WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. Transure Enterprise Ltd / Above.com Domain Privacy

Case No. D2013-0451

1. The Parties

The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Ipulse, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Transure Enterprise Ltd / Above.com Domain Privacy of Tortola, Virgin Islands, Oversea Territory of United Kingdom of Great Britain and Northern Ireland, and Beaumaris, Australia, respectively.

2. The Domain Name and Registrar

The disputed domain name <myvirgnmoney.com> (the “Domain Name”) is registered with Above.com, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 4, 2013. On March 5, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 6, 2013, 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 March 7, 2013 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 March 12, 2013.

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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 13, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was April 2, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 4, 2013.

The Center appointed Isabel Davies as the sole panelist in this matter on April 11, 2013. 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 Virgin Group originated in 1970 and the Group now comprises over 200 companies operating in 32 countries.

The Complainant owns many trademarks including those in the United States of America, the United Kingdom and the European Community. These include registrations for VIRGIN dating back to at least 1974 and for VIRGIN MONEY dating back to at least 2000.

The Complainant also is the registered proprietor of over 4,500 domain names incorporating the Virgin name.

The Domain Name <myvirgnmoney.com> was registered on March 31, 2011.

5. Parties’ Contentions

A Complainant

A.1 The Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant states that it owns very extensive rights in the VIRGIN mark and the VIRGIN MONEY mark and has set out in detail many in the United States, United Kingdom and the European Community. These include registrations for VIRGIN dating back to at least 1974 and for VIRGIN MONEY dating back to at least 2000.

The Complainant avers that this very clearly demonstrates that it has rights in the mark VIRGIN and VIRGIN MONEY.

In addition the Complainant claims to have a significant reputation and to have built up a vast amount of goodwill in the VIRGIN trademark in the United Kingdom and abroad in relation to a wide range of goods and services. They state that the Complainant is the brand owner for the Virgin Group of Companies. The Virgin Group originated in 1970 when Richard Branson began selling music records under the Virgin name and since that date it has expanded into a wide variety of businesses. As a result, the Virgin Group now comprises over 200 companies worldwide operating in 32 countries including throughout Europe and the United States. The number of employees employed by the Virgin Group of Companies is in excess of 40,000, generating an annual group turnover in excess of GBP 4.6 billion.

The Complainant has annexed a Witness Statement from Victoria Wisener outlining the very wide ranging activities of the Virgin Group and the extent of their operations. These include travel, holidays, limousines, limo bikes, media and telecoms, music, banking and financial services, clothing, jewelry, cinema and health services. This Witness Statement contains a detailed history of the Virgin Group and information to establish the well-known nature of the VIRGIN mark, for example in surveys being viewed as a Superbrand and the extent of its use of the VIRGIN mark with turnover at GBP 4.6 billion in 2006. The Complainant claims that it has developed a significant reputation in relation to the VIRGIN mark.

The Witness Statement evidences that the VIRGIN brand is commonly used alongside an additional element, for example VIRGIN ATLANTIC, VIRGIN TRAINS, VIRGIN HOLIDAYS, VIRGIN MEDIA, VIRGIN MOBILE, VIRGIN RADIO, VIRGIN ACTIVE, VIRGIN GAMES and most importantly in this instance VIRGIN MONEY.

The Complainant states that the Virgin Group launched Virgin Direct in the United Kingdom to sell financial services in March 1995. Virgin Direct was renamed Virgin Money in February 2002. Virgin Money has continued to grow and is now a major high street bank with over 4 million customers. In the United Kingdom alone, the annual turnover for Virgin Money in 2010 was GBP 109.5 million.

It avers that Virgin Money, the now high street bank, uses the term “My Virgin Money” to designate the Customer Sign In section of the personal banking website and generally in connection with the provision of financial services.

Annex 5 evidences that the Complainant owns many domain names and the Complainant states that it is also the registered proprietor of over 4,500 domain names, incorporating the VIRGIN mark. This list is another example of the wide scale use of the VIRGIN brand in conjunction with an additional element.

The Complainant also states that the public have become accustomed to seeing the VIRGIN brand used in conjunction with additional elements and if used in relation to financial services would undoubtedly see use as being use by the Complainant. At Annex 6 the Complainant has exhibited a copy of the results of a Google search for the words “my virgin money”, and “my virgn money” - both of which illustrate how use of the words “my” “virgin” (or virgn) and “money” would be seen as use by the Complainant.

It is argued that the Domain Name consisting of the expression “My Virgn Money” would quite clearly be associated with the Complainant’s own use of the term and with their well-known VIRGIN brand and financial business. It is stated that it is clear that the Domain Name is confusingly similar to trademarks in which the Complainant has rights.

The Complainant refers to a significant body of previous decisions (including but not limited to ( Virgin Enterprises Limited v. Trade Out Investments Ltd/Power Brand Centre Corp., WIPO Case No. D2011-0640; Virgin Enterprises Limited v. Duygu Mert, WIPO Case No. D2011-0632; Virgin Enterprises Limited v. Maine Street Investments, WIPO Case No. D2011-0621; Virgin Enterprises Limited v. Imran Zafar, WIPO Case No. D2002-0696; Virgin Enterprises Limited v. Internet Protocols Limited, WIPO Case No. D2001-0837; Virgin Enterprises Ltd. v. Virginfree, WIPO Case No. D2000-1715; Virgin Enterprises Limited v. Ali Khan, WIPO Case No. DTV2001-0029 and Virgin Enterprises Limited v. Steve Peter H S Kok and James Tan, WIPO Case No. DCC2002-0001) which relate to domain names comprising VIRGIN brand followed by another element and which act to support that the Complainant has a significant portfolio of trademark applications and registrations, a reputation in the VIRGIN brand and that a likelihood of confusion does exists in relation to domain names comprising VIRGIN brand and an additional element.

Extracts from some of the decisions are as follows:

Virgin Enterprises Limited v. Ali Khan, supra. “the combination of the Complainant's extensive registered trademarks for VIRGIN and VIRGIN prefixed marks, the reputation of the Virgin Group of Companies and the pre-existing business of Virgin Mobile Telecoms is such that confusing similarity clearly exists. The distinctive element of the domain name in issue, VIRGIN, is identical with the Complainant's trademarks and the identifier by which the Virgin Group is known in the United Kingdom and internationally. The Complaint satisfies the requirement of paragraph 4(a)(i) of the Policy.”

Virgin Enterprises Limited v. Trade Out Investments Ltd/Power Brand Centre Corp., supra. “the Complainant’s trademarks are very well-known and it is difficult to conceive of any legitimate use of the disputed domain name in the circumstances”

Virgin Enterprises Limited v. Imran Zafar, supra. “From the details supplied by the Complainant it is clear that the VIRGIN Group is an extremely substantial concern of both local and international repute. It is understandable, therefore, that the VIRGIN Group constitutes an entity "which deals with, and depends upon, the general public for its business”. In doing so, “it trades very much upon the VIRGIN name, which has considerable goodwill with the public and is associated with an extremely wide variety of products and services.”

One might add that, in the eyes of the general public, the Virgin Group of Companies undoubtedly enjoys considerable repute and is regarded as having the highest integrity and moral standing. This, in part might well account for the survey result, in 1995, conducted by the U.K. Public Relations magazine PR Week, which showed that over 90% of the public recognized the VIRGIN name (Complaint, paragraph 46).

Virgin Enterprises Ltd. v. Virginfree, supra. “The Complainant has filed ample evidence of its trade mark registrations and the associated businesses in the Virgin Group to substantiate its claim that ‘Virgin’ has become very well-known internationally over the last thirty years as the brand by which they are known.”

The Complainant states that it is clear that in accordance with the paragraph 3(b)(ix)(1) of the Rules that the Domain is confusingly similar to the VIRGIN trademark in which the Complainant has rights.

A.2 The Respondent has no rights or legitimate interests in respect of the Domain Name.

The Complainant states that the Respondent has no rights or legitimate interests in respect of the Domain Name. At Annex 7 to the Complaint is a copy of what was shown on the website on February 28, 2013. The Domain Name resolves to a parking page with sponsored listings.

It states that as far as the Complainant is aware, the Respondent has never been known by the Domain Name and appears to have no connection whatsoever to the Domain Name.

Prior to filing this Complaint the Domain Name owner was approached and responded merely offering to sell the Domain Name. They did not imply that they have any rights or legitimate interests in it.

It states that it is clear that, in accordance with the paragraph 3(6)(ix)(2) of the Rules, the Respondent has no rights or legitimate interests in the Domain Name.

A.3 The domain name was registered and being used in bad faith.

The Complainant submits that the registration of the Domain Name is a classic example of bad faith registration in accordance with paragraph 4(b) of the Policy.

In accordance with paragraph 4(b)(iv) of the Policy, the Complainant submits that there are circumstances which indicate that, by using the Domain Name the registrant has intentionally attempted to attract, for commercial gain, Internet users to the website or other online location, creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website or location or of a product or service on the website or location.

Bearing in mind the extent and nature of the Complainant’s reputation in the VIRGIN brand, the extremely distinctive and unique nature of the VIRGIN trademark, the Complainant states that it is impossible to envisage any legitimate purpose for registering the misspelling of a term which is widely used and recognized as being that of the Complainant. The Complainant contends that the Domain Name has clearly been registered to capitalize on or gain from the Complainant’s reputation. The use being made on the website to which the Domain Name resolves would support this. The Respondent undoubtedly benefits from the sponsored listings on the site.

It is contended that the public are very used to seeing Virgin Group operating across a wide range of business activities and they are a major player in the finance field being extremely well-known as offering services in this field. The VIRGIN brand is commonly used in conjunction with an additional element. Adding the words “my” and “money” is in line with the Complainant’s internal branding policy and results in a term which the Complainant currently uses and which would be recognized as their brand. The public are used to seeing this type of brand as being just another Virgin company both from a brand and from a url point of view.

The Complainant avers that the Domain name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

The Policy establishes three elements, specified in paragraph 4(a) that must be established by the Complainant to obtain relief. These elements are:

(i) The Domain Name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;

(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name;

(iii) The Domain Name has been registered and is being used in bad faith.

Each of these elements will be addressed below.

The Complainant must establish these elements even if the Respondent does not reply (see The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064). However, under paragraph 14(b) of the Rules, the Panel is entitled to draw such inferences as it considers appropriate from a party’s failure to comply with any provision of or requirement under, the Rules, including the Respondent’s failure to file a Response.

In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint (see ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009)).

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. As the proceeding is an administrative one, the Complainant bears the onus of proving its case on the balance of probabilities. The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before a decision can be made to cancel or transfer the Domain Name.

A. Identical or Confusingly Similar

(Policy, Paragraph 4(a)(i); Rules, Paragraphs 3(b)(viii), (b)(ix)(1))

The Panel accepts that the Complainant owns very extensive rights in the VIRGIN mark and the VIRGIN MONEY mark as set out in detail in Annex 3 to the Complaint, many in the United States, United Kingdom and the European Community. These include registrations for VIRGIN dating back to at least 1974 and for VIRGIN MONEY dating back to at least 2000.

The Panel accepts that the Complainant demonstrates that it has rights in the mark VIRGIN and VIRGIN MONEY.

In addition, the Complainant has a significant reputation and has built up a large amount of goodwill in the VIRGIN trademark in the United Kingdom and abroad in relation to a wide range of goods and services and the Complainant is the brand owner for the Virgin Group of Companies.

The range of activities includes travel, holidays, limousines, limo bikes, media and telecom, music, banking and financial services, clothing, jewelry, cinema and health services. The Witness Statement of Victoria Wisener contains a detailed history of The Virgin Group and information to establish the well-known nature of the VIRGIN mark, for example in surveys VIRGIN being viewed as a Superbrand, and the extent of its use of the VIRGIN mark with turnover at GBP 4.6 billion in 2006. The Panel accepts that the Complainant has developed a significant reputation in relation to the VIRGIN mark.

The Panel also accepts that the Virgin brand is commonly used alongside an additional element, for example VIRGIN ATLANTIC, VIRGIN TRAINS, VIRGIN HOLIDAYS, VIRGIN MEDIA, VIRGIN MOBILE, VIRGIN RADIO, VIRGIN ACTIVE, VIRGIN GAMES in particular VIRGIN MONEY adopted in February 2002. Virgin Money is now a major high street bank with over 4 million customers with an annual turnover for Virgin Money in 2010 in the United Kingdom of GBP 109.5 million.

It is accepted by the Panel that the Complainant uses the term “My Virgin Money” to designate the Customer Sign In section of the personal banking website and generally in connection with the provision of financial services and that the public have become accustomed to seeing the VIRGIN brand used in conjunction with additional elements and therefore, if used in relation to financial services, would see such use as being use by the Complainant.

The Panel has considered the fact that the Domain Name includes the VIRGIN Mark save that it omits an “i”, reading “virgn”

The Panel finds that the letter omission constitutes only a minor variation between the Domain Name and the Complainant’s registered mark. The Panel recognizes this conduct as “typo squatting,” a practice which involves the use of a domain name of virtually identical and/or confusingly similar marks to a complainant’s trademark (See Edmunds.com, Inc. v. Yingkun Guo, dba This domain name is 4 sale,WIPO Case No. D2006-0694).

The Panel holds that the omission of the letter “i” from a visual, oral and conceptual perspective makes the Domain Name no less confusingly similar to the Complainant’s mark. (See EasyGroup IP Licensing Limited v. Philip Thornton, WIPO Case No. D2004-0826).

In situations where the domain name is a slight alphabetical variation from a famous mark, it is easy for an Internet user to make a typing error, particularly when the mark is in a different language (See Deutsche Bank Aktiengesellschaft v. New York TV Tickets Inc, WIPO Case No. D2001-1314).

In relation to the addition of “my” the Panel also refers to a similar case previously submitted to the Center (Sony Kabushiki Kaisha also trading as Sony Corporation v. Sin, Eonmok, WIPO Case No. D2000-1007) where it was determined that the domain name <mysony.com> was confusingly similar to the Complainant’s trademark SONY in the following terms: “The letters ‘my’, to an English language reader, introduce the concept of possessiveness. That which is possessed is the following letters, namely ‘Sony’, which is the Complainant’s trademark. The addition of the letters ‘my’ has the effect of focusing the reader’s attention on the Complainant’s trademark. Accordingly, the Panel considers that a reader of the domain name would be confused into thinking that the domain name is associated with the Complainant”.

The Complainant refers to a significant body of previous decisions (including but not limited to (Virgin Enterprises Limited v. Trade Out Investments Ltd/Power Brand Centre Corp., supra; Virgin Enterprises Limited v. Duygu Mert, supra; Virgin Enterprises Limited v. Maine Street Investments, supra; Virgin Enterprises Limited v. Imran Zafar, supra; Virgin Enterprises Limited v. Internet Protocols Limited, supra; Virgin Enterprises Ltd. v. Virginfree, supra; Virgin Enterprises Limited v. Ali Khan, supra and Virgin Enterprises Limited v. Steve Peter H S Kok and James Tan, supra ) which relate to domain names comprising the VIRGIN brand followed by another element and which act to support that the Complainant has a significant portfolio of trade mark applications and registrations, a reputation in the VIRGIN brand and that a likelihood of confusion does exists in relation to domain names comprising VIRGIN brand and an additional element. The Panel accepts that these decisions support the Complaint.

The Panel accepts that in accordance with the Policy, paragraph 4(a)(i) the Domain Name is confusingly similar to the VIRGIN trademark in which the Complainant has rights.

B. The Respondent has no rights or legitimate interests in respect of the domain name

(Policy, Paragraph 4(a)(ii); Rules, Paragraph 3(b)(ix)(2))

Paragraphs 4(c)(i)-(iii) of the Policy contain a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in a domain name. The list includes inter alia: (i) using the domain name in connection with a bona fide offering of goods and services; (ii) being commonly known by the domain name; or (iii) making a legitimate non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers.

The Complainant has not licensed or otherwise permitted or authorized the Respondent to use its trademark VIRGIN MONEY or any variation of that mark, nor has the Respondent been authorized to register and use the Domain Name.

The Panel accepts that the Domain Name resolves to a parking page with sponsored listings and, in the absence of any response by the Respondent it is accepted that the Respondent has never been known by the Domain Name and appears to have no connection whatsoever to the Domain Name.

The account by the Complainant of the approach to the Respondent and the offer to sell the Domain Name did not imply that they have any rights or legitimate interests in the misspelling reinforces this.

The Panel accepts that, bearing in mind the reputation of the VIRGIN brand and the Complainant’s operations in a wide range of activities, there is no believable or realistic basis for a right or legitimate interest in the Domain Name by the Respondent. In view of the rest of the information in the Complaint the Panel considers that the Complainant’s case on this count is made out.

The panel accepts that in accordance with the Policy, paragraph 4(a)(ii) the Respondent has no rights or legitimate interest in the Domain Name.

C. The domain name was registered and is being used in bad faith.

(Policy, paragraphs 4(a)(iii), 4(b); Rules, paragraph 3(b)(ix)(3))

The Policy provides in paragraph 4(b) that certain circumstances, “in particular but without limitation”, will be evidence of bad faith registration and use of a domain name, and lists four possible circumstances which shall be evidence of registration and use of a domain name in bad faith for the purposes of paragraph 4(a)(iii) of the Policy. These circumstances include the situation where a respondent uses the domain name intentionally to attempt to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with a complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website.

The Panel accepts that in view of the extent and nature of the VIRGIN brand it is inconceivable that there is any legitimate purpose for registering a very similar term to that which is widely used and recognized as being that of the Complainant. The Domain Name has clearly been registered to capitalize or gain from the Complainant’s reputation. The use being made on the website to which the Domain Name resolved would support this and the owner of the Domain Name would be likely to benefit from the sponsored listings on the site.

The existence of “typo squatting” has been discussed earlier in this decision but the Panel returns to the subject in the context of bad faith. The Panel holds that “typo squatting” is evidence of bad faith registration of the Domain Name (See ESPN, Inc. v. XC2, WIPO Case No. D2005-0444).

The Panel accepts that adding the words “my” and “money” results in a term which is very similar to that which the Complainant currently uses and which would be recognized as their brand and that the public are used to seeing this type of brand as being just another Virgin company both from a brand and from a url point of view.

The Panel accepts that the Domain name was registered and is being used in bad faith in accordance with paragraph 4(a)(iii) of 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 Domain Name <myvirgnmoney.com> be transferred to the Complainant.

Isabel Davies
Sole Panelist
Date: April 18, 2013