WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. Duru, Duru Bari

Case No. D2021-1668

1. The Parties

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

The Respondent is Duru, Duru Bari, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <virginicare.com> is registered with 1API GmbH (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 27, 2021. On May 28, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 31, 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 June 4, 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 June 9, 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 June 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was June 30, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 8, 2021.

The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on July 29, 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 Virgin Enterprises Limited, which is a member of a group of companies that are collectively known as “the Virgin Group”.

The Complainant span a diverse range of sectors covering Financial Services, Health & Wellness, Music & Entertainment, People & Planet, Telecommunications & Media and Travel & Leisure and have between the 60 plus VIRGIN branded over 53 million customers worldwide and employ more than 69,000 people in 35 countries.

In particular, the Complainant own the Virgin Care business aiming to partner with the NHS, local authorities and communities to improve and provide services across adult and children’s community and primary healthcare, urgent care, sexual health care, dermatology, MSK, and adult social and well-being care.

The Complainant is the owner of numerous trademarks, registered in several countries (thereafter the “VIRGIN Trademarks”) such as:

- The UK word trademark VIRGIN, registration No. UK00003163121, registered on July 29, 2016, registered for products and services in classes 03, 05, 09, 11, 12, 14, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44 and 45;
- The UK word trademark VIRGIN, registration No. UK00002015265, registered on January 26, 1996, registered for products and services in classes 41 and 44;
- The European Union Trademark (“EUTM”) VIRGIN, registration No. 015255235, registered on June 3, 2016, registered for products and services in classes 03, 05, 09, 11, 12, 14, 16, 31, 32, 35, 36, 38, 39, 41, 42, 43, 44, and 45;
- The EUTM VIRGIN, registration No. 1141309, registered on May 21, 2012, registered for products and services in classes 9, 35, 36, 38 and 41;
- The UK word trademark VIRGIN CARE, registration No. UK00003110783, registered on August 28, 2015, registered for products and services in classes 35, 36, 37, 39, 41, 42, 43, 44 and 45;
- The EUTM trademark VIRGIN CARE, registration No. 014175871, registered on December 2, 2015, registered for products and services in classes 35, 36, 37, 39, 41, 42, 43, 44 and 45;
- The UK semi-figurative trademark VIRGINCARE, registration No. UK00003110786, registered on August 28, 2015, registered for products and services in classes 35, 36, 37, 39, 41, 42, 43, 44 and 45;
- The UK word trademarks VIRGIN CARE and VIRGINCARE, registration No. UK00002612244, registered on June 1, 2012, registered for products and services in classes 35, 36, 37, 42 and 44;
- The EUTM VIRGIN CARE VIRGIN, registration No. 014175897, registered on December 2, 2015, registered for products and services in classes 35, 36, 37, 39, 41, 42, 43, 44 and 45;
- The UK semi-figurative trademark VIRGIN, registration No. UK00003163127, registered on July 29, 2016, registered for products and services in classes 03, 05, 09, 11, 12, 14, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44 and 45.

The Complainant also owns multiple domain names, including:

- <virgin.com> registered on September 9, 1997,
- <virgincare.com> registered on August 29, 2007 (hereinafter the “Virgin Care Website”),
- <virgincare.co.uk> registered on February 24, 2010.

The disputed domain name <virginicare.com> was registered by the Respondent on April 30, 2021.

At the time of filing the Complaint and at the time of the decision, the disputed domain name pointed to a website that copies the text, layout and images of the Virgin Care’s website “www.virgincare.com" almost identically.

The Panel is requested to transfer the disputed domain name to the Complainant

5. Parties’ Contentions

A. Complainant

In accordance with paragraph 3(b)(ix) of the Rules, the legal and factual elements on which the Complainant relies are set out below.

First of all, the Complainant stands that the disputed domain name is, save for this additional “i”, identical to the Complainant’s registered trademark VIRGIN CARE and the domain name at which the Virgin Care website “www.virgincare.com” is located.

The Complainant stands that the letter “i” present in between “virgin” and “care” will easily be missed by Internet users as Internet users will focus on the presence of “virgin” and “care”, giving rise to confusion for the consumer or the “i” could end up being added into the disputed domain name due to a typographical error made when trying to locate the Virgin Care’s website “www.virgincare.com”.

Furthermore, the Complainant considers that the Respondent has no rights or legitimate interests in respect of the disputed domain name, given that the Respondent is not the owner of any VIRGIN CARE trademark and is using the disputed domain name, and he copies the text, layout and images of the Virgin Care’s website “www.virgincare.com” almost identically with the intent of illegitimate commercial gain through phishing.

At last, the Complainant argues that the Respondent has registered and is using the disputed domain name in bad faith, with the aim of using the email address displayed on the disputed domain name for purposes of phishing, and so for illegitimate commercial gain.

The Complainant considers that the Respondent is clearly aware of the Complainant and the Virgin Care business, since the disputed domain name copies the Virgin Care’s website identically.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of the disputed domain name, the Complainant shall prove the following three 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

According to the Policy, paragraph 4(a)(i), the Complainant shall prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

First of all, the Panel finds that the Complainant has provided evidence that it has rights in the VIRGIN and VIRGIN CARE trademarks.

Then, the Panel notices that the disputed domain name <virginicare.com> is composed of (i) the distinctive element “VIRGINCARE”, which is the exact reproduction of the VIRGIN CARE trademarks, (ii) the addition of an “i” between VIRGIN and CARE and (iii) the generic Top-Level Domain (“gTLD”) “.com”.

The applicable gTLD in a domain name is viewed as a standard registration requirement and as such is disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark.

The Panel wishes to remind that the first element of the UDRP serves essentially as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the disputed domain name.

This test typically involves a side‑by‑side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the 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 the UDRP (see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDPR Questions, Third Edition (“WIPO Overview 3.0”)).

Regarding the disputed domain name, the Panel finds that it differs from the VIRGIN CARE trademarks merely by the addition of the letter “i” in the disputed domain name.

This conduct is commonly referred to as “typosquatting” and creates a virtually identical and/or confusingly similar mark to the Complainant’s trademark, and the VIRGIN CARE trademark is clearly recognizable in the disputed domain name (Wachovia Corporation v. Peter Carrington, WIPO Case No. D2002-0775 and section 1.9 of the WIPO Overview 3.0).

Therefore, the Panel holds that the Complainant has established the first element of paragraph 4(a) of the Policy and that the disputed domain name is confusingly similar to the Complainant’s trademarks.

B. Rights or Legitimate Interests

According to the Policy, paragraph 4(a)(ii), the Complainant shall demonstrate that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The Policy, paragraph 4(c), outlines circumstances that if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name.

These circumstances are:

- before any notice of the dispute, the respondent’s 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
- the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
- the respondent is 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.

According to prior UDRP panel decisions, it is sufficient that the complainant shows prima facie that the respondent lacks rights or legitimate interests in the disputed domain name in order to shift the burden of production to the respondent (see Croatia Airlines did. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

Indeed, 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 prima facie 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).

According to the Panel, the Complainant has shown prima facie that the Respondent has no rights or legitimate interests in respect of the disputed domain name, since the Respondent is not the owner of any VIRGIN CARE trademark and since there is no business or legal relationship between the Complainant and the Respondent, the Complainant never having authorized nor licensed the Respondent to use its VIRGIN CARE trademarks in any way.

Moreover, the disputed domain name resolves to a website that copies the text, layout and images of the Complainant website almost identically at the time of the Complaint and decision, which does not represent a bona fide offering of goods or services.

Furthermore, the Respondent did not reply to the Complainant’s contentions.

Therefore, according to the Policy, paragraph 4(a)(ii) and 4(c), the Panel considers that the Respondent does not have rights or legitimate interests in the disputed domain name <virginicare.com>.

C. Registered and Used in Bad Faith

According to the Policy, paragraph 4(a)(iii), the Complainant shall prove that the disputed domain name has been registered and is being used in bad faith.

Thus, paragraph 4(b) provides that any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line 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 refers to the last circumstance.

First of all, the Panel finds that it is established that the Complainant’s trademarks were registered before the registration of the disputed domain name, and that the Respondent was clearly aware of the Complainant’s prior trademarks at the time of the registration of the disputed domain name, given the website at the disputed domain name copies the Complainant’s website “www.virgincare.com” almost identically.

Moreover, the mere registration of a domain name that is identical or confusingly similar, particularly domain names comprising typos, to a famous or widely known trademark, such as the Complainant’s trademark, by an unaffiliated entity can by itself create a presumption of bad faith.

Also, the use of a domain name for per se illegitimate activity such as phishing can never confer rights or legitimate interests on a respondent, such behavior is manifestly considered evidence of bad faith.

The Panel notes that the Respondent is manifestly using the disputed domain name to mislead Internet users of the VIRGIN CARE services by copying the Virgin Care’s website and reproducing marks identical to the Complainant’s registered trademarks for illegitimate commercial gain. Therefore, the disputed domain name is clearly used in bad faith.

In view of all the circumstances of this case the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith according to the Policy, paragraph 4(a)(iii) and 4(b).

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 <virginicare.com> be transferred to the Complainant.

Christiane Féral-Schuhl
Sole Panelist
Date: August 12, 2021