WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Remi Ibrahim
Case No. D2018-2131
1. The Parties
The Complainant is Virgin Enterprises Limited of The United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) represented by Stobbs IP Limited, United Kingdom.
The Respondent is Remi Ibrahim of Los Angeles, California, United States of America (“United States”).
2. The Domain Names and Registrar
The Disputed Domain Names <virginatlancticair.com>, <virginluxuryhotelssydney.com>, <virginoceanunite.com> (the “Domain Names”) are registered with OwnRegistrar, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2018. On September 18, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On September 20, 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.
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 the Respondent of the Complaint, and the proceedings commenced on September 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 17, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 18, 2018.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on November 5, 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 for the Virgin Group of Companies. The Virgin Group originated in 1970 when Richard Branson began selling music records under the VIRGIN trademark. The Virgin Group now comprises over 60 Virgin businesses worldwide, operating in 35 countries including the United States. The Virgin Group of Companies employs more than 69,000 persons, generating an annual group turnover over £16.6 billion. Virgin Hotels was launched in 2010. The first hotel opened in Chicago in 2015, with further hotels planned to open. Virgin Atlantic is a British airline launched in 1984. It flies to over 30 destinations across the world. Virgin Unite was founded in 2004 as the charitable arm of the Virgin Group.
The Complainant owns rights in VIRGIN, VIRGIN HOTELS, VIRGIN ATLANTIC and VIRGIN UNITE. For instance, the Complainant is the holder of the European Union (“EU”) trademark registration No. 004262093 for VIRGIN registered on March 17, 2006, and EU trademark registration No. 003252335 for VIRGIN registered on November 11, 2004.
The Respondent is an individual with an address in United States pursuant to the WhoIs database search submitted by the Complainant and as confirmed by the Registrar.
According to the Registrar, two of the Domain Names were registered on August 23, 2018, whereas <virginoceanunite.com> was registered on August 28, 2018. At the time of filing the Complaint, the Domain Names <virginluxuryhotelssydney.com> and <virginoceanunite.com> resolved to websites reproducing both the Complainant’s logo and including an image of Mr. Branson or mirroring Complainant’s website respectively used as part of an email phishing scam, whereas <virginatlancticair.com> resolved to a Google Safe Browsing webpage warning about phising. At the time of drafting the decision, the Domain Names resolve to an error page. <virginatlancticair.com> is redirected from the error page to a Google Safe Browsing webpage warning about phishing.
5. Parties’ Contentions
The Complainant provides evidence of trademark registrations. The Complainant argues that the Domain Names incorporate the Complainant’s trademarks. The addition of the words “air”, “luxury”, “Sydney” and “ocean” does nothing to distinguish the Domain Names from the Complainant’s trademarks. It is more likely to increase the confusion.
The Complainant argues that the Complainant has not authorized the Respondent to use its trademarks. The Respondent is not known by the name Virgin, Virgin Atlantic Air, Virgin Luxury Hotels Sydney or Virgin Ocean Unite and has no trademark registrations or rights in VIRGIN, VIRGIN HOTELS, VIRGIN ATLANTIC or VIRGIN UNITE. The Respondent is not using the Domain Names in connection with a legitimate offering. On the contrary, the Respondent has used two of the Domain Names as part of an email phishing fraud.
As to bad faith, the Complainant argues that the Respondent must have been aware of the Complainant and its trademark when he registered the Domain Names. The Complainant and its trademarks are recognized in the public domain as confirmed by several UDRP decisions. The Respondent uses the Domain Names as part of an email phishing scam. Phishing is clear evidence of bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established rights in the trademarks VIRGIN, VIRGIN HOTELS, VIRGIN ATLANTIC and VIRGIN UNITE.
The test for confusing similarity involves the comparison between the trademarks and the Domain Names. In this case, the Domain Names incorporate in its entirety the Complainant’s trademarks. The addition of the words “air”, “luxury”, “Sydney” and “ocean” does not avoid a finding of confusing similarity. For the purpose of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) “.com”, see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.11.
The Panel finds that the Domain Names are confusingly similar to trademarks in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondent to register the Domain Names containing the Complainant’s trademarks or otherwise make use of its marks. Based on the evidence, the Respondent is not affiliated or related to the Complainant in any way. There is no evidence that the Respondent has registered the Domain Names as a trademark or acquired rights. The Respondent has used the websites under two of the Domain Names as part of an email phishing scam, and it is likely that the third Domain Name is to be used in the same manner.
The Panel finds that the Complainant has made out an unrebutted prima facie case. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names in accordance with paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Domain Names incorporate the Complainant’s trademarks. The Respondent has used websites under the Domain Names as part of a phishing scam. It is probable that the Respondent knew of the Complainant and its business when he registered the Domain Names. Furthermore, the Panel notes that the Respondent has failed to respond to the Complaint.
For the reasons set out above, the Panel concludes that the Domain Names were registered and are being used in bad faith, within the meaning of paragraph 4(a)(iii) 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 Domain Names, <virginatlancticair.com>, <virginluxuryhotelssydney.com> and <virginoceanunite.com> be transferred to the Complainant.
Date: November 6, 2018