WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. Domain Administrator, See PrivacyGuardian.org / Aladin Tg

Case No. D2020-1602

1. The Parties

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

The Respondent is Aladin Tg, United Kingdom/Canada (see below).

2. The Domain Names and Registrars

The Disputed Domain Names <virgincovid19team.com>, <virgintelcoes.com> and <virgintrainslimited.com> are registered with NameSilo, LLC.

The Disputed Domain Name <virgintrainsltd.com> is registered with OwnRegistrar, Inc. (the “Registrars”).

The Panel uses the following terminology to refer to these domain names:

<virgincovid19team.com> is referred to as the “Disputed Domain Name <virgincovid19team.com>”; <virgintelcoes.com> is referred to as the “Disputed Domain Name <virgintelcoes.com>”; <virgintrainslimited.com> is referred to as the “Disputed Domain Name <virgintrainslimited.com>”; and <virgintrainsltd.com> is referred to as the “Disputed Domain Name <virgintrainsltd.com>”.

Together, these domain names are referred to as “Disputed Domain Names”.

3. Procedural History

The Complaint was originally filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 18, 2020 regarding the Disputed Domain Name <virgintelcoes.com>. On the same date, the Complainant filed a separate Complaint regarding the Disputed Domain Name <virgincovid19team.com> (“Other Proceeding”). On June 18, 2020, the Center transmitted by email to the Registrar NameSilo, LLC a request for registrar verification in connection with the Disputed Domain Names in both proceedings. On June 18, 2020, the Registrar NameSilo, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 23, 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 July 3, 2020, requesting to consolidate the Other Proceeding with the present proceeding and requesting the addition of the Disputed Domain Names <virgintrainsltd.com> and <virgintrainslimited.com> to the dispute. On July 8, 2020, the Center transmitted by email to the Registrars a request for registrar verification in connection with the new-added Disputed Domain Names. On July 8, 2020, the Registrar NameSilo, LLC transmitted by email to the Center its verification response transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On July 10, 2020, the Registrar OwnRegistrar, Inc. 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 amendment to 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 July 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 11, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 12, 2020.

The Center appointed Nick J. Gardner as the sole panelist in this matter on September 7, 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 is a company incorporated in England and Wales. It is a member of a group of companies known collectively as “the Virgin Group”.

The Virgin Group was originally established by its founder and chairman Sir Richard Branson in the United Kingdom in 1970, when he started a business selling popular music records by mail order under the Virgin sign. Since then the Virgin Group has grown significantly in terms of its size, geographic reach, and the industries in which it operates. The Virgin Group is now engaged in a diverse range of business sectors ranging from travel and leisure, telecoms and media, music and entertainment, financial services, and health and wellness.

The Virgin Group is a leading branded venture capital organisation and is one of the world’s most recognised brands. There are now more than 60 Virgin branded businesses with around 53 million customers worldwide, employing in excess of 69,000 people in 35 countries. Annual revenue is approximately GBP 16.6 billion.

The Complainant maintains a worldwide registered trademark portfolio of VIRGIN trademarks, which it licenses to companies both within and outside the Virgin Group including, amongst others, Virgin Rail Group, Virgin Money, Virgin Mobile Telecoms, Virgin Media, Virgin Active, Virgin Atlantic Airways and Virgin Hotels. For example, the Complainant owns European Union Trade Mark No. 015255235 registered on March 21, 2016 for the word mark VIRGIN for goods and services in classes 3, 5, 9, 11, 12, 14, 16, 31, 32, 35, 36, 38, 39, 41, 42, 43, 44 and 45. These trademarks are referred to collectively in this decision as the “VIRGIN Trademark”.

The Complainant is also the registered proprietor of over 5,350 domain names either consisting exclusively of the VIRGIN trademark or in which the VIRGIN trademark is used in combination with other words and/or numbers. For example, the Complainant is the proprietor of <virgin.com> and <virgin.co.uk>.

The Disputed Domain Name <virgincovid19team.com> was registered on May 26, 2020. The Disputed Domain Name <virgintelcoes.com> was registered on May 26, 2020. The Disputed Domain Name <virgintrainslimited.com> was registered on June 25, 2020. The Disputed Domain Name <virgintrainsltd.com> was registered on June 6, 2020.

Businesses that use the VIRGIN Trademarks under licence from the Complainant include healthcare, train and telecommunication (or “telco”) businesses.

Filed evidence shows that the Disputed Domain Name <virgincovid19team.com> resolved to a website (the “<virgincovid19team.com> Website”) which copies the text, content and layout of a website of a legitimate business which uses the VIRGIN Trademark under licence and which promotes healthcare services. As at the date of this decision it does not resolve to an active website.

Filed evidence shows that the Disputed Domain Name <virgintelcoes.com> resolved to a website (the “<virgintelcoes.com> Website”) which copies the text, content and layout of a website of a legitimate business which uses the VIRGIN Trademark under licence and which promotes telecommunication services. As at the date of this decision it does not resolve to an active website. Evidence also shows the Disputed Domain Name <virgintelcoes.com> has been used as part of the email address “…@virgintelcoes.com” contact members of the public by means of an email which purports to be from Sir Richard Branson. The email is seeking to persuade the recipient to become financially involved in some form of venture.

The Disputed Domain Name <virgintrainslimited.com> resolves to a website (the “<virgintrainslimited.com> Website”) which copies the text, content and layout of a website of a legitimate business which uses the Virgin Trademark under licence and which promotes train services. Evidence also shows the Disputed Domain Name <virgintrainslimited.com> has been used as part of the email address “…@virgintrainslimited.com” to contact members of the public by means of an email which purports to be from Sir Richard Branson. The email is seeking to persuade the recipient to become financially involved in some form of venture.

The Disputed Domain Name <virgintrainsltd.com> resolves to a website (the “<virgintrainsltd.com> Website”) which copies the text, content and layout of a website of a legitimate business which uses the Virgin Trademark under licence and which promotes train services. The <virgintrainsltd.com> Website is identical to the <virgintrainslimited.com> Website. Evidence also shows the Disputed Domain Name <virgintrainsltd.com> has been used as part of the email address “…@virgintrainsltd.com” to contact members of the public by means of an email which purports to be from Sir Richard Branson. The email is seeking to persuade the recipient to become financially involved in some form of venture.

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions can be summarized as follows.

The Disputed Domain Names are each confusingly similar to its VIRGIN trademark. They combine the VIRGIN Trademark with descriptive or geographic or generic terms which do not serve to distinguish the Disputed Domain Names from the VIRGIN Trademark.

The Respondent has no rights or legitimate interests in the term “virgin” or any of the Disputed Domain Names.

The Disputed Domain Names were registered and are being used in bad faith. The Complainant says the fraudulent nature of the Respondent’s phishing activities is clear evidence of bad faith. It says it is likely the Respondent is conducting this phishing activity with a view to fraudulently obtaining financial payments or other improper benefit.

B. Respondent

No Response has been filed.

6. Discussion and Findings

6.1 Preliminary Matters – Consolidation of Proceedings

Following disclosure by the relevant registrars (see above) it has emerged that the named registrant for all Disputed Domain Names (<virgincovid19team.com>, <virgintelcoes.com>, <virgintrainsltd.com>, and <virgintrainslimited.com>) is Aladin Tg. In respect of three of these domain names an address for Aladin Tg in the United Kingdom was provided. An address in Canada was provided for the <virgintrainsltd.com> Disputed Domain Name.

In any event a complaint is allowed to proceed with multiple respondents when the domain names or websites are under common control. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.11.2 where it states: “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.”

In the present case, the virgintrainslimited website is identical to the virgintrainsltd website it is highly likely that both of these Disputed Domain Names are being controlled by a single entity, and thus are subject to common control. See Eli Lilly and Company v. Darren K. Headley et al., WIPO Case No. D2013-1303 and the cases therein cited.

The Panel therefore concludes that it is proper for the Other Proceeding to be consolidated into the present Complaint and for this decision to deal with all of the Disputed Domain Names.

6.2 Preliminary Matters – No Response

The Panel notes that no substantive Response has been received from the Respondent. However, given the Complaint and Written Notice were sent to the relevant addresses disclosed by the Registrar, then the Panel considers that this satisfies the requirement in paragraph 2(a) of the UDRP Rules to “employ reasonably available means calculated to achieve actual notice”. Accordingly, the Panel considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file any substantive Response. While the Respondent’s failure to file a Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909).

6.3 Substantive Matters

To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in respect of each Disputed Domain Name that:

(i) the Disputed Domain Name is identical with 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;

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

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the VIRGIN Trademark.

The Panel finds that each of the Disputed Domain Names is confusingly similar to this trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000‑0662). It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers, WIPO Case No. D2008-1694).

It is also established that the addition of a descriptive term (such as here “trains”, “telcoes”, “limited” and “covid”) or number (such as here “19”) to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (PRL USA Holdings, Inc. v. Spiral Matrix, WIPO Case No. D2006‑0189).

It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not generally affect the Disputed Domain Names for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429.

Accordingly, the Panel finds that each Disputed Domain Name is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:

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

(ii) the respondent has been commonly known by the 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 domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use the Disputed Domain Names or to use the Virgin Trademark. The Complainant has prior rights in the Virgin Trademark which precede the Respondent’s acquisition of the Disputed Domain Names. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Names and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Names (see, for example, Do The Hustle, LLC v. Tropic Web, WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003‑0455).

The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in the Disputed Domain Names. Accordingly, the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Names and the second condition of paragraph 4(a) of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

In the present circumstances the fact that there is clear evidence that three of the four Disputed Domain Names have been used in connection with fraudulent phishing (see above) lead the Panel to conclude the registration and use of those domain names were in bad faith.

With respect to the fourth Disputed Domain Name <virgincovid19team.com> it resolved to a website copying the text, content and layout of a website of a legitimate business which uses the VIRGIN Trademark under licence and which promotes healthcare services, this is evidence of registration and use in bad faith.

Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.

In the present case the Panel has no hesitation in concluding that the Respondent has “intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your web site or location” (Policy, paragraph 4(b)(iv)). In the present case, the Panel concludes that the deliberate use of the Complainant’s VIRGINTrademark as part of the Disputed Domain Names, was intended to enable the Respondent to operate fraudulent phishing activities, which the Panel infers were conducted for commercial gain. The fact that the commercial gain in question is associated with some form of dishonest behaviour does not matter – indeed it emphasizes the bad faith involved. See Australia and New Zealand Banking Group Limited v. Bashar Ltd, WIPO Case No. D2007-0031, and the cases therein referred to, for further analysis of why “phishing” activities amount to use in bad faith. See also Grupo Financiero Inbursa S.A. de CV v ibuirisa, WIPO Case No. D2006-0614 to similar effect.

Further the Panel notes that the Respondent has not filed a Response and hence has not availed himself of the opportunity to present any case of good faith that it might have. The Panel infers that none exists.

Accordingly, the Panel finds that each of the Disputed Domain Names has been registered and is being used in bad faith and the third condition of paragraph 4(a) of the Policy has been fulfilled.

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 <virgincovid19team.com>, <virgintelcoes.com>, <virgintrainslimited.com> and <virgintrainsltd.com> be transferred to the Complainant.

Nick J. Gardner
Sole Panelist
Date: September 21, 2020