WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. WhoisGuard Protected, WhoisGuard, Inc / Joemon Joemon

Case No. D2020-1296

1. The Parties

The Complainant is Virgin Enterprises Limited, United Kingdom, represented by A. A. Thornton & Co., United Kingdom.

The Respondent is WhoisGuard Protected, WhoisGuard, Inc, Panama / Joemon Joemon, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <virginmobileinfo.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 22, 2020. On May 22, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 22, 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 May 25, 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 amended Complaint on May 26, 2020.

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 May 28, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2020.

The Center appointed Adam Samuel as the sole panelist in this matter on July 6, 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 is part of the Virgin group of companies and is responsible for registering and maintaining registrations for trademarks containing the VIRGIN name and licensing the right to use those marks to businesses using the VIRGIN brand. The Complainant owns a number of trademarks for the name VIRGIN MOBILE, including a United Kingdom trademark, registration number UK0002365570, filed on June 11, 2004 and registered on February 4, 2005. The Complainant licenses this trademark to Virgin Mobile Telecoms Limited (“Virgin Mobile”), a subsidiary of Virgin Media Limited, a company formerly known as Virgin Mobile (UK) Ltd.

The disputed domain name was registered on May 19, 2020.

The Complainant promotes the activities of the Virgin Group and the businesses licensed to use the VIRGIN brand through the domain name <virgin.com>, registered on September 10, 1997 and specifically as regards the Virgin Mobile brand, <virginmobile.com>, registered on July 1, 1998.

5. Parties’ Contentions

A. Complainant

The disputed domain name contains the Complainant’s registered trademark, VIRGIN MOBILE, in its entirety. The addition of “info” which is a commonly accepted abbreviation of the word “information” is a non-distinctive descriptive reference indicating that the website provides information about the Virgin Mobile business. The addition of descriptive or generic indications to the Complainant’s trademark does not prevent the disputed domain name from being confusingly similar to that trademark.

On May 20, 2020, the Complainant started to receive reports from customers that they had received text messages indicating that there had been a problem processing their bills. In these messages, the sender supplied a link to the disputed domain name. The disputed domain name resolves to a website displaying the Complainant’s registered trademarks and includes a message from “Virgin customer service” indicating Virgin Media as the copyright owner of the website. The website invites customers to verify their Virgin Mobile account by entering their personal and billing details.

The disputed domain name is not associated with or authorized by the Complainant. The use of the Complainant’s registered trademarks and efforts to contact the Complainant’s customers with messages about their billing are clear indications of the Respondent’s intention to mislead the Complainant’s genuine customers into believing that the disputed domain name is associated with the Complainant. The website to which the disputed domain name resolves makes blatant efforts to collect personal information and credit and debit card details from consumers and clearly aims to defraud the public.

The use of the disputed domain name to defraud the public indicates that the purpose of registering the disputed domain name was either to disrupt the Complainant’s business or to attempt to attract, for commercial gain the Complainant’s genuine customers by creating a likelihood of confusion with the Complainant’s registered trademarks. The choice of a domain name consisting of the Complainant’s mark with “info” combined with the evidence of the text messages targeting the Complainant’s genuine customers and the high-profile nature of VIRGIN Mobile’s business shows that it is inconceivable that the Respondent was unaware of the Complainant prior to registering the disputed domain name. The Respondent clearly had a bad faith intention at the time of registering the disputed domain name and the only use of the disputed domain name that the Complainant is aware of has also been in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(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 consists of the Complainant’s trademark VIRGIN MOBILE, the abbreviation “info” and the generic Top-Level Domain (“gTLD”) “.com”. The gTLD is irrelevant here because it is a standard registration requirement. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The addition of ordinary meaning words to the Complainant’s trademark, here the common abbreviation “info” which usually represents the term “information”, does not prevent a disputed domain name from being confusingly similar to that trademark. As section 1.8 of the WIPO Overview 3.0 explains:

“Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.”

Here the ordinary meaning word, “information”, also suggests that the disputed domain name contains information about the Complainant’s trademark and the business to which it is licensed.

For these reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent is not called “Virgin Mobile” or anything similar. There is no evidence that the Complainant has ever authorized the Respondent to use its trademarks. Based on the available record, and in the absence of any response from the Respondent on this point, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

In the evidence, there is a text message sent to a Virgin Mobile customer indicating that the company was unable to process the month’s bill payment. The text urged the user to update his or her billing information via the disputed domain name “to avoid fees”. The screenshots supplied by the Complainant of the website to which the disputed domain name resolved and to which the text message referred, included a page containing the Complainant’s distinctive Virgin logo and a clear indication of the website’s association with Virgin Mobile. The webpage also required users to verify details of their account with the owner of the disputed domain name to avoid their mobile phone accounts from being suspended. On the bottom of the screenshot was a claim that the website was the copyright of Virgin Mobile. When the “Next” button on the front page of the website to the disputed domain name resolved was clicked, the next webpage invited users to give their name, date of birth, address and debit or credit card.

The Complainant alleges that this incident occurred shortly after May 20, 2020. In any event, it must have occurred within a month of the disputed domain name’s registration. From the use of the Complainant’s trademark and licensee’s trading style, it is apparent that the Respondent knew of the Complainant’s trademark and registered the disputed domain name in order to impersonate and subsequently did impersonate the Complainant’s licensee, Virgin Mobile. This demonstrates that the Respondent registered and has used the disputed domain name in bad faith. See section 3.1.4 of the WIPO Overview 3.0.

For all these reasons, the Panel concludes that the disputed domain name was registered and is being used in bad faith. This makes it unnecessary for the Panel to deal with the other points made in support of the Complaint.

7. Decision

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 <virginmobileinfo.com> be transferred to the Complainant.

Adam Samuel
Sole Panelist
Date: July 13, 2020