WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. Registration Private, Domains By Proxy, LLC / Carolina Rodrigues, Fundacion Comercio Electronico

Case No. D2021-1267

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, United States of America (“United States”) / Carolina Rodrigues, Fundacion Comercio Electronico, Panama.

2. The Domain Name and Registrar

The disputed domain name <virginaustraila.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 April 23, 2021. On April 23, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 26, 2021, 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 April 29, 2021 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 4, 2021.

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 5, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 25, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 7, 2021.

The Center appointed Assen Alexiev as the sole panelist in this matter on June 14, 2021. 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 member of the Virgin Group of companies established by its Chairman Sir Richard Branson in the United Kingdom in 1970. The Virgin Group has grown significantly, and now includes over 60 “Virgin”-branded businesses in a diverse range of sectors covering financial services, health and wellness, music and entertainment, people and the planet, telecommunications and media, and travel and leisure. These businesses have over 53 million customers worldwide and employ more than 69,000 people in 35 countries, and the annual revenue of the Virgin Group is GBP 16.6 billion.

The Complainant has operated VIRGIN branded businesses in Australia since 1987, when VIRGIN RECORDS AUSTRALIA began distributing records through Australian retailers. The Complainant launched its airline in Australia in 2000. In 2011 it changed its name to “Virgin Australia” and is now the second biggest airline in Australia, flying to 30 destinations within Australia and across the Asia-Pacific region. The Virgin Australia airline is the owner of the domain name <virginaustralia.com> where it provides information on its service and facilities to book airline tickets on Virgin Australia flights. The VIRGIN AIRLINE has many awards for its service, for example 2020 – TripAdvisor Travelers’ Choice Award, 2019 – World's Best Cabin Crew for the fourth time by AirlineRatings.com, 2017 – Best Business Class for second consecutive year at Airline Excellence Awards.

The Complainant is the owner of the following trademark registrations:

− the International trademark VIRGIN with registration No. 1141309, registered on May 21, 2012 for goods and services in International Classes 9, 35, 36, 38, and 41 (the “VIRGIN trademark”); and
− the Australian trademark VIRGIN AUSTRALIA with registration No. 1344456, registered on February 9, 2010 for goods and services in International Classes 9, 16, 25, 28, 35, 36, 38, 39, 41, 43, and 44 (the “VIRGIN AUSTRALIA trademark”).

The Complainant is also the owner of the domain name <virgin.com> registered in 2000. It resolves to a website that contains links to the websites of most of the companies of the Virgin Group.

The disputed domain name was registered on November 23, 2020. At the time of filing of the Complaint, it redirected to different websites each time it was accessed.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain name is confusingly similar to its VIRGIN and VIRGIN AUSTRALIA trademarks, because it is comprised of “virgin” and “austraila”, the first of which is identical to the VIRGIN trademark, and the second is an obvious misspelling of the geographical identifier “Australia”. The combination of elements in the disputed domain name makes it highly similar to the Complainant’s VIRGIN AUSTRALIA trademark.

According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, because it is not commonly known by it, and has not used it for legitimate purposes. The Complainant submits that the disputed domain name redirects to several different websites each time it is accessed but more often to a website that hosts what the Complainant describes as a fake news article. This article discusses a bitcoin scheme called “Bitcoin Evolution” that is apparently endorsed by celebrity chef Gordon Ramsay. The article includes testimonials from members of the public and states that high profile businesspeople such as Bill Gates also back the scheme, and includes an image of Sir Richard Branson alongside Elon Musk, who are reported in the article to have created the bitcoin scheme together. The article also provides instructions on how to sign up for an account with the bitcoin scheme and begin investing money.

The Complainant states that neither it nor Sir Richard Branson have endorsed bitcoin investment schemes, and the purported bitcoin scheme discussed in this article is not operated by or in any way connected to the Complainant, the Virgin Australia airline, Sir Richard Branson, or any entity of the Virgin Group. The article is fraudulent and the bitcoin scheme discussed in it is not a genuine bona fide investment scheme but a scam. According to the Complainant, the VIRGIN and VIRGIN AUSTRALIA trademarks and the image of Sir Richard Branson have been used to confuse Internet users that the disputed domain name and the bitcoin scheme discussed in the article are operated or endorsed by, or otherwise connected to the Complainant to add an image of credibility to the bitcoin scheme discussed in the article with a view to scamming members of the public out of money. The Complainant notes that in recent years it has been targeted by a number of Bitcoin and cryptocurrency related scams, which seek to suggest that the Complainant or Sir Richard Branson are associated with or endorse fake bitcoin schemes.

The Complainant contends that the disputed domain name was registered and is being used in bad faith, because it resolves to an article that promotes the fraudulent bitcoin scheme, described above, by which the Respondent attempts to deceive the public likely for illegitimate commercial gain. This use will be disruptive to the Complainant, if any Internet users are deceived into signing up to the bitcoin investment scheme and suffer losses. According to the Complainant, the Respondent was aware of the Complainant and the Complainant’s registered trademarks at the time of registering the disputed domain name, and is using it an attempt to attract, for commercial gain, Internet users to the fraudulent article by creating a likelihood of confusion with the Complainant’s registered trademarks as to the source, sponsorship, affiliation, or endorsement of this article.

The Complainant also points out that the Respondent was also the respondent in nearly 180 other proceedings under the Policy, all of which resulted in transfers of the respective domain names.

B. Respondent

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

6. Discussion and Findings

Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(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 Respondent has registered and is using the disputed domain name in bad faith.

By the Rules, paragraph 5(c)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name […]”.

The Respondent has however not submitted a Response and has not disputed the Complainant’s contentions and evidence in this proceeding.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established its rights in the VIRGIN and VIRGIN AUSTRALIA trademarks for the purposes of the Policy.

The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the Top-Level Domain (“TLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Panel sees no reason not to follow the same approach here, so it will disregard the “.com” TLD section of the disputed domain name.

The disputed domain name incorporates the VIRGIN trademark entirely in combination with the element “austraila”, which is a misspelling for the geographical term “Australia”, and the combination of the two elements reproduces the elements of the VIRGIN AUSTRALIA trademark. The VIRGIN and VIRGIN AUSTRALIA trademarks are easily recognizable in this disputed domain name. In cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. See sections 1.7 and 1.8 of the WIPO Overview 3.0.

In view of the above, the Panel finds that the disputed domain name is confusingly similar to the VIRGIN and VIRGIN AUSTRALIA trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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 domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. See section 2.1 of the WIPO Overview 3.0.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, as it is not commonly known by it and is not using it for a legitimate purpose, as the disputed domain name redirects to a website containing what the Complainant describes as a fake news article that promotes a fraudulent bitcoin scheme by which the Respondent attempts to deceive the public likely for illegitimate commercial gain. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent has not submitted a Response and has not alleged that it has rights or legitimate interests in the disputed domain name and has not disputed the Complainants’ allegations in this proceeding. The Respondent has not provided a plausible explanation of the registration and use of the disputed domain name.

The disputed domain name is confusingly similar to the VIRGIN and VIRGIN AUSTRALIA trademarks and represents a misspelled version of the second of these trademarks. The evidence in the case file shows that it indeed redirects to a webpage that promotes a bitcoin investment scheme with the name “Bitcoin Evolution” allegedly created by the celebrity chef Gordon Ramsay, and states that “Bitcoin Evolution is backed by Bill Gates, Richard Branson and Mark Zuckerberg.” The website alsoinvites visitors to participate in the bitcoin scheme and explains them how to do it and that they have to “[d]eposit the minimum of GBP 250”. The Complainant denies any involvement in or endorsement of this scheme by the Virgin Group or by its Chairman, and there is no evidence in the case file to suggest otherwise. Even if it was affiliated with such financial program, the use of its marks to bait Internet users to the disputed domain name which has no affiliation the the Complainant cannot be considered legitimate.

In view of the above, and in the lack of any contrary evidence, the Panel accepts that it is more likely than not that the Respondent, being aware of the goodwill of the Complainant and of the VIRGIN and VIRGIN AUSTRALIA trademarks, has registered and used the disputed domain name in an attempt to take advantage of this goodwill to attract Internet users to the associated website and offer them to participate in the bitcoin investment scheme by creating a mistaken impression in them that the disputed domain name and the featured bitcoin investment scheme are legitimate and somehow related to or endorsed by the Complainant or by its Chairman. To the Panel, such conduct does not appear to be giving rise to rights or legitimate interests of the Respondent in the disputed domain name.

Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

The disputed domain name incorporates the VIRGIN and VIRGIN AUSTRALIA trademarks without additional elements and redirects to a website that promotes a bitcoin investment scheme, and features a photo of the Chairman of the Virgin Group of which the Complainant is a member, together with a statement that he is one of the backers of the scheme together with figures like Gordon Ramsay, Bill Gates, and Mark Zuckerberg, instead of a disclaimer for the lack of relationship with the Complainant or its Chairman. The Respondent has not submitted any plausible explanation about the registration and use of the disputed domain name. This creates the risk that Internet users may be led to wrongly believe that the disputed domain name and the bitcoin investment scheme featured on the website to which it redirects are related to or endorsed by the Complainant or by its Chairman.

Taking the above into account, as well as the fact that the Respondent has already been found to have acted in bad faith in more than 180 other proceedings under the Policy, the Panel accepts the Respondent has registered and used the disputed domain name with knowledge of the Complainant and targeting the VIRGIN and VIRGIN AUSTRALIA trademarks in an attempt to attract traffic to the website to which the disputed domain name redirects by deceiving Internet users that the disputed domain name and the bitcoin investment scheme featured on the website to which it redirects are related to or endorsed by the Complainant or by its Chairman. This supports a finding of bad faith conduct under Paragraph 4(b)(iv) of the Policy.

Therefore, the Panel finds that the disputed domain name has been registered and used in bad faith.

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 <virginaustraila.com> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: June 30, 2021