WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Amrita Consult
Case No. D2018-2620
1. The Parties
The Complainant is Virgin Enterprises Limited of London, United Kingdom, represented by Stobbs IP Limited, United Kingdom.
The Respondent is Amrita Consult of New York City, New York, United States of America (“United States” or “USA”).
2. The Domain Name and Registrar
The disputed domain name <virginprofunds.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 November 15, 2018. On November 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 16, 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 sent a request for clarification to the Complainant on November 23, 2018. The Complainant filed an amendment to the Complaint on November 23, 2018.
The Center verified that the Complaint together with the amendment to 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 November 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 16, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 17, 2018.
The Center appointed Alvaro Loureiro Oliveira as the sole panelist in this matter on January 8, 2019. 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 Virgin Enterprises Limited, 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 businesses worldwide, operating in 35 countries including throughout Europe, the USA and Australasia.
The Complainant is the owner of the VIRGIN trademark and company name, and owns several trademark registrations granted worldwide for the “VIRGIN Mark”, i.e., United States Reg. No. 1413664, registered on October 14, 1986. The Complainant has been using the VIRGIN Mark since the seventies.
As evidenced by the documents attached to the Complaint, the Complainant’s mark VIRGIN was extensively promoted, without limitation, in print advertisements, promotional materials, Internet forums, etc. As stated, the Complainant has a significant portfolio of trademark registrations, domain registrations and a reputation in the VIRGIN brand.
The disputed domain name was registered on November 6, 2018 and resolved to a webpage that mirrored the official webpage of the Complainant.
5. Parties’ Contentions
The Complainant is the owner of the trademark VIRGIN, which object of a considerable number of registrations worldwide. Besides the Complainant also owns several domain name registrations. Proof of these allegations were presented as annex 4 to the Complaint. Due to the Complainant’s operations, the VIRGIN Mark has acquired international recognition and is necessarily linked to the Complainant.
The VIRGIN Mark is associated to the Complainant’s core business. The use of the mark has started more than 40 years ago. The Complainant has been recognized for its business services and brand recognition, as shows a witness statement from Mr. Harding (annex 5 to the Complaint).
Further, as stated by the documents presented, the registration and use of the VIRGIN Mark predates the registration of the disputed domain name, and the disputed domain name is confusingly similar to the VIRGIN Mark.
The disputed domain name contains the mark VIRGIN in association with the term “profunds”. The disputed domain name contains the VIRGIN trademark in its entirety. On the other hand, the word “profunds” has no meaning and does nothing to distinguish the disputed domain name – nevertheless it can be considered as suggestive of the provision of funds and the Virgin Group has activities on funding for Startup Companies as referenced in the Witness Statement.
The disputed domain name directs to a webpage that mirrored the official webpage of the Complainant, as shown in annex 6 to the Complaint. Further, the Complainant alleges that the Respondent has been established a false email address [...]@virginprofunds.com, most probably to be used in relation to phishing activity. The existence of this email is shown in annex 7.
Additionally, the Complainant alleges that the registration and use of the disputed domain name intentionally misleads Internet users, and that the disputed domain name was registered and is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy, in its paragraph 4(a), determines that three elements must be presented and duly proven by a complainant to obtain relief. These elements are:
(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 disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name is, indeed, confusingly similar to the VIRGIN Mark, as the latter is entirely incorporated in the disputed domain name with the addition of the term “profunds”.
The Complainant has presented consistent evidence of ownership of the VIRGIN Mark in jurisdictions throughout the world, by presenting international trademark registrations, as well as comprehensive evidence of the use of the trademark.
The use of the VIRGIN Mark with the addition of the term “profunds” in the disputed domain name does not prevent a finding of confusing similarity.
Given the above, the Panel finds that the Complainant has met the requirements under the first element of the Policy.
B. Rights or Legitimate Interests
There is clear evidence that the VIRGIN Mark is registered in the Complainant’s name and is widely known as identifying the Complainant’s activities, and that the Complainant has not licensed this trademark to the Respondent. Hence, the Panel finds that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. In the absence of a Response, the Respondent has not rebutted such prima facie case.
It has also been shown that the Respondent is making a questionable use of the disputed domain name, redirecting it to a website that reproduces the one of the Complainant’s. Evidence also shows that the Respondent is in fact using the disputed domain name to deceive Internet users via a fraudulent email scheme.
The Panel, thus, finds for the Complainant under the second element of the Policy.
C. Registered and Used in Bad Faith
Given the circumstances of this case, the facts evidence the Respondent’s bad faith in the registration and use of the disputed domain name.
The Complainant has submitted evidence of a fraudulent email scheme executed by the Respondent, using an email account relating to the disputed domain name. The disputed domain name was registered to clearly mislead the consumers – as it directs to a page mocking up that of the Complainant, and uses a contact email that induces users to error.
The Respondent intended to give an overall impression that the disputed domain name is associated with the Complainant’s business, and the Panel accepts that the disputed domain name may be intended for unlawful purposes. The Respondent’s redirection to a copy of the Complainant’s website further shows that it is attempting to mislead consumers into believing that the disputed domain name is associated or affiliated with the Complainant, when it is not.
All the points above lead to the conclusion by this Panel that the Respondent was fully aware of the Complainant and that the Respondent registered and is using the disputed domain name in bad faith.
The Panel finds that the Complainant has also proved the third element 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 <virginprofunds.com> be transferred to the Complainant.
Alvaro Loureiro Oliveira
Date: January 18, 2019