WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. Domain Administrator, See PrivacyGuardian.org / Mary Cody, Dope DESIGNS

Case No. DPW2021-0003

1. The Parties

The Complainant is Virgin Enterprises Limited, United Kingdom, represented by A.A.Thornton & Co, United Kingdom.

The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Mary Cody, Dope DESIGNS, United States.

2. The Domain Name and Registrar

The disputed domain name <virginatlairways.pw> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2021. On April 9, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 9, 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 12, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amended Complaint. The Complainant filed an amended Complaint on April 16, 2021.

The Center verified that the Complaint together with the amendment to the 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 April 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was initially May 6, 2021.

The Respondent sent email communications to the Center on April 12, 2021 and on April 17, 2021 to which the Center acknowledged receipt.

The Center suspended the Proceeding two times on April 22, 2021, and on June 2, 2021, as per the Complainant’s suspension request. The Proceeding was reinstituted on June 9, 2021, and the Response due date was June 17, 2021. The Respondent did not submit any further response. Accordingly, the Center notified the Commencement of Panel Appointment Process.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on July 6, 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.

Following delivery of the hardcopy Notification of Dispute and Complaint, the Complainant received an email on April 21, 2021 from a person with a similar name to the Respondent stating that the recipient was not affiliated with either party and was not the registrant of the disputed domain name.

4. Factual Background

The Complainant is a member of the group of companies known as the Virgin group which holds the intellectual property rights of the group.

As is by now well known, the first “Virgin” business was established by Sir Richard Branson in 1970 selling popular music. According to the Complaint, there are now 60 different business lines operated by the Virgin group covering financial services, telecommunications, travel and leisure amongst others. The group has annual revenues of GBP 16.6 billion. Its members employ some 69,000 people in 35 countries and serve some 53 million customers.

In 1984, the Virgin group launched its first passenger and cargo airlines under the name “Virgin Atlantic”. The Virgin Atlantic airline services provide services from London Heathrow, London Gatwick, Manchester to a wide range of destinations in North America, the Caribbean, Africa, the Middle East, and Asia.

The Virgin Atlantic Cargo business provides services in 37 countries, flying to 60 destinations and carried some 240 million kilograms of cargo between the United Kingdom and the United States in 2018, approximately one quarter of all such cargo traffic between these destinations.

The Virgin Atlantic services have been extensively advertised and promoted under or by reference to “Virgin Atlantic” including on the aircraft fuselages, television, the Internet, radio broadcasting, newspapers and magazines and the group’s websites.

Amongst other things, information about and booking facilities for these airline services are provided from a website to which the domain names <virginatlantic.com> and <virginatlanticcargo.com> resolve.

The passenger business has won numerous awards over the years and the cargo business has won International Cargo Airline of the Year 14 times.

The Complaint includes evidence of numerous trademarks registered by the Complainant. By way of illustration only, these include:

(a) European Union (“EU”) Registration No. 1798560 VIRGIN in International Classes 9 and 39 which was filed on August 8, 2000 and registered on June 5, 2002;

(b) United Kingdom (“UK”) Registration No. 915404841 and EU Registration No. 15404841 for a stylized version of “Virgin” in fancy script (the Virgin Signature Logo) in International Classes 3, 5, 9, 11, 12, 14, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44 and 45. These were both filed on May 5, 2016 and entered on the Registers on December 2, 2016;

(c) VIRGIN ATLANTIC: UK Registration No. 1287263, EU Registration No. 14030589 and United States (“US”) Registration No. 2808270. The UK registration was filed in 1986 and registered in 1992; the EU registration was registered in 2015 and the US registration was registered in 2004; and

(d) VIRGIN ATLANTIC with tailfin device in International Classes 9, 35, 39, 41, 43 and 44): UK Registration No. UK00003107251 and EU Registration No. 014030597 both registered in 2015 and, in class 39 only, US Registration No. 5,259,474 which was registered in 2017 claiming first use in commerce in 2010.

The disputed domain name was registered on January 4, 2021.

When the Complaint was filed, it resolved to a website which appeared to replicate the Complainant’s website including as to layout, colour scheme and use of the Complainant’s trademarks including “virgin atlantic and tailfin device”. According to the Complaint, some of the links on the Respondent’s website did redirect to some pages on the Complainant’s website, some resolved to a page “404 Not found” and there was a “Mail Us” functionality, a live chat functionality and an email address [...]@virginatlairways.pw. The “Mail Us” and support email address were active and, if used, involved the submission of the user’s email address and other contact details.

5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(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.

Paragraph 15(a) of the Rules directs the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.

The Respondent’s first email to the Center on April 12, 2021 stated:

“This was all a mix up or something.
“I guess it's an error.
“The domain in question is parked and is not actively being used.
“If you wish to buy the domain please inform me.
“Any resemblance to existing domains or copyrighted material is purely coincidental and I will ensure nothing of this nature happens again.
“Thanks”

However, the Respondent’s second email to the Center dated April 17, 2021 stated:

“The said domain is not in use.
“I have no idea what you guys are talking about.
“I have told you guys to take the domain if you want it.
“I have no dispute with anyone.
“Take the domain if you want it.
“The domain is parked.
“I'm not disputing anything. Take the domain.
“Thanks”

While there is some factual inaccuracy in these emails as the disputed domain name was not “parked” in the way that would usually be understood, the Panel considers the second email can be fairly read as an offer to surrender the disputed domain name. The Respondent has moved on from soliciting a bid for the disputed domain name to “I’m not disputing anything. Take the domain”.

As a general rule, panels are prepared to act on such a consent although, in some cases, it is appropriate to proceed to a substantive decision for example where (i) the panel finds a broader interest in recording a substantive decision on the merits – notably recalling UDRP paragraph 4(b)(ii) discussing a pattern of bad faith conduct, (ii) while consenting to the requested remedy the respondent has expressly disclaimed any bad faith, (iii) the complainant has not agreed to accept such consent and has expressed a preference for a recorded decision, (iv) there is ambiguity as to the scope of the respondent’s consent, or (v) the panel wishes to be certain that the complainant has shown that it possesses relevant trademark rights. See e.g. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.10.

In the present case, the Panel considers it appropriate to record substantive findings at least in summary form in view of the Respondent’s claim that the disputed domain name was merely parked and not in use (akin to factor (ii) above) and the nature of the use which appears to involve the harvesting of personal information.

A. Identical or Confusingly Similar

The Complainant has proven ownership of numerous registered trademarks including the trademarks identified in Section 4 above for VIRGIN, VIRGIN ATLANTIC and the “virgin atlantic” and tailfin device.

For the purposes of comparing these trademarks to the disputed domain name, it is permissible to disregard the inclusion of the country code Top-Level-Domain (“ccTLD”) as a function of the domain name system (WIPO Overview 3.0, section 1.11. It is also permissible to disregard the stylisation of the Virgin Signature Logo and the tail fin device. See WIPO Overview 3.0, section 1.10.

The disputed domain name is therefore confusingly similar to the Complainant’s trademarks for VIRGIN and VIRGIN ATLANTIC. The VIRGIN trademark is wholly recognizable both visually and aurally within the disputed domain name. See WIPO Overview 3.0, section 1.8. For similar reasons, it is confusingly similar to the Complainant’s VIRGIN ATLANTIC trademark. See WIPO Overview 3.0, section 1.9.

B. Rights or Legitimate Interests

It is clear from the Complaint and not contested by the Respondent that the Respondent is not associated with the Complainant or the Virgin group in any way and is not authorized to use the disputed domain name. The disputed domain name is not derived from the Respondent’s name.

The website to which the disputed domain name resolves is a misleading representation of the Complainant’s “Virgin Atlantic” website. While it does have some redirection to the Complainant’s website, it also has email functionality which, as the Complainant alleges, appears designed to harvest personal information such as email addresses and the like from people under the mistaken impression that they are dealing with the Complainant and the “Virgin” group.

Other than her inaccurate denial that the disputed domain name is parked and not in use, the Respondent has not denied this allegation nor explained it. Nor is it legitimate “fair” use.

Such use does not qualify as an offer of goods and services in good faith.

Accordingly, the Panel is satisfied that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.

There can be little doubt that the Respondent was aware of the Complainant and its trademarks when registering the disputed domain name given the length and extent of use of the “Virgin” trademarks over time and the content of the website to which the disputed domain name resolved.

As discussed in section 5B above, the unanswered allegation is that the Respondent registered and used the disputed domain name to harvest personal information of people who mistakenly thought they were dealing with the Complainant or members of the “Virgin” group.

In those circumstances, the Panel finds that on the record in this proceeding the Respondent registered and used the disputed domain name in bad faith.

Accordingly, the Complainant has established all three requirements under the Policy.

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, <virginatlairways.pw>, be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Date: July 20, 2021