WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Domain Administrator, See PrivacyGuardian.org / Eric Mboma
Case No. D2021-0406
1. The Parties
Complainant is Virgin Enterprises Limited, United Kingdom (“UK”), represented by A. A. Thornton & Co., United Kingdom.
Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America / Eric Mboma, United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <virgindigitalmedia.com> (the “Domain Name”) is registered with NameSilo, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2021. On February 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On February 11, 2021, 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 Complainant on February 11, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on February 12, 2021.
The Center verified that the Complaint together with the amendment to the 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 February 15, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 7, 2021. Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 9, 2021.
The Center appointed John C. McElwaine as the sole panelist in this matter on March 17, 2021. 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
Complainant is the owner of the following trademark registrations, which it has asserted in this matter:
- UK Trade Mark Registration No. UK00003163121 for the mark VIRGIN registered on July 29, 2016, in classes 03, 05, 09, 11, 12, 14, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44 and 45.
- European Union Trade Mark Registration No. 015255235 for the mark VIRGIN registered on March 21, 2016, in classes 03, 05, 09, 11, 12, 14, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44 and 45.
- International Trademark Registration No. 1290574 for the mark VIRGIN registered on February 3, 2015, designating, inter alia, Antigua and Barbuda, Australia, China, Colombia, European Union, India, Israel, Mexico, Monaco, Montenegro, New Zealand, Norway, Republic of Korea, Russian Federation, Singapore, Turkey, and United States of America for the mark VIRGIN in classes 39, 41 and 43.
- UK Trade Mark Registration No. UK00003163127 for the mark (VIRGIN Signature Logo) registered on July 29, 2016, in classes 3, 5, 9, 11, 12, 14, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44 and 45.
- European Union Trade Mark Registration No. 015404841 for the mark (VIRGIN Signature Logo) registered on December 2, 2016, in classes 3, 5, 9, 11, 12, 14, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44 and 45.
- International Trademark Registration No. 1146047 for the mark VIRGIN registered on May 21, 2012, designating Australia, Bahrain, Egypt, European Union, Morocco, Oman, Russian Federation, Ukraine and United States of America for the mark (VIRGIN Signature Logo in black and white) in classes 9, 35, 36, 38 and 41.
- UK Trade Mark Registration No. UK00003100686 for the mark VIRGIN MEDIA registered on August 28, 2015, in classes 9, 35, 36, 38, 41 and 42.
- UK Trade Mark Registration No. UK00003038254 for the series marks (VIRGIN MEDIA Logo / VIRGIN MEDIA Logo in black and white) registered on April 25, 2014, in classes 9, 35, 36 and 38.
- European Union Trade Mark Registration No. 013867478 for the mark VIRGIN MEDIA registered on October 14, 2015, in classes 09, 35, 36, 38, 41 and 42.
- European Union Trade Mark Registration No. 014032163 (VIRGIN MEDIA Logo) registered on December 3, 2015, in classes 9, 35, 36, 38, 41 and 42.
(Collectively, these trademark registrations are referred to herein as the “VIRGIN Marks”).
Complainant registered the domain name <virginmedia.com> on February 27, 1999.
The Domain Name was registered by Respondent on January 18, 2021. At the time of the filing of the Complaint, the Domain Name resolved to a website purporting to be a telecommunications and media company operating under the designation “Virgin Media”. At the time of the Decision, the Domain Name does not resolve to an active website.
5. Parties’ Contentions
A. Complainant
As background, Complainant is a member of a group of companies collectively known as the Virgin Group. Complainant asserts that the Virgin Group was established in 1970 by its founder and chairman Sir Richard Branson and since this time the Virgin Group has grown to comprise over 60 VIRGIN branded businesses that span a diverse range of sectors, including music and entertainment and telecommunications and media. Complainant alleges that the Virgin Group companies have between them over 53 million customers worldwide, employ more than 69,000 people in 35 countries and have annual revenue of more than 16 billion pounds. Complainant 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.
Complainant alleges that the VIRGIN Marks have all been consistently and intensively used across all Virgin Group operations since the company was founded. Complainant also contends that it has built up a considerable online presence and is the registered owner of over 5,000 domain names consisting of or incorporating the VIRGIN mark. Complainant alleges 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.
Complainant alleges that in February 2007, the Virgin Group launched its VIRGIN Media business in the UK following the acquisition of a mobile telecommunications business. Complainant asserts that VIRGIN Media offered the first “quadruple-play” telecommunications service in the UK, i.e., offering TV, internet, mobile phone and landline phone services. Complainant alleges that currently the VIRGIN Media business provides telecommunications services to 14.9 million households in the UK, and also to thousands of consumers in the Republic of Ireland where the broadcast division of the VIRGIN Media business is the number one commercial broadcaster. Complainant contends that the VIRGIN Media UK business operates a website at “virginmedia.com” (the “Virgin Media UK Website”), and the VIRGIN Media Ireland business operates a website at “virginmedia.ie” (collectively, the “Virgin Media Websites”), where they provide information on the VIRGIN Media services, allow consumers to sign up for VIRGIN Media services and existing customers to log in to their online accounts providing information on the services they have purchased.
Complainant alleges over the years since its launch that the VIRGIN Media business has had significant achievements and activities. Complainant alleges that as a result of these successes and the extensive and consistent use of Complainant’s VIRGIN Marks, Complainant has acquired significant reputation and goodwill in those marks.
With respect to the first element of the Policy, Complainant alleges that the Domain Name incorporates Complainant’s registered trademarks rights in VIRGIN and VIRGIN MEDIA and that the Domain Name has merely added the word “digital”. Complainant contends that the term “digital” is a commonly used in the field of telecommunication services, and therefore, the term “digital” is not sufficient to distinguish the Domain Name from Complainant’s VIRGIN Marks.
With respect to the second element of the Policy, Complainant asserts that the website that solves from the Domain Name uses marks identical to Complainant’s VIRGIN Marks, copies a substantial amount of content from the Virgin Media UK Website and purports to offer telecommunication service packages, which will confuse consumers into thinking that the Domain Name is owned by or connected to Complainant or the Virgin Media businesses. In addition, Complainant alleges that the redirection of some of the links on Respondent’s website to the Virgin Media UK Website will add to this confusion on the part of Internet users and reinforce the false belief that the Domain Name is connected to or operated by Complainant. Complainant further contends that it is very likely that the Domain Name will be used for phishing purposes. Complainant points out that there is no evidence that Respondent has used or intends to use the Domain Name in connection with a bona fide offering of goods or services. Lastly, Complainant asserts that Respondent is not making fair or noncommercial use of the Domain Name.
With respect to the third element of the Policy, Complainant contends that Respondent registered and is using the Domain Name to intentionally attempt to attract, likely for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s VIRGIN Marks as to the source sponsorship, affiliation, or endorsement of Respondent’s website. Further, Complainant asserts that given the significant reputation of Complainant’s VIRGIN Marks and the fact that Respondent’s website has copied the Virgin Media UK Website including reproducing content and trademarks, it is clear that Respondent was aware of Complainant at the time of registering the Domain Name.
B. Respondent
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Even though Respondent has defaulted, paragraph 4 of the Policy requires that, in order to succeed in this UDRP proceeding, Complainant must still prove its assertions with evidence demonstrating:
(i) the Domain Name is 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 Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
Because of Respondent’s default, the Panel may accept as true the reasonable factual allegations stated within the Complaint and may draw appropriate inferences therefrom. See St. Tropez Acquisition Co. Limited v. AnonymousSpeech LLC and Global House Inc.,
WIPO Case No. D2009-1779; Bjorn Kassoe Andersen v. Direction International,
WIPO Case No. D2007-0605; see also paragraph 5(f) of the Rules (“If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint”). Having considered the Complaint, the Policy, the Rules, the Supplemental Rules and applicable principles of law, the Panel’s findings on each of the above cited elements are as follows.
A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires Complainant show that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights. 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.2. On this point, Complainant has provided evidence that it is the owner of multiple trademark registrations for the marks VIRGIN and VIRGIN MEDIA.
It is well-established that the addition of a descriptive word to a trademark in a domain name does not avoid a finding of confusing similarity. See Mastercard Int’l Inc. v. Dolancer Outsourcing Inc.,
WIPO Case No. D2012-0619; Air France v. Kitchkulture,
WIPO Case No. D2002-0158; DHL Operations B.V., et al. v. Diversified Home Loans,
WIPO Case No. D2010-0097. The Domain Name contains Complainant’s VIRGIN and VIRGIN MEDIA marks with the addition of the term “digital” between “Virgin” and “Media”. The addition of the term “digital” does not prevent Complainant’s VIRGIN Marks from being recognizable in the Domain Name.
Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s VIRGIN Marks in which Complainant has valid trademark rights. Therefore, Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Under the Policy paragraph 4(a)(ii), Complainant has the burden of establishing that Respondent has no rights or legitimate interests in the Domain Name. Complainant need only make a prima facie showing on this element, at which point the burden shifts to Respondent to present evidence that it has some rights or legitimate interests in the Domain Name. If Respondent has failed to do so, Complainant is deemed to have satisfied its burden under paragraph 4(a)(ii) of the Policy. See Vicar Operating, Inc. v. Domains by Proxy, Inc. / Eklin Bot Systems, Inc.,
WIPO Case No. D2010-1141; see also Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party,
WIPO Case No. D2000-1415; Inter-Continental Hotels Corporation v. Khaled Ali Soussi,
WIPO Case No. D2000-0252.
Here, Complainant asserts that Respondent is not authorized to have registered the Domain Name and set up an allegedly copied website offering the same telecommunications services as Complainant and purporting to be “Virgin Media”. Although properly notified by the Center, Respondent failed to submit any response on this point. The silence of a respondent may support a finding that it has no rights or legitimate interests in respect of the domain name. See Alcoholics Anonymous World Services, Inc., v. Lauren Raymond,
WIPO Case No. D2000-0007; Ronson Plc v. Unimetal Sanayi ve Tic. A.S., WIPO Case No. D2000-0011. Additionally, previous UDRP panels have found that when respondents have not availed themselves of their rights to respond to complainant, it can be assumed in appropriate circumstances that respondents have no rights or legitimate interests in the disputed domain name. See AREVA v. St. James Robyn,
WIPO Case No. D2010-1017; Nordstrom, Inc. and NIHC, Inc. v. Inkyu Kim,
WIPO Case No. D2003-0269.
Nevertheless, under paragraph 4(c) of the Policy, a respondent’s rights or legitimate interests to a domain name may be established by demonstrating any of the following three conditions: (i) before any notice to respondent of the dispute, respondent’s 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) respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if respondent has acquired no trademark or service mark rights; or (iii) 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. The Panel finds that Respondent will not be able to show rights or legitimate interests under any of the three conditions.
As an initial matter, Respondent cannot satisfy paragraph 4(c)(ii) of the Policy. There is no evidence in the record that Respondent is commonly known by the name “Virgin Digital Media”. In fact, to the contrary, the WhoIs information indicates that Respondent’s name is Eric Mboma.
Complainant also asserts that the Domain Name resolved to a website that imitates Complainant by using Complainant’s VIRGIN Marks and the look and feel of Complainant’s own website and brand. Respondent has not submitted any response to rebut or explain these allegations.
The Panel notes that the website displayed at the Domain Name appears to be intended to lead visitors to believe that it is Complainant’s Virgin Media business unit. Complainant provided evidence in the form of screenshots of Respondent’s website, which appears to be a counterfeit copy of Complainant’s Virgin Media Website. The registered VIRGIN MEDIA trademark and Virgin Signature logo are prominently displayed throughout the website at the Domain Name.There is no disclaimer on Respondent’s website disclosing any type of relationship between Complainant and Respondent.
The Panel finds that the use of the Domain Name in this manner to divert Internet traffic or to confuse and deceive the Internet users is not a bona fide offering of goods or services under paragraph 4(c)(i) of the Policy. Prior UDRP panels deciding this issue have held that such use of a domain name cannot be a “bona fide offering of goods or services” and is not “fair use of the domain name.” See Microsoft Corporation v. Microsof.com aka Tarek Ahmed,
WIPO Case No. D2000-0548 (“by using a domain name and establishing a website deliberately designed to confuse Internet users and consumers regarding the identity of the seller of the goods and services, Respondent has not undertaken a bona fide or good faith offering of the goods and services.”); see Hulu, LLC v. Helecops, Vinod Madushanka,
WIPO Case No. D2016-0365 (finding that an infringing website operating under the name “HuluMovies” does not entail a bona fide offering of services in the sense of paragraph 4(c)(i) of the Policy, nor a legitimate noncommercial or fair use under Policy paragraph 4(c)(iii), without intent for commercial gain to misleadingly divert consumers or to tarnish the HULU mark.) Without a response from Respondent justifying its use of the Domain Name as authorized by Complainant or as fair use, the Panel cannot find Respondent has a legitimate interest.
Furthermore, the Panel notes that the Domain Name is very similar to Complainant’s domain name <viriginmedia.com> and confusingly similar to Complainant’s VIRGIN MEDIA marks. In this respect, where a domain name consists of a trademark plus an additional term, UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See section 2.5.1 of the WIPO Overview 3.0.
In sum, Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests and Respondent has failed to come forward to rebut that showing. As provided for by paragraph 14 of the Rules, the Panel may draw such inference from Respondent’s default as it considers appropriate. For all these reasons, the Panel is entitled to accept that the second element of the Policy is established by Complainant, and Respondent has no rights or legitimate interests in respect of the Domain Name, pursuant to paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, Complainant must show that Respondent registered and is using the Domain Name in bad faith. A non-exhaustive list of factors constituting bad faith registration and use is set out in paragraph 4(b) of the Policy.
Bad faith registration can be found where a respondent “knew or should have known” of a complainant’s trademark rights and nevertheless registered a domain name in which it had no right or legitimate interest. See Accor v. Kristen Hoerl,
WIPO Case No. D2007-1722. As detailed above, Respondent registered the Domain Name, which is confusingly similar to the well-known VIRGIN Marks. There is no explanation for Respondent to have chosen to register the Domain Name other than to intentionally trade off the goodwill and reputation of Complainant’s trademark or otherwise create a false association with Complainant. With no response from Respondent, such a claim of bad faith registration is undisputed.
Also as discussed herein, Respondent registered the Domain Name and linked it to a website using Complainant’s VIRGIN Marks and copying content, graphics and the overall look and feel of Complainant Virgin Media Website. This amounts to bad faith use of the Domain Name by Respondent. See Identigene, Inc. v. Genetest Labs,
WIPO Case No. D2000-1100 (finding bad faith where the respondent’s use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); MathForum.com, LLC v. Weiguang Huang,
WIPO Case No. D2000-0743 (finding bad faith under paragraph 4(b)(iv) of the Policy where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
As detailed above, the Panel finds on the record before it that Respondent’s intention in registering the Domain Name was to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with the VIRGIN Marks as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. Thus, the Panel holds that Complainant has met its burden of providing sufficient evidence that Respondent registered and is using the Domain Name in bad faith under paragraph 4(b)(iv) of the Policy.
The fact that the Domain Name does not currently resolve to an active website does not prevent a finding of bad faith. Section 3.3 of the WIPO Overview 3.0, instructs that UDRP panelists should examine the totality of the circumstances in each case and that the following factors that have been considered relevant in applying the passive holding doctrine: “(i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put.” Id. Here, Complainant’s VIRGIN Marks are distinctive and have acquired signficant reputation. As discussed herein, Respondent has submitted no substantive response justifying its prior development of an infringing website. The current passive holding of the Domain Name does not transform Respondent’s prior bad faith registration and use of the Domain Name.
For these reasons, the Panel holds that Complainant has met its burden of showing that Respondent registered and is using 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 <virgindigitalmedia.com> be transferred to Complainant.
John C McElwaine
Sole Panelist
Date: March 29, 2021
