WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. Ibrahim Naths

Case No. D2018-2109

1. The Parties

The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Stobbs IP Limited, United Kingdom.

The Respondent is Ibrahim Naths of Los Angeles, California, United States of America (“United States”).

2. The Domain Names and Registrar

The disputed domain names <virginmoneyservices.com> and <virginstartupsloan.com> are registered with OwnRegistrar, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 14, 2018. On September 14, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 17, 2018, 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 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 9, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 11, 2018.

The Center appointed Marina Perraki as the sole panelist in this matter on October 31, 2018. 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

According to the Complaint, Complainant is the brand owner of the Virgin group of companies, which was established in 1970. It was initially active in selling music records under the VIRGIN trademark. Since then it has expanded into a wide variety of businesses, now comprising over 60 Virgin branded businesses worldwide, operating in 35 countries including throughout Europe, United States and Australasia, generating an annual group turnover in excess of GBP 16.6 billion. Complainant’s group activities are focused inter alia in financial services and charitable foundations.

Complainant’ s group comprises a financial services business operating under the brand name Virgin Money in South Africa, Australia and the United Kingdom. It was established in 1995 in the United Kingdom and operates the website “uk.virginmoney.com”.

Complainant’ s group further comprises a not-for-profit organization under the brand name Virgin Start Up, operating in England and Scotland, which seeks to help entrepreneurs to start, fund and scale their business. It was founded in 2013 and operates under the website “www.virginstartup.org”.

Complainant holds numerous trademark registrations for the VIRGIN, VIRGIN MONEY and VIRGIN START UPS trademarks, including:

- the United Kingdom trademark registration VIRGIN, No. 00001009534, filed and registered on April 11, 1973, for goods in international class 9,

- the United States trademark registration VIRGIN, No. 73031575, filed on September 9, 1974 and registered on May 18, 1976, for goods in international class 9,

- the European Union trademark registration VIRGIN No. 000217182, filed on April 1, 1996 and registered on September 4, 1998, for goods in international class 9,

- the European Union trademark registration VIRGIN MONEY No. 004769766, filed on December 7, 2005 and registered on April 13, 2007, for services in international class 36,

- the United States trademark registration VIRGIN MONEY No. 86560230, filed on March 11, 2015 and registered on February 16, 2016, for services in international class 36, and

- the United Kingdom trademark registration VIRGIN START UP (series of 4) No. 00003015345, filed on July 25, 2013 and registered on October 25, 2013, for services in international classes 35 and 36.

The first Domain Name <virginmoneyservices.com> was registered on August 1, 2018 and resolved at the time Complainant became aware of it to a website containing a warning message cautioning visitors that it may contain harmful content. Complainant became aware of the first Domain Name when a third party reported scam activity associated with the first Domain Name.

The second Domain Name <virginstartupsloan.com> was registered on July 27, 2018 and resolved to a website which mirrored Complainant’s group member Virgin Start Up official website “www.virginstartup.org”. It has now been suspended.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it has established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to the Domain Name:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has demonstrated rights through registration and use on the VIRGIN, VIRGIN MONEY and VIRGIN START UPS trademarks.

The Panel finds that the first Domain Name <virginmoneyservices.com> is confusingly similar with the VIRGIN and VIRGIN MONEY trademarks of Complainant.

The first Domain Name incorporates the said trademarks of Complainant in their entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

Furthermore, the word “services” which is added in the first Domain Name does not avoid a finding of confusing similarity as it is a descriptive, non-distinctive term (Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin, WIPO Case No. D2015-0135; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).

The generic Top-Level Domain (“gTLD”) “.com” is also disregarded, as TLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).

The Panel finds that the second Domain Name <virginstartupsloan.com> is confusingly similar with the VIRGIN and VIRGIN START UPS trademarks of Complainant.

The second Domain Name incorporates the said trademarks of Complainant in their entirety. This is sufficient to establish confusing similarity (Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525).

Furthermore, the word “loans” which is added in the second Domain Name does not avoid a finding of confusing similarity as it is a descriptive, non-distinctive term (Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315; Wragge Lawrence Graham & Co LLP v. Registration Private, Domains by Proxy LLC / Ian Piggin, WIPO Case No. D2015-0135; WIPO Overview 3.0, section 1.8).

The gTLD “.com” is also disregarded, as TLDs typically do not form part of the comparison on the grounds that they are required for technical reasons only (Rexel Developpements SAS v. Zhan Yequn, WIPO Case No. D2017-0275).
Complainant has established Policy, paragraph 4(a)(i).

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel concludes that Respondent lacks rights or legitimate interests in respect of the Domain Names.

Respondent has not submitted any response and has not claimed any such rights or legitimate interests with respect to the Domain Names. As per Complainant, Respondent was not authorized to register the Domain Names.

Respondent did not demonstrate any prior to the notice of the dispute use of the Domain Names or a name corresponding to the Domain Names in connection with a bona fide offering of goods or services.

On the contrary, as Complainant demonstrates, the first Domain Name resolves to a website containing a warning message cautioning visitors that it may contain harmful content. This indicates that the website had previously been used for fraudulent activity. Furthermore, as Complainant demonstrates, the first Domain Name was also used in connection with scam activity. The use of the first Domain Name for an illegal activity such as impersonation or fraud cannot confer rights or legitimate interests on Respondent (L’ Oréal v. Cimpress Schweiz GmbH, WIPO Case No. DCO2017-0021; Accenture Global Services Limited v. Jean Jacque / Luck Loic, supra; Syngenta Participations AG v. Simon Laidler / Who Is Agent, WhoIs Privacy Protection Service, Inc., WIPO Case No. D2014-1702; Groupe Lactalis v. John Kleedofer / Privacy Protection Service INC d/b/a Privacy Protect.org, WIPO Case No. D2014-0133; Twitter, Inc. v. Moniker Privacy Services / accueil des solutions inc, WIPO Case No. D2013-0062; Inter-Continental Hotels Corporation v. Louise Lane / WhoisGuard, WIPO Case No. D2012-2037; Haas Food Equipment GmbH v. Usman ABD, Usmandel, WIPO Case No. D2015-0285).

As regards the second Domain Name, as Complainant demonstrates, it resolved to a website which mirrored Complainant’s group of companies’ official website “www.virginstartup.org”. This indicates that Respondent knew of Complainant and chose the second Domain Name with knowledge of Complainant (Safepay Malta Limited v. ICS Inc., WIPO Case No. D2015-0403).

The Panel finds that these circumstances do not confer upon Respondent any rights or legitimate interests in respect of the Domain Names.

Complainant has established Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation”, are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding Domain Name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

The VIRGIN mark has been widely used by Complainant and is repeatedly recognized as a renowned trademark enjoying a worldwide reputation (Virgin Enterprises Limited v. Bhavesh Tank, KUTCH WEB INFO, WIPO Case D2017-0934, Virgin Enterprises Limited v. Hildegard Gruener, WIPO Case No. D2017-0429, Virgin Enterprises Limited v. Simon Thompson, WIPO Case No. D2014-0266).

The Panel concludes that Respondent has registered and used the Domain Names in bad faith. Because the VIRGIN mark is so well-known and had been widely used and registered at the time of the Domain Names registrations, the Panel finds it more likely than not that Respondent had Complainant’s marks in mind when registering the Domain Names (Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D2000‑0226; Société des Produits Nestlé SA v. Telmex Management Service, WIPO Case No. D2002-0070).

Furthermore, the Domain Names incorporate in whole Complainant’s marks plus the additional terms “services” and “loans” respectively, that correspond to the business offered by Complainant’s group members and they are practically identical to existing domain names of Complainant’s group, namely <uk.virginmoney.com> and <virginstartup.org> respectively. Therefore, use of the words “services” and “loans” in the first and second Domain Names, respectively, creates a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the Domain Names.

As regards bad faith use of the first Domain Name, Complainant has demonstrated that the first Domain Name was used a) to create a website which at the time of filing of the Complaint resolved to website containing a warning message cautioning visitors that it may contain harmful content, which further indicates that the website had previously been used for fraudulent activity and b) to create an email address, “[...]@virginmoneyservices.com”, which was listed in the contact details in the sign off section of an email sent by a person impersonating the manager of Complainant’ s group member Virgin Money. The website “www.virginmoneyservices.com” was also included in the sign off section of the same email. Use of a domain name for sending deceptive emails, phishing, identity theft, or malware distribution may constitute bad faith (WIPO Overview 3.0, section 3.4). This pattern can be used in support of bad faith registration and use (Instagram, LLC v. Instagram ??????, WIPO Case No. D2017-1736; Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; L’ Oréal v. Cimpress Schweiz GmbH, WIPO Case No. DCO2017-0021; Accenture Global Services Limited v. Jean Jacque / Luck Loic, WIPO Case No. D2016-1315; Syngenta Participations AG v. Simon Laidler / Who Is Agent, WhoIs Privacy Protection Service, Inc. WIPO Case No. D2014-1702; Accor v. SANGHO HEO / Contact Privacy Inc., WIPO Case No. D2014-1471; Go Daddy Software, Inc. v. Internet Masters, WIPO Case No. D2002-0570; and WIPO Overview 3.0, section 3.3 and 3.4).

As regards bad faith use of the second Domain Name, Complainant has demonstrated that the second Domain Name was used to create a website which mirrored Complainant’s group of companies’ member Virgin Start Up charity organization official website “www.virginstartup.org” and invited users to enter their personal login and password details. This indicates use in bad faith (Arkema France v. Aaron Blaine WIPO Case No. D2015-0502).

The Panel considers the following factors: (i) the reputation of Complainant’s marks, (ii) the failure of Respondent to submit a response, and (iii) the implausibility of any good faith use to which the Domain Names may conceivably be put, given that as Complainant has demonstrated the first Domain Name a) resolves to a website containing a warning message cautioning visitors that it may contain harmful content, which indicates that it was previously used for fraudulent activity and b) was used in scam emails, while the second Domain Name resolved to a website which mirrored Complainant’s group member official website “www.virginstartup.org” and invited users to enter their personal login and password details.

Under these circumstances and on this record, the Panel finds no good-faith basis for Respondent’s conduct vis-à-vis the Domain Name.

Complainant has established Policy paragraph 4(a)(iii).

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, <virginmoneyservices.com> and <virginstartupsloan.com> be transferred to Complainant.

Marina Perraki
Sole Panelist
Date: November 14, 2018