WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited, Virgin Limited Edition v. Marcel Elzehama, Domains Services
Case No. D2018-2625
1. The Parties
The Complainant is Virgin Enterprises Limited of London, United Kingdom, Virgin Limited Edition of London, United Kingdom, represented by Stobbs IP Limited, United Kingdom.
The Respondent is Marcel Elzehama, Domains Services of Malaysia.
2. The Domain Name and Registrar
The disputed domain name <bransonneckerisland.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 November 15, 2018. On November 16, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 19, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on the same date 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 21, 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 30, 2018. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 21, 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 first Complainant is Virgin Enterprises Limited (the “first Complainant”), the brand owner of 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 United States of America and Australasia.
The first Complainant is the owner of the VIRGIN trademark, as well as several trademark registrations granted worldwide for the BRANSON trademark, a mark derived from Sir Richard Branson, the founder of the Virgin Group
As evidenced by the documents attached to the Complaint, the first 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 and domain name registrations.
The second Complainant, Virgin Limited Edition (the “second Complainant”), is the arm of the Virgin Group that operates Mr. Branson’s portfolio of luxury retreats, among which is Necker Island, an island in the British Virgin Islands that houses a luxury resort.
The disputed domain was registered on November 3, 2018 and resolved to a webpage mirroring the official webpage of the second Complainant. The disputed domain name is currently inactive.
5. Parties’ Contentions
The first Complainant is the owner of the trademark BRANSON, which is the object of a considerable number of registrations worldwide. Proof of these allegations were presented as Annex 4 to the Complaint. Due to the Complainant’s operations and the renown of Sir Richard Branson, the BRANSON mark has acquired international recognition and is necessarily linked to the Complainant.
Further, as stated by the documents presented, the registration and use of the BRANSON Mark predates the registration of the disputed domain name.
The second Complainant is the arm of the Virgin Group that operates Mr. Branson’s portfolio of luxury retreats, among which is Necker Island, an island in the British Virgin Islands that houses a luxury resort. Necker Island is featured on the Virgin Limited Edition website at “www.virginlimitededition.com/en/neckerisland” and bookings for the resort are taken via that website.
Use of the name of the island is in direct relation to the resort and to the Complainants established unregistered rights over the NECKER ISLAND trademark.
The disputed domain name contains both the mark BRANSON and the mark NECKER ISLAND. The disputed domain name contains both marks in their entirety, thus linking it directly to the business conducted by the Complainants.
The disputed domain name directs to a webpage that mirrors the official webpage of the operation conducted by the second Complainant, as shown in Annex 8 to the Complaint. As the Annex 7 shows the official webpage of the second Complainant, the reproduction can be seen.
Further, the Complainants state that the Respondent’s webpage bore false email addresses, all with the termination [...@bransonneckerisland.com], which are not associated with the Complainants. These addresses can be also seen in Annex 8.
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 BRANSON and to the NECKER ISLAND Marks, as they are entirely incorporated in the disputed domain name.
The first Complainant has presented consistent evidence of ownership of the BRANSON Mark in jurisdictions throughout the world, by presenting international trademark registrations, as well as comprehensive evidence of the use of the trademark. Also, there is evidence of the origin of this mark, the name of the founder of the Group, Sir Richard Branson. In addition, the second Complainant has presented evidence of use of the unregistered mark NECKER ISLAND sufficient for purposes of the Policy.
The use of the BRANSON and to the NECKER ISLAND marks in the disputed domain name does not differentiate it from the trademarks and therefore 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 BRANSON mark is registered in the first 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. There is also clear evidence of the use of the mark NECKER ISLAND by the second Complainant, to identify a high-end resort from the Virgin Group. Hence, the Panel finds that the Complainants have 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, resolving to a website that reproduces the one of the Complainant’s. The Panel considers that the 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 Complainants have submitted evidence of a scheme executed by the Respondent, using email accounts relating to the disputed domain name most probably to obtain information and gain from third parties. 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 several contact emails that induces users to error.
The Respondent intended to give an overall impression that the disputed domain name is associated with the Complainants’ 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 Complainants’ website further shows that it is attempting to mislead consumers into believing that the disputed domain name is associated or affiliated with the Complainants, when it is not.
All the points above lead to the conclusion by this Panel that the Respondent was fully aware of the Complainants 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, <bransonneckerisland.com> be transferred to the Complainant.
Alvaro Loureiro Oliveira
Date: January 21, 2019