WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Registration Private, Domains By Proxy, LLC / Darren Toto, Darren Toto
Case No. D2020-0014
1. The Parties
The Complainant is Virgin Enterprises Limited, United Kingdom, represented by A. A. Thornton & Co., United Kingdom.
The Respondent is Registration Private, Domains By Proxy, LLC / Darren Toto, Darren Toto, Australia.
2. The Domain Name and Registrar
The disputed domain name <virginholidaybookings.com> is registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 6, 2020. On January 6, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 7, 2020, 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 8, 2020 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 amendment to the Complaint on January 9, 2020.
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 January 13, 2020. The Respondent submitted two informal communications to the Center on January 13, 2020. On January 14, 2020, the Center invited the Parties to explore settlement negotiations. The Complainant indicated to the Center on January 15, 2020 that it did not wish to pursue settlement negotiations and to continue the proceeding. On January 16, 2020, the Center received an email communication from the Respondent. In accordance with the Rules, paragraph 5, the due date for Response was February 2, 2020. The Respondent did not submit any formal response. Accordingly, the Center notified the commencement of Panel Appointment on February 4, 2020.
The Center appointed Martin Schwimmer as the sole panelist in this matter on February 13, 2020. 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 has used and registered the VIRGIN trademark across a broad range of goods and services since 1970. It has used and registered the VIRGIN BOOKINGS trademark in connection with travel reservation services since 1985. The Respondent registered the disputed domain name <virginholidaybookings.com> on August 19, 2019, which it uses in connection with the provision of pay per click advertising relating to travel reservation services.
5. Parties’ Contentions
The Complainant is Virgin Enterprises Limited, a company incorporated under the laws of England and Wales. It is a member of the Virgin Group of companies.
The Virgin Group was originally established by its founder and chairman Sir Richard Branson in the United Kingdom in 1970 when he started a business selling popular music records by mail order under the VIRGIN name. Since then the operations of the Virgin Group have grown significantly. There are now over 60 VIRGIN branded businesses that span a diverse range of sectors covering Financial Services, Health & Wellness, Music & Entertainment, People & Planet, Telecommunications & Media and Travel & Leisure, have between them over 53 million customers worldwide and employ more than 69,000 people in 35 countries. Annual revenue is GBP 16.6 billion.
The Complainant owns trademark applications and registrations for the VIRGIN and VIRGIN logo marks in over 150 countries. It owns registrations for the VIRGIN HOLIDAYS and VIRGIN HOLIDAYS logo trademarks, including UK Trade Mark Registration No. UK00003107313 for the mark VIRGIN HOLIDAYS in classes 9, 35, 39, 41, 43 and 44, registered August 7, 2015; and European Union Trade Mark Registration No. 014032098 for VIRGIN HOLIDAYS in classes 9, 35, 39, 41, 43 and 44 registered December 3, 2015. Collectively, the VIRGIN, VIRGIN logo, VIRGIN HOLIDAYS, and VIRGIN HOLIDAYS logo trademarks are the “VIRGIN Marks”.
The Complainant has operated a website at “www.virgin.com” since 2000 to promote the activities of the VIRGIN Group and its businesses, ventures and foundations (the “Virgin.com Website”).
In 1985 the Complainant launched Virgin Holidays, a business offering long haul holidays. It has operated a website at “www.virginholidays.com” (the “Virgin Holidays Website”), since 1998, to promote its holidays and provide a service for booking holidays, flights, hotels and hire cars.
The VIRGIN HOLIDAYS business is now one of the largest transatlantic tour operator and a market leader for holidays to the United States of America (“US”) and the Caribbean. As well as the US and the Caribbean, the VIRGIN HOLIDAYS business offers package holidays to the Middle East, Indian Ocean, Mexico, Africa, Asia and the Far East, and Canada.
The omission of the “s” at the end of “holidays” in the disputed domain name, could easily not be noticed by consumers or result as a typographical error by Internet users. In any case, the omission of the “s” is not enough to distinguish the disputed domain name from the Complainant’s marks.
The addition of the word “bookings” in the context of the Complainant’s business under the mark VIRGIN HOLIDAYS will indicate to Internet users that the website at the disputed domain name is for booking a VIRGIN HOLIDAYS holiday package. It is not enough to distinguish the disputed domain name from the Complainant’s Marks and avoid confusion on the part of consumers.
The disputed domain name is being used in relation to host a website that posts links and advertisements for third party websites, and is most likely a pay-per-click website (“PPC”) (the “Contested Website”).
The links and ads posted on the Contested Website are to websites that offer products and services that compete with those offered by the Complainant under its VIRGIN HOLIDAYS brand, such as hotel services, car rental services, travel insurance and air travel services.
The Contested Website also hosts links to websites that offer comparison of hotels none of which are run by the Complainant.
The intention of the Respondent in these instances is to offer a link to a third-party website that competes with the Complainant’s VIRGIN HOLIDAYS brand. Therefore, prospective consumers would be diverted from the Complainant’s genuine services.
The activity on the Contested Website as shown above indicates the Respondent has no legitimate interest in the disputed domain name, nor is the use noncommercial or fair. There is no evidence the Respondent has been commonly known by the disputed domain name or made any use or plans to use the disputed domain name in connection with a legitimate business activity.
The use of the disputed domain name in relation to a PPC website will cause disruption to the Complainant’s VIRGIN HOLIDAYS business, as it will confuse consumers looking for the Complainant’s genuine services and those consumers looking to make or track bookings of the Complainant’s services into thinking the disputed domain name is associated with or operated by the Complainant. It is also possible the consumers or prospective consumers having found the Contested Website might go on to think the services linked through to from the Contested Website are also associated with or operated by the Complainant.
Given the extent of the reputation of the Complainant and the VIRGIN HOLIDAYS brand as a successful holidays and tour operator it is inconceivable that the Respondent is not aware of the Complainant and the VIRGIN HOLIDAYS brand at the time of registering the disputed domain name.
The addition of “bookings” to a term very close to the Complainant’s registered marks is done intentionally to increase the confusion and reinforce misleadingly that the purpose of the Contested Website is to book or manage bookings of the Complainant’s services.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is comprised of the words “virgin”, “holiday” and “bookings”, with the gTLD “.com”. The deletion of the letter ‘s’ is insufficient to distinguish the word “holiday” from the word “holidays” in the Complainant’s VIRGIN HOLIDAYS mark. The disputed domain name therefore incorporates near-identical versions of the Complainant’s VIRGIN Marks.
The word “bookings” is a dictionary term for the Complainant’s travel services. It is established in WIPO UDRP panel decisions that the addition of descriptive or dictionary terms to a third-party trademark does not avoid the disputed domain name being confusingly similar to the third-party trademark. Valero Energy Corporation and Valero Marketing and Supply Company v. Valero Energy, WIPO Case No. D2017-0075 (<valeropetroluem.org>).
The Panel finds that the disputed domain name is confusingly similar to the VIRGIN Marks in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent has not filed any response in this proceeding. Therefore, the Panel may accept all reasonable inferences and allegations included in the Complaint as true.
The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name by showing that the Contested Website does not constitute legitimate noncommercial or fair use of the disputed domain name.
Furthermore, the Complainant has never given a license nor in any way authorized the Respondent to make use of the Complainant’s VIRGIN and VIRGIN HOLIDAYS marks or to register the disputed domain name.
By reason of the highly distinctive character and unique nature of the VIRGIN Marks and the complete integration of the VIRGIN and VIRGIN HOLIDAYS marks in the disputed domain name, the Panel concludes that it is unconceivable to envisage any rights or legitimate interests for registering the disputed domain name, other than to capitalize or gain on the Complainant’s reputation in some way.
The Panel finds the Respondent has no rights or legitimate interests in the disputed domain name.
The second criterion of the Policy has been met by the Complainant.
C. Registered and Used in Bad Faith
As indicated in paragraph 4 above, the Complainant’s VIRGIN and VIRGIN HOLIDAYS trademarks were registered long before the disputed domain name was registered. The Complainant’s VIRGIN trademark is well known in regard to travel services. The Respondent must have been aware of the existence of the Complainant’s rights in the trademarks when registering the disputed domain name. Previous UDRP panels have held that the registration of a domain name obviously connected with well-known trademarks by someone without any connection to these trademarks suggests opportunistic bad faith. See, e.g., LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494.
The disputed domain name resolves to a website which offers holiday booking services. The Respondent sought to use the Complainant’s reputation and trademarks to its advantage by offering PPC links promoting competitive services to those of the Complainant. The use of the disputed domain name with the intent to attract Internet users to the website for commercial gain by creating a likelihood of confusion with the Complainant’s trademarks constitutes evidence of registration and use in bad faith. See, e.g. Radio Globo SA v. Vanilla Limited, WIPO Case No. D2006-1557.
The use of the dictionary term amplifies the association of the dispute domain name with the Complainant’s VIRGIN Marks.
Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under paragraph 4(a)(iii) 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 <virginholidaybookings.com> be transferred to the Complainant.
Date: February 21, 2020