WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Domain ID Shield Service, Domain ID Shield Service Co., Limited / Azuh Alwell, Domains Services
Case No. D2019-0079
1. The Parties
The Complainant is Virgin Enterprises Limited of London, United Kingdom, represented by A. A. Thornton & Co., United Kingdom.
The Respondent is Domain ID Shield Service, Domain ID Shield Service Co., Limited of Hong Kong, China / Azuh Alwell, Domains Services, Malaysia.
2. The Domain Name and Registrar
The disputed domain name <discovervirgin.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 January 15, 2019. On January 15, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 17, 2019, 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 January 17, 2019 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 January 22, 2019.
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 January 23, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 12, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 13, 2019.
The Center appointed Shwetasree Majumder as the sole panelist in this matter on February 18, 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 a member of the Virgin Group originally established by Sir Richard Branson in the United Kingdom (“UK”) in 1970. The Complainant claims that there are now over 60 Virgin branded businesses that span a diverse range of sectors and has filed a list of the various Virgin businesses and charitable ventures under their respective VIRGIN marks.
The Complainant claims to own a substantial portfolio of approximately 3,500 trademark applications and registrations in over 150 jurisdictions. In particular, the Complainant appears to own a number of UK, European Union, and international trademark registrations for the word “Virgin” per se, along with composite words like VIRGIN MEDIA, VIRGIN DISRUPTORS, VIRGIN MONEY and the VIRGIN signature device. The earliest among these is a UK registration for VIRGIN (registration No. UK00001230092) which dates back to September 2, 1988 in Classes 9, 14, 16, 18, 25, and 30.
The Complainant claims to be the registered proprietor of over 5,000 domain names consisting of or incorporating the VIRGIN mark and has filed evidence of its ownership of the domain names <virgin.com>, (registered in 1997), <virginmoney.com>, and <virginmedia.com>.
The disputed domain name was registered on December 12, 2018. The disputed domain name resolves to a website using the Complainant’s trademark and copying the layout of the Complainant’s official website.
5. Parties’ Contentions
The VIRGIN trademarks have all been consistently and continuously used across all Virgin operations since the company was founded. The disputed domain name is confusingly similar to the Complainant’s registered marks as it incorporates the word “virgin” in its entirety and supplemented only by the word “discover”, which serves merely to describe the purpose of the disputed domain name as enabling people to “discover” more about the brand Virgin. Hence under paragraph 4(a)(i), the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
The disputed domain name resolves to an active website, the homepage of which is a copy of the homepage that was previously used as the homepage for the “Virgin.com” website and which has an identical format and layout as the Virgin.com website. The website reproduces the Complainant’s trademarks and many of the links on the website are referral links to webpages on the Complainant’s genuine websites. Hence under paragraph 4(a)(ii), the Respondent has no rights or legitimate interests in the disputed domain name and under paragraph 4(a)(iii), 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
Paragraph 4(a) of the Policy provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the Respondent's domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain names; and
(iii) that the domain names have been registered and are being used in bad faith.
Paragraph 4(b) of the Policy sets out the conditions which, if found by the Panel to be present shall be evidence of the registration and use of a domain name in bad faith. These conditions are illustrative and not exhaustive. Paragraph 4(c) of the Policy sets out the conditions which, if found by the Panel to be proved, shall demonstrate the Respondent's rights or legitimate interest in the disputed domain name. These, too, are illustrative conditions.
A. Identical or Confusingly Similar
The Panel considers that in the backdrop of the Complainant’s proprietorship of the trademark VIRGIN, both as a standalone word as also in the form of a composite mark, the disputed domain name <discovervirgin.com> is confusingly similar to the Complainant’s trademark VIRGIN.
The Panel also agrees with the Complainant’s submission that the mere addition of the prefix “discover” to VIRGIN does not disguise the confusing similarity of the disputed domain name with the Complainant’s well-known trademark VIRGIN.
Accordingly, this Panel finds that the disputed domain name <discovervirgin.com> is confusingly similar to the Complainant’s trademark VIRGIN, and this requirement has therefore been satisfied.
B. Rights or Legitimate Interests
In the absence of a response to the Complaint, there is no material on record to demonstrate the existence of any rights or legitimate interests in favour of the Respondent in the disputed domain name. UDRP panels have recognised that although the onus to establish the paragraph 4(a)(ii) lies on the Complainant, “this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the view is that the burden of production shifts to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing”(See Monster Energy Company v. Registration Private, Domains By Proxy, LLC., WIPO Case No. D2018-2817).
Given that the Respondent was duly notified of the Complaint and has chosen not to rebut it on merits, the Panel draws an adverse inference against the Respondent with respect to the allegations made by the Complainant, from the silence of the Respondent. (See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009). In any event, the Panel has also carefully reviewed the material on record and concludes that:
(i) The Complainant has effectively demonstrated that it is the holder of a large number of registered trademarks which contain the word “virgin” either in a standalone manner or as a part of a composite mark as also several Virgin-formative domain names, the rights in respect of all of which have accrued in the Complainant’s favour long prior to the Respondent’s registration of the disputed domain name.
(ii) Given that the content on the website was also copied from the Complainant’s old website at “www.virgin.com”, there are clearly no rights or legitimate interests accruing in the Respondent’s favour.
Therefore, the Panel finds that the Complainant has fulfilled the second requirement of the Policy.
C. Registered and Used in Bad Faith
According to Section 3.1 of the WIPO Overview 3.0, “bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark”. The illustrative instances of bad faith of the Policy include:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on the respondent’s website or location.
It is apparent that conditions (iv) and in some part, condition (iii) listed above have been satisfied in the present instance, on account of the following facts:
(i) Given the well-known nature of the VIRGIN trademarks of the Complainant, the Respondent can be assumed to have constructive notice of their existence and their exclusivity qua the Complainant.
(ii) The Respondent has copied the older version of the homepage as also the layout and format of the “www.virgin.com” website.
(iii) The website contains referral links to webpages on the Complainant’s genuine websites such as “virgin.com/disruptors”, “uk.virginmoney.com”, “virginmedia.com”, and “virginradio.com”, clicking on which presumably generates referral revenue for the Respondent.
In light of the above facts, the Panel finds that the Respondent’s motive to register the disputed domain name can only have been to create a likelihood of confusion with the Complainant’s VIRGIN trademark, which it would undoubtedly achieve by creating confusion on account of the Complainant’s proprietary content appearing on the website associated with the disputed domain name. This likelihood of confusion has been created by the Respondent clearly with the intention to “attempt to attract, for commercial gain, Internet users to its website”.
Thereafter, the Respondent will or is likely to make commercial gains as a result of the said confusion by means of referral revenues and/ or other commercial queries that may be directed to the contact particulars associated with the said website, viz., the email address […]@discovervirgin.com.
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 <discovervirgin.com> be transferred to the Complainant.
Date: February 21, 2019