WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. Super Privacy Service LTD c/o Dynadot

Case No. D2018-2923

1. The Parties

The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by A. A. Thornton & Co., United Kingdom.

The Respondent is Super Privacy Service LTD c/o Dynadot of San Mateo, California, United States of America (“United States”).

2. The Domain Names and Registrar

The disputed domain names <virginantlathome.services>, <virginatlanticourier.services>, and <virginatlanticouriers.services> are registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 21, 2018. On December 21, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 25, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 26, 2018 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 December 28, 2018.

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 January 3, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 23, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 25, 2019.

The Center appointed James Bridgeman as the sole panelist in this matter on February 13, 2019. 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, collectively known as “the Virgin Group” that was originally 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. There are now over 60 VIRGIN-branded businesses that span a diverse range of sectors covering Financial Services, Health & Wellness, Music & Entertainment, People & Planet, Telecommunications & Media and Travel & Leisure, have between them over 53 million customers worldwide and employ more than 69,000 people in 35 countries and an Annual revenue is GBP 16.6 billion.

In 1984, the Complainant launched its first passenger and cargo airlines Virgin Atlantic and Virgin Atlantic Cargo. The Complainant provides information about its “Virgin Atlantic” and “Virgin Atlantic Cargo” services with booking facilities on its websites at “www.virginatlantic.com” and “www.virgin-atlantic.com”.

The Complainant owns the following trademark registrations:

- European Union Registration No. 14030589 VIRGIN ATLANTIC filed on May 5, 2015 and registered on October 12, 2015, in respect of, inter alia, transport; packaging and storage of goods; travel arrangement; transport services; airline transport; air transport; transportation information; arrangement of transport; transportation of passengers; arranging transportation of passengers by road, rail, air and sea; provision of data relating to the transportation of passengers; provision of information relating to the transportation of passengers; information and advisory services relating to the aforesaid; information and advisory services relating to the aforesaid services provided online from a computer database or the Internet; information and advisory services in relation to the aforesaid services provided over a telecommunications network in class 39.

- European Union Trademark registration No. 14030597 filed on May 5, 2015 and registered on October 19, 2015, in respect of, inter alia, transport; packaging and storage of goods; travel arrangement; transport services; airline transport; air transport; transportation information; arrangement of transport; transportation of passengers; arranging transportation of passengers by road, rail, air and sea; provision of data relating to the transportation of passengers; provision of information relating to the transportation of passengers; information and advisory services relating to the aforesaid; information and advisory services relating to the aforesaid services provided online from a computer database or the Internet; information and advisory services in relation to the aforesaid services provided over a telecommunications network in class 39.

- European Union Trademark registration No. 1798560 VIRGIN filed on August 8, 2000 and registered on June 5, 2002, in respect of, inter alia, arranging transportation of goods or persons by road, rail, air and sea; freight services; ground transport services.

- United States Trademark registration No. 2808270 VIRGIN ATLANTIC filed on March 5, 2003 and registered on January 27, 2004, in respect of, inter alia, transportation of and arranging transportation of goods and passengers by road and air; freight transportation services by air; operation of aircraft for others.

- United States Trademark registration No. 5259474 VIRGIN ATLANTIC VIRGIN filed on October 4, 2016 and August 8, 2017, in respect of, inter alia, transportation of and arranging transportation of goods and passengers by road and air; freight transportation services by air; operation of aircraft for others.

- United Kingdom Trademark registration No. 1287263 VIRGIN ATLANTIC filed on October 2, 1986 and registered on April 3, 1992, in respect of, inter alia, transportation of goods and passengers by road, rail, air and sea; arranging the transport of passengers and goods by road, rail, sea and air; all included in Class 39.

- United Kingdom Trademark registration No. 3107251 VIRGIN ATLANTIC VIRGIN as a series of two trademarks filed on 5 May 2015 and registered on November 20, 2015, in respect of, inter alia, transport; packaging and storage of goods; travel arrangement; airline services; airline transportation services; airline and shipping services; transportation information; information and advisory services relating to the aforesaid; information and advisory services relating to the aforesaid services provided online from a computer database or the Internet; information and advisory services in relation to the aforesaid services provided over a telecommunications network.

The Complainant is also the registered proprietor of over 5,000 Internet domain names consisting of, or incorporating, the VIRGIN mark including <virgin.com> which resolves to the website at “www.virgin.com” which the Complainant has established and maintained since the year 2000 to promote the activities of the Virgin Group and its businesses, ventures and foundations, with links to the specific web pages for most of the companies within the Virgin Group. Particularly relevant to this Complaint is that the Complainant also owns the generic Top-Level Domain (“gTLD”) domain names <virginatlantic.com> and <virgin-atlantic.com> which resolve to the Complainant’s websites at “www.virginatlantic.com” and “www.virgin-atlantic.com”.

In the absence of any Response to the Complaint, there is no information available about the Respondent except for that which has been provided in the Complaint and the information supplied by the Registrar in response to the Center’s request for information in relation to this Complaint.

The Registrar has confirmed that the current registrant registered <virginatlanticourier.services> on October 31, 2018, <virginatlanticouriers.services> on November 17, 2018, and <virginantlathome.services> on December 12, 2018.

At the time of the filing of the Complaint, each of the disputed domain names resolved to almost identical websites, which have content relating primarily to a third party real estate business, more particularly described below, which has no association with the Complainant and include a menu box prominently at the top left hand corner of the homepages which are headed with the Complainant’s VIRGIN ATLANTIC trademark. The disputed domain name <virginatlanticouriers.services> does not currently resolve to an active website; whereas the use of the other disputed domain names has not changed.

5. Parties’ Contentions

A. Complainant

The Complainant relies on its rights in the above-listed registered trademarks and submits that each of the disputed domain names is confusingly similar to the VIRGIN ATLANTIC trademark in which it has rights.

The Complainant submits that since they were established in 1984, the Complainant’s VIRGIN ATLANTIC passenger airline and VIRGIN ATLANTIC CARGO services have expanded to routes from UK hubs of London Gatwick, London Heathrow and Manchester to destinations in North America, the Caribbean, Africa, the Middle East, Asia, and Mexico.

The Complainant’s VIRGIN signature logo, VIRGIN ATLANTIC and VIRGIN ATLANTIC logo marks are all placed throughout the Virgin Atlantic Websites, on the fuselages and tailfins of its aircraft, and on promotional and advertising materials on television, the Internet, radio broadcasting, newspapers, and magazines in the UK, US, China, Hong Kong, Japan, South Africa, and around the world to promote or publicise its products and activities.

The Complainant asserts that through such use of the VIRGIN ATLANTIC trademark it has established an international reputation in the use of the VIRGIN ATLANTIC trademark through its extensive use of the mark in association with its passenger and cargo transport services and has listed a number of awards received acknowledging its high standards.

The Complainant submits that the disputed domain names <virginatlanticourier.services> and <virginatlanticouriers.services> each contain the Complainant’s registered trademark VIRGIN ATLANTIC, and the most prominent verbal element of its VIRGIN ATLANTIC logo mark, in their entirety. Both the <virginatlanticourier.services> and <virginatlanticouriers.services> domain names each contains the additional element “courier” or plural “couriers” and neither word distinguishes the disputed domain name from the Complainant’s trademark.

The Complainant argues that the disputed domain name <virginantlathome.services> also contains the Complainant’s registered trademark in its entirety as the first and distinctive verbal elements. The Complainant submits that the element “antlat” could easily be misread as “Atlantic” is clearly intended to look like a typographical error and appear similar to ATLANTIC, which is the second verbal element of the Complainant’s registered trademarks and the VIRGIN ATLANTIC and VIRGIN ATLANTIC logo marks.

The addition of the word “home” has a descriptive and generic meaning in the context of the Internet, being “homepage”. The Complainant submits that the disputed domain name <virginantlathome.services> is therefore confusingly similar to the Complainant’s VIRGIN ATLANTIC mark.

The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain names. Each resolves to an almost identical website. The Complainant refers to copies of the websites submitted as annexes to the Complaint and points out that the layout, and most of the content and images, appears to largely be a copy of the website operated by a third-party real estate firm.

There are references to “VIRGIN ATLANTIC” throughout the webpages. The Complainant’s VIRGIN Signature logo inside the shape of an aircraft tailfin, which is also almost identical to the figurative element contained in the Complainant’s Registered Mark VIRGIN ATLANTIC logo appears on the top left hand corner of the homepages.

The websites to which the disputed domain names resolve purport to offer an international freight service under the mark VIRGIN ATLANTIC COURIER and VIRGIN ATLANTIC. These are identical to the freight services, and similar to the passenger airline services, provided by the Complainant under its VIRGIN ATLANTIC marks.

The Complainant submits that neither the Respondent nor the websites to which the disputed domain names resolve are authorized to use any of the Complainant’s registered trademarks, nor are they associated in any way with the third party real estate group. Furthermore they each contain images of an aircraft bearing the livery of a competitor as the initial image seen on the homepage. There are also images of a container ship or lorry and a warehouse.

The use of an image of a competitor’s aircraft could give an impression to Internet users that VIRGIN ATLANTIC business is in partnership with the competing airline when that may not be the case.

Each of the websites to which the disputed domain names resolve have a page to enter a tracking number and a “Contact Us” page with an online form. The Complainant argues that Internet users searching for the Virgin Atlantic Websites are likely to believe them to be the genuine websites provided by the Complainant in relation to the VIRGIN ATLANTIC passenger and cargo airlines. Use of tracking number tool that is not genuinely provided by the VIRGIN ATLANTIC business would be disruptive to the business of the Complainant and damage the reputation of the VIRGIN ATLANTIC services.

There is no evidence the Respondent was commonly known by the marks VIRGIN, VIRGIN ATLANTIC, VIRGINANTLATHOME, VIRGINATLANTICOURIER, or VIRGINATLANTICOURIERS in connection with a bona fide offering of goods or services prior to this Complaint.

The Complainant asserts that the uses to which the disputed domain names are being put, resolving to these websites do not constitute any legitimate, noncommercial or fair use of domain names.

The fact that the Respondent has copied the website of the third party real estate company supports the argument that the Respondent does not have any legitimate interest in the disputed domain names.

The Complainant further submits that the disputed domain names were registered and are being used in bad faith. The extensive unauthorised use of the Complainant’s trademark and logo on the websites to which the disputed domain names resolves means that the Respondent was clearly aware of the Complainant’s Registered trademarks at the time of registering the disputed domain names.

The Respondent is using some of the Complainant’s registered trademarks on the websites to which the disputed domain names resolve in connection with a purported offering of services identical and similar to those covered by and offered under the Complainant’s registered trademarks. The Respondent’s websites purport to provide mechanisms through a “tracking tool” and a contact link to allow Internet users to engage with the websites. This would provide the Respondent with some commercial benefit and would disrupt the Complainant’s business. The provision of a tracking number tool that will not work or provide information, or will provide incorrect information, to genuine consumers of the VIRGIN ATLANTIC and VIRGIN ATLANTIC CARGO services is likely to damage the Complainant’s reputation.

The Complainant submits that the use of the disputed domain names, and websites to which the disputed domain names resolve, is done clearly to intentionally attract Internet users to the Respondent’s websites for commercial gain, by creating a likelihood of confusion with the Complainant’s registered trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s websites.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the complainant to establish that:

(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

The Complainant has provided evidence of its ownership of registrations for the VIRGIN and VIRGIN ATLANTIC trademarks together with rights that it has acquired at common law through the extensive use of the VIRGIN ATLANTIC trademark relation to its international passenger and cargo business.

The disputed domain names <virginatlanticourier.services>; <virginatlanticouriers.services>; and <virginantlathome.services> each have the word “virgin” within its dominant elements.

In the case of <virginatlanticourier.services> domain name the words “Virgin” and “Atlantic” combined to produce the dominant and distinctive elements and the letter “c” serves as both the last letter in the word “Atlantic” in the first letter in the word “courier”. The Panel finds that the disputed domain name <virginatlanticourier.services> is confusingly similar to the Complainant’s VIRGIN ATLANTIC trademark as its dominant elements are identical to the Complainant’s trademark, the element “courier” is descriptive of the service associated with transport services and the gTLD “.services” in the present case may be ignored for the purposes of such comparison.

This panel makes the same finding in relation to the disputed domain name <virginatlanticouriers.services> as the only difference between this domain name and <virginatlanticourier.services> is the addition of the letter “s” to the word “courier” creating a plural. Changing the word “courier” from singular to plural does not in any way avoid a finding of confusing similarity between the disputed domain name and the Complainant’s VIRGIN ATLANTIC mark.

The disputed domain name <virginantlathome.services> is somewhat different from the previous two. It contains the Complainant’s VIRGIN trademark in its entirety as the dominant element. In addition there is the term “antlathome” which in combination has no meaning or significance. It is probable that these other three elements would appear, certainly to an English-speaking reader, as the syllable “atl” in combination with the words “at” and “home”. In this context for the purposes of comparison the “.services” gTLD extension may be ignored. In the circumstances on the balance of probabilities this domain name, because of the strength of the Complainant’s goodwill and reputation in the VIRGIN and the VIRGIN ATLANTIC trademarks, the Panel finds that on the balance of probabilities the letters “atl” would be taken as a reference to the word “Atlantic” and therefore the disputed domain name <virginantlathome.services> is also confusingly similar to the Complainant’s the VIRGIN and the VIRGIN ATLANTIC trademarks.

The Complainant has therefore succeeded in the first element of the test in paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interest in any of the disputed domain names.

The Respondent is not known by the disputed domain names; there is no evidence the Respondent was commonly known by the names “Virgin”, “Virgin Atlantic”, “Virgin Antlat Home”, “Virgin AtlantiCourier” or “Virgin AtlantiCouriers” in connection with a bona fide offering of goods or services prior to this Complaint; the Respondent is using the Complainant’s trademark as the dominant element of its three disputed domain names without the license or permission of the Complainant. The websites to which the disputed domain name resolve are presented as though the proprietor has some connection with the Complainant which is not the case. Furthermore the Respondent appears to be using website content from a third party with which the Complainant submits it has no connection and the content posted on the Respondent’s websites is damaging to the Complainant’s reputation.

It is well established under the Policy that in such circumstances the burden of production shifts to the Respondent to establish its rights or legitimate interests. In this Complaint the Respondent has not filed a Response and so has failed to discharge the burden of production.

In the circumstances this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name and the Complainant has therefore succeeded in the second element of the test in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

On the evidence adduced, registrant of the disputed domain names was aware of the Complainant, its rights and reputation when each of the disputed domain names were created and registered. Each of the three disputed domain names is confusingly similar to the Complainant’s VIRGIN ATLANTIC trademark and on the evidence adduced, on the balance of probabilities they were each created and chosen to create confusion among Internet users to take predatory advantage of the Complainant’s rights.

The almost identical websites to which the disputed domain names resolve are each using the Complainant’s trademarks without permission. They each give the impression that they are hosted by the Complainant or some entity associated with the Complainant or have some association with the Complainant. However they each also contain content that includes promotional material relating to a competing airline and to a third party real estate company which is likely to confuse Internet users. Such use and content must inevitably create confusion among Internet users with inevitable damage to the Complainant’s rights, business and reputation.

On the balance of probabilities, the Respondent is using the disputed domain names intentionally in an attempt to attract, for commercial gain, Internet users to its web site 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 web sites to which they resolve Paragraph 4(b)(iv) of the Policy states that if such circumstances are found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith

In the circumstances this Panel finds that the disputed domain names were registered and are being used in bad faith. The Complainant has therefore succeeded in the third and final element of the test in paragraph 4(a)(iii) of the Policy also and is entitled to the reliefs sought.

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 names <virginantlathome.services>, <virginatlanticourier.services>, and <virginatlanticouriers.services> be transferred to the Complainant.

James Bridgeman
Sole Panelist
Date: February 20, 2019