WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. Aladin Chidi, NA / Aladin Tg

Case No. D2020-1921

1. The Parties

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

Respondent is Aladin Chidi, NA, Canada / Aladin Tg, United Kingdom.

2. The Domain Names and Registrar

The disputed domain names <virgincruisevoyages.com>, <virginmediabiz.com> and <virginmobilewifi.com> are registered with OwnRegistrar, Inc. (the “Registrar”). The disputed domain name <govirginvoyages.com> is registered with NameSilo LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 23, 2020. On July 23, 2020, the Center transmitted by email to the Registrar, OwnRegistrar, Inc., a request for registrar verification in connection with the disputed domain names <virgincruisevoyages.com>, <virginmediabiz.com> and <virginmobilewifi.com>. On July 24, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that 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 Respondent of the Complaint, and the proceedings commenced on July 27, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 16, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 17, 2020.

On July 31, 2020, Complainant filed an amended Complaint requesting the addition of the disputed domain name <govirginvoyages.com>. Upon receiving instruction from the Panel, the Center transmitted by email to the Registrar, NameSilo LLC, a request for registrar verification in connection with the disputed domain name <govirginvoyages.com>. On September 21, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <govirginvoyages.com>, which differed from the named Respondent and contact information in the Complaint. On September 28, 2020, Administrative Panel Procedural Order No. 1 was issued providing the registrant and contact information disclosed by the Registrar, inviting Complainant to submit an amendment to the Complaint, and inviting Respondent to file a response. Complainant filed an amended Complaint on September 30, 2020. Respondent did not submit any response.

The Center appointed Brian J. Winterfeldt as the sole panelist in this matter on September 8, 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

Complainant is the owner of the VIRGIN, VIRGIN VOYAGES, and VIRGIN MOBILE trademarks (“VIRGIN Marks” or “Complainant’s Marks”). Complainant has been using the VIRGIN trademark since at least 1970, the VIRGIN VOYAGES mark since at least 2014, and the VIRGIN MOBILE trademark since at least 1999, each in connection with various goods and services related to the financial, entertainment, media and travel industries, among others. Complainant has a commercial presence in 35 countries, has served 53 million customers, employs 69,000 people, and generates an annual revenue of approximately GBP 16.6 billion pounds (approximately USD 21 billion). Complainant owns numerous trademark registrations around the world for its VIRGIN Marks, including Canadian registration numbers TMA404724 for VIRGIN (registered on November 13, 1992), TMA1048117 for VIRGIN VOYAGES (registered on August 9, 2019), and TMA675261 for VIRGIN MOBILE (registered on October 18, 2006). Complainant also owns over 5,000 domain names that incorporate the VIRGIN trademark, and its social media accounts using Complainant’s Marks receive over 37 million views a year.

The disputed domain names <virgincruisevoyages.com>, <virginmediabiz.com>, <virginmobilewifi.com>, and <govirginvoyages.com> were all registered in July 2020. The disputed domain names <virgincruisevoyages.com> and <virginmobilewifi.com> were registered on July 7, 2020. The disputed domain name <virginmediabiz.com> was registered on July 18, 2020. The disputed domain name <govirginvoyages.com> was registered on July 27, 2020. All of them resolve to websites that make copious use of Complainant’s Marks, and are designed to mimic the look and feel of websites operated by Complainant and purportedly offer the same goods and services as Complainant. Furthermore, these websites display email addresses that incorporate certain of the disputed domain names. Individuals who visit these websites who may be interested in the services advertised through the websites are directed to send correspondences to these email addresses in order to obtain more information about the services. The evidence on record shows that an email address connected to the <virginmobilewifi.com> disputed domain name has been associated with phishing activities. The disputed domain name <virgincruisevoyages.com> is also incorporated into an email address, which the evidence shows was used in a separate phishing scheme purporting to have been sent on behalf of Complainant’s CEO.

5. Parties’ Contentions

A. Complainant

Complainant contends that the disputed domain names are confusingly similar to Complainant’s Marks because they essentially reproduce identically and entirely the VIRGIN, VIRGIN VOYAGES, or VIRGIN MOBILE trademarks. Complainant argues that the addition of the terms “cruise”, “media”, “biz”, and “wifi” in the disputed domain names does nothing to dispel the confusing similarity between them and Complainant’s VIRGIN, VIRGIN VOYAGES, and VIRGIN MOBILE trademarks.

Complainant further posits that Respondent has no rights or legitimate interests in the disputed domain names. Complainant alleges that Respondent is not commonly known by the disputed domain names, is not associated or affiliated with Complainant in any way, and was never licensed or authorized to use Complainant’s Marks. Therefore, according to Complainant, Respondent cannot claim to be making any legitimate noncommercial or fair use of the disputed domain names nor any bona fide offering of goods or services because they fully incorporate Complainant’s Marks, implying an association with Complainant that does not exist. Furthermore, Complainant argues that the use of the disputed domain names <virgincruisevoyages.com>, and <virginmobilewifi.com> in connection with phishing activities cannot be considered a bona fide offering of goods and services or a legitimate noncommercial or fair use.

Lastly, Complainant argues that the disputed domain names were registered and used in bad faith. Complainant argues that Respondent must have had actual or constructive knowledge of Complainant’s rights in the VIRGIN, VIRGIN VOYAGES, and VIRGIN MOBILE trademarks given their complete incorporation in the disputed domain names, the existence of active trademark registrations for each of Complainant’s Marks, and the worldwide notoriety of Complainant’s VIRGIN trademark. Furthermore, Complainant argues that Respondent’s use of the disputed domain names <virgincruisevoyages.com> and <virginmobilewifi.com> to perpetrate phishing fraud is further evidence of Respondent’s bad faith conduct.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

6.1. Preliminary Issue: Consolidation of Domain Name Disputes

Paragraph 3(c) of the UDRP Rules provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.

Here, Complainant requested adding the disputed domain name <govirginvoyages.com> to the present proceeding after the initial filing of the Complaint as part of the amended Complaint filed in the matter. Complainant has alleged that this additional domain name is also controlled by Respondent. In support of this consolidation request, Complainant alleged that: (i) the website to which this domain name resolves is identical to the one to which the disputed domain name <virgincruisevoyages.com> resolves, (ii) the “contact us” email for both disputed domain names is identical, and (iii) the disputed domain name <govirginvoyages.com> was registered on the same day the Center notified Complainant’s initial complaint regarding the disputed domain names <virgincruisevoyages.com>, <virginmobilewifi.com>, and <virginmediabiz.com>.

The Panel notes that the screenshots of the website to which the disputed domain name <govirginvoyages.com> resolves, and its WhoIs record, were included in Complainant’s annexes. The Panel was also able to independently confirm Complainant’s allegations that the websites to which the disputed domain names <govirginvoyages.com> and <virgincruisevoyages.com> resolve are identical, that the contact email address for both these disputed domain names are the same, and that the disputed domain name <govirginvoyages.com> was in fact registered on the same day the Center notified Complainant’s original complaint regarding the disputed domain names <virgincruisevoyages.com>, <virginmobilewifi.com>, and <virginmediabiz.com>. Furthermore, the registrant for the disputed domain name <govirginvoyages.com> has the same first name as the registrant of the <virgincruisevoyages.com>, <virginmobilewifi.com>, and <virginmediabiz.com>. These facts strongly suggest that the disputed domain name <govirginvoyages.com> was also registered by Respondent.

The Panel therefore finds that consolidation of the disputed domain names <govirginvoyages.com>, <virgincruisevoyages.com>, <virginmobilewifi.com>, and <virginmediabiz.com> into this single proceeding is appropriate, as they all appear to be controlled by Respondent, and consolidation would be fair and equitable to all Parties. Furthermore, the Panel finds the addition of the disputed domain name <govirginvoyages.com> is appropriate in these circumstances, noting the timing of the registration of such disputed domain name.

6.2. Substantive Issues

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names were registered and are being used in bad faith.

Furthermore, section 4.3 of the of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) states:

“Does a respondent’s default/failure to respond to the complainant’s contentions automatically result in the complaint succeeding?

Noting the burden of proof on the complainant, a respondent’s default (i.e., failure to submit a formal response) would not by itself mean that the complainant is deemed to have prevailed; a respondent’s default is not necessarily an admission that the complainant’s claims are true.” Thus, even though Respondent has failed to address Complainant’s contentions, the burden remains with Complainant to establish the three elements of paragraph 4(a) of the Policy by a preponderance of the evidence. See, e.g., The Knot, Inc. v. In Knot We Trust LTD, WIPO Case No. D2006-0340.

A. Identical or Confusingly Similar

Ownership of a nationally registered trademark registration constitutes prima facie evidence that the complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has provided evidence that it has rights in the VIRGIN, VIRGIN MOBILE, and VIRGIN VOYAGES trademarks through its national and international registrations.

With Complainant’s rights in the VIRGIN, VIRGIN MOBILE, and VIRGIN VOYAGES trademarks established, the remaining question under the first element of the Policy is whether the disputed domain names (typically disregarding the Top-Level Domain (“TLD”) in which each domain name is registered) are identical or confusingly similar to Complainant’s Marks. It is well accepted that the first element functions primarily as a standing requirement and that the threshold test for confusing similarity involves a “reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.” WIPO Overview 3.0, section 1.7. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a descriptive word. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo, WIPO Case No. D2011-0795. As stated in section 1.8 of the WIPO Overview 3.0, “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”. See Hoffmann-La Roche Inc. v. Wei-Chun Hsia, WIPO Case No. D2008-0923.

Here, Complainant’s VIRGIN, VIRGIN MOBILE or VIRGIN VOYAGES marks are fully incorporated in the disputed domain names. The inclusion of the dictionary terms “cruise”, and “media”, and of the abbreviations “biz”, and “wifi” do nothing to prevent a finding of confusing similarity under the first element. The Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy in establishing its trademark rights and showing that the disputed domain names are confusingly similar to Complainant’s VIRGIN, VIRGIN MOBILE, and/or VIRGIN VOYAGES marks.

B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the complainant must make at least a prima facie showing that the respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once the complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

Paragraph 4(c) of the Policy lists the ways that the respondent may demonstrate rights or legitimate interests in the disputed domain name:

(i) before any notice of the dispute, respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if it has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

Here, Complainant has alleged that Respondent has no rights or legitimate interests in the disputed domain names. Complainant has presented evidence showing that Respondent has registered the disputed domain names to create a false association with Complainant given the confusing similarity of the disputed domain names to Complainant’s Marks, and using them with the intent of misleadingly diverting consumers to websites which make copious use of Complainant’s Marks for Respondent’s commercial gain. Respondent has not submitted any arguments or evidence to rebut Complainant’s prima facie case, and in particular Complainant’s contention that it has never authorized, licensed, or permitted Respondent to use any of Complainants’ Marks in any way. Furthermore, there is no evidence on record suggesting that Respondent is commonly known by any of the disputed domain names, or that Respondent is merely making a legitimate noncommercial or fair use of the disputed domain names. Moreover, Complainant submitted evidence suggesting that the disputed domain names <virgincruisevoyages.com> and <virginmobilewifi.com> were being used in connection with a fraudulent scheme seeking to obtain personal information from members of the public for commercial gain. The use of a domain name for illegal activity, including phishing and fraud, can never confer rights or legitimate interests on a respondent. See, e.g., Wikimedia Foundation, Inc. v. Nanci Nette, Name Management Group, Case No. D2018-0717; WIPO Overview 3.0, section 2.13.1.

Respondent has failed to rebut Complainant’s allegations and evidence, and therefore, the Panel concludes that Respondent does not have rights or legitimate interests in the disputed domain names within the meaning of Policy paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b)(ii) of the Policy indicates that bad faith use and registration and use can be found if a respondent is shown to have registered a disputed 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.

Paragraph 4(b)(iv) of the Policy indicates that bad faith registration and use of a domain name can also be found when, by using the domain name, a respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

Here, Complainant provided ample evidence to show the widespread use and numerous registrations of the VIRGIN, VIRGIN MOBILE, and VIRGIN VOYAGES marks that long predate Respondent’s registration of the disputed domain names. Therefore, Respondent was likely aware of the VIRGIN Marks when registering the disputed domain names, or knew or should have known that they were identical or confusingly similar to Complainant’s Marks. See WIPO Overview 3.0, section 3.2.1; see also TTT Moneycorp Limited v. Privacy Gods / Privacy Gods Limited, WIPO Case No. D2016-1973.

Furthermore, Respondent has engaged in a pattern of registering and using disputed domain names that are variations of Complainants’ VIRGN marks, which is evidence of bad faith registration and use within the meaning of Policy paragraph 4(b)(ii). UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registration. WIPO Overview 3.0, section 3.1.2. Here, Respondent registered the disputed domain names, all of which contain Complainant’s mark, which demonstrates a bad faith pattern of targeting this mark in the context of the disputed domain names. Complainant has also cited prior domain name registrations by Respondent that have targeted Complainant’s VIRGIN trademarks, which further evidences this bad faith pattern of bad faith registration and use of domain names by Respondent.

In addition, all the disputed domain names resolve to websites making copious use of Complainant’s Marks in ways that make those websites highly similar to the websites operated by Complainant. This is clear evidence that Respondent is engaging in a concerted effort to attract Internet users, for commercial gain, to Respondent’s websites, by creating a likelihood of confusion with Complainant’s Marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites.

Moreover, Respondent’s use of certain disputed domain names to conduct a fraudulent email phishing scheme to collect Internet users’ personal data is the type of illegal activity that is manifestly considered evidence of bad faith under the Policy. See WIPO Overview 3.0, section 3.1.4; Wikimedia Foundation, Inc., supra.

For these reasons, this Panel finds that Respondent’s registration and use of the disputed domain names were in bad faith, pursuant to paragraph 4(b) of the Policy.

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 names, <virgincruisevoyages.com>, <virginmediabiz.com>, <virginmobilewifi.com>, and <govirginvoyages.com>, be transferred to Complainant.

Brian J. Winterfeldt
Sole Panelist
Date: October 23, 2020