WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Kalu Tall and Abdul Umeh
Case No. D2020-2653
1. The Parties
Complainant is Virgin Enterprises Limited, United Kingdom, represented by A. A.Thornton & Co, United Kingdom.
Respondents are Kalu Tall, United States of America (“United States”) (“Respondent No. 1) and Abdul Umeh, Canada (“Respondent No. 2”).
2. The Domain Names and Registrars
The disputed domain names <flyvirginalaska.com> and <virginradiofmlebanon.com> are registered with OwnRegistrar, Inc (the “Registrar”). The disputed domain name <virginwideiband.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 October 12, 2020. On October 12, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 12, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from named Respondents and contact information in the Complaint. The Center sent an email communication to Complainant on October 15, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 16, 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 Respondents of the Complaint, and the proceedings commenced on October 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2020. Respondents did not submit any Response. Accordingly, the Center notified Respondents’ default on November 9, 2020.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on November 16, 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 a company organized under the laws of the United Kingdom which and a member of the well-known “Virgin Group” which runs businesses that span a diverse range of sectors, including music & entertainment, telecommunications & media as well as the travel & leisure.
Complainant has evidenced to be the registered owner of numerous trademarks worldwide relating to its company name and brand “Virgin”, including the following with protection, inter alia, for the United States where Respondent No. 1 is domiciled:
- Word mark VIRGIN, International trademark registration (IR), registration number: 1141309, registration date: May 21, 2012, status: active.
Moreover, Complainant has demonstrated to own the domain name <virgin.com>, which resolves to Complainant’s main website at “www.virgin.com”, used to promote Complainant’s vast range of products and services related to a variety of businesses throughout the world, including e.g. in Canada, Lebanon and the United States.
Respondent No. 1 is located in the United States and registered the disputed domain names <flyvirginalaska.com> and <virginradiofmlebanon.com> on August 22, 2020, while Respondent No. 2 is located in Canada and registered the disputed domain name <virginwideiband.com> on September 3, 2020.
By the time of the rendering of this decision, the disputed domain names <flyvirginalaska.com> and <virginradiofmlebanon.com> do not redirect to any valid content on the Internet, while the disputed domain name <virginwideiband.com> resolves to a website at “www.virginwideiband.com” which apparently copies substantial amounts of the text, content, images and layout of Complainant’s official “VIRGIN Mobile Canada” website. Moreover, Complainant has demonstrated that at some point before the filing of the Complaint, the disputed domain names <flyvirginalaska.com> and <virginradiofmlebanon.com> were used in a similar way, too.
Complainant requests that the disputed domain names be transferred to Complainant.
5. Parties’ Contentions
Complainant contends to have used its VIRGIN trademark consistently and intensively across all of its operations since the company was founded back in 1970, which is why Complainant has meanwhile acquired a goodwill and substantial reputation therein.
Complainant submits that the disputed domain names are confusingly similar to Complainant’s VIRGIN trademark as they incorporate the latter in its entirety, together with additional descriptive or geographic terms such as “Alaska” and “Lebanon” or “fly” and “wide(i)band”.
Moreover, Complainant asserts that Respondents have no rights or legitimate interests in respect of the disputed domain names since (1) the websites under the disputed domain names copy substantial parts of Complainant’s various official VIRGIN websites including Complainant’s official VIRGIN trademark and logo, (2) there is no indication that Respondents have ever been commonly known by the disputed domain names or any of Complainant’s registered VIRGIN trademarks, and (3) Respondents apparently have never used or made preparations to use the disputed domain names in connection with a bona fide offering of goods or services, but rather intended to divert consumers away from Complainant’s official VIRGIN websites.
Finally, Complainant argues that Respondents registered and are using the disputed domain names in bad faith since (1) Respondents have intentionally copied substantial parts of Complainant’s various official VIRGIN websites, (2) it is highly likely that actual or prospective consumers will be deceived into thinking that the disputed domain names are operated by or otherwise connected to Complainant, and (3) displaying unauthorized email addresses on the websites under the disputed domain names will likely enable Respondents to conduct phishing activities for commercial gain.
Respondents did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.
Respondents’ default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondents do not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondents’ failure to submit a Response as it considers appropriate
As a procedural comment, given that Respondents, according to the WhoIs information for the disputed domain names, may be reached under the very same email address as well as a nearly identical telephone number in the United States (though Respondent No. 2 apparently is residing in Canada), it is reasonable to argue that all three disputed domain names are subject to common control which is why it is fair and equitable to all parties that this Complaint is consolidated against multiple respondents at the same time (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2).
B. Identical or Confusingly Similar
The Panel concludes that the disputed domain names are confusingly similar to the VIRGIN trademark in which Complainant has rights.
The disputed domain names all incorporate the VIRGIN trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among panelists (see WIPO Overview 3.0, section 1.8), that the addition of other terms (whether e.g. descriptive or geographic) would not prevent the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition in the disputed domain names of descriptive terms such as “fly”, “radio fm” and “wide(i)band” on the one hand, or of geographic terms such as “Alaska” and “Lebanon” on the other hand, does not dispel the confusing similarity arising from the incorporation of Complainant’s VIRGIN trademark in all disputed domain names.
Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).
C. Rights or Legitimate Interests
The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondents have not made use of the disputed domain names in connection with a bona fide offering of goods or services, nor have Respondents been commonly known by the disputed domain names, nor can it be found that Respondents have made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondents apparently have not been authorized to use Complainant’s VIRGIN trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondents’ names somehow correspond with the disputed domain names and Respondents do not appear to have any trademark rights associated with the term “Virgin” on their own. To the contrary, Respondents at some point of time copied substantial elements from Complainant’s official VIRGIN websites, including Complainant’s VIRGIN trademark and official logo, for purposes of setting up own websites under the disputed domain names, which is highly likely to confuse Internet users in a fraudulent manner into believing that Respondents’ websites are official websites run by Complainant itself. Such making use of the disputed domain names neither qualifies as bona fide nor as legitimate noncommercial or fair.
Accordingly, Complainant has established a prima facie case that Respondents have no rights or legitimate interests in respect of the disputed domain names. Now, the burden of production shifts to Respondents to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondents have defaulted, they have not met that burden.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
D. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain names were registered and are being used by Respondents in bad faith.
Redirecting the disputed domain names, which are confusingly similar to Complainant’s VIRGIN trademark, to websites that copied substantial elements from Complainant’s official VIRGIN websites, including Complainant’s official VIRGIN trademark and logo, is a clear indication that Respondents intentionally attempted to attract, for commercial gain, Internet users to their own websites by creating a likelihood of confusion with Complainant’s VIRGIN trademark as to the source, sponsorship, affiliation or endorsement of Respondents’ websites. Such circumstances are evidence of registration and use of the disputed domain names in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
In this context, the Panel has also noted that Respondents apparently provided fault or incomplete contact information in the WhoIs register for the disputed domain names since, according to the email correspondence between the Center and the postal courier DHL, the Written Notice on the Notification of the Complaint dated October 19, 2020, could not be delivered. This fact at least throws a light on Respondents’ behavior which supports the Panel’s bad faith finding.
Therefore, the Panel concludes that Complainant has also satisfied the third element under the Policy set forth by paragraph 4(a)(iii).
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 <flyvirginalaska.com>, <virginradiofmlebanon.com> and <virginwideiband.com> be transferred to Complainant.
Stephanie G. Hartung
Date: November 27, 2020