WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Robert Paulson
Case No. D2015-0168
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 Robert Paulson of Chicago, Illinois, United States of America.
2. The Domain Names and Registrar
The disputed domain names <birginone.com>, <cirginone.com>, <irginone.com>, <ivrginone.com>, <vieginone.com>, <viginone.com>, <vigrinone.com>, <virfinone.com>, <virgibone.com>, <virgimone.com>, <virginine.com>, <virginne.com>, <virginobe.com>, <virginoe.com>, <virginoen.com>, <virginome.com>, <virginonr.com>, <virginonw.com>, <virginpne.com>, <virgione.com>, <virgnione.com>, <virgnone.com>, <virgonone.com>, <virgunone.com>, <virhinone.com>, <virignone.com>, <virinone.com>, <vitginone.com>, <vorginone.com>, <vrginone.com>, <vriginone.com> and <vurginone.com> are registered with NETIM SARL (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 3, 2015. On February 3, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On February 10, 2015, 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on February 19, 2015.
The Center verified that the Complaint together with the amendment to 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 20, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was March 12, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 13, 2015.
The Center appointed Sir Ian Barker as the sole panelist in this matter on March 23, 2015. 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 has been the owner of the Virgin Group of companies since 1970 when Sir Richard Branson initiated the Virgin brand. The Virgin group is now large encompassing many different countries and many different businesses.
A statement was filed by the trademark attorney employed by the Complainant which set out in considerable detail the extent and scope of the Complainant's business empire worldwide.
The Complainant owns numerous trademarks worldwide for VIRGIN and VIRGIN ONE. These were all registered long before the clutch of disputed domain names which were all registered on March 5, 2014.
The Virgin Group now comprises over 200 companies operating in 32 different countries with an annual group turnover in excess of GBP 4.6 billion and with some 40,000 employees.
The Complainant owns in excess of 4,500 domain names which include the Virgin name.
The VIRGIN ONE mark is in use for offering customers offset and flexible mortgages in the United Kingdom.
The Complainant gave the Respondent no authority to reflect its registered trademarks VIRGIN and VIRGIN ONE in a domain name.
5. Parties' Contentions
All the disputed domain names are misspellings of the word "Virgin". This conduct constitutes domain name typosquatting. The disputed domain names are confusingly similar therefore to the Complainant's trademarks.
There have been several UDRP decisions where typosquatting domain names have been transferred to the Complainant (e.g., Virgin Enterprises Limited v. Zhichao Yang, WIPO Case No. D2013-2112). In each case, panels have held that there is a confusing similarity between disputed domain names and the trademark.
The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant gave him none. None of the situations in paragraph 4(c) of the Policy applies to the Respondent.
Some of the disputed domain names resolve to survey websites, and some to dating websites and competitions. .
The disputed domain names were registered and are being used in bad faith. Clearly, the Respondent must have known of the fame of the VIRGIN mark and of the range of businesses operating under the Virgin name. The mere fact of the registration of so many misspelt variations of the word "Virgin" indicates bad faith and a deliberate attempt to capitalize on the fame of the mark.
The disputed domain names resolving to surveys, dating websites, etc. indicates that the Respondent has acquired the disputed domain names for the purpose of disrupting the business of the Complainant.
Moreover, the Respondent has intentionally attempted to attract for commercial gain Internet users to his websites by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the websites or of a product or service on the websites. Because the VIRGIN mark is so famous and well-known worldwide, there cannot be any legitimate reason for the registrations.
The Respondent filed no Response.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant shall prove the following three elements:
(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) The 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
Each of the disputed domain names is an example of typosquatting. Each is a variation of the trademark VIRGIN or a play on the trademark VIRGIN ONE. Each disputed domain name is confusingly similar to the registered trademarks VIRGIN or VIRGIN ONE or both.
There can be no doubt that paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
The Complainant did not authorize the Respondent to use its registered trademarks in a domain name. There is no evidence on the record that the Respondent is using the disputed domain names for a bona fide offering of goods or services or for a legitimate, noncommercial use. That is sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, which satisfies paragraph 4(a)(ii) in the absence of any Response filed by the Respondent.
The Respondent could have filed a Response alleging one or more of the situations covered by paragraph 4(c) of the Policy but has elected not to do so. If the Respondent had been able to demonstrate that one of the paragraph 4(c) situations applied by him, then he might have been able to defend a claim under this limb of the Policy. However, he has not done so and paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
This is a clear example of typosquatting. The worldwide fame of the VIRGIN mark is such that the Respondent must have known of it when he registered the disputed domain names as recently as 2014.
There can be no possible inference other than the Respondent has attempted a rather crude way of capitalizing on the fame of a well-known, worldwide mark by registering a host of domain names which signify nothing other than that each is a variation of the same trademarked word.
Paragraph 4(b)(ii),and (iv) of the Policy apply to this brazen exercise. The disputed domain names must disrupt the Complainant's various and numerous businesses and give a false indication to Internet users that they have some connection with the Complainant for the purpose of commercial gain.
Accordingly Paragraph 4(a)(iii) of the Policy is satisfied.
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 <birginone.com>, <cirginone.com>, <irginone.com>, <ivrginone.com>, <vieginone.com>, <viginone.com>, <vigrinone.com>, <virfinone.com>, <virgibone.com>, <virgimone.com>, <virginine.com>, <virginne.com>, <virginobe.com>, <virginoe.com>, <virginoen.com>, <virginome.com>, <virginonr.com>, <virginonw.com>, <virginpne.com>, <virgione.com>, <virgnione.com>, <virgnone.com>, <virgonone.com>, <virgunone.com>, <virhinone.com>, <virignone.com>, <virinone.com>, <vitginone.com>, <vorginone.com>, <vrginone.com>, <vriginone.com> and <vurginone.com> be transferred to the Complainant.
Sir Ian Barker
Date: March 31, 2105