WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Zanta Consult
Case No. D2018-1911
1. The Parties
The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland (United Kingdom) represented by Stobbs IP Limited, United Kingdom.
The Respondent is Zanta Consult of Nanterre, Haute-Loire, France.
2. The Domain Name and Registrar
The disputed domain name <virginluxuryhotels.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 August 23, 2018. On August 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 24, 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 August 24, 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 August 28, 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 September 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 25, 2018.
The Center appointed Angelica Lodigiani as the sole panelist in this matter on October 2, 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 a United Kingdom company part of the Virgin Group. The Virgin Group was created in 1970 and was originally focused on the sale of music records under the VIRGIN trademark. Since that date the business of the Virgin Group has been expanded into other areas. As a result, the Virgin Group has increased substantially and now comprises over 60 businesses worldwide, operating in 35 countries, including in Europe, the United States of America (US), Australia and Asia. The Virgin Group employs over 69,000 people worldwide and generates an annual turnover of more than GBP 16.6 billion.
In 2010 the Virgin Group entered into the hotel business and in 2015 a first hotel under the trademark VIRGIN opened in Chicago, US. More hotels are planned to open in the future both in the United Kingdom and in the US. The Complainant’s accommodation services are promoted on the Complainant’s website at “www.virginhotels.com”.
The Complainant is the owner of numerous VIRGIN trademark registrations, worldwide, including European Union trademark registration (EUTM) No. 3421633, registered on April 22, 2005 for several goods and services, including hotel and hotel reservation services in class 43.
Moreover, the Complainant is the owner of the word mark VIRGIN HOTELS, US trademark registration No. 4865666 of December 8, 2015 and of the device mark VIRGIN HOTELS, US trademark registration No. 4865667 of December 8, 2015, both covering services in class 43.
The disputed domain name <virginluxuryhotels.com> was registered on June 4, 2018.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to the Complainant’s trademarks VIRGIN and VIRGIN HOTELS, as it fully incorporates these trademarks, while the addition of the descriptive term “luxury” is insufficient to distinguish the disputed domain name from the Complainant’s trademarks.
The Complainant also contends that the Respondent lack rights and legitimate interests in the disputed domain name because the Complainant never authorized the Respondent to reflect its trademarks in a domain name. Furthermore, the Respondent is not known by the name “Virgin” or “Virgin Luxury Hotels”, and is not using the disputed domain name in connection with a bona fide offering of goods and services.
Finally, the Complainant asserts that the disputed domain name has been registered and is being used in bad faith. The Complainant became aware of the disputed domain name from an individual who reported scam activity associated with the disputed domain name. The said individual referred to have received an email from the email address […]@virginluxuryhotels.com, falsely representing to be sent from the General Counsel of the Virgin Group. According to the Complainant, this email was clearly sent for the purpose of starting a conversation, and to obtain information from the recipient.
At the time of becoming aware of the disputed domain name, the latter resolved to a website, which was a copy of the official Virgin Hotels’ website at “www.virginhotels.com”. The only difference between the two websites is the contact email addresses.
Thus, the Complainant concludes that the disputed domain name was registered to support the legitimacy of a scam, by confusing Internet users as to the real source of origin of the website associated with the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Panel believes that the disputed domain name is confusingly similar to both the Complainant’s VIRGIN and VIRGIN HOTELS trademarks. The Complainant’s trademarks are fully included in the disputed domain name and the addition of the descriptive term “luxury” cannot avoid a finding of confusing similarity.
In light of the foregoing, the Complainant is satisfied that the first requirement of the Policy is met.
B. Rights or Legitimate Interests
The second condition to be proved in order to succeed in a UDRP proceeding is that the Respondent lacks rights or legitimate interests in the disputed domain name.
While the overall burden of proof rests with the complainant, panels have recognized 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 must make 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 relevant evidence demonstrating rights or legitimate interests in the domain name.
The Panel finds that the Respondent was not authorized to reflect the Complainant’s trademark in the disputed domain name, and that the Respondent does not appear to have been commonly known by the terms “Virgin” and/or “Virgin Hotels”. Moreover, the Complainant has provided evidence that at the time of the filing of the Complaint, the Respondent was using the disputed domain name to host a mirror web page, copying the design and content of the Complainant’s original website, except for the use of the Respondent’s email address, which also includes the Complainant’s trademarks. Such use cannot be considered a bona fide offering of goods and services, or a legitimate or fair use of the disputed domain name (see also Focus IP, Inc. d/b/a AppDetex v. Registration Private, Domains By Proxy, LLC / Hieu Nguyen, WIPO Case No. D2016-1447 and decisions cited therein, as well as Paper Australia Pty Ltd v. Sabyasachi Baral, WIPO Case No. D2018-1434).
Hence, the Panel concludes that the Complainant has made at least an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Thus, the Panel is satisfied that also the second condition under the Policy is met.
C. Registered and Used in Bad Faith
Based on the evidence provided, and on the several UDRP prior decisions cited in the Complaint, the Panel has reached the opinion that the Complainant’s trademark enjoys extensive reputation.
It is also clear from the contents of the case file that at the time of the registration of the disputed domain name, the Respondent was well aware of the Complainant’s trademark.
Moreover, at least at the time of the filing of the Complaint, the Respondent was using the Complainant’s trademark to redirect Internet users to a website, which was the exact copy of the Complainant’s website. The Respondent’s conduct was clearly aimed at deceiving potential consumers as to the origin of the services promoted in the Respondent’s website. Moreover, the Respondent also used the disputed domain name as part of an email address to contact potential consumers and attract them to its online location.
The Panel does not know whether the website was used to effectively promote the sale of the Respondent’s services, or to steal the consumers’ data (including their banking details) for other fraudulent purposes. In any event, it is clear that the Respondent was using the disputed domain name to impersonate the Complainant in order to either disrupt its business, or to intentionally attempt to attract, for commercial gain, Internet users to the Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.
In light of the above, the Panel concludes that the disputed domain name has been registered and is being used in bad faith, in accordance with Paragraph 4(b)(iii) and (iv) 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 <virginluxuryhotels.com> be transferred to the Complainant.
Date: October 16, 2018