WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. Varshik Motwani, Equinox Global Trading

Case No. DME2016-0002

1. The Parties

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

Respondent is Varshik Motwani, Equinox Global Trading of Ajman, United Arab Emirates.

2. The Domain Name and Registrar

The disputed domain name <virginmobile.me> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2016. On November 10, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 11, 2016, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on November 28, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 18, 2016. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 21, 2016.

The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on January 9, 2017. 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

Complainant is the owner of the Virgin Group of Companies, that started in the business of selling music records and has expanded into a wide variety of businesses. Complainant comprises over 200 companies worldwide operating in 32 countries including throughout Europe and the United States of America. The trademarks VIRGIN and VIRGIN MOBILE are used in connection with a wide range of Complainant’s goods and services.

Complainant is the holder of numerous trademark registrations worldwide for VIRGIN and VIRGIN MOBILE, such as inter alia the United States Patent and Trademark Office (“USPTO”) registrations number 76301009, VIRGIN MOBILE, in International class 9, 35, 38, filed on August 16, 2001, and registered in October 7, 2003 and number 73511000, VIRGIN, in International class 39, filed on November 29, 1984, and registered on October 14, 1986.

Furthermore, Complainant owns various domain names that incorporate the VIRGIN mark, but more specifically the domain name <virginmobile.com> that was created on July 1, 1998 and which resolves to Complainant’s webpage.

Respondent’s disputed domain name was registered in May 8, 2016. The disputed domain name resolves to a link farm webpage.

5. Parties’ Contentions

A. Complainant

Complainant alleges to be the holder of numerous trademark registrations for VIRGIN and VIRGIN MOBILE worldwide and that most of them pre-date the disputed domain name’s registration. Complainant also claims to be the owner of trademark rights for VIRGIN and VIRGIN MOBILE based on its trademark registrations.

Complainant mentions that several UDRP panels have decided to transfer domain names that included “virgin” with an additional element based on Complainant’s trademarks and its reputation, recognizing the likelihood of confusion with Complainant’s domain names.

Complainant argues that the disputed domain name <virginmobile.me> is identical to the trademark VIRGIN MOBILE.

Complainant claims that Respondent has no rights or legitimate interests in the disputed domain name, since it consists of click through site sponsored by the Registrar and, therefore, is not being used in connection with a bona fide offering of goods or services.

Besides that, Respondent is not commonly known by the name “virgin” or “virgin mobile” and has no trademark registrations for VIRGIN or VIRGIN MOBILE, which also demonstrates that Respondent has no legitimate interest in this domain name.

Complainant also argues that Respondent is using the disputed domain name <virginmobile.me> in bad faith since Internet users reach this website expecting to visit a Complainant’s website and this situation is causing confusion among the consumers. Besides that, Complainant alleges to be especially concerned because the disputed domain name resolves to advertisements for sale of mobile phones, which is Complainant’s main commercial sector.

Lastly, Complainant states that Respondent has registered the disputed domain name for commercial gain and is profiting from the adverts currently displayed on the site.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

To succeed, Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed 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 disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

The burden of proving these elements is on Complainant.

A. Identical or Confusingly Similar

Complainant has duly proven the first element under paragraph 4(a) of the Policy is met by showing evidence that it is the legitimate owner of several trademark registrations for VIRGIN MOBILE worldwide and that such trademark is contained in its entirety in the disputed domain name <virginmobile.me>.

The Panel acknowledges that VIRGIN MOBILE is a widely known trademark and believes that the disputed domain name may cause confusion, since its most distinctive feature, the term “Virgin Mobile”, is identical to Complainant’s trademark.

The Panel finds the disputed domain name to be identical to Complainant’s trademark, because the country code Top-Level Domain (“ccTLD”) “.me” is typically not taken into account in the comparison, as per paragraph 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”): “The applicable top-level suffix in the domain name (e.g., ‘.com’) would usually be disregarded under the confusing similarity test (as it is a technical requirement of registration), except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark.”

Therefore, the Panel considers satisfied the requirements of the first element of paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Respondent had twenty days to submit a response according to paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if Respondent does not respond to the Complaint, the Panel’s decision shall be based upon the Complaint.

The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in paragraph 2.1 of the WIPO Overview 2.0 as follows: “[A] complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP [...] If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interest[s], the panel then weighs all the evidence, with the burden of proof always remaining on the complainant.”

In this case, Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests, so the burden of production shifts to Respondent. As Respondent has not replied to Complainant’s contentions that burden has not been discharged, and the Panel has considered Complainant’s prima facie case to be sufficient to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name <virginmobile.me>.

The disputed domain name was registered on May 8, 2016, that is, several years after registration of Complainant’s first trademarks and domain name <virginmobile.com>. The Panel acknowledges that Complainant’s trademark is widely known, and, as a result thereof, the Panel holds that Respondent must have been aware of Complainant’s trademark at the time of registration.

The Panel finds that Complainant has never entered into any agreement with Respondent, nor granted any authorization or license to Respondent, regarding the use of Complainant’s trademarks, nor is Respondent affiliated with Complainant’s activities.

Accordingly, Complainant established a prima facie case that Respondent does not have rights or legitimate interests in the disputed domain name. Since Respondent has not replied to Complainant’s contentions and, thus, has not presented any evidence or elements to justify any rights or legitimate interest in connection with the disputed domain name, the Panel has found no indication that any of the circumstances described in paragraph 4(c)(i)-(iii) of the Policy could apply to the present matter.

Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists a number of circumstances that, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include: “(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The Panel finds it highly unlikely that Respondent had no knowledge of Complainant’s rights to the trademark VIRGIN MOBILE at the time of registration of the disputed domain name, taking into consideration its notoriety worldwide; on the contrary, the evidence shows that Respondent was likely deliberately trying to create a confusion.

In this connection, the Panel notes that the disputed domain name resolves to a pay-per-click link farm, i.e., web page, in which there are several links for providers of goods and services competing with but not connected to Complainant, and such use of the disputed domain name is another evidence of bad faith. In this sense, the Panel refers to the panel decision in VIVO S.A. and PORTELCOM PARTICIPAÇÕES S.A. v. Domains By Proxy - NA Proxy Account Niche Domain Proxy Manager, WIPO Case No. D2010-0925 (<vivocelulares.com>), as can be verified below:

“Because Respondent has registered the disputed domain name that uses a unique combination of terms associated with Complainant, and has only used the disputed domain name to direct Internet users to a pay-per-click link farm parking page that includes third-party competitors of Complainant, the Panel determines that Respondent registered and has used the disputed domain name in bad faith within the meaning of paragraph 4(b) of the Policy.”

In fact, the disputed domain name is being used in connection with a commercial link service, or “link farm”, as it is designed to lure users and divert them to other commercial sites. This is not a bona fide offering of legitimate goods or services and does not confer a legitimate right or interest in the disputed domain name (see also, e.g., Minka Lighting, Inc. d/b/a Minka Group v. Lee Wongi, WIPO Case No. D2004-0984; Bridgestone Corporation v. Horoshiy, Inc., WIPO Case No. D2004-0795; MBI, Inc. v. Moniker Privacy Services/Nevis Domains LLC, WIPO Case No. D2006-0550).

Thus, the Panel concludes that Respondent acts in bad faith for the following reasons: (i) the widespread reputation of Complainant’s products and services, made highly unlikely that Respondent had no prior knowledge of Complainant’s rights in its registered trademarks at the moment of the domain name registration, and (ii) Respondent is diverting Complainant’s customers or potential customers seeking information about Complainant to the website which contains links to its competitors.

Lastly, the Panel notes that, in conjunction with all abovementioned, the fact that Respondent opted for the privacy service, preventing others to have access to its real identity, and did not present any response to the Complaint, reinforce the conclusion that Respondent acted in bad faith.

Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith, in compliance with paragraph 4(b)(iv) 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 <virginmobile.me> be transferred to Complainant.

Gabriel F. Leonardos
Sole Panelist
Date: January 19, 2017