WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Zanta Consult
Case No. D2018-1496
1. The Parties
The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom" or "UK"), represented by Stobbs IP Limited, United Kingdom.
The Respondent is Zanta Consult of Nanterre, France.
2. The Domain Name and Registrar
The disputed domain name <virginstartuploans.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 4, 2018. On July 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 2018, 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 July 13, 2018 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 July 16, 2018.
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 July 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 9, 2018. The Respondent did not reply to the Complaint. On August 10, 2018, the Center informed the Parties that it would commence the panel appointment process.
The Center appointed Andrea Jaeger-Lenz as the sole panelist in this matter on August 14, 2018. 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 is the brand owner of the Virgin group of companies which was established in 1970 and nowadays comprises over 60 businesses worldwide. They mainly focus on five sectors that include travel and leisure, telecommunications, music & entertainment, financial services, and health and wellness. The Virgin Group operates in 35 countries and generates an annual group turnover in excess of GBP 16.6 billion. It owns extensive rights in the VIRGIN trade mark all over the world.
In 2012, Virgin Start Up, a non-profit organisation that helps entrepreneurs in England with the funding, resources and advice to set up their own businesses, was established. The Complainant owns rights in the UK trade mark No. 3015345 for VIRGIN START UP. The trade mark was registered on July 25, 2013.
In the time period of 2008-2010, the Complainant spent around GBP 80 million each year on above the line media and advertisements for its products under the VIRGIN brand. Promotion and publicity have appeared in major newspapers, magazines and periodicals, circulated in the United Kingdom. Furthermore, the Virgin Group sponsors various well known organisations and events such as the Virgin Money London Marathon, with millions of spectators each year.
The disputed domain name <virginstartuploans.com> was registered on June 5, 2018 and does not resolve to an active website.
5. Parties' Contentions
The Complainant contends that all three requirements stated in paragraph 4(a) of the Policy are met in the present case.
(1) The disputed domain name is identical or confusingly similar to the Complainant's trademark
The Complainant claims that the disputed domain name is confusingly similar to the Complainant's VIRGIN and VIRGIN START UP trade marks. The disputed domain name incorporates the Complainant's VIRGIN and VIRGIN START UP trade marks in their entirety. The Complainant argues that the word "loans" is descriptive and therefore its addition does nothing to distinguish the domain from the Complainant's trade mark. The Complainant further sets out that a Google research for "virgin start up loans" leads to results that are referring to the Complainant's group of companies only and therefore the public would associate the domain with the Complainant.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name
The Complainant is of the opinion that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not authorized the Respondent to use its VIRGIN or VIRGIN START UP trade marks. Furthermore, the Respondent is not known by the name "Virgin" or "Virgin Start Up Loans" and has no trade mark registrations or rights in VIRGIN or VIRGIN START UP LOANS. Finally, the Complainant claims that the Respondent is not using the disputed domain name in connection with a legitimate offering of goods or services.
(3) The disputed domain name was registered and is being used in bad faith
The Complainant claims that the registration of the disputed domain name is a classic example of a bad faith registration in accordance with paragraph 4(b) of the Policy. The Complainant sets out that the Complainant became aware of the existence of the disputed domain name when it received a report about scam activity associated with it. The scam activity consisted of emails that were sent from the email address email@example.com, falsely represented as being sent by the General Counsel of the Virgin Group, and from the founder of the Virgin Group. The Complainant alleges the emails have been sent for the purpose of striking up a conversation with the recipients and most likely to obtain information from them. In order to support the legitimacy of the e-mails, the disputed domain name resolved into a page which was a direct copy of the official Virgin Start Up site. The Complainant invokes paragraph 4(b)(iv) of the Policy and claims that the disputed domain name was registered for the sole purpose of confusing Internet users into believing that the Respondent is the legitimate Virgin Start Up business.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the disputed domain name is identical or confusingly similar to the Complainant's trademark or service mark; and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
By the Rules, paragraph 5(b)(i), it is expected of a respondent to "[r]espond specifically to the statements and allegations contained in the complaint and include any and all basis for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]".
In this case, the Center has employed the required means to achieve actual notice of the Complaint to the Respondent in compliance with the Rules, paragraph 2(a) and the Respondent was given the opportunity to present its case, however, the Respondent did not submit a response.
In the event of default of a response, under the Rules, paragraph 14(b) "[…] the Panel shall draw such inferences therefore as it considers appropriate." As stated in numerous previous UDRP decisions (e.g., Viacom International Inc. v. Ir Suryani, WIPO Case No. D2001-1443), if the respondent has not submitted any evidence and has not contested the contentions made by the complainant, the panel is left to render its decision on the basis of the uncontroverted contentions made and the evidence supplied by the complainant: "[…] in the absence of any evidence and the contended factual and legal conclusions as proven by such evidence.
The Panel therefore takes its decision on the basis of the statements and documents before it and in accordance with the Policy, the Rules and any rules and principles of law as deems applicable.
A. Identical or Confusingly Similar
The Complainant has well established that it has rights in the trade marks VIRGIN and VIRGIN START UP. This is supported by the previous UDRP decisions the Complainant has adduced.
Whether a domain name is confusingly similar to a mark is determined through a direct comparison of the mark and the domain name (see Group Kaitu, LLC, Darkside Productions, Inc. v. NetDirect, WIPO Case No. D2011-0220). The disputed domain name <virginstartuploans.com> contains the Complainant's trade marks VIRGIN and VIRGIN START UP in their entirety. When a domain name incorporates a distinctive mark in its entirety, it creates sufficient similarity between the mark and the domain name to render it confusingly similar (see EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047). It is well established that the generic Top-Level Domain ("gTLD") ".com", being a necessary component of a domain name, may be disregarded for the purpose of comparison on this ground.
The disputed domain name solely differs from the Complainant's trade mark VIRGIN START UP by its ending "loans". The addition of this term is not sufficient to create clear distinction from the Complainant's trade marks.
Thus, the Panel finds that the disputed domain name is confusingly similar to the Complainant's trade marks and therefore the first requirement of the Policy has been met.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii) of the Policy, the Complainant is required to prove that the Respondent has no rights or legitimate interests in the disputed domain name, has not been in any way or anywhere ever commonly known by the disputed domain name and the Complainant has not licensed or otherwise permitted the Respondent to use its company name or trademarks.
In the present case, the Complainant makes a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name, which shifts the burden of production on the Respondent (see Media West - GRS, Inc., Media West - MNC, Inc., Gannett Pacific Corporation, Gannett Co., Inc., Gannett River States Publishing Corp., Guam Publications and Incorporated v. Moniker Privacy Services / Forum LLC / Registrant(187640) firstname.lastname@example.org, WIPO Case No. D2006-0478).
The Respondent did not submit any evidence of rights or legitimate interests in the disputed domain name. As contended by the Complainant, the Respondent was not authorized to make use of its protected trademark. Also, there is no evidence that the Respondent is commonly known by the disputed domain name. The fact that the Respondent used the disputed domain name for scamming activities speaks against a fair use of the disputed domain name by the Respondent.
This prima facie case was not rebutted by the Respondent. Accordingly, the Panel finds that the Complainant has satisfied the second requirement of paragraph 4(a) of the Policy.
C. Registered and Used in Bad Faith
Under paragraph 4(a)(iii) of the Policy, the Complainant has to establish that the disputed domain name has been registered and is being used in bad faith by the Respondent.
The Complainant sets out that the Respondent used the domain name for scamming activities. Following the paragraph 4(b)(iv) of the Policy, it shall be seen as evidence for a registration and use in bad faith if by using the domain name, [the Respondent] ha[s] intentionally attempted to attract, for commercial gain, Internet users to [the Respondents] 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 [the Respondent's] web site or location or of a product or service on [the Respondent's] web site or location.
The Panel agrees with the Complainant that the Respondent, at the time of the registration, must have been aware of the Complainant. First of all, the group of companies of to which the Complainant belongs is known worldwide, a fact that has not been disputed by the Respondent. Evidently, the Respondent's scamming activities, evidenced by copies of related fraudulent emails, were based on the assumption that the recipients will recognize the VIRGIN trade mark. Furthermore, the disputed domain name contains the word "loans" which describes one of the key activities of the Virgin Start Up business and therefore creates likelihood of confusion with the Complainant's VIRGIN trade mark as to the source, sponsorship, affiliation or endorsement of the disputed domain name website. It is therefore impossible for the Respondent to claim that he was not aware of the Complainant at the time of the registration. Prior knowledge of the Complainant's trademark rights is a further indication for a bad faith registration of the disputed domain name (see TRS, Quality, Inc v. Privacy Protect, WIPO Case No. D2010-0400).
The Panel finds these circumstances to be present in the present case. It finds support in the record for the Complainant's argumentation that the disputed domain name is solely being used to support the alleged legitimacy of a scam, the aim of which was most likely to obtain information of the recipients of the emails. This was well documented by the Annexes 7-9 submitted by the Complainant. Scamming activities like the ones practiced by the Respondent are a classic example for the circumstances of paragraph 4(b)(iv) of the Policy being present. Furthermore, the record contains screenshots from the Complainant's official Virgin Start Up website and the disputed domain name website for comparison, and the Panel finds this to be convincing evidence that the disputed domain name website copied content directly from the official Virgin Start Up site.
The Panel does not see any aspects that could justify the Respondent's activities or the registration of the disputed domain name.
It therefore finds that the domain name was registered and is being used in bad faith and the third element of the Policy has been met.
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 <virginstartuploans.com> be transferred to the Complainant.
Date: August 22, 2018