WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Richard Nani, Franco Resources plc
Case No. D2015-1412
1. The Parties
The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Stobbs IP Limited, United Kingdom.
The Respondent is Richard Nani, Franco Resources plc of Alispell, Montana, United States of America.
2. The Domain Names and Registrar
The disputed domain names <virgingreenfunds.com> and <virgingreenfunduk.com> are registered with
OnlineNic, Inc. d/b/a China-Channel.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 10, 2015. On August 10, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 11, 2015, the Registrar transmitted by email to the Center its verification response confirming that Richard Nani is listed as the registrant and providing the contact details. The Center sent an email communication to the Complainant on August 12, 2015 informing that the named Respondent on page 2 of the Complaint (Richard Nani) differed from the Respondent named on page 4 of the Complaint (Domain Admin) and inviting the Complainant to file an amended Complaint to clarify the issue. The Complainant filed an amended Complaint on August 14, 2015.
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 August 19, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 9, 2015.
The Center appointed Simon Minahan as the sole panelist in this matter on September 16, 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's Virgin Group originated in 1970 when Richard Branson began selling music records under the Virgin name. Since that date it has expanded into a wide variety of businesses and at present the Complainant's Virgin Group comprises over 200 companies worldwide operating in 32 countries including throughout Europe and the United States of America, generating an annual group turnover in excess of GBP 4.6 billion.
Virgingreenfund was established as part of the Complainant's Virgin Group in 2007, the goal of the business is to invest in environmentally sustainable businesses. It has a capitalisation in the order of hundreds of millions of euros.
The Complainant is the brand owner for the Virgin Group of Companies. It owns in excess of 4,500 other domain names incorporating the VIRGIN trade mark. The Complainant owns trade mark applications and registrations for the trade mark VIRGIN, many incorporating the word "virgin" in conjunction with an additional element, including Community Trade Mark registration No. 6261473 for the mark VIRGIN GREEN FUND. The Complainant is also the registered proprietor of the domain names <virgingreenfund.com> and <virgingreenfund.co.uk>.
The Respondent has no connection with the Complainant. It uses the disputed domain name <virgingreenfunduk.com> in connection with a website which is a replica of the Complainant's genuine site under the domain name <virgingreenfund.com.> (the "Replica Website"). It presently makes no use of the other disputed domain name <virgingreenfunds.com>.
The Replica Website is an instrument of fraud. It displays the VIRGIN GREEN FUND trade mark and is attempting to persuade Internet users that it is an official website of the Complainant. It is being used as a means for "phishing" user information. In addition the website operator has used the email addresses "[…]@virgingreenfunduk.com" and "[…]@virgingreenfunduk.com" requesting payments of EUR 245 and a copy of user's passports in return for considering providing venture funding to them. They then claim that they will pay for a flight to the UK where they will be given EUR 500,000.
5. Parties' Contentions
The Complainant contends that its VIRGIN trade mark is very well known throughout the world and that when the trade mark VIRGIN is coupled with the expression "green fund" as it is in its VIRGINGREENFUND trade mark, the combination can have no other meaning for the public than as a reference to the Complainant's mark. It contends that the disputed domain names are identical and confusingly similar to the trade marks set out above in which the Complainant has rights and with which the public has become accustomed.
The Complainant contends that the WhoIs listed details of the registrant of the disputed domain names are false and that the actual registrant is connected with a "severe organised crime unit […] utilising well documented fee fraud" and provides an investigation report which supports this contention together with evidence of fraudulent communication and webpages.
In this context the Complainant contends that the disputed domain name <virgingreenfunds.com> is an instance of typosquatting targeting Internet users and customers seeking the Complainant's legitimate website under the domain name <virgingreenfund.com> and that the other disputed domain name <virgingreenfunduk.com> is similarly intended to take advantage of deceived or mistaken users to defraud them of their personal details or payments of money or both.
Without specifying which of the disputed domain names it is referring to, the Complainant further contends, among other matters, that the Respondent has registered and is using the disputed domain names in bad faith:
a) as defined in paragraph 4(b)(i) of the Policy because it registered the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registrations to the Complainant;
b) as defined in paragraph 4(b)(iv) as part of an attempt to intentionally attract, for commercial gain, Internet users to the disputed domain names, by creating confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the disputed domain names.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Consistent with the factual matters set out above and noting the absence of any response to the matters set forth in the Complaint the Panel finds that the Complainant has trade mark rights and interests in the trade marks VIRGIN and VIRGIN GREEN FUND and further finds that the VIRGIN mark is a trade mark widely recognized throughout the world.
The Panel is fortified in this finding by the fact that the Complainant has been a party in a significant body of previous UDRP decisions including Virgin Enterprises Limited v. Zhichao Yang, WIPO Case No. D2013-2112 where a number domain names simulating typographical errors were transferred to the Complainant. A number of other UDRP decisions have been issued including but not limited to Virgin Enterprises Limited v. Trade Out Investments Ltd/Power Brand Centre Corp., WIPO Case No. D2011-0640; Virgin Enterprises Limited v. Duygu Mert, WIPO Case No. D2011-0632; Virgin Enterprises Limited v. Maine Street Investments, WIPO Case No. D2011-0621; Virgin Enterprises Limited v. Imran Zafar, WIPO Case No. D2002-0696; Virgin Enterprises Limited v. Internet Protocols Limited, WIPO Case No. D2001-0837; Virgin Enterprises Ltd. v. Virginfree, WIPO Case No. D2000-1715; Virgin Enterprises Limited v. Ali Khan, WIPO Case No. DTV2001-0029 and Virgin Enterprises Limited v. Steve Peter H S Kok and James Tan, WIPO Case No. DCC2002-0001 which concerned domain names comprising the trade mark VIRGIN followed by another element. Many of these UDRP decisions found that the VIRGIN trade mark is well known and highly recognised throughout the world and that a likelihood of confusion does exist in relation to domain names comprising VIRGIN and an additional element.
The Panel also accepts the Complainant's allegations of fraud concerning the Respondent's conduct through the use of the website under the disputed domain name <virgingreenfunduk.com>.
The Panel notes that the distinctive element of the disputed domain names, i.e."virgin", is identical to the Complainant's trade mark VIRGIN and the identifier by which the Virgin Group is known in the United Kingdom and internationally. Moreover, each of the disputed domain names reproduces entirely the Complainant's VIRGIN GREEN FUND trade mark with the addition of either of the letter "s" or the acronym "uk". It is well established under the UDRP that minor typographical additions to whole marks incorporated in a domain name, particularly where they are, as here, merely the plural "s" or a geographic indicator, do not serve to distinguish the disputed domain name from the subject trade mark. Neither does the inclusion of the domain name suffix ".com" serve to distinguish the disputed domain names from the said mark. Accordingly the Panel finds that each of the disputed domain names is identical or confusingly similar to the Complainant's VIRGIN GREEN FUND trade mark.
The Complainant therefore satisfies the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Whilst the overall burden of proof rests with the complainant, it has been recognized by UDRP panels that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore 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 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 Policy. If the respondent does come forward with some allegations or evidence of relevant rights or legitimate interests, the panel then weighs all the evidence, with the burden of proof always remaining on the complainant. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The Panel accepts the Complainant's contention that the fame of the VIRGIN mark and the pre-existence of the Virgingreenfund business are circumstances which mean that the registration of each of the disputed domain names had to have been undertaken with knowledge and awareness of the existence of the Complainant's rights and conversely, the Respondent's lack of any rights or legitimate interests in the disputed domain names.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests and that the Respondent did not displace the presumption that it had no such rights or legitimate interests.
The Complainant has therefore satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
In view of the finding of the fame of the VIRGIN mark, the inferred knowledge of the Respondent of that mark and the Complainant's business when registering the disputed domain names and the finding that the Respondent lacks any rights or legitimate interests in the disputed domain names, the Panel finds they were registered in bad faith.
The Panel further finds that the disputed domain name <virgingreenfunduk.com> has been and is being used to exploit the Complainant's reputation in its business and the Complainant's marks for fraudulent purposes, which is bad faith use.
In respect of the disputed domain name <virgingreenfunds.com> the Panel finds that the Respondent has maintained the registration of this disputed domain name without actively using it with the likely intention of selling it to the Complainant (Policy paragraph 4(b)(i)) and the present effect of denying the Complainant use of the disputed domain name in its legitimate business (Policy paragraph 4(b)(ii)) and of damaging the Complainant's business (Policy paragraph 4(b)(iii)).
To the extent necessary, in view of the evidence of the blatantly fraudulent use the Respondent has made of the disputed domain name <virgingreenfunduk.com>, the Panel further infers that the Respondent's use of the disputed domain name <virgingreenfunds.com> is being done with the intention of putting it into active service as a means of fraud in due course, consistent with its established practice. (Policy paragraph 4(b)(iv) and 4 (a)(iii)).
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 <virgingreenfunduk.com> and <virgingreenfunds.com>, be transferred to the Complainant.
Date: October 3, 2015