WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Privacy Service Provided by Withheld for Privacy ehf / feliciano rodrigues
Case No. D2021-3345
1. The Parties
The Complainant is Virgin Enterprises Limited, United Kingdom, represented by A.A.Thornton & Co, United Kingdom.
The Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / feliciano rodrigues, United States of America.
2. The Domain Name and Registrar
The disputed domain name <virginvoyages.company> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2021. On October 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 8, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 12, 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 October 13, 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 October 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 4, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 5, 2021.
The Center appointed Nicholas Smith as the sole panelist in this matter on November 10, 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 United Kingdom company that is a member of a group of companies collectively known as the Virgin Group, which was established by Sir Richard Branson in 1970. The Complainant is the holder of the intellectual property assets for the Virgin Group, including various trademarks consisting of or containing the word “virgin”, which it then licenses to various members of the Virgin Group. One of the enterprises run by the Virgin Group is a cruise line that trades under the mark VIRGIN VOYAGES (the “VIRGIN VOYAGES Mark”). The Virgin Group announced the formation of the new cruise line in 2014 and, following the purchase of a number of cruise ships, commenced its first cruises in August 2021. The Virgin Group promotes its Virgin Voyages business through various means including through its website at the domain name <virginvoyages.com> (the “Complainant’s Website”).
The Complainant is the owner of trademark registrations for the VIRGIN VOYAGES Mark in various jurisdictions including a United Kingdom trademark registration with a registration date of December 11, 2015 (registration number UK00003126139) for various goods and services in classes 9, 35, 39, 41, and 43.
The Domain Name <virginvoyages.company> was registered on September 4, 2021. The Domain Name resolves to a website (the “Respondent’s Website”) that almost reproduces the design and appearance of the Complainant’s Website, including copying photos and text. However, the Respondent’s Website contains a section titled “Covid Relief Fund” which misleads visitors, thinking that they are donating to a relief fund connected to Covid-19 operated by the Complainant, into providing their credit card details to the Respondent.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Name is identical or confusingly similar to the Complainant’s VIRGIN VOYAGES Mark;
(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith.
The Complainant is the owner of the VIRGIN VOYAGES Mark, having registered the VIRGIN VOYAGES Mark in the United Kingdom and other jurisdictions. The Domain Name is identical to the VIRGIN VOYAGES Mark.
There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known by the Domain Name nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is not making a bona fide, legitimate noncommercial or fair use of the Domain Name. Rather the Respondent is using the Domain Name to resolve to a website that replicates the Complainant’s Website for the purposes of phishing and fraud which is not legitimate.
The Domain Name was registered and is being used in bad faith. By using the Domain Name to resolve to a website which reproduces numerous elements from the Complainant’s Website, the Respondent is using the Domain Name to divert Internet users searching for the Complainant to the Respondent’s Website for commercial gain and potentially to defraud the public. Such conduct amounts to registration and use of the Domain Name in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the VIRGIN VOYAGES Mark, having registrations for the VIRGIN VOYAGES Mark as a trademark in the United Kingdom and other jurisdictions.
Disregarding for the purposes of comparison the generic Top-Level Domain (“gTLD”) “.company” (being a technical requirement for the registration of a domain name) and the absence of a space between “virgin” and “voyages” (it not being possible to register a domain name containing a space), the Domain Name is identical to the VIRGIN VOYAGES Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:
“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you 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 (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 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 Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the VIRGIN VOYAGES Mark or a mark similar to the VIRGIN VOYAGES Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial or fair use.
The Respondent has used the Domain Name to operate a website that clearly impersonates the Complainant’s Website which, absent any explanation of its conduct by the Respondent, appears to be a means of defrauding the Complainant’s customers by persuading them to provide the Respondent with their credit card information. Such conduct does not, on its face, amount to the use of the Domain Name for a bona fide offering of goods or services.
The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a Response, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, 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 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 the complainant, for valuable consideration in excess of its 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 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 (Policy, paragraph 4(b)).
The Panel finds that the Respondent was aware of the Complainant and its reputation in the VIRGIN VOYAGES Mark at the time the Domain Name was registered. The Respondent’s Website reproduces numerous elements including text and photos of the Complainant’s Website. The registration of the Domain Name was in awareness of the VIRGIN VOYAGES Mark and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith.
The Panel finds, on the balance of probability, that the Respondent has used the Domain Name, being identical to the VIRGIN VOYAGES Mark, to take advantage of user confusion in order to obtain the credit card details of users who provide them at the Respondent’s Website, under the misapprehension that they are supporting a good cause operated by the Complainant at the Complainant’s Website, undoubtedly for commercial gain. Consequently, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and the Complainant’s VIRGIN VOYAGES Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website (Policy, paragraph 4(b)(vi)).
Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <virginvoyages.company>, be transferred to the Complainant.
Date: November 15, 2021