WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. Moore Williams

Case No. D2018-2417

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 Moore Williams of New York City, New York, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <virginluxuryisland.com> (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 October 24, 2018. On October 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 24, 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 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 26, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 19, 2018.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on November 21, 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 Virgin Enterprises Limited (“Virgin Enterprises”) is a private limited company established under English law and based in London, United Kingdom. Virgin Enterprises operates, through subsidiaries, various businesses under the Virgin trade name, including an airline, music record “megastores”, holiday resorts, and Internet services. Virgin Enterprises has operated a principal website at “www.virgin.com” since 1999 which attracts millions of visitors annually, from more than 230 countries.

Virgin Enterprises is a member of the Virgin Group of companies, which originated in 1970 when Richard Branson began selling music records under the VIRGIN mark. The Virgin Group has expanded into a wide variety of businesses that use the VIRGIN mark under license. The Complainant Virgin Enterprises is the trademark owner for the Virgin Group. According to the Complaint, the Virgin Group currently comprises over 60 businesses worldwide, operating in 35 countries in Europe and Australasia, as well as in the United States, with more than 69,000 employees and annual group revenues exceeding GPB 16.6 billion. The record establishes that the VIRGIN brand is heavily advertised in Europe and North America and is associated with sponsored events and media stories. It has also been recognized in multiple publications as a leading brand in the United Kingdom.

The Virgin Group includes Virgin Limited Edition, which operates holiday retreats and luxury hotels in several countries. One of these resorts is Necker Island in the British Virgin Islands, as advertised at “www.virginlimitededition.com/en/necker-island” and on Facebook and YouTube.

The record shows that the Complainant Virgin Enterprises holds numerous trademarks consisting of, or incorporating the name “Virgin”, often with an additional element such as VIRGIN ATLANTIC, VIRGIN MONEY, VIRGIN TRAINS, VIRGIN HOLIDAYS, VIRGIN MEDIA, VIRGIN MOBILE, VIRGIN RADIO, and VIRGIN GAMES. Trademark registrations relevant for the current proceeding include the following:

The Domain Name was registered on October 15, 2018 in the name of the Respondent, Moore Williams of New York City, New York, United States. As shown on screenshots attached to the Complaint, the Domain Name resolved to a website copied from the Complainant’s website at “www.virginlimitededition.com/en/necker-island”, advertising the Complainant’s Necker Island resort, but with false contact details directing website visitors to email addresses using the Domain Name.

At the time of this decision, the Domain Name resolves to a landing page with an “Account Suspended” message.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that the Domain Name is confusingly similar to the Complainant’s registered VIRGIN trademark and that the Respondent has no permission to use the mark and otherwise lacks rights or legitimate interests in the Domain Name.

The Complainant observes that the Respondent was clearly aware of the Complainant’s business and mark, creating a replica of the Complainant’s website but with altered contact details to misdirect Internet users, presumably for commercial gain. The Complainant concludes that this conduct manifests bad faith in the registration and use of the Domain Name.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a disputed domain name, a complainant must demonstrate each of the following:

(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.

Under paragraph 15(a) of the Rules, “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.”

A. Identical or Confusingly Similar

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the disputed domain name”. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7.

The Complainant Virgin Enterprises indisputably holds registered VIRGIN trademarks. The Domain Name incorporates this mark in its entirety and adds the generic words “luxury” and “island”. These generic additions do not avoid confusing similarity, as the Panel also notes that the Complainant frequently adds generic terms to “Virgin” to form derivative trademarks (typically creating corresponding domain names) and actually operates a luxury island resort. As in most cases, the generic Top-Level Domain (“gTLD”) “.com” is not a distinguishing feature. Id.

Accordingly, the Panel finds the Domain Name confusingly similar to the Complainant’s VIRGIN trademark for purposes of the first element of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:

(i) before any notice to it of the dispute, the 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) the 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.

Since a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a disputed domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. Here, the Complainant has grounded its prima facie case by establishing its trademark rights, confusing similarity, and the lack of permissive use, a corresponding business or brand name, or other evident legitimate interests. This shifts the burden to the Respondent. The Respondent has not replied, and its conduct in copying the Complainant’s website but altering the contact information does not suggest any legitimate interests in the Domain Name.

Accordingly, the Panel concludes that the Complainant has established the second element of the Policy.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

The record shows that the Respondent used the Domain Name for a replica website impersonating the Complainant’s website, but with contact details misdirecting Internet users to communicate with the Respondent while under the impression that they were in communication with the Complainant. It is not known whether this was intended as part of a “bait and switch” effort to sell competing holiday packages or as part of a fraudulent scheme to extract money or valuable data from site visitors. The Respondent’s website is no longer functioning. In any case, no legitimate purpose is apparent, and the Respondent has not come forward to offer an explanation.

The Panel finds, on this record, that the Respondent acted in bad faith in registering and using the Domain Name.

The Panel concludes, therefore, that the Complainant has established the third element 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, <virginluxuryisland.com>, be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: November 27, 2018