WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Obi Grand
Case No. D2018-1760
1. The Parties
1.1 The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland (“UK”), represented by Stobbs IP Limited, UK.
1.2. The Respondent is Obi Grand of Dubai, United Arab Emirates.
2. The Domain Name and Registrar
2.1. The disputed domain name <virginmobilelatams.com> (“Disputed Domain Name”) is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
3.1. The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2018. On August 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On August 4, 2018, 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 and contact information for the Disputed Domain Name.
3.2. 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”).
3.3. In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 5, 2018.
3.4. The Center appointed José Pio Tamassia Santos as the sole panelist in this matter on September 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
4.1. The Complainant is the brand owner for the Virgin Group of Companies. The Virgin Group originated in 1970 when Richard Branson began selling music records under the VIRGIN trade mark and since that date it has expanded into a wide variety of businesses. As a result, the Virgin Group now comprises over 60 Virgin businesses worldwide, operating in 35 countries including throughout Europe, the United States of America and Australasia. The number of employees employed by the Virgin Group of Companies is in excess of 69,000, generating an annual group turnover in excess of GBP 16.6 billion.
4.2. In this scenario, the Complainant noticed that the Disputed Domain Name <virginmobilelatams.com> was registered by the Respondent, it is currently inactive, but used to resolve to a page which was a direct copy of the Complainant’s webpage. The Complainant states that the Disputed Domain Name has been used in connection with a fraudulent email scheme.
4.3. The Complainant owns numerous trade marks registrations around the world for the mark VIRGIN, since its founding in 1970, and today is recognized worldwide. Relevantly, the Complainant owns International Registration No. 1146047 for VIRGIN, registered on May 21, 2012, as well as International Registration No. 1117877 for VIRGIN MOBILE, registered on January 19, 2012. The Disputed Domain Name <virginmobilelatams.com> was registered on June 9, 2018.
5. Parties’ Contentions
5.1. The Complainant states that the Respondent registered without authorization the Disputed Domain Name <virginmobilelatams.com> on June 9, 2018.
5.2. Furthermore the Complainant contends that the Disputed Domain Name incorporates the Complainant’s trade mark VIRGIN MOBILE in its entirety with the addition of the word “latams” to the Complainant’s registered mark. Thus, this addition does not prevent the Disputed Domain Name from being confusingly similar to the trade marks VIRGIN and VIRGIN MOBILE.
5.3. The Complainant states that the Respondent lacks rights or legitimate interests in the Disputed Domain Name, which was registered and is being used in bad faith.
5.4. The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Paragraph 4(a) of the Policy provides specific remedies to trade mark owners against registrants of domain names where the owner of the mark (i.e., the complainant) proves each of the following elements:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
(ii) the 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.
6.2. The Complainant has the burden of proof, by a preponderance of the evidence, in respect to each element in paragraph 4(a) of the Policy.
6.3. The Respondent, having failed to respond in the present proceeding, is in default, and in accordance with paragraph 14(b) of the Rules, “the panel shall draw such inferences […] as it considers appropriate”.
A. Identical or Confusingly Similar
6.4. The Disputed Domain Name is confusingly similar to the Complainant’s trade marks VIRGIN and VIRGIN MOBILE as it contains them entirely. The addition of the element “latams”, ostensibly referring to Latin America, does not avoid a finding of confusing similarity with the Complaint’s trade mark, which is clearly recognizable in the Disputed Domain Name.
6.5. Accordingly, the Disputed Domain Name is confusingly similar to the VIRGIN and VIRGIN MOBILE trade marks.
6.6. The first element of the Policy, therefore, has been met.
B. Rights or Legitimate Interests
6.7. The Complainant submits that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name for the following reasons:
6.8. The Complainant has not authorised the Respondent to use its VIRGIN or VIRGIN MOBILE trade marks.
6.9. The Respondent is not known by the name “Virgin”, and has no trade marks registrations or rights in VIRGIN or VIRGIN MOBILE. Furthermore, the Respondent is not using the Disputed Domain Name in connection with a legitimate offering of goods / services.
6.10. As explained in more detail under section C below, the Complainant contends that the Respondent is clearly intentionally trying to attract, for commercial gain, Internet users to the website at the Disputed Domain Name by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the websites.
6.11. Under these circumstances, including the Respondent’s default, the absence of any permission by the Complainant and the lack of any plausible legitimate reason for the Respondent to use the Disputed Domain Name, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. Accordingly, the second element of the Policy has been established.
C. Registered and Used in Bad Faith
6.12. Paragraph 4(b) of the Policy provides that “for the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”:
(i) circumstances indicating that the respondent has registered or has 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) that the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
6.13. Virgin Mobile is the mobile telecommunications arm of the Virgin Group of businesses. The business trades in numerous countries including United Arab Emirates. It is worth noting that the Complainant has both the domain named <virginmobile.ae> and <virginmobilelatam.com> registered. Both domain names were registered prior to the registration of the Disputed Domain Name and are in use in relation to the provision of services around the Virgin Mobile business.
6.14. In addition, the Complainant presents evidences providing information outlining the very wide ranging activities of the Virgin Group and the extent of its operations under the VIRGIN trade mark, which confirms that the Complainant has developed a significant reputation in VIRGIN worldwide.
6.15. As shown from the witness statement from Frances Harding the VIRGIN trade mark is commonly used alongside an additional element, for example VIRGIN ATLANTIC, VIRGIN MONEY, VIRGIN TRAINS, VIRGIN HOLIDAYS, VIRGIN MEDIA, VIRGIN MOBILE, VIRGIN RADIO and VIRGIN GAMES.
6.16. The Complainant has a significant body of successful UDRP decisions including but not limited to: Virgin Enterprises Limited v. Willem Sternberg De Beer, WIPO Case No. D2017-1851; Virgin Enterprises Limited v. George Kwesivic, WIPO Case No. D2017-0997; Virgin Enterprises Limited v. Bhavesh Tank, KUTCH WEB INFO, WIPO Case No. D2017-0934; Virgin Enterprises Limited v. WhoisGuard, Inc. / michael ceesar, creations, WIPO Case No. D2016-0671; Virgin Enterprises Limited v. Richard Nani, franco Resources plc, WIPO Case No. D2016-0659; Virgin Enterprises Limited v. Jay Cannon, WIPO Case No. D2016-0452; Virgin Enterprises Limited v. Guard Whois, WIPO Case No. D2015-2348; Virgin Enterprises Limited v. Tj Chughtai, Noble Travel, WIPO Case No. D2015-1646; Virgin Enterprises Limited v. Domainadmin / Whois Privacy Corporation, WIPO Case No. D2015-1547; Virgin Enterprises Limited v. Zhichao Yang , WIPO Case No. D2013-2112; Virgin Enterprises Limited v. Robert Paulson, WIPO Case No. D2015-0168. This selection of UDRP decisions related to domain names comprising of the VIRGIN brand, followed by another element and which act to support the fact that the Complainant has a significant portfolio of trade marks registrations, domain registrations and a reputation in the VIRGIN brand and that a likelihood of confusion does exist in relation to domain names comprising of VIRGIN and an additional element.
6.17. The Complainant became aware of the existence of the Disputed Domain Name when they were contacted by a member of the public reporting scam activity associated with the Disputed Domain Name.
6.18. The member of the public referred to emails sent from the address “[…]@virginmobilelatams.com”, falsely represented as being sent by the founder of the Virgin Group. These emails were not authorized or authored by the Virgin Group. The email has clearly been sent for the purposes of striking up a conversation with the recipient asking for USD 7,000 and a copy of the recipient’s passport.
6.19. The Disputed Domain Name resolved to a page which was a direct copy of the official Virgin Mobile Latam official site, located at “www.virginmobilelatam.com”. This false site did not redirect to the official page. Each page was a direct copy. This is clearly for the purpose of supporting the legitimacy of the emails. This is most concerning as any contact made through the <virginmobilelatams.com> site presumably goes directly to the Respondent but the Internet user assumes they are making contact with the Virgin Group through the official site.
6.20. The fact the Disputed Domain Name is being used in relation to scamming activity, as described above, in and of itself proves that the Respondent was aware of the Complainant on the date on which the Disputed Domain Name was registered.
6.21. It is immediately and obviously apparent from the associated scamming activity that this domain has been registered for the sole purpose of confusing Internet users into believing that the Respondent is the legitimate Virgin Mobile business. The Disputed Domain Name is being used to support the legitimacy of a scam. When the approach is made from the email address “[…]@virginmobilelatams.com”, the approach looks legitimate, and this is reinforced by the apparent associated legitimate site. Neither is legitimate. The domain registration and the approaches being made are not associated with the Complainant and are false and fraudulent in their nature.
6.22. The Panel therefore finds that paragraph 4(a)(iii) of the Policy has been satisfied.
7.1. 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 <virginmobilelatams.com> be transferred to the Complainant.
José Pio Tamassia Santos
Date: September 24, 2018