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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. Contact Privacy Inc. Customer 0161933095/ Onyedikachi Osuigwe, Yunair

Case No. D2021-3293

1. The Parties

The Complainant is Virgin Enterprises Limited, United Kingdom, represented by A.A.Thornton & Co, United Kingdom.

The Respondent is Contact Privacy Inc. Customer 0161933095, Canada / Onyedikachi Osuigwe, Yunair, Nigeria.

2. The Domain Name and Registrar

The disputed domain name <virginbluecargoexpress.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 5, 2021. On October 5, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 6, 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 October 7, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 11, 2021.

The Center verified that the Complaint together with the 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”).

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. On October 11, 2021, the Respondent submitted an email seemingly suggesting a settlement of the dispute. However, the Parties did not reach a settlement in the matter.

The Center appointed Nayiri Boghossian 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 Background

The Complainant is a company that is a member in the Virgin Group. The Complainant owns a number of trademark registrations for the trademark VIRGIN. For example, the Complainant owns the following registrations:

- European Union trademark registration no. 1798560 filed on August 8, 2000;
- United Kingdom trademark registration no. 00003163121 filed on May 5, 2016;
- International trademark registration no. 1290574 with a registration date of February 3, 2015.

The Complainant also owns Australia trademark registration no. 858812 for the trademark VIRGIN BLUE filed on November 30, 2000.

The Complainant provides transatlantic cargo services under the trademark VIRGIN ATLANTIC.

VIRGIN BLUE was the trademark used between 2000 and 2011 in connection with an airline launched in Australia by the Virgin Group.

The disputed domain name was registered on June 19, 2021 and resolves to a website, which seem to offer courier and freight services.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark. The disputed domain name incorporates the Complainant’s trademarks VIRGIN and VIRGIN BLUE in their entirety. The terms “cargo” and “express” refer to the service of the Complainant, which is the fast transportation of cargo and will give the impression that the disputed domain name provides information about the Complainant’s service.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The disputed domain name resolves to a website which offers freight and courier services. A number of elements on the website, such as the fake address, the use of stock image, the misspellings, indicate that it is not a page for a legitimate business. There is no evidence that the disputed domain name is intended to be used in relation to a bona fide offering of goods or services nor that the Respondent was ever known by the disputed domain name. The Respondent is using the disputed domain name to offer services identical to those offered by the Complainant. This use is likely to tarnish the Complainant’s reputation because customers will have bad experiences and attribute them to the Complainant.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. The Respondent must have been aware of the Complainant’s trademark and is attempting to attract Internet users to its website for commercial gain by creating confusion with the Complainant and its trademark. This is bad faith use which will disrupt the Complainant’s business and tarnish its reputation.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Complainant owns trademark registrations for the trademarks VIRGIN and VIRGIN BLUE. The Panel is satisfied that the Complainant has established its ownership of the trademarks VIRGIN and VIRGIN BLUE. The disputed domain name incorporates the Complainant’s trademarks VIRGIN and VIRGIN BLUE.

The words “cargo” and “express” do not alter the fact that the disputed domain name is confusingly similar to the Complainant’s trademarks. Instead, given that these words relate to a service provided by the Complainant, the nature of these letters supports the Panel’s findings under the third element that they reinforce an impression of the disputed domain name being connected with the Complainant and its trademark. The gTLD “.com” should generally be ignored when assessing confusing similarity as established by prior UDRP decisions.

Consequently, the Panel finds that the disputed domain name is confusingly similar to the trademark of the Complainant and that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent does not have any rights or legitimate interests in the disputed domain name. Once such showing is made, the burden of production shifts to the respondent. In the instant case, the Complainant asserts that the Respondent is not conducting a legitimate business, that there is no bona fide offering of goods or services and that the Respondent is not commonly known by the disputed domain name. Therefore, it is for the Respondent to prove that it has rights or legitimate interests.

According to the Policy, the use of the disputed domain name would be legitimate if before any notice of the dispute the domain name has been used in connection with a bona fide offering of goods or services. The website to which the disputed domain name resolves offers freight and shipping services. There could be a possibility therefore that a bona fide offering of goods and services is taking place. However, there can be no bona fide offering if there’s a likelihood that the Respondent aims at confusing Internet users as to source or affiliation (See, Welcomemat Services, Inc. v. Michael Plummer Jr., MLP Enterprises Inc., WIPO Case No. D2017-0481).

Consequently, the Panel finds that the Complainant has met the requirement under the Policy of showing that the Respondent does not have any rights or legitimate interests in the disputed domain name. Accordingly, the Complainant has satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Respondent must have been aware of the Complainant’s trademark as VIRGIN is a well-known trademark, which has been in use since the 70’s and reaches tens of millions of consumers. It is worth noting that the disputed domain name was registered only recently. Furthermore, the Complainant provides services similar to those offered by the Complainant, which further confirms knowledge of the Complainant’s trademark and business. The disputed domain name suggests affiliation with the Complainant as it incorporates the Complainant’s trademarks. The use of the “cargo” and “express” reinforces the impression that the disputed domain name is the Complainant’s website. The disputed domain name resolves to a website, which seems to offer services similar to those offered by the Complainant. As such, the disputed domain name suggests affiliation with the Complainant in order to attract consumers and offer competing services, which is an act of bad faith (see Intex Recreation Corp. v. RBT, Inc., Ira Weinstein, WIPO Case No. D2010-0119; MasterCard International Incorporated v. Global Access, WIPO Case No. D2008-1940). Given the notoriety of the Complainant’s trademark, there is no doubt that the Respondent is aiming to trade off the reputation and goodwill of the Complainant’s trademark.

Furthermore, the use of privacy shield is a sign of bad faith under the circumstances. The Panel notes also that the Respondent did not file a formal response (and that the informal communication submitted by the Respondent does not include any submissions that would alternate this Panel’s findings in the matter). The Panel may draw certain inference from such conduct and under the circumstances, it is the Panel’s view that the absence of response only confirms that registration and use of the disputed domain name was done in bad faith.

Such conduct falls squarely within the meaning of paragraph 4(b)(iv) of the Policy, and accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) 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 name, <virginbluecargoexpress.com>, be transferred to the Complainant.

Nayiri Boghossian
Sole Panelist
Date: November 19, 2021

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