WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Jesse Brown
Case No. D2016-2176
1. The Parties
The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland, represented by Stobbs IP Limited, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Jesse Brown of Tipton, Missouri, United States of America.
2. The Domain Name and Registrar
The disputed domain name <virqin-mobile.com> is registered with Network Solutions, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2016. On October 27, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 October 31, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 20, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 21, 2016.
The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on December 1, 2016. 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 Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland. The Complainant was founded in 1970.
The Complainant owns trademark registrations for VIRGIN MOBILE since 2003 (the earliest registration date is October 7, 2003, for the registration no. 76301009, in classes 9, 35 and 38, in the United States of America) and for VIRGIN (the earliest registration date is May 20, 1975, for the registration no. SA10351 (B75/2547), in class 9, in Botswana). These registrations comprise electronic products and commerce of electronic products, among others.
The domain name <virgin.com> was registered by the Complainant on September 10, 1997. The Complainant also registered the domain names <virginmobile.com> and <virgin-mobile.com> on July 1, 1998, and several other domain names comprising the VIRGIN trademark.
The Respondent is Jesse Brown of Tipton, Missouri, United States of America.
The disputed domain name was registered on July 16, 2016. The disputed domain name resolves to a website that is used for domain parking purposes.
5. Parties’ Contentions
A. Complainant
The Complainant claims that the disputed domain name <virqin-mobile.com> is confusingly similar to its VIRGIN and VIRGIN MOBILE trademarks and that the replacement of the letter “g” by “q” constitutes a case of typosquatting.
According to the Complainant, the public is used to seeing the trademark VIRGIN combined with other words, especially the word “mobile”. The Complainant also argues that VIRGIN trademarks have developed significant reputation in the market.
The combination of the elements “virqin” and “mobile” by the Respondent emphasizes the association with the Complainant’s trademarks.
The Complainant cites the previous cases 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, to corroborate its arguments.
The Complainant argues that the Respondent does not have rights or legitimate interests in connection with the disputed domain name. It claims that the Respondent is not engaged in the bona fide offering of goods or services related to the disputed domain name, and that the Respondent is not commonly known by the name “virqin” or “virqin mobile”.
According to the Complainant, circumstances indicate that the Respondent registered the disputed domain name with the primary purpose of selling it to the Complainant for an amount that exceeds the documented out-of-pocket registration expenses, since the Complainant has a large reputation in connection with its VIRGIN trademarks.
The Complainant claims that the Respondent has created a false email in connection with the disputed domain name to illicitly obtain money and personal details from the Complainant’s customers.
The Complainant argues that the disputed domain name constitutes typosquatting and was registered with the only purpose of disrupting the Complainant’s business and confusing the visitors that are attempting to reach the Complainant’s website for its own commercial gain.
Finally, the Complainant requests the transfer of the disputed domain name.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
As per paragraph 4(a) of the Policy, the Complainant must prove that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 evidence presented demonstrates that the Complainant is the owner of several registrations for the trademarks VIRGIN and VIRGIN MOBILE. The Complainant’s trademark registrations predate the registration of the disputed domain name.
The Complainant also owns registrations for the domain names <virginmobile.com> and <virgin-mobile.com> that are prior to the disputed domain name.
The disputed domain name imitates the trademark VIRGIN MOBILE and the domain name <virgin-mobile.com> with the replacement of the letter “g” by “q”.
The replacement of the letter “g” by “1” is not enough to avoid confusion between the disputed domain name and the Complainant’s trademarks, and might be considered a case of typosquatting, also because these letters are visually similar when written as lower case letters.
The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Respondent has not denied the Complainant’s contentions that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Respondent has not proved that it is known by the name “virqn mobile” and the disputed domain name resolves to a website that is currently used for domain parking.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The disputed domain name imitates the VIRGIN MOBILE trademark with the replacement of the letter “g” by “q”, which does not avoid confusion with the Complainant’s trademark.
The Respondent has no rights or legitimate interests in using the mark VIRGIN MOBILE.
The disputed domain name is currently being used for domain parking purposes, which indicates that the Respondent is unduly obtaining commercial gain from the confusion with the Complainant’s famous trademarks.
This Panel finds that the Respondent’s intention of taking undue advantage of the trademarks VIRGIN and VIRGIN MOBILE as described in paragraph 4(b)(iv) of the Policy has been demonstrated.
For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been 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-mobile.com>, be transferred to the Complainant.
Mario Soerensen Garcia
Sole Panelist
Date: December 15, 2016
