, 12, 14, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44, and 45, since 2016. The Complainant is also owner of several domain names including the trademark VIRGIN, such as the domain name , registered in 2000. The disputed domain names and were registered on June 4, 2024. The Complainant has provided evidence showing that the disputed domain name previously resolved to an active website prominently displaying some of the Complainant’s trademarks and publicizing the exact same services offered by Virgin Money, one of the Complainant's companies, while has never resolved to an active webpage. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names. The Complainant affirms that the disputed domain names are confusingly similar to the Complainant’s VIRGIN MONEY and VIRGIN trademarks, as they entirely reproduce them with the mere addition of generic words such as “login” and “web”. The Complainant submits that the Respondents are neither licensees of the Complainant nor are they affiliated with the Complainant in any way. The Complainant says that it has not authorised the Respondents
page 3 to make any use of its VIRGIN MONEY and VIRGIN trademarks, whether in a domain name, in the use of its logos on the website, or otherwise. The Complainant says that there is no evidence to suggest that the Respondents are commonly known by the disputed domain names, as intended under paragraph 4(c)(ii) of the Policy. The Complainant lastly asserts that the Respondents registered and used the disputed domain names in bad faith, as (i) the unauthorized use of the Complainant’s name and trademarks in the website corresponding to the disputed domain name and (ii) the passive holding of disputed domain name makes it evident that the Respondents were well aware of the existence of the Complainant, which has been intentionally targeted to mislead Internet users. B. Respondent The Respondents did not reply to the Complainant’s contentions. 6. Discussion and Findings Consolidation: Multiple Respondents The amended Complaint was filed in relation to nominally different domain name registrants. The Complainant alleges that the domain name registrants are the same entity or mere alter egos of each other, or under common control. The Complainant requests the consolidation of the Complaint against the multiple disputed domain name registrants pursuant to paragraph 10(e) of the Rules. The disputed domain name registrants did not comment on the Complainant’s request. Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2. As regards common control, the Panel notes that the disputed domain names were registered on the very same day, with the same registrar, using the same name servers, IP addresses, and IP locations. In addition, the organisations names indicated in the respective WhoIs details for both the disputed domain Names follow the same pattern, being a term related to technology (“cloud” or “web artisan”) followed by the Respondent’s surnames. Lastly, neither Respondent has opposed the Complainant’s request for consolidation. Therefore, the Panel considers that the disputed domain names are likely to be owned by the same Respondent with different aliases and are subject to the common control. As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party. Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding. A. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.
page 4 The Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The entirety of the VIRGIN MONEY and VIRGIN trademarks are reproduced within the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the marks for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms (here, “login” and “web”) may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names and the marks for the purposes of the Policy. WIPO Overview 3.0, section 1.8. The Panel finds the first element of the Policy has been established. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise. The Panel further notes that disputed domain name previously resolved to an active website prominently displaying the Complainant’s trademarks and purportedly suggesting that it was somehow connected with the Complainant’s business. Such use cannot confer any rights and legitimate interests on the Respondent. WIPO Overview 3.0, section 2.13.1. While the disputed domain name has never resolved to an active website, such passive holding does not represent a bona fide offering of goods and services and given the risk of implied affiliation represented by the composition of the disputed domain name, it is likely to mislead Internet users expecting to find the Complainant or an associated login page. The Panel finds the second element of the Policy has been established. C. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The registration of the Complainant’s trademarks predates the disputed domain names. In the present case, the Panel notes that the Respondent clearly had the VIRGIN MONEY and VIRGIN trademarks in mind while
page 5 registering the disputed domain names, as one of them was using without authorization such registered signs. Furthermore, as previously found by relevant UDRP case law (see, among others, Carrefour SA v. Mkt Digital, WIPO Case No. D2023-0389), “There is no obvious reason, nor has the Respondent offered an explanation, for the Respondent to register a domain name incorporating the distinctive [Complainant's trademark] … unless there was an intention to create a likelihood of confusion between the Domain Name and the … Mark from which the Respondent would likely benefit”. In this regard, the previous use of the disputed domain name should not be considered a good faith use, as it involved passing off by suggesting a relation with the Complainant’s business. As for the passive holding of , such inactivity does not prevent a finding of bad faith considering the fame of the Complainant’s trademarks, the composition of the disputed domain name, and the bad faith use to which the related disputed domain name was put. WIPO Overview 3.0, section 3.3. The Panel finds that the Complainant has established the third element 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 names and be transferred to the Complainant. /Tommaso La Scala/ Tommaso La Scala Sole Panelist Date: September 10, 2024
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