WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. David Okechi

Case No. D2020-2297

1. The Parties

The Complainant is Virgin Enterprises Limited, United Kingdom (“UK”), represented by A.A. Thornton & Co, United Kingdom.

The Respondent is David Okechi, United States of America (“United States”).

2. The Domain Name and Registrar

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

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 2, 2020. On September 2, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 3, 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 the Respondent of the Complaint, and the proceedings commenced on September 4, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 24, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 25, 2020.

The Center appointed Torsten Bettinger as the sole panelist in this matter on October 12, 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 a company incorporated in England and Wales. It is a member of a group of companies known collectively as the “Virgin Group”.

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 sign. Since then the Virgin Group has grown significantly in terms of its size, geographic reach, and the industries in which it operates. The Virgin Group is now engaged in a diverse range of business sectors ranging from financial services, health and wellness, music and entertainment, people and planet, telecommunications and media and travel and leisure.

There are now more than 60 Virgin branded businesses with around 53 million customers worldwide, employing in excess of 69,000 people in 35 countries. The annual revenue is approximately GBP 16.6 billion.

The Complainant is responsible for registering and maintaining registrations for trademarks containing the VIRGIN mark and VIRGIN signature logo and licensing these rights to the VIRGIN businesses. The Complainant owns a substantial portfolio of approximately 3,500 trademark applications and registrations in over 150 countries covering the majority of the 45 Nice classes of goods and services.

In particular, the Complainant owns the following trademark registrations (the “Complainant’s Registered Marks”):

- UK Trade Mark Registration No. UK00003163121 for the mark VIRGIN in classes 03, 05, 09, 11, 12, 14, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44, and 45, registered on July 29, 2016;

- European Union (“EU”) Trade Mark Registration No. 015255235 for the mark VIRGIN in classes 03, 05, 09, 11, 12, 14, 16, 31, 32, 35, 36, 38, 39, 41, 42, 43, 44, and 45, registered on March 21, 2016;

- International Trade Mark Registration No. 1141309 for the mark VIRGIN in classes 09, 35, 36, 38, and 41, registered on May 21, 2012, designating various countries including the United States;

- UK Trade Mark Registration No. UK00003163127 for the mark VIRGIN (the “VIRGIN Signature Logo”) in classes 03, 05, 09, 11, 12, 14, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44, and 45, registered on July 29, 2016;

- EU Trade Mark Registration No. 015404841 for the mark VIRGIN (the “VIRGIN Signature Logo”) in classes 03, 05, 09, 11, 12, 14, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44, and 45, registered on December 2, 2016;

- UK Trade Mark Registration No. UK00002365570 for the mark VIRGIN MOBILE in classes 9 and 38, registered on February 4, 2005; and

- International Trade Mark Registration No. 1117877 for the mark VIRGIN MOBILE (the “VIRGIN MOBILE Logo”) in classes 09, 35, 36, and 38, registered on January 19, 2012.

The Complainant is also the registered proprietor of over 5,000 domain names either consisting of or incorporating the VIRGIN trademark.

In 1999, the Complainant launched Virgin Mobile Telecoms Limited in the UK, offering telecommunications services under the brand VIRGIN MOBILE.

Since 2000, VIRGIN MOBILE services have been launched in numerous other territories, including Australia, Canada, Chile, France, India, Poland, South Africa, United Arab Emirates and United States. Today there are 15 million VIRGIN MOBILE customers around the world.

The disputed domain name was registered on July 28, 2020. The disputed domain name resolved to a website that copies a substantial amount of the text, content, images and layout of the homepage of the Virgin Mobile Canada Website, and is connected to an email address.

5. Parties’ Contentions

A. Complainant

With regard to the requirement of identity or confusing similarity between the trademark and the disputed domain name pursuant to paragraph 4(a)(i) of the Policy, the Complainant asserts

- The disputed domain name is comprised of the entirety of the Complainant’s trademark VIRGIN, the entirety of the verbal element of the Complainant’s trademark VIRGIN Signature Logo and the entirety of the main distinctive verbal element of the Complainant’s trademark VIRGIN MOBILE and VIRGIN MOBILE Logo;

- the term “wideband” can refer to a particular capability of telecommunications systems and is therefore perceived by consumers as a generic term describing an aspect of a telecommunications service;

- the addition of the generic term “wideband” is not sufficient to distinguish it from the Complainant’s Registered Marks, which are well-known and have acquired a reputation for telecommunications services as the general consumer and Internet user understands the disputed domain name to be the online location where information about wideband telecommunications services provided by the Complainant and the VIRGIN MOBILE businesses could be found;

- On the basis of the above the disputed domain name is confusingly similar to the Complainant’s VIRGIN trademarks as per the requirements of paragraph 4(a)(i) of the Policy.

With regard to the Respondent having no rights or legitimate interests in the disputed domain name, the Complainant submitted that:

- neither the use of the disputed domain name nor the use of the email address connected to the disputed domain name have been authorized by the Complainant or any of the VIRGIN MOBILE businesses;

- given the high similarity between the Complainant’s VIRGIN trademarks and the disputed domain name, and the level of reputation the Complainant has acquired in these trademarks in connection with telecommunications and mobile services, and the fact that the website to which the disputed domain name resolves copies a substantial amount of the Virgin Mobile Canada Website, it is highly likely internet users searching for the Complainant’s genuine mobile and telecommunications services would be deceived into thinking that the disputed domain name is operated by or otherwise connected to the Complainant or a VIRGIN MOBILE business.

- it is also highly likely that any communications received to an unauthorized email address associated with the disputed domain name (the “Unauthorized Email Address”) would be used to obtain personal and financial information for the purposes of commercial gain.

- the use of the disputed domain name demonstrates that the Respondent does not have a legitimate interest in the disputed domain name, and is not making a fair or legitimate use of the disputed domain name.

- there is no evidence the Respondent has or intends to use the disputed domain name in connection with a bona fide offering of goods or services, or has been commonly known by the disputed domain name.

- for the reasons above the Respondent has no legitimate rights or interests in the disputed domain name, and that the criteria of paragraph 4(a)(ii) of the Policy are met.

Finally, with regard to the disputed domain name having been registered and being used in bad faith, the Complainant argues that:

- it is highly likely that actual or prospective consumers will be deceived into thinking that the disputed domain name is operated by or otherwise connected to the Complainant, and that this is liable to divert business away from the Complainant and its VIRGIN MOBILE businesses.

- it is clear that the selection of the disputed domain name and the manner of use in copying the Virgin Mobile Canada Website has been done deliberately to enforce the deception that the disputed domain name is operated by or connected to the Complainant.

- any harm or loss suffered by members of the public by contacting the Unauthorized Email Address will tarnish the significant reputation the Complainant has built up in the Complainant’s registered marks and also cause disruption to the Complainant’s business and that of Virgin Mobile.

- given the lack of evidence indicating any legitimate interest in the disputed domain name on the part of the Respondent, and the deliberate attempt to deceive, and potentially defraud, consumers through use of the disputed domain name, it is inconceivable that the Respondent had any good faith intention at the time of registering the disputed domain name;

- for the reasons above disputed domain name has been registered and is being used in bad faith, and paragraph 4(a)(iii) of the Policy is satisfied.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the Complainant must prove each of the three following elements:

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

(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 Complainant has demonstrated that it owns multiple trademark registrations for the mark VIRGIN in the United States, European Union, and various other jurisdictions prior to the registration of the disputed domain name on July 28, 2020.

It is well-established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the trademark is used or other marketing and use factors usually considered in trademark infringement cases. (See sections 1.1.2 and 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

In this case, the disputed domain name only differs from the Complainant’s trademark VIRGIN by the addition of the term “wideband” which may refer to a particular capability of telecommunications systems and may therefore be perceived by consumers as a descriptive term describing an aspect of a telecommunications service.

The addition of merely descriptive wording to a trademark in a domain name does not prevent a finding of confusing similarity under the first element of the UDRP (see section 1.8 of WIPO Overview 3.0).

Finally, it has been long established under the UDRP decisions that the generic Top-Level Domains (“gTLDs”), designation such as “.com”, “.net”, and “.org”, are typically not to be taken into account when assessing the issue of identity and confusing similarity, except in certain cases where the applicable gTLD may itself form part of the relevant trademark (see section 1.11 of WIPO Overview 3.0).

For the foregoing reasons the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s VIRGIN trademarks in which the Complainant has exclusive rights.

B. Rights or Legitimate Interests

A respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [the Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [the Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [the Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Complainant has presented evidence that the disputed domain name resolves to a website that copies a substantial amount of the text, content, images and layout of the homepage of the Complainant’s Virgin Mobile Canada Website and asserted that it has not authorized the Respondent to use its trademark VIRGIN or the disputed domain name.

These assertions and evidence are sufficient to establish a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

The Respondent chose not to contest the Complainant’s allegations and has failed to come forward with any evidence to refute the Complainant’s prima facie showing that the Respondent lacks rights or legitimate interests. The Panel therefore accepts these allegations as undisputed facts.

In light of the circumstances of this case, including the level of reputation the Complainant has acquired in it VIRGIN marks in connection with telecommunications and mobile services and the fact that the website to which the disputed domain name resolves copied a substantial amount of the Virgin Mobile Canada Website, the Panel concludes that the selection of the disputed domain name incorporating the Complainant’s Virgin Mark for services in the field of mobile telecommunication services cannot be considered bona fide and that therefore the Respondent has no rights or legitimate interests in the disputed domain name.

The Panel therefore concludes that the Complainant has also satisfied the second element of the Policy set forth by paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

i. circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or

ii. the Respondent has registered the 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; or

iii. the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or

iv. by using the disputed domain name, the 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 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.

The Complainant holds multiple trademark registrations for the mark VIRGIN including in the United States, European Union, and other jurisdictions that predate the registration of the disputed domain name.

Given the level of reputation the Complainant has acquired in its VIRGIN trademarks in connection with telecommunications and mobile services, and the fact that the website to which the disputed domain name resolves copies a substantial amount of the Complainant’s Virgin Mobile Canada Website, it is inconceivable that the Respondent coincidentally selected the disputed domain name without any knowledge of the Complainant and its trademark VIRGIN.

The Panel therefore concludes that the Respondent registered the disputed domain name in bad faith.

Based on the record in this proceeding there is also strong evidence that apart from using the disputed domain name for a website that copies a substantial amount of the Complainant’s Virgin Mobile Canada Website, the Respondent provides the email address connected to the disputed domain name on the “Contact Us” page of the website to which the disputed domain name resolves.

The Panel infers from these facts that the Respondent is using the disputed domain name with the intention to impersonate the Complainant and to deceive consumers into providing personal information, believing that the Respondent was associated with the bona fide services offered by the Complainant. (See Yahoo Holdings, Inc. v. Registration Private, Domains By Proxy, LLC / Technonics Solutions, WIPO Case No. D2017-1336 (<yahoodomainsupport.com>) (“Phishing is bad faith use under the Policy. The examples listed in paragraph 4(b) of the Policy are ‘without limitation’. ‘Phishing’ is a form of Internet fraud that aims to steal valuable information such as credit cards, social security numbers, user ids, passwords, etc.”); see also Confédération Nationale du Crédit Mutuel v. Daniel Delcore, WIPO Case No. DLC2009-0001. The use of a disputed domain name in a phishing scheme “is in itself evidence that the disputed domain name was registered and is being used in bad faith”. BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC / Douglass Johnson, WIPO Case No. D2016-0364.

The Panel therefore concludes that the Respondent’s registration and use is a clear-cut case of cybersquatting and that the Complainant has also satisfied its burden under paragraph 4(a)(iii) 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 name <virginwideband.com> be transferred to the Complainant.

Torsten Bettinger
Sole Panelist
Date: October 27, 2020