WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. WhoisGuard Protected, WhoisGuard, Inc / Tech Dep

Case No. D2020-2261

1. The Parties

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

The Respondent is WhoisGuard Protected, WhoisGuard, Inc, Panama, / Tech Dep, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <virginactive.pro> (the “Domain Name”) is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2020. On August 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 28, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 31, 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 September 2, 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”).

The Respondent sent informal emails to the Center on August 31 and September 1, 2020, indicating the will to explore the possibility of settlement. The Complainant indicated on September 2, 2020, that it did not intend to file a request for suspension in this matter.

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 3, 2020. In accordance with the Rules, paragraph 5, the due date for Response was September 23, 2020. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent’s default on September 24, 2020.

The Center appointed Nicholas Smith as the sole panelist in this matter on September 29, 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 United Kingdom company that is a member of a group of companies collectively known as the Virgin Group, which was established by Sir Richard Branson in 1970. The Complainant is the holder of the intellectual property assets for the Virgin Group, including various trademarks consisting of or containing the word “virgin”, which it then licenses to various members of the Virgin Group. One of the enterprises run by the Virgin Group is a chain of health clubs trading under the mark VIRGIN ACTIVE (the “VIRGIN ACTIVE Mark”). The Virgin Group operates Virgin Active health clubs in the United Kingdom, Italy, Africa, Australia, Singapore and Thailand. The Virgin Active business consists of 238 clubs with 1.4 million members. The Virgin Group operates various websites to promote the Virgin Active business, including, in Italy, a website from the domain name <virginactive.it> (the “Complainant’s Website”).

The Complainant is the owner of trademark registrations for the VIRGIN ACTIVE Mark in various jurisdictions including in an European Union Trademark with a registration date of November 23, 2015 (registration number 014030399) for various goods and services in classes 9, 16, 25, 28, 41 and 43.

The Domain Name <virginactive.pro> was registered on July 14, 2020. The Domain Name is presently inactive but prior to the commencement of the proceeding resolved to a website (the “Respondent’s Website”) that precisely reproduced the design and appearance of the Complainant’s Website, including copying photos and videos. The Respondent’s Website contained links, identical to the Complainant’s Website, apparently allowing visitors to sign up for accounts and log in to their existing Virgin Active accounts, through which the Respondent could obtain personal information from visitors to the Respondent’s Website who provided their details or passwords under the mistaken impression they were visiting the Complainant’s (identical) Website.

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

(i) that the Domain Name is identical or confusingly similar to the Complainant’s VIRGIN ACTIVE Mark;

(ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and

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

The Complainant is the owner of the VIRGIN ACTIVE Mark, having registered the VIRGIN ACTIVE Mark in the European Union and other jurisdictions. The Domain Name is identical to the VIRGIN ACTIVE Mark.

There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known by the Domain Name nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Rather the Respondent is using the Domain Name to resolve to a website that replicates the Complainant’s Website in its entirety which is not legitimate.

The Domain Name was registered and is being used in bad faith. By using the Domain Name to resolve to a website which reproduces the Complainant’s Website, the Respondent is using the Domain Name to divert Internet users searching for the Complainant to the Respondent’s Website for commercial gain and potentially to defraud the public. Such conduct amounts to registration and use of the Domain Name in bad faith.

B. Respondent

The Respondent did not formally reply to the Complainant’s contentions nor did the informal communications made by the Respondent on August 31 and September 1, 2020, contain any information relevant to the disposition of this matter.

6. Discussion and Findings

A. Identical or Confusingly Similar

To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark.

The Complainant is the owner of the VIRGIN ACTIVE Mark, having registrations for the VIRGIN ACTIVE Mark as a trademark in the United Kingdom and the European Union.

Disregarding for the purposes of comparison the generic Top-Level Domain (“gTLD”) “.pro” (being a technical requirement for the registration of a domain name) and the absence of a space between “virgin” and “active” (it not being possible to register a domain name containing a space) the Domain Name is identical to the VIRGIN ACTIVE Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name.

Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name:

“Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are 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.”

The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the VIRGIN ACTIVE Mark or a mark similar to the VIRGIN ACTIVE Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial or fair use.

The Respondent has used the Domain Name to operate a website that clearly impersonates the Complainant’s Website which, absent any explanation of its conduct by the Respondent, appears most likely to be a front in order to defraud the Complainant’s customers by persuading them to provide the Respondent with their personal information. Such conduct does not, on its face, amount to the use of the Domain Name for a bona fide offering of goods or services.

The Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Domain Name. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct amounts to a right or legitimate interest in the Domain Name under the Policy. In the absence of such a Response, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or has 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 the complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on the respondent’s website or location (Policy, paragraph 4(b)).

The Panel finds that the Respondent was aware of the Complainant and its reputation in the VIRGIN ACTIVE Mark at the time the Domain Name was registered. The Respondent’s Website reproduces the Complainant’s Website in its entirety. The registration of the Domain Name in awareness of the VIRGIN ACTIVE Mark and in the absence of rights or legitimate interests amounts under these circumstances to registration in bad faith.

The Panel finds, on the balance of probability, that the Respondent has used the Domain Name, being identical to the VIRGIN ACTIVE Mark, to take advantage of user confusion in order to obtain the personal information of visitors who attempt to log into the Respondent’s Website under the impression that they are logging in to or signing up to the Complainant’s Website, undoubtedly for commercial gain. Consequently the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and the Complainant’s VIRGIN ACTIVE Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website (Policy, paragraph 4(b)(vi). The fact that the Domain Name is presently inactive does not change the Panel’s findings.

Accordingly, the Panel finds that the Respondent has registered and used the Domain Name in bad faith under 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 Domain Name, <virginactive.pro> be transferred to the Complainant.

Nicholas Smith
Sole Panelist
Date: October 6, 2020