WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited and Virgin Limited Edition v. Moore Williams

Case No. D2018-2210

1. The Parties

The Complainant is Virgin Enterprises Limited and Virgin Limited Edition of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Stobbs IP Limited, United Kingdom.

The Respondent is Moore Williams of Los Angeles, California, United States of America (“United States”).

2. The Domain Names and Registrar

The disputed domain names <neckerislandresorts.com>, <virginatlancticairways.com>, and <virginunitefoundation.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 28, 2018. On October 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 3, 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 October 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2018.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on November 6, 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 Virgin Enterprises Limited (“Virgin Enterprises”) is a private limited company established under English law and based in London, United Kingdom. Virgin Enterprises operates, through subsidiaries, various businesses under the Virgin trade name. These include Virgin Atlantic Airways Limited (“Virgin Atlantic”), the United Kingdom’s second largest long haul airline, which operates a website at “www.virginatlantic.com” and offers service to numerous overseas destinations including the United States. Virgin Enterprises has operated a principal website at “www.virgin.com” since 1999 which attracts millions of visitors annually, from more than 230 countries.

The Virgin Group established The Virgin Foundation, operating as Virgin Unite since 2004, as an international nonprofit advocacy, educational, and charitable foundation, with website pages at “www.virgin.com/unite”.

The Complainant Virgin Limited Edition (“VLE”) is a private limited liability company established under English law, also based in London, which develops and operates holiday retreats and luxury hotels around the world. One of these is Necker Island in the British Virgin Islands (“BVI”). VLE operates a website at “www.virginlimitededition.com” with pages for the Necker Island resort at “www.virginlimitededition.com/en/necker-island”.

Virgin Enterprises and VLE are both members of the Virgin Group of companies, which originated in 1970 when Richard Branson began selling music records under the VIRGIN mark. The Virgin Group has expanded into a wide variety of businesses that use the VIRGIN mark under license. The Complainant Virgin Enterprises is the trademark owner for the Virgin Group and for the nonprofit Virgin Foundation. According to the Complaint, the Virgin Group currently comprises over 60 businesses worldwide, operating in 35 countries in Europe and Australasia, as well as in the United States, with more than 69,000 employees and annual group revenues exceeding GPB 16.6 billion. The record establishes that the VIRGIN brand is heavily advertised in Europe and North America and is associated with sponsored events and media stories. It has also been recognized in multiple publications as a leading brand in the United Kingdom.

The record shows that the Complainant Virgin Enterprises holds numerous trademarks consisting of, or incorporating the name “Virgin”, often with an additional element such as VIRGIN ATLANTIC, VIRGIN MONEY, VIRGIN TRAINS, VIRGIN HOLIDAYS, VIRGIN MEDIA, VIRGIN MOBILE, VIRGIN RADIO, and VIRGIN GAMES. Trademark registrations relevant for the current proceeding include the following:

The Complainant VLE claims unregistered rights in NECKER ISLAND as a trademark. According to the Witness Statement of VLE Legal Manager Thomas Storer, attached to the Complaint, Richard Branson purchased Necker Island, an uninhabited island in the British Virgin Islands, in 1978, on the condition that he develop a resort within four years. Mr. Branson did so, and VLE operates the resort, advertised as “Sir Richard Branson’s private island paradise”, as part of the VLE portfolio. NECKER ISLAND is publicized on the VLE website and on YouTube and Facebook. Bookings for rooms, weddings and other events, or for the entire island are taken on the VLE website. Numerous media stories have featured NECKER ISLAND and its celebrity guests (including Nelson Mandela, Princess Diana, Barack and Michelle Obama, Kate Moss, and Kate Winslett), and the BBC produced a 2014 documentary entitled “Billionaire’s Paradise: Inside Necker Island”. The record and search engine results show that “Necker Island” appears as a “luxury hotel” or “resort” in numerous travel directories and applications. NECKER ISLAND featured in many news stories in 2011 when the Great House burned down and was rebuilt, and again in 2017 when the island was devastated by Hurricane Irma and most structures had to be rebuilt. As explained on the VLE website and social media pages, and the Wikipedia article “Necker Island”, the island is usually rented in total with accommodations for about 30 people, served by a private chef, a support staff of about 100 people, and with access to tennis courts, beaches, and water sports. Individual rooms are rented during certain weeks each year, and Virgin hosts an annual Necker Cup tennis tournament on the island.

According to the Registrar, the Domain Name <neckerislandresorts.com> was registered on September 6, 2018, and the Domain Names <virginatlancticairways.com> and <virginunitefoundation.com> on September 12, 2018, all in the name of the Respondent M. Williams of Los Angeles, California, United States.

According to the Complaint, the Complainants became aware of the Domain Name <neckerislandresort.com> when they were contacted by an individual who received an email in September 2018 from “[...]@neckerislandresort.com”, giving a telephone number and requesting contact with the recipient. The message was made to appear to come from Virgin Group founder and head Sir Richard Branson, as it was shown as from “Richard” and signed, “Cheers, R.B www.virgin.com/richard-branson”. This email was not written or authorized by Sir Richard Branson or the Virgin Group. At that time, the Domain Name resolved to a website that copied VLE’s official web page for the Necker Island resort at “www.virginlimitededition.com/en/necker-island”. The Complainants then conducted a reverse WhoIs search for the Respondent, finding associated websites for the Domain Names <virginatlancticairways.com> and <virginunitefoundation.com> that also were replicas of the Complainant’s official website pages for Virgin Atlantic and Virgin Unite, respectively, except that the contact details had been changed. The Complaint attaches screenshots of the websites formerly associated with the three Domain Names and the corresponding Complainants’ websites at the time.

At the time of this decision, the Domain Name <neckerislandresort.com> is parked at a landing page with pay-per-click (“PPC”) advertising links, including those for competing resort properties. The Domain Names <virginatlancticairways.com> and <virginunitefoundation.com> do not resolve to active websites.

5. Parties’ Contentions

A. Complainant

The Complainants assert that the Domain Name <necekrislandresorts.com> is confusingly similar to the Complainant VLE’s unregistered NECKER ISLAND mark and that the Domain Names <virginatlancticairways.com> and <virginunitefoundation.com> are confusingly similar, respectively, to the Complainant Virgin Enterprises’ registered VIRGIN ATLANTIC and VIRGIN UNITE trademarks. The Complainants argue that the Respondent has no permission to use any of the Complainants’ marks and otherwise lacks rights or legitimate interests in any of the Domain Names.

The Complainants observe that the Respondent was clearly aware of the Complainants’ business and marks, creating replicas of the Complainant’s websites and at least one fraudulent email, in an apparent attempt to deceive others, presumably for commercial gain. The Complainants conclude that this conduct manifests bad faith in the registration and use of the Domain Names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; 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.

Under paragraph 15(a) of the Rules, “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”

A. Preliminary Matter: Multiple Complainants

The Rules, paragraph 3(c), contemplate that a complaint may relate to more than one domain name, provided that the domain names are registered by the same person, while paragraph 10(e) also gives panels the authority to consolidate multiple domain name disputes. In assessing whether a complaint may be filed by multiple complainants, as in this proceeding, panels consider whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.1.

Both Complainants in this instance are part of the Virgin Group of companies, and the Complainant Virgin Enterprises licenses the use of the VIRGIN marks to other members of the Group, including the Complainant VLE, which is a necessary party because of its assertion of common law rights in using the NECKER ISLAND mark. The same Respondent appears to have registered each of the Domain Names, and the Complainant seeks to establish that they all reflect a common pattern of targeting marks used by the Virgin Group and a related nonprofit foundation, creating replica websites with modified contact details, presumably in preparation for fraudulent activity.

The Panel finds that the Complainants have a common grievance against the Respondent and that it is equitable and efficient to permit the consolidation of their complaints in this proceeding.

B. Identical or Confusingly Similar

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview 3.0, section 1.7.

The Complainant Virgin Enterprises indisputably holds registered VIRGIN, VIRGIN ATLANTIC, and VIRGIN UNITE trademarks. The Domain Name <virginatlancticairways.com> is a clear case of “typosquatting” with the VIRGIN ATLANTIC mark, interposing an additional letter “c”, and also adding the generic word “airways”. The generic addition does not avoid a finding of confusing similarity, especially as the trademark is recognizable in the Domain Name and the added word is also in the name of the Complainant’s subsidiary Virgin Atlantic Airways Limited. As in most cases, the generic Top-Level Domain (“gTLD”) “.com” is not a distinguishing feature. Id. Thus, the Panel finds the Domain Name <virginatlancticairways.com> confusingly similar with the VIRGIN and VIRGIN ATLANTIC trademarks. Similarly, the Domain Name <virginunitefoundation.com> is confusingly similar to the VIRGIN UNITE trademark. The mark is incorporated in its entirety in the Domain Name, adding the generic term “foundation”, which does not avoid confusing similarity.

The Complainants assert unregistered trademark status for NECKER ISLAND. The Policy does not require a registered trademark, but to establish unregistered or common law trademark rights in a UDRP proceeding, the complainant must show that the mark has become a distinctive identifier that consumers associate with the complainant’s goods or services. See WIPO Overview 3.0, section 1.3. Relevant evidence demonstrating such acquired distinctiveness or “secondary meaning” can include the duration and nature of use of the mark, the amount of sales under the mark, the nature and extent of advertising using the mark, and the degree of public recognition. Id. NECKER ISLAND sales data are lacking in this record, but the record includes substantial documentation of advertising and public recognition since the 1980s. The record shows that Necker Island was uninhabited, undeveloped, and little frequented before Mr. Branson and Virgin came on the scene, constructing not only a residence for Mr. Branson but a luxury resort with amenities for both invited and paying guests. NECKER ISLAND has been advertised and reviewed online for decades as a luxury resort and events locale. The Panel finds persuasive evidence on this record that, for the purposes of the Policy, the name has been used in commerce over time by the Complainant and has acquired distinctiveness internationally in a relevant market for luxury resort guests and events planners. Therefore, the Panel finds that the Complainant VLE has rights in NECKER ISLAND as an unregistered mark for purposes of the first element of the Policy.

The Panel finds that the Domain Name <neckerislandresorts.com> is confusingly similar to the Complainant VLE’s common law NECKER ISLAND mark. The Domain Name incorporates the mark in its entirety and adds the generic term “resorts”, which does not avoid confusing similarity.

In addition, the Panel notes that the overall facts and circumstances of the case support a finding of confusing similarity, particularly as it appears that the Respondent registered the disputed domain names precisely because it believed that the disputed domain names were confusingly similar to the abovementioned trademarks of the Complainant. See WIPO Overview 3.0, section 1.7.

Finding confusing similarity in the case of all three Domain Names, the Panel concludes that the first element of the Policy has been established.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. Here, the Complainant has established a prima facie case by establishing its trademark rights, confusing similarity, and the lack of permissive use, a corresponding business or brand name, or other evident legitimate interest. This shifts the burden to the Respondent. The Respondent has not replied, and its conduct in copying the Complainants’ websites and misrepresenting itself in contact details and an email does not suggest any rights or legitimate interests in the Domain Names.

Accordingly, the Panel concludes that the Complainants have established the second element of the Policy.

D. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your web site or location.”

The record shows that the Respondent used one of the Domain Names for an email impersonating the head of the Virgin Group. The Respondent may have sent other such emails, which were disregarded rather than reported to the Complainants. The Respondent also copied the Complainants’ websites but changed the contact details. It is not known whether the websites formerly associated with the Domain Names were meant merely to lend credibility to targeted “spear phishing” emails or to separately attract prospective customers or fraud victims as well. The false contact details on those Respondent websites would serve to misdirect anyone who attempted to communicate with the Complainants, presumably for commercial gain.

The Respondent has since taken down the replica websites and has not replied to communications from the Complainants or the Center. One of the Domain Names has since been used for commercial gain, whether or not the Respondent’s, by directing Internet users to other advertisers, including competitors of the Complainant VLE. There is no evident reason for copying the Complainants’ websites and changing the contact details other than to exploit the Complainants’ reputation and misdirect Internet users for commercial or even criminal gain. The Panel finds, on this record, that the Respondent acted in bad faith in registering and using all three Domain Names.

The Panel concludes, therefore, that the Complainants have established the third element of the Policy.

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 Names <neckerislandresorts.com>, <virginatlancticairways.com> and <virginunitefoundation.com> be transferred to the Complainants.

W. Scott Blackmer
Sole Panelist
Date: November 22, 2018