WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. Virgin Arthur

Case No. D2013-1422

1. The Parties

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

The Respondent is Virgin Arthur of Trenton, New Jersey, United States of America.

2. The Domain Name and Registrar

The disputed domain name <virqin-atlantic.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2013. On August 12, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 14, 2013, 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 August 14, 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 August 16, 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 August 20, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was September 9, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 10, 2013.

The Center appointed Christiane Féral-Schuhl as the sole panelist in this matter on September 17, 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 Complainant has numerous registered trademarks for the terms “Virgin Atlantic”. Those marks are used extensively around the world to promote a variety of products and services.

The Complainant owns the trademarks VIRGIN and VIRGIN ATLANTIC which have been registered all over the world for several years. For instance:

- VIRGIN ATLANTIC, United Kingdom Registration Number UK00001287264 registered on June 28, 1991 in classes 41 and 43, for which renewal is due by October 2, 2017;

- VIRGIN ATLANTIC TIMELESS CLASSICS, United Kingdom Registration Number UK00001482432 registered on October 15, 1993 in class 25, for which renewal is due by November 11, 2018;

- VIRGIN ATLANTIC’S DRIVE-THRU CHECK-IN, United Kingdom Registration Number UK00002200045 registered in March 24, 2000 in class 39, for which renewal is due by June 11, 2019;

- VIRGIN ATLANTIC, China, Registration Number 1467379 registered on October 28, 2000 in class 39, with expiry date on October 27, 2020;

- VIRGIN ATLANTIC, China, Registration Number 1451897 registered on September 28, 2000 in class 35, with expiry date on September 27, 2020;

- VIRGIN ATLANTIC, Canada, Registration Number TMA600131 registered on January 21, 2004;

- VIRGIN ATLANTIC (& design), Canada, Registration Number TMA602222 registered on February 13, 2004.

- VIRGIN ATLANTIC, Australia, Registration Number 751190 registered on December 16, 1997 in classes 35, 39, 41 and 42, for which renewal is due by December 16, 2017;

The disputed domain name <virqin-atlantic.com> was registered on April 25, 2013. The disputed domain name is currently linked to an inactive website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- the disputed domain name is confusingly similar with the VIRGIN ATLANTIC trademark in which the Complainant has rights, and continues to have rights;

- the Respondent does not have a right or legitimate interest in the disputed domain name;

- the Respondent registered the disputed domain name <virqin-atlantic.com> without the permission of the Complainant. Moreover, using an email address based on the <virqin-atlantic.com> domain name, he posted unauthorized job adverts purporting to be from Virgin Atlantic in order to deceive and extract money from the public. It characterizes that the disputed domain name was registered and is being used in bad faith.

The Complainant requests from the Panel that the disputed domain name <virqin-atlantic.com> be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) that the disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant is the owner of, and has rights to, the trademark VIRGIN ATLANTIC.

The disputed domain name differs from the Complainant’s trademark VIRGIN ATLANTIC only by the change of a single letter in the disputed domain name <virqin-atlantic.com>, namely the substitution of the letter “q” for the letter “g”. This substitution is a very subtle change and appears to be deliberate. This is a practice known as “typosquatting”. See, e.g., Amazon.com, Inc. v. Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman, WIPO Case No. D2006-0517 (<amazoh.com> confusingly similar to AMAZON) and LouisVuitton v. Net-Promotion, WIPO Case No. D2000-0430 (<luisvuitton.com> confusingly similar to LOUISVUITTON). It is very likely that when reading the disputed domain name in a URL or in an email address, the misspelling could easily be unnoticed.

The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy outlines non-exclusive circumstances which, 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:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with the bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business or other organization) has been commonly known by the disputed domain name, even if the Respondent has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleading divert consumers or to tarnish the trademark or service mark at issue.

In line with previous UDRP WIPO panel decisions, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name in order to have the burden of production shift to the respondent (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455).

The Panel finds that the Complainant has indeed made a prima facie showing that the Respondent does not have rights or legitimate interests in the disputed domain name. This finding is based on the non-disputed circumstances brought forward by the Complainant that the Complainant never gave the Respondent any permission or authorization to use the words “Virgin Atlantic” as part of a domain name or in any other way.

In this case, the Respondent did not reply to the Complainant’s contentions and thus has provided no evidence of circumstances specified in paragraph 4(c) of the Policy, nor any other circumstances giving rise to a right to or legitimate interest in the disputed domain name.

In view of the above, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy outlines non-exclusive circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith. These circumstances are:

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

(ii) the Respondent has registered the disputed 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 have engaged in a pattern of such conduct; or

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

(iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s 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 respondent’s website or location or of a product or service on respondent’s website or location.

As already established by previous UDRP panels, the VIRGIN and VIRGIN ATLANTIC trademarks have been famous for many years and all around the world and are to be regarded as well-known trademarks (see, e.g.,Virgin Enterprises Limited v. Trade Out Investments Ltd/Power Brand Centre Corp., WIPO Case No. D2011-0640; Virgin Enterprises Limited v. Imran Zafar, WIPO Case No. D2002-0696; Virgin Enterprises Limited v. Ali Khan, WIPO Case No. DTV2001-0029; Virgin Enterprises Limited v. Virginfree, WIPO Case No. D2000-1715). Thus, it appears clearly to the Panel that the Respondent knew or must have known the existence of the VIRGIN and VIRGIN ATLANTIC trademarks at the time of registration of the disputed domain name.

The Panel concurs with previous UDRP decisions holding that registration of a well-known trademark, or of terms confusingly similar to such a well-known trademark, as a domain name is a clear indication of bad faith in itself (see The Gap Inc. v. Deng Youqian, WIPO Case No. D2009-0113).

Therefore, the Panel considers that the Respondent registered the disputed domain name in bad faith.

Moreover, the Respondent used the disputed domain name for an email address ([…]@virqin-atlantic.com). Such use of the domain name as part of an email address can create an impression that emails sent from that address originate from the Complainant or are associated with the Complainant. In addition to this, the Complainant proved that the Respondent, using an email address based on the <virqin-atlantic.com> domain name, had been posting unauthorized job adverts purporting to be from Virgin Atlantic in order to deceive and extract money from the public. The Panel finds that this deceptive and fraudulent use by the Respondent characterizes a use in bad faith.

Currently, the disputed domain name does not resolve to a website or other online presence. It has long been generally held in UDRP decisions that the passive holding of a domain name that incorporates a trademark, without obvious use for an Internet purpose, does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy (Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003).

Therefore, based upon the statements and documents submitted by the Complainant and in accordance with the Policy, the Panel considers that the disputed domain name was registered and is being used in bad faith.

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 <virqin-atlantic.com> be transferred to the Complainant.

Christiane Féral-Schuhl
Sole Panelist
Date: October 3, 2013