WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. WhoisGuard Protected, WhoisGuard, Inc / Portia Lynette Bennett, Virginways Courier

Case No. D2020-2633

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 / Portia Lynette Bennett, Virginways Courier, South Africa.

2. The Domain Name and Registrar

The disputed domain name <virginwayscourier.com> is registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 9, 2020. On October 9, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 9, 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 October 12, 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 October 16, 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 October 20, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 16, 2020.

The Center appointed Fabrice Bircker as the sole panelist in this matter on November 26, 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 Virgin Group operates over 60 VIRGIN branded businesses covering Financial Services, Health & Wellness, Music & Entertainment, People & Planet, Telecommunications & Media, Travel & Leisure and transportation, serving over 53 million customers worldwide, employing more than 69,000 people in 35 countries, and generating annual revenues of GBP 16.6 billion.

Since 1984, the Complainant operates passenger and cargo airlines named VIRGIN ATLANTIC, and its VIRGIN brand is placed throughout the Virgin Atlantic Websites, and on the fuselages and tailfins of its aircraft.

This activity is operated in 37 countries, carries around 240 million kilos of cargo annually and has been awarded the International Cargo Airline of the Year award 14 times.

The Complainant holds numerous trademarks registrations designating notably transportation services in class 39, among which:

- VIRGIN, European Union Trademark registration No. 1798560 filed on August 8, 2000, registered on June 5, 2002 and regularly renewed,

- VIRGIN, United Kingdom Trademark registration No. UK00003163121 filed on May 5, 2016, registered on July 29, 2016,

- VIRGIN, International trademark registration No. 1290574 of February 3, 2015, notably covering Singapore, Colombia, Mexico, India, Russian Federation, United States of America, and China,

- VIRGIN, South African trademark registration No. 2015/03182, filed on February 9, 2015, registered on May 11, 2018.

The disputed domain name, <virginwayscourier.com>, was registered on August 31, 2020.

Its resolves to a website that purports to offer logistics, cargo and freight services.

5. Parties’ Contentions

A. Complainant

After having presented its range of activities and put forward the intense use of its VIRGIN trademarks, including in the field of airline transportation, the Complainant concludes that said trademarks enjoy a high level of recognition and of reputation.

Identical or Confusingly Similar

The Complainant contends that the disputed domain name is confusingly similar to its trademarks because it incorporates the VIRGIN denomination.
The Complainant adds that the word “ways” is a generic term which is likely to evoke the concept of “airways” and that “courier” is a descriptive reference to a service of transporting goods or documents. In addition, the Complainant considers that “courier” refers to the services for which its trademarks have a reputation and therefore that the presence of this term in the disputed domain name is not sufficient to avoid confusion on the part of Internet users.

Rights or Legitimate Interests

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name.

The Complainant indicates that the disputed domain name is used in relation to a website that purports to offer logistics, cargo and freight services.

In this respect, the Complainant puts forward that a number of images included on this website are taken from stock image libraries and that the template for the website itself appears to be a stock template. It adds that the circumstances and content of the website available through the disputed domain name are not typical of a website that provides a genuine legitimate business to customers, in particular because i) the social media links do not link to social media accounts for the company, but to the home page for the relevant social media platform, ii) in some places, the text is clearly template and unfinished, iii) the postal address provided appears to be incorrect.

The Complainant is of the opinion that, on the balance of probabilities, the disputed domain name does not appear to be used in connection with a bona fide business interest.

As a consequence, the Complainant contends that the use of its trademarks as part of the disputed domain name and on the related website, in connection with promotion of a purported courier service, will confuse Internet users and will possibly divert prospective customers away from its genuine air cargo services.

The Complainant also considers that its customers who need to visit its genuine website may end up on the website to which resolves the disputed domain name, and consequently be unable to locate the information they are looking for.

The Complainant also indicates that there is a contact form on the website available through the disputed domain name. As a consequence, Internet users may complete this form and provide their personal and sensitive data, which could quite possibly then be used for fraudulent purposes.

The Complainant concludes that these situations will be a frustrating experience for its genuine customers, that could tarnish the reputation of its VIRGIN trademarks.

Registered and Used in Bad Faith

According to the Complainant, it is highly unlikely that the Respondent was unaware of its trademarks given their high recognition and reputation at the time of registering the disputed domain name.

The Complainant contends that the Respondent has intentionally registered the disputed domain name in connection with a purported business offering of a type that the Complainant offers and has a reputation for, in order to attract visitors to its website.

The Complainant also states that the contact form on the disputed website may be used by Internet users and customers who believe they are visiting a website connected to the genuine VIRGIN trademarks. In the event they provide sensitive or personal data, this could be used by the Respondent for fraudulent purposes and for possible commercial gain.

In conclusion, the Complainant indicates that the nature of use at the disputed website is not good faith use, will be disruptive to its business and potentially will tarnish the reputation of its trademarks.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that for obtaining the transfer or the cancellation of the disputed domain name, the Complainant must establish each of the following three elements:

(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.

Besides, paragraph 15(a) of the Rules provides 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”.

Paragraphs 10(b) and 10(d) of the Rules also provide that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case” and that “[t]he Panel shall determine the admissibility, relevance, materiality and weight of the evidence”.

Besides, the Respondent’s failure to reply to the Complainant’s contentions does not automatically result in a decision in favor of the Complainant, although the Panel is entitled to draw appropriate inferences therefrom, in accordance with paragraph 14(b) of the Rules (see section 4.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

Taking the foregoing provisions into consideration the Panel finds as follows.

A. Identical or Confusingly Similar

Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to its trademark.

Annex 14 to the Complaint and to the amended Complaint shows trademarks registrations for VIRGIN in the name of the Complainant, in particular those detailed in section 4. above.

Turning to whether the disputed domain name <virginwayscourier.com> is identical or confusingly similar to the VIRGIN mark, the Panel notes that the disputed domain name is constituted with the reproduction of the VIRGIN mark followed by the dictionary words “ways” and “courier”, and then by the generic Top-Level Domain (“gTLD”) “.com”.

There is a consensus view among UDRP panels that:

- where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element (Section 1.8 of the WIPO Overview 3.0),

- gTLDs may be ignored for the purpose of assessing the confusing similarity, because they only play a technical function.
Taken the above into account, the Panel is of opinion that the presence of the dictionary terms “ways” and “courier” does not prevent the VIRGIN trademark from being recognizable within the disputed domain name, which is therefore confusingly similar to a trademark in which the Complainant has rights.

Consequently, the first element under the Policy set for by paragraph 4(a)(i) is fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the Respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

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

(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] 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 [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see WIPO Overview 3.0, section 2.1).

The Complainant argues that the disputed domain name redirects toward a website in the field of logistics, cargo and freight services, but which content is artificial because:

- number of images are taken from stock image libraries,
- the template for the website seems to be a stock template,
- the social media links do not link to social media accounts for the Respondent, but to the home page for the relevant social media platform,
- in some places, the text is template and unfinished,
- the postal address provided is incorrect.

The Panel is of the view that the sum of each of these elements makes very unlikely that the Respondent is using the disputed domain name in connection with a genuine activity and therefore in relation with a bona fide offering of goods or services.

Besides, the Complainant has also amply demonstrated the worldwide fame and repute of its VIRGIN trademarks, including in the field of transportation and of freight services.

As a result, even assuming that a genuine activity would be run through the website to which the disputed domain name redirects, the use by the Respondent of the Complainant’s well-known trademark to identify an activity directly competing with the Complainant, cannot amount to a bona fide offering of services.

In these circumstances, the Panel considers that there is no evidence that the Respondent may legitimately be commonly known by the disputed domain name or may be using it in good faith.

In view of all the above, the Panel finds that the Complainant has discharged its burden of proof that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

The burden of production now shifts to the Respondent to show that it does have some rights or legitimate interests.

The Respondent, which has not replied to the Complainant’s contentions, has not come forward with any explanation or evidence that demonstrates any rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must establish that the Respondent registered and is using the disputed domain name in bad faith.

In the present case, the Panel notes that:

- the use of the VIRGIN brand in the field of transportation by the Complainant predates the registration of the disputed domain names of almost 40 years;

- the Complainant has demonstrated that its VIRGIN trademarks are intensively used worldwide and enjoy considerable reputation and fame, including in the field of freight transportation;

- the terms “ways” and “courier” as part of the disputed domain name refer to the Complainant’s activity in the field of goods transportation;

- the Complainant notably runs its activities and holds trademarks rights in both territories where the Respondent may be located (in the United Kingdom according to the contact details displayed on the website available through the disputed domain name, and in South Africa according to the WhoIs database).

- the disputed domain name is used to redirect toward a website that purports to offer logistics, cargo and freight services. As a consequence, the use of the well-known VIRGIN trademark in a domain name redirecting toward a website dedicated to activities identical to those of the Complainant is liable to conduct the Internet users to believe they are visiting a website run or endorsed by the Complainant, which may divert them away from the Complainant’s genuine website;

- as the website available through the disputed domain name may look unfinished and contains incorrect and vague information, it may tarnish the Complainant’s reputation by creating a negative consumer perception around the VIRGIN trademarks;

- None of the arguments put forward by the Complainant have been contested by the Respondent, while invited to participate to this procedure to defend its case.

All the above clearly shows that the Respondent was more than likely aware of the Complainant’s rights when it registered the disputed domain name, and that it is using it to attract Internet users to its website for commercial gain by unduly capitalizing on the reputation and goodwill of the Complainant’s VIRIGIN trademarks, and/or to tarnish the image of the VIRGIN trademarks.

Even assuming that a genuine activity would be run through the website to which the disputed domain name redirects, this case would fall within the scope of paragraph 4(b)(iii) (“iii. the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor”).

In any event, this case clearly falls within the scope of paragraph 4(b)(iv) of the Policy, namely:
“iv. by using the disputed domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] 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.”

The Panel therefore finds that Complainant has established the third element under paragraph 4(a) 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 name, <virginwayscourier.com> be transferred to the Complainant.

Fabrice Bircker
Sole Panelist
Date: December 10, 2020