WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. Hajia Allasco, Domains Services

Case No. D2018-2455

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 Hajia Allasco, Domains Services, of Poipet, Malaysia.

2. The Domain Name and Registrar

The disputed domain name <virgintourcruise.com> 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 October 29, 2018. On October 29, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name and contact information in the Complaint. The Center sent an email communication to the Complainant on October 30, 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 November 2, 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 November 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 28, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 29, 2018.

The Center appointed Assen Alexiev as the sole panelist in this matter on December 7, 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, which originated in 1970 when Richard Branson began selling music records under the brand VIRGIN. Since then, the Virgin Group has expanded widely and now comprises over 60 businesses with more than 69,000 employees, operating in 35 countries in Europe, the United States of America (“USA”) and Australasia, with total annual turnover in excess of GBP 16.6 billion. All of these businesses use the brand VIRGIN as part of their names.

One of the companies of the Virgin Group is Virgin Holidays with its official websites at “www.virginholidays.co.uk” and “www.virginholidayscruises.co.uk”. Virgin Holidays was established in 1985 as a tour operator specializing in long haul holidays, and now offers tour holidays and cruises. In the USA, the Virgin Group has established Virgin Vacations, which similarly offers tours and cruises through its website at “www.virgin-vacations.com”.

The Complainant has registered and owns the following trademark registrations for VIRGIN (“the VIRGIN trademark”):

- the trademark VIRGIN with registration No. UK00001009534, registered in the United Kingdom on April 11, 1973 for goods in International Class 9;
- the European Union trademark VIRGIN with registration No. 001798560, registered on June 5, 2002 for goods and services in International Classes 9 and 39;
- the European Union trademark VIRGIN with registration No. 015255235, registered on March 21, 2016 for goods and services in International Classes 3, 5, 9, 11, 12, 14, 16, 31, 32, 35, 36, 38, 39, 41, 42, 43, 44 and 45; and
- the International trademark VIRGIN with registration No. 1290574, registered on February 3, 2015 for goods and services in International Classes 39, 41 and 43.

The Complainant has registered the VIRGIN trademark at the Trademark Clearinghouse with SMD 0000003261498183204827-1.

The disputed domain name was registered on October 23, 2018. It is currently inactive.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s VIRGIN trademarks. The disputed domain name contains the words “virgin”, “tour” and “cruise”, followed by the generic Top-Level-Domain (“gTLD”) “.com”. Thus, the disputed domain name incorporates the Complainant’s VIRGIN trademark in its entirety, while the words “tour” and “cruise” are descriptive and do not distinguish the disputed domain name from the VIRGIN trademark. The Complainant notes that all results of a Google search for “virgin tour cruise” refer to the Virgin Group, so the general public would associate the disputed domain name with the Complainant.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not authorized the Respondent to use the VIRGIN trademark, and the Respondent is not known by the name VIRGIN and has no trademark rights in VIRGIN. Furthermore, the Respondent is not using the disputed domain name in connection with a legitimate offering of goods/services.

The Complainant submits that the disputed domain name has been registered and is being used in bad faith. The Complainant’s VIRGIN trademark was registered many years prior to the registration of the disputed domain name, and benefits from substantial recognition in the public domain, so the Respondent will have had knowledge of it at the date of registration of the disputed domain name. The Complainant further contends this knowledge is also evident from the content of the website at the disputed domain name, which is associated to a website that mirrors the homepage of the Complainant’s website in an attempt to divert Internet users searching for the Complainant to the Respondent’s website, possibly for phishing purposes. Individuals landing on the Respondent’s website would be confused into believing it was owned and operated by the Complainant. According to the Complainant, these circumstances indicate that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s VIRGIN trademark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or of the services offered on the Respondent’s website.

B. Respondent

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

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed domain name is identical or confusingly similar to a trademark 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 Respondent has registered and is using the disputed domain name in bad faith.

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name …”

In this proceeding, the Respondent has not used the opportunity provided to it under the Rules and has not submitted a substantive Response addressing the contentions of the Complainant and the evidence submitted by it.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the VIRGIN trademark.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the gTLD section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” gTLD section of the disputed domain name.

The relevant part of the disputed domain name is therefore the sequence “virgintourcruise”. It consists of the elements “virgin”, “tour” and “cruise”. The “virgin” element is identical to the VIRGIN trademark, while the “tour” and “cruise” elements are descriptive of tourist travel. In the Panel’s view, these elements taken together are likely to appear to Internet users as referring to an online location of the Complainant where tours and cruises are offered.

In view of the above, the Panel finds that the disputed domain name is confusingly similar to the VIRGIN trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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. See section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent has not been authorized by the Complainant to use the VIRGIN trademark and that the Respondent is not commonly known by the disputed domain name. The Respondent’s use of the disputed domain name is not legitimate, because the website at the disputed domain name is replica of the Complainant’s website, which may mislead and divert the Complainant’s clients and damage the trademark’s reputation. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not submitted a Response and has not alleged that is has rights and legitimate interests in the disputed domain name and has not disputed the Complainant’s allegations in this proceeding.

The disputed domain name incorporates the VIRGIN trademark entirely with the addition of the elements “tour” and “cruises”. As discussed above, this makes it likely that Internet users may regard the disputed domain name as being an official online location of the Complainant offering travel services. This likelihood of confusion is further increased by the Respondent’s use of the disputed domain name for a website that copies the website of the Complainant.

On the basis of the above and in the lack of any explanation by the Respondent of its actions, the Panel is satisfied that the Respondent, being well aware of the goodwill of the Complainant’s VIRGIN trademark, is likely to have registered and used the disputed domain name in an attempt to exploit the trademark’s goodwill to attract the attention of Internet users and to mislead them that the disputed domain name and the associated website represent an official online location of the Complainant where its travel services are offered. In the Panel’s view, such conduct does not appear to be legitimate and does not give rise to rights and legitimate interests of the Respondent in the disputed domain name.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have 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 that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

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

The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.

As discussed above, the disputed domain name fully incorporates the VIRGIN trademark and is confusingly similar to it. The Respondent does not deny that the disputed domain name has been linked to a website that copies the website of the Complainant, and in this proceeding the Respondent has not provided any explanation of its actions.

In view of the above, the Panel accepts that the Respondent is likely to have registered the disputed domain name with knowledge of the Complainant and targeting the VIRGIN trademark in an attempt to attract traffic to the disputed domain name by confusing Internet users that they are reaching an official online location of the Complainant. The website at the disputed domain name may further confuse Internet users due to the fact that it has the same appearance as the website of the Complainant and offers the same travel services. Taking this into account, the Panel accepts that by using the disputed domain name, the Respondent has intentionally attempted 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 VIRGIN trademark and the origin of the services offered at its website.

Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith.

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 disputed domain name <virgintourcruise.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: December 21, 2018