WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Whois Privacy, Private by Design, LLC / Paul Smith
Case No. D2021-1270
1. The Parties
The Complainant is Virgin Enterprises Limited, United Kingdom, represented by A. A.Thornton & Co, United Kingdom.
The Respondent is Whois Privacy, Private by Design, LLC, United States of America (“United States”) / Paul Smith, United States.
2. The Domain Name and Registrar
The disputed domain name <careers-virginmoney.com> is registered with Porkbun 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 23, 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 27, 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 April 27, 2021, receipt by Center.
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 4, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 24, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2021.
The Center appointed Andrew F. Christie as the sole panelist in this matter on June 7, 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 a group of companies that are collectively known as the Virgin Group, which was established by its founder and chairman Sir Richard Branson in the United Kingdom in 1970. Since then, the operations of the Virgin Group have grown significantly and there are now over 60 VIRGIN-branded businesses that span a diverse range of sectors, including financial services, health and wellness, and music and entertainment, which collectively have over 53 million customers worldwide, employ more than 69,000 people in 35 countries, and have annual revenue of GBP 16.6 billion.
Virgin Money is part of the Virgin Group of companies and provides financial services. Virgin Money UK was formed in 2002 when virginmoney.com merged with Virgin Direct, a financial services provider launched by the Virgin Group in 1995 which offered a range of financial services such as pensions and insurance policies.
The Complainant is responsible for registering and maintaining registrations for trademarks containing the VIRGIN name and VIRGIN signature logo, and for licensing these rights to the Virgin Group businesses. The Complainant owns a portfolio of approximately 3,500 trademark applications and registrations in over 150 countries, including United Kingdom Trademark Registration No. 1585773 for the word trademark VIRGIN (filed on September 15, 1994, and entered in the register on October 20, 1995), and European Union Trademark Registration No. 14032247 for the word trademark VIRGIN MONEY (filed on May 6, 2015, and registered on December 3, 2015).
The Complainant is the registrant of over 5,000 domain names consisting of or incorporating the VIRGIN trademark, and has operated a website at “www.virgin.com” since 2000 to promote the activities of the Virgin Group and its businesses, ventures and foundations.
The disputed domain name was registered on May 21, 2020. The Complainant has provided copies of emails dated March 30 and 31, 2021, sent to a member of the public by someone identifying themselves as “[…]” using the email address “[...]@careers-virginmoney.com”, purporting to offer a job as a Research Assistant with the Virgin Money business. The recipient of these emails reported them to the Complainant’s “Report a Scam” service on March 30, 2021. At the time of this decision the disputed domain name does not resolve to an active website.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is confusingly similar to a trademark in which it has rights because: (i) the disputed domain name incorporates the entirety of the Complainant’s registered trademark VIRGIN MONEY, with the addition of the word “careers” and a hyphen at the start of it, which will be perceived by Internet users as a generic descriptive term suggesting that the disputed domain name resolves to content relating to jobs offered by the Complainant and the Virgin Money business; (ii) the hyphen separating the term “careers” from “virgin” has no phonetic impression, emphasizes the reproduction of the entirety of the Complainant’s registered trademark VIRGIN MONEY, and is insufficient to distinguish the disputed domain name from the Complainant’s registered trademark; and (iii) it is established by UDRP panel decisions that the addition of descriptive or generic indications to a third party trademark does not avoid the disputed domain name being confusingly similar to the third party trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (i) the disputed domain name does not resolve to a website, but rather has been used in phishing emails originating from someone identifying themselves as “[…]“ using the email address “[...]@careers-virginmoney.com”, purporting to offer a job as a Research Assistant with the Virgin Money business; (ii) […] is not the name of a genuine employee or representative of the Complainant or the Virgin Money business; (iii) the emails sent in the name of […] include the Complainant’s identical VIRGIN MONEY logo in the signature field which clearly demonstrates that the Respondent is trying to impersonate an employee of the Complainant’s Virgin Money business; (iv) the use of the disputed domain name in this manner is not in any way connected to or authorized by the Complainant; (v) the Respondent is using the disputed domain name for the purposes of posing as an employee or representative of Virgin Money to send fraudulent emails to members of the public, and it is highly likely the purpose of the emails is to engage the recipient in illegal activity, and that any personal details received by the sender as a result of such fraudulent emails would be used for phishing purposes; (vi) a nearly identical domain name, <career-virginmoney.com>, was the subject of a successful UDRP complaint filed by the Complainant on May 19, 2020, just two days before the disputed domain name was registered, and it is strongly suspected that the disputed domain name has been registered by someone connected to that earlier domain name, which was being used in the same manner as the disputed domain name to send recruitment emails to the public to offer purported jobs with the Virgin Money business; and (vii) the selection of a domain name that contains terms identical to the entirety of the Complainant’s registered trademark VIRGIN MONEY is to take advantage of the significant reputation in that trademark, to add credibility to the fraudulent emails being sent, and to increase the likelihood of receiving responses to the emails.
The Complainant contends that the disputed domain name was registered and is being used in bad faith because: (i) the registration of the disputed domain name is solely for the purpose of phishing activity, is likely trying to engage members of the public in money laundering, and is clearly being used for commercial gain; (ii) the use of the Complainant’s registered trademarks within the disputed domain name and within the body of the emails originating from the phishing email address is very likely to confuse members of the public into believing that the emails are endorsed by or otherwise connected to the Complainant, and to deceive them into providing sensitive personal information, including financial information, and into participating in illegal activity; (iii) this use is disruptive to the Complainant’s business and will harm the significant reputation that exists in the Complainant’s registered trademark, in the event that members of the public suffer as a result of the Respondent’s activity; and (iv) it is inconceivable that the Respondent had any good faith intentions at the point of registering the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Once the generic Top-Level Domain (“gTLD”) “.com” is ignored (which is appropriate in this case), the disputed domain name consists of the whole of the Complainant’s registered word trademark VIRGIN MONEY preceded by the word “careers” and a hyphen. The Complainant’s word trademark is clearly recognizable within the disputed domain name. The addition of the word “careers” and a hyphen does not prevent a finding of confusing similarity of the disputed domain name with the Complainant’s word trademark. As provided in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
B. Rights or Legitimate Interests
The Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its VIRGIN MONEY trademark. The Respondent has not provided any evidence that it has been commonly known by, or has made a bona fide use of, the disputed domain name, or that it has, for any other reason, rights or legitimate interests in the disputed domain name. The evidence provided by the Complainant shows that the disputed domain name was used in an email address for email communications to a member of the public that purported to offer a job with one of the Complainant’s businesses, Virgin Money. Given the confusing similarity of the disputed domain name to the Complainant’s trademark and the absence of any relationship between the Respondent and the Complainant, such a use of the disputed domain name is neither a bona fide use nor a legitimate noncommercial or fair use of the disputed domain name. The Complainant has put forward a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and the Respondent has not rebutted this. Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name was registered a number of years after the Complainant first registered its VIRGIN MONEY trademark. It is inconceivable that the Respondent registered the disputed domain name ignorant of the existence of the Complainant’s trademark, given that the trademark has been widely used and that the disputed domain name consists of the trademark with the mere addition of the word “careers” and a hyphen. Furthermore, the evidence on the record provided by the Complainant indicates that the Respondent has used the disputed domain name for attempted commercial gain, by creating confusion in the minds of the general public as to an association between the Complainant and emails sent by the Respondent from an address using the disputed domain name. Accordingly, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
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, <careers-virginmoney.com>, be transferred to the Complainant.
Andrew F. Christie
Date: June 21, 2021