WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Amelia Kemp Kemp
Case No. D2017-1881
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 Amelia Kemp Kemp of Garth, United Kingdom.
2. The Domain Name and Registrar
The disputed domain name <groupvirgin.com> is registered with Gandi SAS (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2017. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 29, 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.
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 October 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was October 30, 2017. The Center received an email communication on October 10, 2017, and a submission from a third party on October 25, 2017.
The Center appointed Georges Nahitchevansky as the sole panelist in this matter on November 16, 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, Virgin Enterprises Limited, is a member of group of companies collectively known as the Virgin Group of Companies. Complainant is responsible for the ownership, management and protection of all trademarks consisting of the name VIRGIN that are licensed to and used by the companies within the Virgin Group of Companies.
The Virgin Group of Companies originated in 1970 when Complainant’s founder Richard Branson started selling popular music records by mail order under the VIRGIN name and mark. Since 1970, the Virgin Group of Companies has expanded into a wide array of businesses in travel and leisure, telecommunications, music and entertainment, financial services and health and wellness. The Virgin Group of Companies currently consists of over 200 companies worldwide and which operate in 32 countries.
Complainant is the owner of numerous trademark registrations throughout the world for the mark VIRGIN, the earliest of which is a United Kingdom registration for VIRGIN for “sound recordings in the form of discs,” which issued on April 11, 1973 (United Kingdom Trademark Registration No. 1009534). Complainant’s registrations also include many trademarks registrations for the VIRGIN mark in France, where Respondent is apparently located, and throughout Europe. Complainant also owns and uses many domain names that consist of the VIRGIN mark, including <virgin.com>, which Complainant has used since 2000 to provide information about the Virgin Group of Companies and to promote the various businesses under the VIRGIN brand.
Respondent registered the disputed domain name on September 12, 2017. The disputed domain name does not currently resolve to an active web page or website.
5. Parties’ Contentions
Complainant asserts that it owns extensive rights in the VIRGIN mark for a wide range of goods and services and that the VIRGIN mark and related businesses are well-known to consumers throughout the world.
Complainant contends that the disputed domain name is confusingly similar to Complainant’s VIRGIN mark because it contains the VIRGIN mark in its entirety. Complainant also contends that the inclusion in the disputed domain name of the descriptive term “group” does not distinguish the disputed domain name, because consumers will perceive the term as relating to the Virgin Group of Companies.
Complainant argues that because it has established prior rights in and to its VIRGIN mark, which is well-known to consumers, there is no believable or realistic reason for Respondent’s registration and use of the disputed domain name other than to take advantage of Complainant’s rights. Complainant further contends that Respondent (i) is not commonly known by the disputed domain name and (ii) has not used the disputed domain name for a bona fide offering of goods or services.
Finally, Complainant asserts that Respondent registered and has used the disputed domain name in bad faith since Respondent must have known of Complainant’s well-known VIRGIN mark and associated businesses, given that Respondent has used the disputed domain name with an email address to fraudulently solicit funds from consumers for an alleged recovery fund to assist those affected by hurricane Irma in the British Virgin Isles. Complainant further asserts that Respondent’s use of the disputed domain name is in bad faith as Respondent has used the disputed domain name for the purpose of facilitating Respondent’s fraudulent email scheme for financial gain.
Respondent did not reply to Complainant’s contentions.
The Panel notes that a submission was received by the Center on October 25, 2017 from Alwaysdata, which is listed in the WhoIs records for the disputed domain name as the Administrative, Technical and Billing Contact and which is also the hosting provider for the disputed domain name. In that submission, Alwaysdata asserts that it blocked the disputed domain name as soon as it received the Complaint and that it will comply with any decision rendered in this matter. As to the contentions made by Complainant, Alwaysdata did not reply to such. Alwaysdata asserts with respect to each element under paragraph 4(a) of the Policy that such are “[n]on-applicable to Alwaysdata as Hosting Service and Administrative, Technical and Billing Contact of the Disputed Domain Name.”
6. Discussion and Findings
Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Here, although Respondent has failed to respond to Complaint, the default does not automatically result in a decision in favor of Complainant, nor is it an admission that Complainant’s claims are true. The burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. A Panel, however, may draw appropriate inferences from a respondent’s default in light of the particular facts and circumstances of the case, such as regarding factual allegations that are not inherently implausible as being true. See paragraph 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”); see also, The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.
A. Identical or Confusingly Similar
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0 at paragraph 1.2.1. Complainant has provided evidence that it owns and uses the VIRGIN mark in connection with a wide array of businesses around the world. Complainant has also provided evidence that the VIRGIN mark has been registered in numerous countries throughout the world, including in countries throughout Europe, such as France (where Respondent is located) and the United Kingdom, well before Respondent registered the disputed domain name.
With Complainant’s rights in the VIRGIN mark established, the remaining question under the first element of the Policy is whether the disputed domain name (typically disregarding the generic Top-Level Domain “.com”) is identical or confusingly similar with Complainant’s mark. See B & H Foto & Electronics Corp. v. Domains by Proxy, Inc. / Joseph Gross, WIPO Case No. D2010-0842. The threshold for satisfying this first element is low and generally panels have found that fully incorporating the identical mark in a disputed domain name is sufficient to meet the threshold.
In the instant proceeding, the disputed domain name is confusingly similar to Complainant’s VIRGIN mark as it incorporates the VIRGIN mark in its entirety in the disputed domain name. The addition of the word “group” at the head of the disputed domain name does not distinguish the disputed domain name from Complainant’s VIRGIN mark, as the dominant component of the disputed domain name is VIRGIN. WIPO Overview 3.0, paragraphs 1.7 and 1.8. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its rights in Complainant’s VIRGIN mark and in showing that the disputed domain name is identical or confusingly similar to that trademark.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See also, Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.
From the record in this case, it is evident that Respondent was, and is, aware of Complainant and its VIRGIN mark and does not have any rights or legitimate interests in the disputed domain name. Respondent has not made any bona fide or fair use of the disputed domain name in connection with any product or service. Rather, Respondent has used the disputed domain name to further a scheme to solicit funds from consumers for an alleged recovery fund to assist those affected by hurricane Irma in the British Virgin Isles. Indeed, Complainant has produced an example of correspondence sent by Respondent which purports to be an email from Complainant’s founder, Richard Branson, seeking donations and providing payment details to a bank in Shanghai for the benefit of a company that seems to be located in Hong Kong. Such use, which is not contested by Respondent, is fraudulent in nature and does not, and cannot, constitute a bona fide use or legitimate interest.
Given that Complainant has established with sufficient evidence that it owns rights in the VIRGIN mark, and given Respondent’s above noted actions and failure to file a response, the Panel concludes that Respondent does not have a right or legitimate interest in the disputed domain name and that none of the circumstances of paragraph 4(c) of the Policy are evident in this case.
In sum, the Panel finds that in this case Complainant has established a prima facie case showing that Respondent has no rights to or legitimate interests in the disputed domain name. As Respondent, although given an opportunity to present its case, has decided not to submit a response and put forward arguments as to why it should be regarded as having rights or legitimate interests in the disputed domain name, the Panel concludes that, based on the available record, Respondent has not rebutted Complainant’s prima facie case. Complainant thus prevails on this element of the Policy.
C. Registered and Used in Bad Faith
The Panel finds that Respondent’s actions indicate that Respondent registered and is using the disputed domain name in bad faith.
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances indicating bad faith registration and use on the part of a domain name registrant, 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 web site or location.”
In the present case, Respondent has registered the disputed domain name that fully incorporates Complainant’s VIRGIN mark with the generic term “group”. Such combination of a generic term with Complainant’s well-known VIRGIN mark creates a likelihood of confusion by suggesting to consumers that the disputed domain name concerns the Virgin Group of Companies. Given that Respondent has sent emails and correspondence to consumers posing as Complainant’s founder, Richard Branson, in order to solicit donations, there can be no doubt that Respondent was aware of Complainant and its VIRGIN mark when Respondent registered the disputed domain name. Needless to say, given that the uncontested evidence shows that Respondent has used the disputed domain name to send fraudulent emails to entice consumers to send donations to a bank account in Shanghai, it is clear that Respondent specifically targeted Complainant and its VIRGIN mark, and has done so opportunistically and in bad faith.
Accordingly, the Panel finds that Complainant succeeds under this element 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 <groupvirgin.com> be transferred to Complainant.
Date: December 2, 2017