WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. Domain Administrator, Sportsbet Pty Ltd

Case No. DAU2018-0014

1. The Parties

The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland ("United Kingdom"), represented by Stobbs IP Limited, United Kingdom.

The Respondent is Domain Administrator, Sportsbet Pty Ltd. of Melbourne, Victoria, Australia.

2. The Domain Name and Registrar

The domain name <virginbet.com.au> (the "disputed domain name") is registered with Corporation Service Company (Australia) Pty Ltd (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 10, 2018. On May 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 23, 2018, the Registrar 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 satisfied the formal requirements of the .au Dispute Resolution Policy (the "Policy" or "auDRP"), the Rules for .au Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for .au Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 24, 2018. In accordance with the Rules, paragraph 5(a), the due date for Response was June 13, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 18, 2018.

The Center appointed Douglas Clark as the Sole Panelist in this matter on June 26, 2018. 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 owns a group of companies known collectively as "the Virgin Group". The Complainant has operated its businesses under the name VIRGIN since 1970. The Complainant owns 60 businesses operating in 35 countries, with more than 69,000 employees. The Complainant's VIRGIN trademark is registered in 160 different jurisdictions. The Complainant is also the proprietor of the VIRGIN BET trademark in several classes in the European Union (the "EU") under registration no. 016151102, and the United Kingdom under registration no. 00003269158. The trademark VIRGIN BET is used by Virgin Games, a business of the Virgin Group that provides online gambling services in United Kingdom.

The Complainant's VIRGIN trademark in Australia was first registered from July 19, 1974 under registration no. 280224 in Class 9. The Complainant registered several classes of VIRGIN trademarks in Australia, under registration no. 1559019, on January 15, 2016 including in Class 41. The Complainant has business presence throughout Australia. One of its licensed companies, Virgin Australia, sponsors and participates in major events such as the Australian Football League and Formula 1 Australian Grand Prix.

The Respondent is an Australian private company, which provides online gambling services in Australia.

The disputed domain name was registered on July 29, 2010. At the time the Complaint was filed, the disputed domain name resolved to "www.helpcentre.sportsbet.com.au". Currently, the disputed domain name redirects Internet users to the homepage of the Respondent, "www.sportsbet.com.au".

5. Parties' Contentions

A. Complainant

The Complainant contends the following:

Identical or Confusingly Similar

The Complainant contends the disputed domain name is confusingly similar to its trademark VIRGIN or identical to its trademark VIRGIN BET. The Complainant contends it has developed a significant reputation in VIRGIN globally and the VIRGIN trademark is commonly used alongside an additional element, such as VIRGIN ATLANTIC and VIRGIN GAMES. The disputed domain name <virginbet.com.au> and its trademark VIRGIN BET are identical. It contains VIRGIN BET in its entirety as the distinctive part of the disputed domain name. Alternatively, the disputed domain name is confusingly similar to the trademark VIRGIN. A descriptive word "bet" has been added. The designation "com.au" should be disregarded when making a comparison.

No rights or legitimate interests

The Complainant contends that it has no connection with the Respondent and the Respondent has never sought or obtained any trademark registrations for "virgin" or "virgin bet". The disputed domain name bearing its trademark would cause Internet users to assume that the Respondent was affiliated or related with its online gambling business, Virgin Games, established in 2003. The Complainant submits that the Respondent is not known as "Virgin Bet" and the Respondent's lack of response demonstrates that it has no rights or legitimate interests in the disputed domain name.

Registered or Subsequently used in bad faith

The Complainant argues that the Respondent undoubtedly knew of the Complainant's rights and trademarks given the Complainant's worldwide reputation and the Respondent's parent company, Paddy Power Betfair, is headquartered in EU. Therefore, the Respondent registered the disputed domain name in bad faith.

The Complainant submits that the Respondent would have known the Complainant's presence in the online gambling industry. The Complainant contends that the disputed domain name is used to generate custom and financial gain from Internet users given that the disputed domain name redirects users to its own webpage "www.helpcentre.sportsbet.com.au". The Complainant submits that the disputed domain name was registered and used for the purposes of disrupting its business by drawing away its customers. Hence, the disputed domain name is registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

6.1 Substantive Issues

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:

(i) the disputed domain name is identical 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; and

(iii) the disputed domain name has been registered or is being used in bad faith.

A. Identical or Confusingly Similar

The Panel finds that, disregarding the country code Top-level Domain ("ccTLD") ".au", the disputed domain name <virginbet.com.au> incorporates the Complainant's VIRGIN mark together with a descriptive word "bet". The disputed domain name is, therefore, confusingly similar to the mark VIRGIN.

The Panel also notes the Complainant has registered VIRGIN BET trademarks in the EU and UK which are identical to the disputed domain name (disregarding the ccTLD).

The first element of paragraph 4(a) of Schedule A to the Policy is therefore established.

B. Rights or Legitimate Interests

The Respondent has not responded to assert any rights or legitimate interests in the disputed domain name. Paragraph 2.1 of the auDA Overview of Panel Views on Selected auDRP Questions First Edition ("auDA auDRP Overview 1.0") provides:
"A complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. The complainant will usually make out a prima facie case by establishing that none of the paragraph 4(c) circumstances are present. Once such a prima facie case is made, the burden of production shifts to the respondent, requiring it to provide evidence or plausible assertions demonstrating rights or legitimate interests in the domain name. If the respondent fails to provide such evidence or assertions, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the Policy [see also question 4.6 below in relation to respondent default]. If the respondent does provide some evidence or plausible assertions of rights or legitimate interests in the domain name, the panel then weighs all the evidence – with the burden of proof always remaining on the complainant."

The Respondent has no business or any kind of relationship (e.g., licensor, distributor) with the Complainant. The Respondent was granted neither a license nor an authorisation to make any use of the Complainant's trademark.

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has failed to assert its rights or legitimate interests over the disputed domain name. In addition, the use of the disputed domain name to resolve to the Respondent's (a competitor to the Complainant) website cannot be considered a legitimate noncommercial or fair use of the disputed domain name.

Hence, the Panel finds that the second element of paragraph 4(a) of the Policy is established.

C. Registered or Subsequently Used in Bad Faith

The Respondent should have known of the Complainant's trademark when it registered the disputed domain name, since the Complainant had registered its VIRGIN trademark across numerous jurisdictions, including Australia. The Respondent's relationship as a subsidiary of Paddy Power Betfair, a gaming and gambling operator headquartered in EU, makes it highly improbable that the Respondent did not know of the Complainant's mark or its businesses. Hence, the Panel finds that the disputed domain name was registered in bad faith, which is sufficient to satisfy the third element of the paragraph 4(a) of the Policy.

Further, although not strictly necessary under the Policy, the Panel also finds that the disputed domain name has been used in bad faith. The Respondent is not known by the disputed domain name and it is likely that Internet users by being re-directed to "www.sportbets.com.au" may believe the Respondent, which provides online gambling services in Australia, is affiliated to the Complainant and Complainant's online gambling services (See Projetclub v. Whois Privacy Corp, WIPO Case No. D2018-0542).

The Panel therefore finds that the Complainant has established the third element of 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 <virginbet.com.au> be transferred to the Complainant.

Douglas Clark
Sole Panelist
Date: July 10, 2018