WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. Vikash Tiwari, Magly Avt Pvt. Ltd.

Case No. D2020-0736

1. The Parties

The Complainant is Virgin Enterprises Limited, United Kingdom, represented by A. A.Thornton & Co, United Kingdom.

The Respondent is Vikash Tiwari, Magly Avt Pvt. Ltd., India.

2. The Domain Name and Registrar

The disputed domain name <virginairlinesflights.com> is registered with Instra Corporation Pty Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 27, 2020. On March 27, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 30, 2020, 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 March 30, 2020 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 April 3, 2020.

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 April 7, 2020. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2020. The Center received the Respondent’s communications by email on April 1, 2020 and on April 7, 2020. The Respondent did not submit a formal response. Accordingly, on April 28, 2020, the Center informed the parties that it will proceed to appoint a panel.

The Center appointed Frank Schoneveld as the sole panelist in this matter on May 5, 2020. 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 owns the following trademark registrations:

- European Union (“European Union” or “EU”) Registration No. 001798560 of the mark VIRGIN registered on June 5, 2002 at the European Union Intellectual Property Office (EUIPO) (the “VIRGIN Mark”);

- United Kingdom (“United Kingdom” or “UK” ) Registration No. 00003163127 of the VIRGIN logo mark (in red) registered at the United Kingdom Intellectual Property Office (UKIPO) on July 29, 2016 (the “VIRGIN Logo Mark”);

- United States of America (“United States” or “US”) Registration No. 2808270 of the VIRGIN ATLANTIC mark registered at the United States Patent and Trademark Office (USPTO) on January 27, 2004 (the “VIRGIN ATLANTIC Mark”);

- EU Registration No. 014030589 of the VIRGIN ATLANTIC mark registered on October 12, 2015 at the EUIPO;

- EU Registration No. 014032098 of the VIRGIN HOLIDAYS mark registered at the EUIPO on December 3, 2015 (the “VIRGIN HOLIDAYS Mark”).

The disputed domain name <virginairlinesflights.com> was registered on January 3, 2020 and resolved to a website offering flight deals and flight booking services.

5. Parties’ Contentions

A. Complainant

The Complainant states that it is a member of a group of companies that are collectively known as “the Virgin Group”, originally established by its founder in the United Kingdom in 1970 when he started a business under the VIRGIN name. The Complainant asserts that there are now over 60 VIRGIN branded businesses that span a diverse range of sectors having between them over 53 million customers worldwide and employing more than 69,000 people in 35 countries, with annual revenue of GBP 16.6 billion. The Complainant indicates that it is responsible for registering and maintaining registrations for trademarks containing the VIRGIN name and VIRGIN signature logo and licensing these rights to the VIRGIN businesses.

The Complainant contends that the VIRGIN name and VIRGIN signature logo have all been consistently and intensively used across all VIRGIN operations since the company was founded, that the VIRGIN businesses are branded with marks incorporating the distinctive VIRGIN name or VIRGIN signature logo, for example, Virgin Active, Virgin Money, Virgin Media, and that the Complainant has built up a considerable online presence and is the registered proprietor of over 5,000 domain names consisting of or incorporating the VIRGIN mark. The Complainant asserts that it has operated a website at <www.virgin.com> since 2000 to promote the activities of the VIRGIN Group and its businesses, ventures and foundations (the “Virgin.com Website”) providing copies of pages from that website. The Complainant contends that the VIRGIN businesses operate pages on various social media platforms where the VIRGIN marks also feature prominently and collectively these social media platforms receive over 37 million views each year, and according to the Complainant, thereby demonstrating the widespread exposure of the VIRGIN brand to people all over the world and its allegedly significant global reputation.

The Complainant submits that in 1984 it launched its first passenger and cargo airlines Virgin Atlantic and Virgin Atlantic Cargo, and provides information about its Virgin Atlantic airline and Virgin Atlantic Cargo services and booking facilities on its websites at “www.virginatlantic.com” and “www.virgin-atlantic.com” (the “Virgin Atlantic Websites”). The Complainant asserts that the Virgin Atlantic passenger airline cabins, in particular its Upper Class cabin launched in 2003, are well known. The Complainant says that the Virgin Atlantic passenger airline and Virgin Atlantic Cargo service now operate routes from UK hubs to destinations in North America, the Caribbean, Africa, the Middle East, Asia, and Mexico. The Complainant notes that since its launch, the Virgin Atlantic passenger airline and its associated services have consistently won awards.

The Complainant states that in 2000 it launched its first airline operating in Australia, Virgin Blue, which in 2011 was rebranded as Virgin Australia, and operates a website providing information and booking services for the Virgin Australia airline at “www.virginaustralia.com” (the “Virgin Australia Website”) with this airline now offering routes to 40 domestic destinations within Australia and 17 international destinations in 14 countries. The Complainant says the Virgin Australia airline has won numerous awards, including in 2017 Best Airline and Best Airline Staff in Australia/Pacific at the 2017 Skytrax World Airline Awards, Best Domestic Airline at the Australian Federation of Travel Agents National Travel Industry Awards for second consecutive year and Best Business Class for second consecutive year at Airline Excellence Awards, and in 2018 World's Best Cabin Crew for the third time by AirlineRatings.com. The Complainant submits that Virgin Australia sponsors and partners with many high-profile Australian sporting and cultural events and institutions, including the Australian Football League, the National Basketball League and Biennale of Sydney, Australia’s largest international festival of contemporary art.

The Complainant asserts that Virgin Atlantic and Virgin Australia passenger airlines use television, the Internet, radio broadcasting, newspapers and magazines around the world to promote or publicize their products and activities, and as with all the Complainant’s businesses and ventures, the Complainant’s registered VIRGIN Logo Mark is placed on the fuselages and tailfins of its aircraft and throughout the Virgin Australia Website, as well as on the Virgin Atlantic Websites along with the Complainant’s 11 registered VIRGIN ATLANTIC logo marks.

The Complainant submits that in 1985 the Complainant launched Virgin Holidays, a business offering long haul holidays as indicated at “www.virginholidays.com” (the “Virgin Holidays Website”), which the Complainant has operated since 1998, to promote its holidays and provide a service for booking holidays, flights, hotels and hire cars. The Complainant states that Virgin Holidays also operates dedicated social media pages, and asserts that the Virgin Holidays business is now the largest transatlantic tour operator and a market leader for holidays to the US and the Caribbean.

The Complainant contends that it is clear that the Complainant is known for providing airline and holiday services and has created a reputation and significant public recognition in the Complainant’s Registered Marks for such services.

The Complainant notes that the disputed domain name is comprised of the terms “virgin”, “airlines”, and “flights” contending that the entirety of the Complainant’s registered VIRGIN Mark is therefore contained within the disputed domain name and that the entirety of the distinctive and dominant verbal element “VIRGIN” of the Complainant’s registered VIRGIN ATLANTIC, VIRGIN ATLANTIC Logo, VIRGIN HOLIDAYS and VIRGIN Logo Marks, is contained within the disputed domain name. The Complainant submits that the additional terms in the disputed domain name “airlines” and “flights” are descriptive and generic terms in the context of airline services for which the Complainant’s registered trademarks have a reputation, and are insufficient to distinguish from the Complainant’s registered VIRGIN Mark that is entirely incorporated into the disputed domain name. The Complainant contends that it is established in prior UDRP decisions that the addition of descriptive or generic indications to a third party trademark does not avoid a disputed domain name being confusingly similar to a third party trademark, and the disputed domain name is therefore, confusingly similar to the Complainant’s registered trademarks.

The Complainant argues that the disputed domain name is used in relation to a website that purports to offer flight deals and fight booking services (the “Disputed Website”) that clearly display the Complainant’s registered VIRGIN Mark in the colour red at the top left hand corner of the homepage, and that the evidence provided shows the colour red is also consistently and extensively used by the Complainant in relation to its VIRGIN branding and associated marketing of all its business ventures, including the Virgin Atlantic and Virgin Australia airline services. The Complainant submits that the colour red is the predominant colour of all the Complainant’s marketing material and the Complainant has registered its logo marks in its red colour, including under UK Registration No. 00003163127 and EU Registration No. 014030597.

The Complainant contends that:

- the Disputed Website also appears to promote holidays and hotels under the section “Destination in Virgin” on the homepage, which are services the Complainant offers and for which it has a reputation under the Complainant’s registered VIRGIN and VIRGIN HOLIDAYS Marks:

- the homepage of the Disputed Website displays an image of a Virgin Atlantic aircraft clearly bearing the Complainant’s registered VIRGIN ATLANTIC Logo Mark;

- in numerous places the Disputed Website refers to itself as “Virgin Airlines”, with statements such as “we strived with the factor of comfort and luxury in budget” under the section titled “Know about the Virgin Airlines” (The Complainant asserts that use of “we” in this statement and the placing of this statement in proximity to the Complainant’s registered trademarks, in conjunction with the colour of branding that is closely associated with the Complainant, is done to intentionally mislead consumers looking for the Complainant’s actual airline services into thinking that the Disputed Website is authorized by or otherwise connected to the Complainant); and

- even if the Disputed Website might offer accurate information on the Complainant’s airlines, it is not made clear that the disputed domain name is not connected to or operated by the Complainant.

The Complainant contends that for the reasons given above, the Disputed Website is not a legitimate use of the disputed domain name.

The Complainant submits that the content provided on the page of the Disputed Website titled “About Us” is copied from a third party website “www.airohub.com”, that also offers flight deals and flight booking services with one of the contact numbers given on the Disputed Website is the same as that given in the “Contact Us” section at the foot of the webpage at “www.airohub.com” website. The Complainant asserts that this is likely to divert consumers searching for the Complainant’s genuine flight deals or holiday packages to the “www.airohub.com” website and to other competing third party services. The Complainant contends that the flight search tool provided on the Disputed Website to which the disputed domain name resolves, requires the user to enter their name, email and mobile number as required fields and it is not possible to conduct a search without entering this information, arguing that this is unusual and means that consumers might enter their personal information believing, due to the prominence of the Complainant’s Registered Marks and the statements that indicate the disputed domain name is operated by “Virgin Airlines”, that they are providing that information to the trusted businesses offered by the Complainant, when in fact the Complainant has no control over the disputed domain name, Disputed Website, nor how information submitted to the Disputed Website is used.

The Complainant contends that use of the disputed domain name, which identifies itself as “Virgin Airlines”, when it is not connected to the Complainant, and which copies content and contact numbers from a third party website, indicates that the Respondent does not operate a bona fide business from the disputed domain name nor that it has a legitimate interest or right therein, and that the manner of use of the Complainant’s registered VIRGIN Mark and registered VIRGIN ATLANTIC Logo Mark on the Disputed Website is done intentionally to mislead consumers searching for the Complainant’s genuine airline services of a connection to the Complainant and could divert actual and prospective consumers of the Complainant away from the Complainant’s services. The Complainant submits that the flight search tool provided on the Disputed Website could also take consumer’s personal information for misuse, and is not likely to provide correct information regarding flights, and that this will be disruptive to the Complainant’s airlines businesses and potentially tarnish the Complainant’s Registered Marks. The Complainant states that the Respondent is not authorized by the Complainant to use the Complainant’s Registered Marks in this manner, and argues that neither is there any evidence the Respondent has been commonly known by the disputed domain name, “virgin atlantic” or “virgin airlines”.

The Complainant contends that the disputed domain name is used in relation to the Disputed Website that purports to offer flight and holiday deals, and flight booking services, all being services for which the Complainant’s Registered Marks have a reputation, and the Disputed Website uses the Complainant’s Registered Marks along with the colour red, which is closely associated and part of the Complainant’s branding, together with statements identifying itself as “Virgin Airlines”. The Complainant asserts that this is done to intentionally create the impression that the disputed domain name is operated by or otherwise connected to the Complainant and attract those looking for the Complainant’s genuine airline or holiday services. The Complainant contends that deception that will occur through use of the disputed domain name that will be disruptive to the Complainant’s airline and holiday businesses, as it could divert actual and prospective consumers of the Complainant away from the Complainant’s services or be a nuisance to those consumers by providing inaccurate and unverified information on the Complainant’s airline services. The Complainant says that the Disputed Website provides images of hotels and references to holiday deals, which are not those offered by the Complainant, and that the flight search tool provided on the Disputed Website could instead provide suggestions and offers for flights that are not operated by the Complainant. The Complainant further submits that the provision of a contact number of “www.airohub.com”, which itself promotes holiday and flight deals, will also divert prospective consumers away from the genuine services of the Complainant, and that these uses of the disputed domain name and the Complainant’s registered trademarks to promote services that compete with the Complainant’s, and is not use in good faith.

The Complainant contends that users need to enter an email address and mobile number to use the flight search tool on the Disputed Website, however the Complainant has no control over how this personal information will be used and it could go on to be used fraudulently, and this will create a negative consumer perception around the Complainant’s Registered Marks and potentially tarnish them, so that this use is in bad faith. The Complainant argues that, given the reputation and high level of public recognition of the Complainant’s registered trademarks in relation to airline services, it is unlikely that the Respondent was unaware of the Complainant and the Complainant’s registered trademarks at the time of registering the disputed domain name, and the fact that the Disputed Website uses an image of one of the Complainant’s Virgin Atlantic aircraft and the colour red is evidence of this knowledge on the part of the Respondent. The Complainant concludes that, given the use of the disputed domain name, it is not conceivable that the disputed domain name could have been registered for any good faith purpose so that the disputed domain name was registered and is being used in bad faith.

B. Respondent

On April 1, 2020 the Respondent sent an email to the Centre with the question: “Is there any issue with the domain?”

On April 7, 2020, the Respondent sent another email to the Centre stating: “Hello, What is going on here i don't understand. can someone brief [sic]. domain virginairlinesflights.com is already down and website removed, stop sending us email we bought it because was available online and was just lying useless. i don't find any reason to send repeated email.”

Except for the above emails, no other communication was received from the Respondent. The Respondent did not respond to the Complaint.

6. Discussion and Findings

Pursuant to UDRP paragraph 4(a), in order to have a domain name transferred or canceled the Complainant must prove that each of the following three elements are present:

(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.

The Rules at paragraph 15(a) require that “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.” In the absence of any substantive rebuttal by the Respondent to the Complainant’s contentions, the Panel proceeds on the basis of the Complaint submitted by the Complainant, as well as in accordance with the Policy, the Rules and any rules and principles of law that are applicable.

A. Identical or Confusingly Similar

The Complainant provides evidence that its VIRGIN Mark has been registered in the European Union since June 2002 and its VIRGIN ATLANTIC mark has been registered in the United States since January 2004, while its VIRGIN HOLIDAYS Mark has been registered in the European Union since December 2015. The Complainant therefore has rights in these marks.

The difference between the disputed domain name and the Complainant’s VIRGIN trademark is the addition of the words “airlines” and “flights”, and for the Complainant’s VIRGIN ATLANTIC and VIRGIN HOLIDAYS Marks, the only difference is the words “airlines flights” replacing respectively, “atlantic” or “holidays”. The disputed domain name is therefore, at least similar to the Complainant’s trademarks, because all include the word “virgin”. As the Complainant’s registered trademarks, or significant portions thereof, are clearly recognizable within the disputed domain name, the addition of the words “airlines” and “flights” does not prevent a finding of confusing similarity under the first element.

The Respondent does not challenge the evidence submitted by the Complainant and does not respond to the Complainant’s contentions.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

There is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name. It is clear that:

(i) the Respondent is not affiliated with the Complainant in any way;

(ii) the Complainant has not licensed or otherwise given permission to the Respondent to register or use any domain name incorporating the Complainant’s VIRGIN trademark;

(iii) registration of the VIRGIN trademark in the European Union preceded by more than 17 years registration of the disputed domain name; and

(iv) the Respondent’s name does not bear any resemblance to the disputed domain name and there is nothing in the evidence before the Panel, including in the WhoIs record for the disputed domain name, that suggests the Respondent might be known by the disputed domain name or any part of it.

There is however, evidence that the Respondent may be making an illegitimate use of the disputed domain name. The website to which the disputed domain name resolves promotes holidays and hotels under the section “Destination in Virgin”, which are services the Complainant offers, thereby trading off the Complainant’s Registered VIRGIN and VIRGIN HOLIDAYS Marks. Also, the website to which the disputed domain name resolves, refers to itself as “Virgin Airlines” that will likely mislead Internet users looking for the Complainant’s travel services into thinking that the website is authorized by or otherwise connected to the Complainant when it clearly is not. Such use of the disputed domain name cannot be regarded as a legitimate use.

In that regard, the three words making up the disputed domain name – “virgin”, “airlines” and “flights” – all have dictionary meanings in English (and some of the words also have meanings in other languages). The combination of these three words in the order of the disputed domain name, appear to have no coherent dictionary meaning when taken together. For instance, it is difficult to imagine when airlines’ flights might be described as virginal in the dictionary meaning of those words. It appears then, that in the context of travel or holiday services (including those across the Atlantic ocean) such as airline flights, Internet users would likely associate use of the word “virgin” with one or other of the Complainant’s registered marks namely VIRGIN, VIRGIN ATLANTIC or VIRGIN HOLIDAYS.

In the absence of any submission from the Respondent, the Panel accepts that when combined with the words “airlines flights”, which is a means of traveling and taking holidays, as well as flights across the Atlantic ocean, the disputed domain name is likely to mislead Internet users looking for the Complainant’s travel services. This conclusion is reinforced by the undisputed contention of the Complainant that there is an over 90% brand recognition of the Complainant’s VIRGIN trademarked travel, holiday and airline businesses in the US, South Africa, United Kingdom, France and Australia and that it is also well known in other countries.

The evidence provided by the Complainant means there is likely to be very limited circumstances in which the Respondent might have any rights or legitimate interests in the disputed domain name and there is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name. In the absence of any submission from the Respondent on this aspect of the Policy, a prima facie case has been established that the Respondent has no rights or legitimate interests in the disputed domain name. In the Panel’s view it is more likely than not the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent has failed to provide any rebuttal of this prima facie case. In those circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Given that the disputed domain name includes the words “airlines flights”, and the extent of the Complainant’s brand recognition in some of the largest airline markets in the world, it is likely that at the time of registration of the disputed domain name, the Respondent knew of the Complainant’s rights in the trademark VIRGIN and chose to incorporate that mark into the disputed domain name to attract Internet users to the website to which the disputed domain name resolves.

The use on the website to which the disputed domain name resolves, of contact telephone numbers of competitors of the Complainant while also prominently using (without the Complainant’s consent) its VIRGIN trademark, is a diversion to the Complainant’s competitors of Internet users searching for travel services provided by the Complainant. In such cases there would be a commercial gain when diverted Internet users agree to acquire travel and holiday services offered by these competitors of the Complainant. In that case the Respondent will have used the disputed domain name, to intentionally attempt to attract for commercial gain, Internet users to the relevant website, by creating a likelihood of confusion with the Complainant's VIRGIN trademark as to the source, sponsorship, affiliation, or endorsement of the website or a product offered on the website. Such conduct would, within the meaning of paragraph 4(b)(iv) of the Policy, be evidence of registration and use in bad faith of the disputed domain name.

In addition, the flight search tool provided on the website to which the disputed domain name resolves, requires an Internet user to enter their name, email, and mobile number as required fields and it is not possible to conduct a search without entering this information. Internet users would likely enter their personal information believing, because of the prominence of the Complainant’s VIRGIN trademarks on this website and the statements that the disputed domain name is part of “Virgin Airlines”, that they are providing that information to businesses connected to the Complainant, when in fact the information provided is going to the Respondent and other entities totally unconnected to the Complainant. This user information could then be used for unknown and potentially fraudulent or other illegitimate purposes. This use of the disputed domain name amounts to the Respondent misleading Internet users so that such users will disclose personal and sensitive information that they would normally not provide to the Respondent and/or other unknown entities.

In the absence of any other evidence or denial by the Respondent, the Panel accepts that the manner of use of the Complainant’s VIRGIN trademarks and VIRGIN ATLANTIC trademarks on the website to which the disputed domain name resolves, is done intentionally to mislead consumers searching for the Complainant’s travel services and could, for commercial gain, divert consumers of the Complainant away from the Complainant. The Panel also accepts that the flight search tool provided on the website to which the disputed domain name resolves, could be a means of misleadingly obtaining personal information from Internet users who mistakenly believe the website to which the disputed domain name resolves is connected to the Complainant with a serious risk of misuse of that information by the Respondent or other entities unconnected to the Complainant.

All of the above, including the failure of the Respondent to rebut or respond to the Complainant’s contentions of bad faith registration and use of the disputed domain name, leads the Panel to find that it is more likely than not, 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 <virginairlinesflights.com> be transferred to the Complainant.

Frank Schoneveld
Sole Panelist
Date: May 19, 2020