WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. OnlineNIC Inc / Hajia Allasco, Domains Services

Case No. D2018-2173

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 of Cambridge, United Kingdom.

Respondent is OnlineNIC Inc / Hajia Allasco, Domains Services of Malaysia.

2. The Domain Name and Registrar

The disputed domain name <virginresorthotels.com> (the “Domain Name”) is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2018. On September 25, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 27, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on September 27, 2018, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed amended Complaint on September 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 Respondent of the Complaint, and the proceedings commenced on October 1, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 21, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on October 22, 2018.

The Center appointed Christopher S. Gibson as the sole panelist in this matter on October 24, 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

Complainant is the brand owner for the Virgin group of companies (the “Virgin Group”). The Virgin Group originated in 1970 when Richard Branson began selling music records under the VIRGIN trademark 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 (“United States”) and Australasia. The number of employees employed by the Virgin Group is in excess of 69,000, generating an annual turnover in excess of GBP 16.6 billion.

The Virgin Group includes Virgin Hotels, which was launched in 2010 to provide high quality hotel accommodation. The first hotel opened in Chicago in 2015, and further hotels are planned to open in both the United Kingdom and the United States. The website of Virgin Hotels is “www.virginhotels.com.” Complainant owns rights in the trademarks VIRGIN and VIRGIN HOTELS.

Complainant also owns a number of domain names that reflect the above trademark rights, including <virginhotels.com>, <virginushotel.com>, <virgin-hotels.com>, <virginhotel.us>, <virginhotels.us>, <virginhotelsus.com>, <virginhotelsusa.com> and <virginhotelus.com>.

Complainant has submitted evidence to confirm that it has developed a significant reputation in its VIRGIN trademark worldwide. The VIRGIN 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.

The Domain Name was registered on September 17, 2018.

5. Parties’ Contentions

A. Complainant

(i) Identical or Confusingly Similar

Complainant has extensive rights in the VIRGIN and VIRGIN HOTELS trademarks. Complainant states that the Domain Name includes the words “virgin, “resort” and “hotels”.

Complainant states the word “resort” is merely descriptive, and its addition does nothing to distinguish the Domain Name from Complainant’s trademarks. In fact, given that Complainant has established substantial rights in the marks VIRGIN and VIRGIN HOTELS, the inclusion of the word “resort” (which is closely connected conceptually with the word “hotels”) within Domain Name merely serves to reinforce a false connection with Complainant.

Complainant contends the Domain Name is confusingly similar to Complainant’s VIRGIN and VIRGIN HOTELS trademarks. A Google search for “Virgin resort hotels” shows that all of the results refer to Complainant’s group of companies, and the general public would associate the Domain Name with Complainant.

Complainant has a significant body of successful UDRP decisions that relate to domain names comprised of the VIRGIN brand followed by another element, and which act to support the fact that Complainant has a significant portfolio of trademark registrations, domain registrations, and a reputation in the VIRGIN brand, and that a likelihood of confusion exists in relation to domain names comprised of VIRGIN and an additional element.

(ii) Rights or Legitimate Interests

Complainant asserts that Respondent has no rights or any legitimate interest in the Domain Name. Complainant has not authorized Respondent to use its VIRGIN and VIRGIN HOTELS trademarks. Respondent is not known by the names “Virgin”, “Virgin Hotels” or “Virgin Resort Hotels” and has no trademark registrations or rights in these names. Furthermore, Respondent is not using the Domain Name in connection with a bona fide or legitimate offering of goods or services.

It is therefore clear that in accordance with the Policy, Respondent has no rights or legitimate interests in the Domain Name.

(iii) Registered and Used in Bad Faith

Complainant submits that the Domain Name has been registered and is being used in bad faith.

Complainant states that the registration of the Domain Name is a classic example of a bad faith registration in accordance with 4(b) of the Dispute Resolution Policy. The Domain Name resolves to an active website at “www.virginresorthotels.com.” The side-by-side comparison shows that the Domain Name resolves to a replica website, which is a direct copy of Complainant’s genuine website. It is likely that this has been done to enable Respondent to perpetrate a scam, such that potential customers of Complainant provide personal details and made payments via the fake website, believing the website to be operated by Complainant. Complainant has made a request to have the content removed, but as of September 20, 2018, the abusive website was still active.

Complainant has recently experienced a high number of similar scam websites involving domain names including the word “virgin”, along with additional descriptive elements, and against which UDRP complaints have been filed. These include <virginushotels.com>; <virginneckerisland.com>; <virginworldunite.com>; <virgin-hyperloopone.com>; <virginluxuryhotels.com>; <virginatlancticairlines.com>; <virginatlancticflight.com>; <bvineckerisland.com>; <virginunitefoundation.com>; <thevirginhyperloopone.com>; <necekrislandresorts.com>; and <neckerislandresorts.com>.

Complainant explains that in all of the above cases, the abusive websites consist of replicas of Complainant’s equivalent genuine sites. In some instances, the domain names are owned by the same registrant, while in others, the Complainant has been able to locate links between the registrants suggesting that these parties are related to one another and part of the same scam. In fact, the email address provided on the offending webpage at “www.virginresorthotels.com” (i.e., [...]@virginushotels.com) matches the email address provided on the offending webpage used for the site located at “www.virginushotels.com.” This would strongly suggest that the registrants behind these two domain names are the same.

In accordance with 4(b)(iv) of the Policy, Complainant submits that there are circumstances which indicate that by using the Domain Names (along with the other domain names), Respondent has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website or location, or of a product or service on the website or location. It is immediately and obviously apparent that the Domain Name has been registered for the sole purpose of confusing Internet users in to believing that Respondent is operating a genuine Virgin business, when it is not. The false site is set up to look like a legitimate site for the purposes of misleading consumers into believing that they are accessing a genuine website operated by Complainant. The obvious risk for this type of copycat website is the potential for consumers to be duped into parting with confidential data, or financial information, which can then be used to facilitate fraud. In addition, it is clear from the number of similar scam websites that Complainant is currently taking action against, that there is a pattern of bad faith behavior.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

In order to succeed on its Complaint, Complainant must demonstrate that the three elements set forth in paragraph 4(a) of the Policy have been satisfied. These elements are that:

(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights to or legitimate interests in respect of the Domain Name; and

(iii) Respondent has registered and is using the Domain Name in bad faith.

A. Identical or Confusingly Similar

The Panel finds that Complainant has established strong rights in its VIRGIN and VIRGIN HOTELS trademarks, based on trademark registrations and extensive use of the marks internationally.

Further, the Panel determines that the Domain Name is confusingly similar to these marks. In particular, the Domain Name incorporates the VIRGIN HOTELS mark in its entirety, while adding the word “resort”, which as noted by Complainant is connected conceptually with the word “hotels” and serves to reinforce a false connection with Complainant. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 (“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”).

Accordingly, the Panel finds that that the Domain Name is confusingly similar to a trademark in which Complainant has rights, in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Regarding the second element of the Policy, WIPO Overview 3.0, section 2.1, states that “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”

Here, the Panel determines that Complainant has made out a prima facie case, while Respondent has failed to reply to Complainant’s contentions. The Panel finds that Complainant has not authorized Respondent to use its VIRGIN and VIRGIN HOTELS marks; that Respondent is not commonly known by the Domain Name; that Respondent has not used the Domain Name for a legitimate noncommercial or fair use, nor used it in connection with a bona fide offering of goods or services – instead, the Domain Name is linked to a replica website, which is a copy of Complainant’s genuine website. The evidence indicates that this has likely been done so that Respondent can perpetrate a scam. Respondent’s use of the Domain Name in this manner does not give rise to any right or legitimate interest in it.

Accordingly, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests in respect of the Domain Name, which has not been rebutted by Respondent. The Panel therefore finds that Complainant has established the second element of the Policy in accordance with paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

The third element of paragraph 4(a) of the Policy requires that Complainant demonstrate that Respondent registered and is using the Domain Name in bad faith. WIPO Overview 3.0, section 3.1, states that “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”.

Here, the Panel determines that the Domain Name was registered and is being used in bad faith. First, based on the evidence, the Panel finds that Respondent was undoubtedly aware of Complainant and its well-known VIRGIN and VIRGIN HOTELS marks, and targeted those marks when registering the Domain Name. The Panel observes that Respondent registered the Domain Name, which incorporates these marks in their entirety, along with the word “resorts”. Given the fame of the VIRGIN marks and the fact that the Domain Name is so obviously connected with Complainant’s marks, the Panel considers that the only logical conclusion is that Respondent targeted Complainant and its VIRGIN and VIRGIN HOTELS marks when registering the Domain Name.

Complainant submitted evidence to show that the Domain Name connects to a website that copies Complainant’s genuine website. The Panel has independently confirmed that this is the case. The fake site is set up to look like a legitimate site, thereby misleading consumers into believing that they are accessing a genuine website operated by Complainant. As Complainant has indicated, the risk associated with this type of copycat website is that potential consumers might be duped into parting with confidential data or financial information, which can then be used to facilitate fraud. Complainant has also submitted evidence to indicate that Respondent’s registration of the Domain Name is possibly part of a pattern of bad faith behavior involving other domain names targeting Complainant.

Thus, in this case where Respondent targeted Complainant’s well-known VIRGIN and VIRGIN HOTELS marks and failed to submit a response to the Complaint, and where the Domain Name is linked to what appears to be a sham copycat site, these circumstances, when considered in context with all of the other circumstances of the case, support the Panel’s finding of bad faith registration and use.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <virginresorthotels.com> be transferred to Complainant.

Christopher S. Gibson
Sole Panelist
Date: November 20, 2018