WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. Hardee Consult

Case No. D2018-2248

1. The Parties

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

The Respondent is Hardee Consult of New York, New York, United States of America (“United States”).

2. The Domain Names and Registrar

The disputed domain names <virginprivateisland.com> and <virginuniteuk.com> are registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed in respect of the disputed domain name <virginuniteuk.com> with the WIPO Arbitration and Mediation Center (the “Center”) on October 4, 2018. On October 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name <virginuniteuk.com>. On October 5, 2018, 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. On October 8, 2018, the Complainant filed an amended Complaint with the Center, adding another disputed domain name <virginprivateisland.com>. On October 10, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On October 11, 2018, 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 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 October 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 9, 2018.

The Center appointed Martin Michaus-Romero as the sole panelist in this matter on November 21, 2018. 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

1. The Complainant is the brand owner for the Virgin group of companies.

2. The Virgin Group originated in 1970, when Richard Branson began selling music records under the VIRGIN
trademark and since that date it has expanded into a wide variety of businesses.

3. Now the Virgin Group comprises over 60 business worldwide, operating in 35 countries including throughout Europe, United States, Australia and Asia. It has more than 69,000 employees, generating an annual group turnover in excess of GBP 16.6 billion.

4. The right in proof of use of the VIRGIN trademark have been acknowledged by validated entries made at Trademark Clearinghouse (“TMCH”). The Complainant owns numerous trademark registrations for VIRGIN, inter alia, United Kingdom trademark registration No. 1009534, registered on April 11, 1973.

5. The disputed domain name <virginprivateisland.com> was registered on October 3, 2018. According to the Complaint and relevant evidence, the disputed domain name resolves to a direct replica of the official webpage of a resort of the Complainant.

6. The disputed domain name <virginuniteuk.com> was registered on September 29, 2018. According to the Complaint and relevant evidence, the disputed domain name resolves to a website which copies the Complainant’s website “www.virginunite.co.uk” and displays a new contact email address, which is very similar with that on the Complainant’s official website.

5. Parties’ Contentions

A. Complainant

1. The Complainant submitted a Witness Statement, (Annex 5) in which the Complainant established the history and company regulations in its VIRGIN trademarks through the world.

2. It states that it first sought to secure registered protection for its Virgin brand on April 11, 1973 when an application was made for the mark VIRGIN, now registered under the United Kingdom trademark registration No. 1009534 for “Sound recordings in the form of discs”.

3. It has a portfolio of approximately 3,500 trademarks applications and registrations in over 150 countries spanning across the majority of the 45 classes of goods and services.

4. On March 1999, the Complainant established <virgin.com> to operate a website to cross sell the
services of their companies. The website began operating in 2000.

5. It spent around 80 million each year during the period 2008-2010 in promotion and advertising in the media including TV, radio, national, regional and consumer newspapers, B2B journals, outdoor, cinema, Internet, and mobile.

6. Is involved in numerous sponsorship events, or organizations such as soccer teams (Manchester United Football Club, New Castle United Football Club), Virgin Money Marathon, London Triathlon, Common Wealth Games, Australian Chamber Orchestra, Biennale of Sydney, Australian Football League, Formula E, etc., and have been presented with various awards for consumer excellence over the years.

7. The reputation and substantial goodwill of the Complainant trademark has been continuously developing in different markets on a range of branded goods and services.

8. The Disputed Domain Names are confusingly similar to a trademark in which the Complainant has rights, the Respondent lacks rights or legitimate interests in the disputed domain names, and the Respondent registered and is using the disputed domain names in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall decide a 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”.

Considering that the Respondent did not reply to the Complainant’s contentions, in order to determine whether the Complainant has met its burden as stated in paragraph 4(a) of the Policy, the Panel bases its decision on the statements and documents submitted and in accordance with the Policy and Rules.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following: (i) that the disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; (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

The Complainant has submitted evidence of its rights in the United Kingdom trademark registration No. 1009534 for sound recording.

The disputed domain names <virginuniteuk.com> and <virginprivateisland.com> are confusingly similar to the Complainant’s VIRGIN trademark. The disputed domain name <virginuniteuk.com> reproduces the Complainant’s trademark VIRGIN in its entirety with the addition of the terms “uniteuk” and “.com”. The addition of such terms, does not prevent the finding of confusingly similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8.

The generic Top-Level Domain (“gTLD”), “.com” can be disregarded for the assessment of the first element of the Policy. See WIPO Overview 3.0, section 1.11.1.
The disputed domain name <virginprivateisland.com> also reproduces the Complainant trademark VIRGIN in its entirety with the addition of the terms “privateisland” and “.com”. The addition of such terms does not prevent the finding of confusingly similar. The disputed domain name resolves to a direct replica of the official webpage of the Necker Island resort, a resort based on a private island owned by Sir Richard Branson.

The Panel finds that the Complainant satisfies paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent has not received permission or authorization to use the Complainant’s trademark. The Respondent did not reply to the Complainant’s contentions, and therefore has not provided any evidence or arguments to demonstrate anything to the contrary. It should be pointed out, that nothing in the available record indicates that the Respondent is an individual, business or corporation known by the disputed domain names <virginuniteuk.com> or <viginprivateisland.com>. Furthermore, the Respondent are not using the disputed domain names for a bona fide offering of good or services, nor for a legitimate or noncommercial fair use that might give rise to rights or legitimate interests in the disputed domain names.

The Complainant never authorized the Respondent to use its VIRGIN trademark. The Respondent is not known by the names “Virgin”, “Virginunite” or “Virginprivateisland”. He has no trademark registrations and/or rights in VIRGIN trademark.

The Panel finds that the Complainant satisfies paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

According to the statements submitted, it is clear to the Panel that the registration and the use of the disputed domain names <virginuniteuk.com> and <virginprivateisland.com> has been in bad faith, by including the well-known VIRGIN trademark in the disputed domain names, to intentionally attract for commercial gain Internet users.

Regarding the disputed domain names, for <virginuniteuk.com>, the evidence submitted by the Complainant reveals an attempt to divert emails intended for the Complainant to the Respondent possibly for phishing purposes.

The Panel considers the Respondent was aware of the existence of the Complainant’s VIRGIN trademark and its business activities. The disputed domain name <virginuniteuk.com> was registered on September 9, 2018, which is 45 years after the VIRGIN trademark was registered in the United Kingdom, and 48 years after the Complainant founded his company.

Likewise, the disputed domain name <virginprivateisland.com> was registered on October 3, 2018 and it appears to be a direct replica of “https://www.virginlimitededition.com/en/necker-island”, the official webpage for the Necker Island Resort. Accordingly, the registration and use of the disputed domain name <virginprivateisland.com> has been intentionally attempted to attract for commercial gain Internet users to the website or other location by creating a likelihood of confusion with the Complainant’s VIRGIN trademark.

The above creates a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation and/or endorsement of the Respondent’s website. This also negatively affects the Complainant’s online presence. See paragraph 4(b)(iv) of the Policy.

The Panel finds that the Complainant satisfies 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 disputed domain names <virginuniteuk.com> and <virginprivateisland.com> be transferred to the Complainant.

Martin Michaus Romero
Sole Panelist
Date: December 3, 2018