Complainant is Virgin Enterprises Limited, United Kingdom, represented by A. A. Thornton & Co., United Kingdom.
Respondent is Contact Privacy Inc. Customer 0158855129, 0158855128, and 0158855094, Canada / Milen Radumilo, Romania.
The disputed domain names <virginmobilehotspot.com>, <virginmymoney.com>, and <virginusamobile.com> are registered with Tucows Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 13, 2020. On August 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On August 13, 2020, the Registrar 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 Complainant on August 19, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 20, 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 Respondent of the Complaint, and the proceedings commenced on August 25, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 14, 2020. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 16, 2020.
The Center appointed Scott R. Austin as the sole panelist in this matter on September 23, 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.
Complainant is a member of “the Virgin Group” of companies originally established by its founder and chairman Sir Richard Branson in the United Kingdom (“UK”) in 1970. The Virgin Group operates over 60 VIRGIN branded businesses under the brand VIRGIN (the “VIRGIN Mark”) covering Financial Services, Health & Wellness, Music & Entertainment, People & Planet, Telecommunications & Media and Travel & Leisure, serving over 53 million customers worldwide and employing more than 69,000 people in 35 countries, generating annual revenues of £16.6 billion.
In 1999, Complainant launched Virgin Mobile Telecoms Limited in the UK, offering telecommunications services under the brand VIRGIN MOBILE (the “VIRGIN MOBILE Mark”) which expanded into numerous territories including Australia, India and the United States and today provides such services around the world under the VIRGIN MOBILE Mark to 15 Million customers. The Virgin Group company Virgin Money UK was formed in 2002 when virginmoney.com merged with Virgin Direct, a financial services provider launched by the Virgin Group in 1995 that offers a range of financial services under the mark VIRGIN MONEY (the “VIRGIN MONEY Mark”) in a number of countries, including Australia since 2003 and South Africa since 2006.
Complainant is the registered owner of a portfolio of approximately 3,500 trade mark applications and registrations in over 150 countries worldwide containing the VIRGIN Mark, such as International Trade Mark Registration No. 1141309 for the mark VIRGIN, registered on May 21, 2012, UK Trade Mark Registration No. UK00002365570 for VIRGIN MOBILE registered on February 4, 2005, and European Union Trade Mark Registration No. 14032247 for VIRGIN MONEY, registered on December 3, 2015.
Since 2000 Complainant has operated a website at “www.virgin.com” as its primary web portal to promote the activities of the VIRGIN Group and its businesses, ventures and foundations (the “Virgin Website”) and owns variations of the term “VIRGIN” as domain names in numerous generic Top-Level Domains and country-code Top-Level Domains to protect the VIRGIN Mark on the Internet.
The disputed domain names were all registered on July 31, 2020, and all resolve to websites which host articles reporting on bitcoin investment opportunities.
Complainant contends that the disputed domain names are identical or confusingly similar to Complainant’s trademark; that Respondent has no rights or legitimate interests in respect of the disputed domain names; and, that the disputed domain names were registered and are being used in bad faith.
Respondent did not reply to Complainant’s contentions.
To succeed, Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the disputed domain names; and, (iii) the disputed domain names have been registered and are being used in bad faith.
The standard of proof under the Policy is often expressed as the “balance of the probabilities” or “preponderance of the evidence” standard. Under this standard, an asserting party needs to establish that it is more likely than not that the claimed fact is true. See, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.2.
Ownership of a trademark registration is generally sufficient evidence that a complainant has the requisite rights in a mark for purposes of paragraph 4(a)(i) of the Policy. WIPO Overview 3.0, section 1.2.1. Complainant has demonstrated its rights because it has shown that it is the holder of multiple valid and subsisting trademark registrations for respectively, the VIRGIN Mark, the VIRGIN MOBILE Mark, and the VIRGIN MONEY Mark. See, Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657.
Prior UDRP panels have held “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. The Panel finds here that each of the disputed domain names wholly incorporates Complainant’s registered VIRGIN Mark. The Panel also finds that the VIRGIN MOBILE Mark is wholly recognizable in the disputed domain names <virginmobilehotspot.com> and <virginusamobile.com>, and the VIRGIN MONEY Mark is wholly contained in disputed domain name <virginmymoney.com>.
Prior UDRP panels have also recognized that where a disputed domain name incorporates a complainant’s mark in its entirety, adding a descriptive term such as “hotspot” or “my”, or a geographical term such as “usa” and a generic Top-Level Domain to the complainant’s mark, does not negate confusing similarity between the disputed domain name and the mark under Policy paragraph 4(a)(i). See, e.g., Facebook Inc. v. Jeremy Williams, 3 Man Group, WIPO Case No. D2019-1535.
Accordingly, the Panel finds that Complainant has met the requirements of paragraph 4(a)(i) of the Policy.
Under the second element of the Policy, a complainant is first required to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If complainant makes that showing, the burden of production on this element shifts to the respondent to come forward with relevant evidence of such rights or legitimate interests in the domain name. If the respondent fails to come forward with such evidence, a complainant is generally deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. See also, Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393; L’Oréal, Lancôme Parfums Et Beauté & Cie v. Jack Yang, WIPO Case No. D2011-1627.
Complainant has established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain names. First, Complainant asserts that it has not licensed or otherwise permitted Respondent to use the VIRGIN Mark in any manner, especially not for websites hosting bitcoin investment schemes to which each of the disputed domain names resolve. Complainant has also submitted persuasive evidence in the record that Respondent is not commonly known by any of the disputed domain names, and given the use of the privacy shield to conceal its identity, Respondent cannot have been commonly known by the disputed domain names before any notice of the dispute.
It is generally regarded as prima facie evidence of no rights or legitimate interests if a complainant shows that the disputed domain name is identical or confusingly similar to the complainant’s trademark, that the respondent is not commonly known by the disputed domain name, and that the complainant has not authorized the respondent to use its mark (or an expression which is confusingly similar to its mark), whether in the disputed domain name or otherwise. See, Roust Trading Limited v. AMG LLC, WIPO Case No. D2007-1857.
Further, Complainant has submitted evidence in the record to support its contention that each disputed domain name resolves to webpages hosting bitcoin investment schemes. These schemes are ostensibly reported in articles by legitimate well known news media. Upon investigation of evidence submitted by Complainant, however, articles hosted at each disputed domain name website are reported by lesser known bitcoin media outlets such as “kryptopanda.com”, “gb.informed.me” and “gb.newztopia.me”, and one of Respondent’s resolving websites includes an image of the Virgin Group’s chairman Sir Richard Branson to falsely suggest association or endorsement. Clicking on a link to another of Respondent’s website’s results in a security warning while still another provides consumers with signup forms for its investment schemes.
Complainant asserts that in recent years it has been targeted by a number of bitcoin and cryptocurrency related scams. These scams seek to suggest that Complainant, or its founder Sir Richard Branson, is associated with or endorses a purported bitcoin scheme that is actually a fake and a scam, because neither Complainant nor its founder have endorsed any bitcoin investment schemes, including those accessed through each of the disputed domain names. Based on the evidence presented, the Panel is persuaded and finds that Respondent’s illegitimate use of the disputed domain names to redirect users to websites hosting fake media articles to sign them up for commercial gain through bitcoin investment schemes falsely associated with Complainant does not represent a legitimate interest.
Prior UDRP panels have consistently held that respondents that monetize domain names using links targeting a complainant have not made a bona fide offering of goods or services nor fair use without intent for commercial gain that would give rise to rights or legitimate interests in a disputed domain name. Respondent, therefore, is neither using the disputed domain names to provide a bona fide offering of goods or services as allowed under Policy paragraph 4(c)(i), nor a legitimate noncommercial or fair use as allowed under Policy, paragraph 4(c)(iii). See, WIPO Overview 3.0, section 2.9. See also, Lancôme Parfums et Beaute & Compagnie v. D Nigam, Privacy Protection Services / Pluto Domains Services Private Limited, WIPO Case No. D2009-0728.
In view of the above, the Panel finds that Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. Respondent has not submitted any argument or evidence to rebut Complainant’s case. Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
Complainant’s well-known VIRGIN Mark is recognized and registered around the world, including Romania, a member of the European Union, where Respondent is located, and has been used to identify products and services provided to millions of consumers for many years prior to Respondent’s registration of the disputed domain names. It is implausible, therefore, to believe that Respondent was not aware of that mark when it registered the confusingly similar disputed domain names incorporating the VIRGIN Mark as determined in section 6.A. above.
UDRP panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or widely known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See, WIPO Overview 3.0, section 3.1.4. See, Barclays Bank PLC v. PrivacyProtect.org / Sylvia Paras, WIPO Case No. D2011-2011.
The Panel finds that Respondent’s registration of the disputed domain names with awareness of Complainant’s well known VIRGIN Mark, VIRGIN MOBILE Mark and VIRGIN MONEY Mark and in the absence of its own rights or legitimate interests, amounts to registration in bad faith by Respondent. See, WIPO Overview 3.0, section 3.2.1. See Royds Withy King LLP v. Help Tobuy, WIPO Case No. D2019-0624.
Based on the website to which each disputed domain name resolves, as discussed in detail under Section 6B above, Complainant submits that Respondent’s illegitimate conduct, use of the disputed domain names to redirect users to websites hosting fake media articles to sign them up for bitcoin investment schemes falsely associated with Complainant, generates commercial gain by creating a likelihood of confusion with Complainant’s respective VIRGIN Marks and thereby demonstrates bad faith use under Policy paragraph 4(b)(iv).
For these reasons, the Panel finds bad faith registration and use, and Complainant has met its burden under paragraph 4(a)(iii) of the Policy.
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 <virginmobilehotspot.com>, <virginmymoney.com>, and <virginusamobile.com> be transferred to Complainant.
Scott R. Austin
Date: September 26, 2020
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