WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Whois Guard / Virgin Enterprise, Richard Branson
Case No. D2012-2257
1. The Parties
The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Ipulse, UK.
The Respondent is Whois Guard of Los Angeles, California, United States of America (“USA”) / Virgin Enterprise, Richard Branson of London, UK.
2. The Domain Name and Registrar
The disputed domain name <richardbranson-virgin.com> is registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 15, 2012. On November 15, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 26, 2012, 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 November 27, 2012 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 December 3, 2012.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 5, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was December 25, 2012. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on December 27, 2012.
The Center appointed Dr. Clive N.A. Trotman as the sole panelist in this matter on January 16, 2013. 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
Factual information about the Complainant is taken from the Complaint and from an extensive Witness Statement signed by the Trade Mark Attorney employed by Virgin Enterprises Limited (“VEL”). VEL is responsible for the ownership, management and protection of the trademarks associated with the Virgin Group. The Virgin Group originated in 1970 when Richard Branson, now Sir Richard Branson, began selling music records under the Virgin label. The Virgin Group now comprises over 200 companies internationally, with an annual group turnover of more than GBP 4.6 billion.
The name Virgin is associated with enterprises in the realms of music, airlines, railway trains, financial services, mobile communications, high altitude aircraft, radio and television, holiday resorts, beverages, wines, clothing, and many other products and services.
The name of Sir Richard Branson is well known internationally as the founder of the Virgin Group and through his numerous well-publicised activities such as high altitude ballooning and other sporting endeavours. Biographies about him were published in 1988 and 1994, and his autobiography was published in 1998.
The Complainant is the owner of numerous trademarks featuring the name Virgin and has submitted a list running to 8 pages. Examples registered in the USA and UK, being the addresses given for the Respondent, are:
VIRGIN, USA trademark, registered November 21, 2006, registration number 3174388, class 3;
VIRGIN, UK trademark, registered March 1, 1996, registration number 1559467, class 9.
The Complainant is the owner of the following trademark for RICHARD BRANSON:
RICHARD BRANSON, European Community Trademark, registered September 10, 2012, registration number 10595007, classes 9, 16, 35, 36, 38, 39, 41, 42, 43, 44, 45.
The Complainant owns some 4,500 domain names incorporating the trademark VIRGIN.
Nothing is known about the Respondent except for the details it provided as registrant of the disputed domain name. The disputed domain name was apparently registered on July 31, 2012.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Complainant has produced a detailed list of its trademarks incorporating the word VIRGIN, grouped by country of registration, with details of the application and registration dates and numbers. The Complainant has also produced a copy of the registration document for the Community Trademark RICHARD BRANSON as recorded at the Office for Harmonization of the Internal Market, which shows the owner of the trademark to be Virgin Enterprises Limited.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain
name, partly as a result of having asked the Respondent whether he is Richard Branson. The Complainant says that the registrant has no affiliation with VEL or Richard Branson and has registered and is using the disputed domain for the sole purpose of causing confusion by appearing to be Richard Branson.
The Complainant further contends that the disputed domain name was registered and is being used in bad faith. The Complainant’s description of the Respondent’s modus operandi may be summarised as follows. The website to which the disputed domain name resolves, gains credibility by being redirected to the Complainant’s own official website at “www.virgin.com”. The address provided to the Registrar by the Respondent is that of the Complainant but the fax, telephone and email contacts are not. Thus the Respondent is pretending to be Richard Branson. The Complainant contends that, according to evidence in the form of emails it has obtained, the Respondent has made a number of approaches to people through the social networking site Linkedin. The Respondent, by representing itself as the Complainant, has attempted to set up meetings and extort money. The Complainant contends that the Respondent is intentionally attempting to attract, for commercial gain, Internet users to its online location by creating a likelihood of confusion with the Complainant and its trademarks.
The Complainant requests the transfer to itself of the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the Respondent is required to submit to a mandatory administrative proceeding in the event that the Complainant asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
“(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as above. The dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
Paragraph 1 of the Rules defines a respondent as “the holder of a domain-name registration against which a complaint is initiated”. The Complaint was initially made against Whois Guard, being the name displayed as the registrant in the WhoIs record viewed on November 12, 2012 and being evidently intended not to reveal the identity of the true registrant of the disputed domain name. In response to the Center’s enquiry, the registrar disclosed that the disputed domain name was registered under the organization name Virgin Enterprise, and the personal name Richard Branson. The Complainant in the amended Complaint has chosen to retain Whois Guard as a nominated Respondent and to add the names Virgin Enterprise, Richard Branson as Respondents. Since there would appear to be a single guiding entity behind the Respondent, the Panel will refer to it in the singular.
The Panel is satisfied that the Center has fully complied with its obligations by sending all required communications in respect of this Complaint to such addresses and contacts as have been provided by the Respondent as registrant of the disputed domain name. The Panel notes that the physical address given by the Respondent in the registration of the disputed domain name is identical to that of the Complainant. This matter will be referred to in section 6C below.
A. Identical or Confusingly Similar
The Panel is satisfied by the statements and evidence produced that the Complainant has the necessary rights in the trademarks RICHARD BRANSON and VIRGIN required under paragraph 4(a)(i) of the Policy. The disputed domain name <richardbranson-virgin.com> comprises the Complainant’s trademark RICHARD BRANSON in conjunction with the Complainant’s trademark VIRGIN. The generic top level directory “.com” is of no significance in the determination of confusing similarity. The Panel finds the disputed domain name to be identical and confusingly similar to the trademarks in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has asserted that it has no connection with the Respondent and that the Respondent has no rights or legitimate interest in the disputed domain name. Paragraph 4(c) of the Policy provides for the Respondent to seek to rebut the Complainant’s prima facie case under paragraph 4(a)(ii) of the Policy through illustrative criteria or otherwise to the satisfaction of the Panel. The Respondent has not made any reply to the Complaint. The Panel is satisfied that, particularly in terms of the provisions of paragraph 4(c) of the Policy, the Respondent has not used the disputed domain name for legitimate trade, has not been generally known by the disputed domain name as an individual or business, and has not made a noncommercial or fair use of the disputed domain name. The Panel finds for the Complainant in the terms of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Complainant is required to prove under paragraph 4(a)(iii) of the Policy that the disputed domain name has been registered in bad faith and is being used in bad faith. Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(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 website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found otherwise.
The Complainant has produced evidence in the form of emails that demonstrate some of the Respondent’s uses of the disputed domain name. The emails appear to have been forwarded to the Complainant by persons who have been suspicious of approaches from a purported Sir Richard Branson. It can be derived from the evidence that the Respondent has contrived to impersonate the Complainant and to take advantage of the fact that many people desire to have contact with the Complainant, and in particular with Sir Richard Branson, in order to request sponsorship or business collaboration.
The social and business networking site known as Linkedin has evidently been used by the Respondent as a conduit, through which people have received apparent invitations to be linked to Sir Richard Branson. The invitations have been false, however, emanating from the Respondent, with false credibility conferred by the authentic appearance of the disputed domain name and the fact that the website to which it resolved did in fact redirect, albeit without permission, to the Complainant’s website. The emails contain evidence of the Respondent having asked people for money, in one instance USD 1,500 and in another instance GBP 2,500, as part of the process of securing the desired introduction to, or sponsorship from, Sir Richard Branson. At least one person was asked to provide their full bank account details as part of the process. The Respondent has not produced any evidence to the effect that it has placed any person in contact with the real Sir Richard Branson.
The Panel finds on the balance of probabilities that the Respondent’s conduct has disrupted the business of the Complainant, within the meaning of paragraph 4(b)(iii) of the Policy, by falsely representing that the Respondent is the Complainant and is in a position to secure introductions to Sir Richard Branson. Furthermore, on the balance of probabilities, this has been done with the intention of commercial gain by the inducement of people to pay fees, in the expectation that people would be confused by the Respondent’s use of the Complainant’s trademarks into thinking they were dealing through the authentic Internet presence of the Complainant. Such conduct or intended conduct is bad faith use within the contemplation of paragraph 4(b)(iv) of the Policy.
Whilst other Richard Bransons than the Complainant’s universally recognised guiding mind may well exist, the Panel has not seen evidence upon which to believe that the Respondent is one of them, or is the proprietor of a business named Virgin Enterprise, and is still less persuaded that the Respondent’s purported street address, being identical to the Complainant’s including the postcode, is authentic. Paragraph 2 of the Policy, states in part:
“Your Representations. By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate ...”
The eNom Registration Agreement between the Registrar and the Respondent at paragraph 4(a) states in part:
“ACCOUNT CONTACT INFORMATION AND DOMAIN NAME WHOIS INFORMATION:
i. You must provide certain current, complete and accurate information about you with respect to your Account information and with respect to the WHOIS information for your domain name(s). You must maintain and update this information as needed to keep it current, complete and accurate. You must submit the following with respect to you, the administrative, technical, and billing contacts for your domain name registration(s) and other Services: name, postal address, e-mail address, voice telephone number, and where available, fax number.”
On the totality of the evidence the Panel concludes that the Respondent has registered the disputed domain name under a false name and address, in contravention of its obligations under the Policy and the eNom Registration Agreement, with intent to mislead and for the bad faith purpose for which it has been used, constituting registration in bad faith. The Respondent is found to have both registered and used the disputed domain name in bad faith under paragraph 4(a)(iii) of the Policy.
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, <richardbranson-virgin.com>, be transferred to the Complainant.
Dr. Clive N.A. Trotman
Date: January 28, 2013