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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. WhoisGuard Protected, WhoisGuard, Inc. / David Plante

Case No. D2020-1516

1. The Parties

The Complainant is Virgin Enterprises Limited, United Kingdom (“United Kingdom” or “UK”), represented by A. A.Thornton & Co, United Kingdom.

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

2. The Domain Name and Registrar

The disputed domain name <btcbyvirgin.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 June 11, 2020. On June 11, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 11, 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 June 14, 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 June 15, 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 June 19, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 9, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 13, 2020.

The Center appointed Daniel Kraus as the sole panelist in this matter on July 20, 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 part of the Virgin group of companies and is responsible for registering and maintaining registrations for trademarks containing the VIRGIN name and licensing the right to use those marks to businesses using the VIRGIN brand. The Complainant owns a number of trademarks for the name VIRGIN, including in particular UK Trade Mark Registration No. UK00003163121 VIRGIN of May 5, 2016 in classes 3, 5, 9, 11, 12, 14, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44 and 45 and UK Trade Mark Registration No. UK00001585773 VIRGIN registered on October 20, 1994 in class 36. The Complainant is also the owner of the following trademarks, all containing the infinity sign:

- UK Trade Mark Registration No. UK00002439119 registered on November 2, 2007 in classes 9, 35, 38, 41 and 42;
- UK Trade Mark Registration No. UK00003172761 and (series of 2) registered on October 7, 2016 in classes 9, 35, 36, 38, 41 and 42;
- European Union Trade Mark Registration No. 018009871 registered on August 20, 2019 in classes 9, 35, 36, 38, 41 and 42;
- UK Trade Mark Registration No. UK00003038254 and (series of 2) registered on April 25, 2014 in classes 9, 35, 36 and 38;
- European Union Trade Mark Registration No. 014032163 registered on December 3, 2015 in classes 9, 35, 36, 38, 41 and 42.

The Complainant also operates, amongst others, a website at “www.virgin.com” since 2000 to promote the activities of the VIRGIN Group and its businesses, ventures and foundations (the “Virgin.com Website”). The Complainant’s website contains links to the specific web pages for most of the companies in the VIRGIN Group.

The disputed domain name was registered on May 6, 2020. The Complaint provided evidence that the website at the disputed domain name resolved to a website related to cryptocurrency trading.

5. Parties’ Contentions

A. Complainant

The Complainant contends the following:

First, that the disputed domain name contains the Complainant’s registered trademark, VIRGIN, in its entirety. The addition of “btc”, a commonly accepted abbreviation of the word “bitcoin”, is a non-distinctive descriptive reference indicating that the website provides information about cryptocurrencies, in particular Bitcoin. The disputed domain name will therefore be understood by the consumer as referring to a Bitcoin service offered by the Complainant. The addition of “btcby” to the Complainant’s registered trademark is therefore descriptive. The addition of descriptive or generic indications to the Complainant’s trademark does not prevent the disputed domain name from being confusingly similar to that trademark. The disputed domain name is therefore highly similar to the Complainant’s registered trademark VIRGIN.

Second, the website which can be found at the disputed domain name displays a logo in the top left-hand corner which incorporates the Complainant’s registered marks for the VIRGIN signature logo and the infinity logo. The website additionally makes use of a color palette which is highly similar to that used by Virgin Media, one of the Virgin Group businesses. The website offers customers to sign up to a Bitcoin investment service. In recent years, the Complainant asserts that it has been targeted by a number of Bitcoin and cryptocurrency related scams which seek to suggest that the Complainant, or its founder Richard Branson, is associated with or endorsing the scam, which is not the case. The Respondent is therefore not using the disputed domain name in connection with a bona fide offering of goods or services, or any other legitimate or noncommercial use. The Respondent hence has no rights or legitimate interests in the disputed domain name.

Finally, this use indicates that the purpose of registering the disputed domain name was either to disrupt the Complainant’s business, or to attempt to attract, for commercial gain, the Complainant’s genuine customers by creating a likelihood of confusion with the Complainant’s registered trademarks. The choice of the disputed domain name consisting of the Complainant’s identical mark VIRGIN together with “btcby”, combined with previous fraudulent Internet activity related to Bitcoin profit and the high-profile of the Virgin businesses and recognition of the Complainant’s trademarks VIRGIN and the infinity logo, shows that it is inconceivable that the Respondent was unaware of the Complainant prior to registering the disputed domain name. According to the Complainant, the Respondent clearly had a bad faith intention at the time of registering the disputed domain name, and the only use of the disputed domain name that the Complainant is aware of is also in bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the complainant must prove each of the following elements in respect of each disputed domain name:

(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.

A. Identical or Confusingly Similar

The disputed domain name consists of the Complainant’s trademark VIRGIN, the combination of the abbreviation “btc” and the word “by” as well as the generic Top-Level Domain (“gTLD”) “.com”. The gTLD is irrelevant here because it is a standard registration requirement. See section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The addition of ordinary meaning words to the Complainant’s trademark, here the common abbreviation “btc” which usually represents the term “bitcoin”, does not prevent a disputed domain name from being confusingly similar to that trademark. As section 1.8 of the WIPO Overview 3.0 explains:

“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.”

For these reasons, the Panel concludes that the disputed domain name is confusingly similar to the Complainant’s VIRGIN trademark in which it has sufficiently evidenced that it has rights.

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] of the dispute, [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.

There is no evidence in the record indicating that the Respondent has trademark rights or any other rights to support its adoption of the disputed domain name or that the Respondent has been commonly known by this name or address. The record shows that the disputed domain name’s use has been limited to enable the Respondent to establish a confusingly similar website in order to attract undue financial profit; this use does not demonstrate any bona fide offering of goods or services by the Respondent.

Besides, the Respondent has not filed any Response asserting any rights or legitimate interests.

In view of the above circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name, which remains unrebutted by the Respondent. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

The third circumstance reads as follows: “(iii) you have registered the [disputed] domain name primarily for the purpose of disrupting the business of a competitor;”

The fourth circumstance is as follows: “(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 disputed domain name was registered in 2020, years after the Complainant registered its VIRGIN trademark. The disputed domain name wholly incorporates the Complainant’s VIRGIN trademark and its supplemental elements lead the public to believe that the Complainant is active in the field of cryptocurrency, which is not the case, and attract Internet traffic to the Respondent. This all gives the Panel reason to find that the Respondent registered the disputed domain name in bad faith.

As sufficiently shown by the Complainant, the abusive use of a confusing website to fraudulently induce customers to believe they are dealing with the Complainant, is intentional and for the commercial gain of the Respondent himself. These facts fall within the circumstance described in paragraph 4(b)(iii) and (iv) of the Policy.

Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in 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 <btcbyvirgin.com> be transferred to the Complainant.

Daniel Kraus
Sole Panelist
Date: August 3, 2020

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