WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Shang Lao, n.a.
Case No. D2017-1829
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 Shang Lao, n.a. of Xiamen, Fujian, China.
2. The Domain Name and Registrar
The disputed domain name <virginmediaconnections.com> (“the Domain Name”) is registered with Eranet International Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2017. On September 21, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 22, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. On September 26, 2017, Complainant submitted an amended Complaint in response to the Center’s request.
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 Respondent of the Complaint, and the proceedings commenced on September 29, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 19, 2017. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 20, 2017.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on November 17, 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 owns the Virgin Group of Companies (the “Virgin Group”), which originated in 1970 when Richard Branson began selling music records under the Virgin name. Since then it has expanded into a wide variety of businesses. As a result, the Virgin Group now comprises over 200 companies worldwide operating in 32 countries including throughout Europe and the United States of America (“United States”). The Virgin Group employs over 40,000 people.
Complainant owns rights in the VIRGIN mark and the VIRGIN MEDIA marks (collectively, “the Marks”) including but not limited to United States Registration No. 1,851,817 for VIRGIN (registered August 30, 1994) and European Union Trademark Registration No. 013867478 for VIRGIN MEDIA (registered October 14, 2015), respectively. Also, Complainant has a significant reputation and has built up goodwill in the VIRGIN marks in the United Kingdom and abroad in relation to a wide range of goods and services.
The Domain Name was registered on September 5, 2017. The website associated with the Domain Name does not resolve to a live website.
5. Parties’ Contentions
Attached to the Complaint at Annex 5 is a Witness Statement from Emily Hill outlining the wide-ranging activities of the Virgin Group and the extent of its operations. This Witness Statement contains information to establish the well-known nature of the VIRGIN mark and the extent of its use. The VIRGIN mark is commonly used alongside an additional element, for example VIRGIN ATLANTIC, VIRGIN TRAINS, VIRGIN HOLIDAYS, and VIRGIN MEDIA. Complainant owns over 4,500 domain names, incorporating the VIRGIN mark. Coupling VIRGIN and MEDIA can have no other meaning for the public other than as a reference to Complainant’s VIRGIN mark and VIRGIN MEDIA mark.
Considering the reputation of the VIRGIN marks, there is no believable or realistic reason for registering or using the Domain Name other than to take advantage of Complainant’s rights in those Marks. The website associated with the Domain Name does not resolve to any live content. The Domain Name is not being used in relation to a bona fide offering of goods and services and Respondent is not making a legitimate or fair use of the Domain Name. Respondent is not commonly known by the VIRGIN marks. Respondent has no trademark registrations for VIRGIN or VIRGIN MEDIA and no legitimate interests in the Domain Name. Respondent owns 52 domain names, providing further evidence to support the lack of legitimate interests in the Domain Name. Respondent does not run a business that would justify owning this number of domain names.
Complainant noticed that the Domain Name was being used in relation to spam emails containing malicious attachments linked to Dridex malware and requesting payments to be made online. It is apparent that the Domain Name was acquired for the purposes of selling it to Complainant for valuable consideration in excess of their out of pocket costs related to the Domain Name. Given the notoriety of Complainant and the VIRGIN marks, it is inconceivable that Respondent would not have known about the Marks before registering the Domain Name. By registering the Domain Name, Respondent has also prevented Complainant from reflecting the Marks in a corresponding domain name.
The Domain Name will inevitably attract Internet users looking for Complainant and divert them to Respondent’s site instead. By registering the Domain Name, Respondent has created a likelihood of confusion with the VIRGIN marks. Internet users who enter the Domain Name will almost certainly be expecting to view information about Complainant. That the Domain Name is also contained in the address of the spam emails will cause confusion amongst the recipients who will believe it to be a genuine email from VIRGIN MEDIA. Respondent is evidently attempting to commercially gain from the confusion. This confusion on the part of Internet users is also aimed at disrupting the business of the trademark owner.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Where a party fails to present evidence in its control, the Panel may draw adverse inferences regarding those facts. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques, WIPO Case No. D2000-0004. Insofar as Respondent has defaulted, it is therefore appropriate to accept the facts asserted by Complainant and to draw adverse inferences of fact against Respondent. Nonetheless, paragraph 4(a) of the Policy requires that Complainant prove each of the three elements set forth therein to obtain an order that the Domain Name should be cancelled or transferred.
A. Identical or Confusingly Similar
It is uncontested that Complainant has established rights in its VIRGIN and VIRGIN MEDIA marks before Respondent registered the Domain Name. These rights were established by use and through many trademark registrations including the ones set forth above.
UDRP panels have consistently held that if a domain name “wholly incorporates a complainant’s trademark”, it is sufficient evidence that the domain name is identical or confusingly similar. See, e.g., Intesa Sanpaolo S.p.A. v. Tommy, Bartles associates, WIPO Case No. DCO2015-0001. Further, it is an accepted principle that the addition of suffixes such as “.com”, being a generic Top-Level Domain is not a distinguishing factor. The Domain Name, <virginmediaconnections.com>, wholly incorporates the VIRGIN MEDIA mark, thus it is confusingly similar to Complainant’s registered mark. Furthermore, the Domain Name incorporates the well-known VIRGIN mark coupled with “media” which reflects both an aspect of Complainant’s businesses as well as a portion of Complainant’s registered VIRGIN MEDIA mark. Adding the descriptive term “connections” does not diminish the confusing similarity with the Complainant’s trademark. Telstra Corporation Limited v. Peter Lombardo, Marino Sussich and Ray Landers, WIPO Case No. D2000-1511.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
There is no indication that Complainant has licensed or otherwise authorized Respondent to use the VIRGIN marks for any purpose. This suffices to make a prima facie showing for paragraph 4(a)(ii). See Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261.
Complainant alleges that: (1) considering the reputation of the VIRGIN marks, there is no believable reason for registering or using the Domain Name other than to take advantage of Complainant’s rights in those Marks; (2) the website associated with the Domain Name does not resolve to any live content, it is not being used in relation to a bona fide offering of goods and services, and Respondent is not making legitimate or fair use of the Domain Name; (3) Respondent is not commonly known by the VIRGIN or VIRGIN MEDIA marks; (4) Respondent has no trademark registrations for VIRGIN or VIRGIN MEDIA; and (5) Respondent does not run a business which would justify owning 52 domain names.
Complainant has raised a prima facie presumption of Respondent’s lack of rights or legitimate interests, and Respondent has failed to rebut that presumption. The Panel is therefore satisfied that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the Domain Name.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
As mentioned above, there is no evidence of record that Respondent was using or even preparing to use the Domain Name or a name corresponding to the Domain Name before any notice of this dispute in connection with a bona fide offering of goods or services. The VIRGIN Marks have been known around the world long before Respondent registered the Domain Name. Thus, it is difficult to imagine that Respondent would not have been aware of Complainant or its rights in the VIRGIN marks when registering the Domain Name. Further evidence of bad faith registration is that Respondent combined the well-known VIRGIN mark with a portion of another of Complainant’s registered marks.
Respondent has also been using the Domain Name in bad faith. “Parking” a domain name, as Respondent did here, can constitute bad faith use. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (holding that “passive holding” of the domain name could constitute use of the domain name in bad faith). The Panel has already found that Respondent incorporated in the Domain Name two of Complainant’s registered marks for which Respondent does not have any rights or legitimate interests. Indeed, the long-standing international renown of the VIRGIN mark alone is well established in the record here. Respondent has parked the Domain Name for free without using it and without submitting any evidence whatsoever of any good faith use of or intention to use it. Furthermore, Complainant alleges, without contradiction from Respondent, that the Domain Name was being used in relation to spam emails containing malicious attachments linked to Dridex malware and requesting payments to be made online. Such activity indicates that Respondent was attempting to financially benefit from using the Domain Name. The Panel finds that these activities constitute bad faith use of the Domain Name.
The Panel therefore holds that Complainant has established element (iii) above.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <virginmediaconnections.com> be transferred to Complainant.
Harrie R. Samaras
Date: November 21, 2017