WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Jon Jones
Case No. D2018-2867
1. The Parties
The Complainant is Virgin Enterprises Limited of London, United Kingdom, represented by A. A. Thornton & Co., United Kingdom.
The Respondent is Jon Jones of Raceland, Louisiana, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <virgin-unite.org> 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 December 17, 2018. On December 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 18, 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 December 19, 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 December 24, 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 December 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 17, 2019.
The Center appointed Desmond J. Ryan as the sole panelist in this matter on January 30, 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 disputed domain name was registered on November 6, 2018. The Virgin Group of Companies was founded by Sir Richard Branson in 1970. The Group currently comprises over 60 businesses operating throughout the world. The Complainant is a member of the Group which is responsible for the administration and protection of the Group’s trade marks. According to the Complainant, it owns over 3,500 trade mark registrations covering over 150 countries and regions throughout the world. Its registrations include United Kingdom Registration No. 2375670, VIRGIN UNITE, registered on June 17, 2005, and covering classes 35 and 36 of the International Classification. The Complainant also owns International Registration No. 1141309 which extends to the United States and United States Registration No. 3472228 registered on July 22, 2008. The Complainant’s registrations include registrations of the word VIRGIN, the words VIRGIN UNITE and the words VIRGIN UNITE in a distinctive red logo. The Complainant also holds over 5,000 domain names which incorporate the word “virgin” including <virgin.com> and <virginunite.com>. The Complainant and its trade marks are widely promoted through media, including social media, and through sponsorships and other forms of promotion. The Panel further notes that the Complainant has been successful in over 100 complaints under the Policy filed with the Center.
Among the many operations carried on by the Virgin Group of Companies is the Virgin Foundation, a charitable organization registered in the United Kingdom, which carries on its activities under the name “Virgin Unite” and promotes those activities under the trade marks VIRGIN UNITE and the distinctive VIRGIN UNITE red logo referred to above.
The disputed domain name does not resolve to an active website, however, the Complainant has provided evidence to show that it is used as an email address. Evidence provided by the Complainant shows that when the disputed domain name is visited in the Google Chrome browser, a warning page comes up warning that phishing activity has been detected at the site. The Complainant also provides evidence that on November 14, 2018, an email was sent to a third party using the disputed domain name as an email address and purporting to have been sent by the Managing Director of the Complainant’s Virgin Unite charity. The email is addressed to someone from the office of the Mayor of Oklahoma City. It states that it is from the Managing Director of the Virgin Unite Charitable Foundation. It purports to relate to a worldwide educational speaking tour by Sir Richard Branson and suggesting that Oklahoma City might be a suitable host city for the United States leg of the speaking tour. The sender asks for the assistance of the person from the office of the Mayor of Oklahoma City in setting up a telephone discussion between Sir Richard Branson and the Mayor of the city. According to the Complainant, the email was not sent by the Managing Director of Virgin Unite charity, nor was it authorised by him. The email’s signature block replicates the Complainant’s VIRGIN UNITE trade mark, its distinctive red logo and its registered company number and charity number.
5. Parties’ Contentions
The Complainant’s contentions may be summarized as follows:
(i) The Complainant has well established rights in the trade marks VIRGIN and VIRGIN UNITE.
(ii) The disputed domain name wholly contains the Complainant’s trade marks and differs from its VIRGIN UNITE trade mark only by the interposition of a hyphen.
(iii) The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant has not licensed or otherwise authorised the Respondent to use its trade marks or the disputed domain name and the Respondent is not commonly known by the disputed domain name. The disputed domain name does not resolve to an active webpage; its only use has been as an email address to send emails to third parties impersonating the Managing Director of the Complainant’s charitable foundation “Virgin Unite”.
(iv) Given the Complainant’s demonstrated reputation and recognition of the Complainant’s VIRGIN UNITE trade mark in relation to its charitable work, it is inconceivable that the Respondent was not aware of the Complainant and its trade mark when the Respondent registered the disputed domain name.
(v) The Respondent’s use of the disputed domain name to send phishing emails is fraudulent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed in its Complaint, the Complainant must establish on the balance of probability, each of the circumstances set out in paragraph 4(a) of the Policy.
A. Identical or Confusingly Similar
The Complainant has provided evidence of well-established trade mark rights in both its VIRGIN and VIRGIN UNITE trade marks including evidence of registration of the VIRGIN UNITE trade mark under United Kingdom Registration No. 2375670 dating back to June 2005 and United States Registration dating back to July 2008. The disputed domain name differs from the Complainant’s VIRGIN UNITE trade mark only by the interposition of a hyphen between the words “virgin” and “unite” and the addition of the generic Top-Level Domain (“gTLD”) “.org”. It is well established that for the purpose of comparison of the disputed domain name and the Complainant’s trade mark, the presence of the gTLD is usually to be ignored, see WIPO Overview of WIPO Panel Views on Selected URDP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1.
The Panel therefore finds that the disputed domain name is identical or at least confusingly similar to a trade mark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has asserted that it has not authorised the Respondent to use its trade marks in the disputed domain name and there is no evidence that the Respondent is commonly known by it. The Respondent’s use of the disputed domain name to fraudulently impersonate the Managing Director of the Complainant’s charitable foundation clearly is not a legitimate noncommercial or fair use or use in connection with a bona fide offering of goods or services.
The Respondent has not attempted to rebut the Complainant’s contentions and accordingly the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
The Complainant has demonstrated that its VIRGIN trade mark is well known and widely recognized and is protected by registrations in many countries throughout the world including the United States where, according to the registrant information received from the Registrar, the Respondent resides.
The disputed domain name comprises the Complainant’s VIRGIN UNITE trade mark with the addition of a hyphen between the two words. It similarly differs from the Complainant’s <virginunite.com> domain name only by the insertion of the hyphen and the registration in a different gTLD. Whilst the words “virgin” and “unite” are dictionary terms, their combination is unusual so, as the Complainant submits, it is hard to conceive that the Respondent was not aware of the Complainant when it registered the disputed domain name.
The Panel therefore finds that the disputed domain name was registered in bad faith.
The Complainant has shown that the disputed domain name is not used to resolve to an active website but rather is used as an email address. Evidence provided by the Complainant shows that that address has been used to impersonate the Managing Director of the Complainant’s “Virgin Unite” charitable foundation and to attempt, without his or the Complainant’s knowledge or authority, to establish contact between the Complainant’s founder, Sir Richard Branson, and the Mayor of Oklahoma City. The Panel accepts the Complainant’s contention that this was most likely part of a phishing exercise and concludes that its underlying purpose was to entice recipients of the email to reply to the email address for commercial gain by creating a likelihood of confusion as to the source or affiliation of the email location.
The Respondent’s use of the disputed domain name was clearly fraudulent and within the scope of paragraph 4(b)(iv) of the Policy. The Panel therefore finds that the disputed domain name has been used in bad faith.
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 <virgin-unite.org> be transferred to the Complainant.
Desmond J. Ryan AM
Date: February 6, 2019