WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. Safaa Al Shams Technical Services LLC

Case No. D2021-0385

1. The Parties

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

The Respondent is Safaa Al Shams Technical Services LLC, Canada.

2. The Domain Name and Registrar

The disputed domain name <virginiwideband.com> 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 8, 2021. On February 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 8, 2021, 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 February 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 8, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 10, 2021.

The Center appointed Taras Kyslyy as the sole panelist in this matter on March 15, 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

The Complainant is a member of a group of companies that are collectively known as “the Virgin Group”. The Virgin Group was originally established by Sir Richard Branson in the UK in 1970. There are now over 60 VIRGIN branded businesses covering financial services, health & wellness, music & entertainment, telecommunications & media and travel & leisure, have between them over 53 million customers worldwide and employ more than 69,000 people in 35 countries with annual revenue of £16.6 billion. In 1999, the Complainant launched Virgin Mobile Telecoms Limited in the UK, offering telecommunications services under the brand VIRGIN MOBILE.

The Complainant owns numerous trademark registrations for marks comprising of VIRGIN word covering numerous jurisdictions, including, for instance:

- the UK trademark registration No. UK00003163121 for VIRGIN word mark, registered on July 29, 2016.

- International trademark registration No. 1117877 for VIRGIN MOBILE device mark, registered on January 19, 2012.

The Complainant has built up a considerable online presence and is the registered proprietor of over 5000 domain names consisting of or incorporating the VIRGIN mark. The Complainant has operated a website at “www.virgin.com” since 2000 to promote the activities of the Virgin Group.

The disputed domain name was registered on January 21, 2021 and resolves to a website prominently featuring the Complainant’s trademarks and mostly mocking the Complainant’s Virgin Mobile Canada Website (the “Relevant Website”).

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical or confusingly similar to the Complainant’s trademark. The disputed domain name is comprised of “virgin”, “i” and “wideband”, and therefore takes the entirety of the Complainant’s trademark VIRGIN and the entirety of the main distinctive verbal element of the Complainant’s trademark VIRGIN MOBILE. The terms “wideband” and “i” are understood by Internet users to be generic and descriptive indications and its addition in the disputed domain name is not sufficient to distinguish it from the Complainant’s well-known trademarks.

The Respondent has no rights or legitimate interests in the disputed domain name. The website under the disputed domain name copies substantial parts of the Complainant’s relevant official website including the Complainant’s trademarks and copyrighted materials. The website at the disputed domain name provides the email address “enquiry@virginwideiband.com”, which is likely to be used for phishing purposes. The Complainant has previously filed UDRP complaints against the domain names <virginwideband.com> and <virginwideiband.com> with the respective registrants’ details similar to the Respondent’s resulting in the transfer of the respective domain names to the Complainant. Given the high similarity between the Complainant’s trademarks and the disputed domain name, and the level of reputation in connection with telecommunications and mobile services, and that the Respondent’s website copies a substantial amount of the Complainant’s Relevant Website, it is highly likely that Internet users searching for the Complainant’s services would be deceived into thinking that the disputed domain name is operated by or otherwise connected to the Complainant. The confusion risk is increased by the fact that some of the links at the website at the disputed domain name redirect to the Complainant’s Relevant Website. The Respondent appears to have provided a false name for the disputed domain name, which further indicates lack of the legitimate interest or rights. The Respondent is clearly aware of the Complainant and its businesses as it has copied its Relevant Website. There is no other evidence that the Respondent has used or intends to use the disputed domain dame in connection with a bona fide offering of goods or services. The use of the disputed domain name is not fair or legitimate, and is done purely to misleadingly divert consumers or to tarnish the reputation that exists in the Complainant’s trademarks.

The disputed domain name was registered and is being used in bad faith. The Respondent is intentionally attempting to attract, likely for commercial gain, Internet users to the website at the disputed domain name and the unauthorized email address by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of its website and the unauthorized email address. The Respondent has a pattern of bad faith behavior as it is likely that it previously registered and used the domain names <virginwideband.com> and <virginwideiband.com> in bad faith. The fact that the Respondent provided a false name for the disputed domain name is a further indication that it was registered and is being used in bad faith. The Respondent was aware of the Complainant at the time of registering the disputed domain name.

B. Respondent

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

6. Discussion and Findings

A. Identical or Confusingly Similar

According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”), the applicable gTLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards gTLD “.com” for the purposes of the confusing similarity test.

According to section 1.7 of the WIPO Overview 3.0, in cases where a domain name incorporates the entirety of a trademark, the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that the disputed domain name incorporates the entirety of the Complainant’s trademark VIRGIN.

According to section 1.8 of the WIPO Overview 3.0, 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. The Panel finds that the addition of “iwideband” does not preclude a finding of confusing similarity.

The Panel further notes that according to section 1.15 of the WIPO Overview 3.0 the content of the website associated with the domain name is usually disregarded by panels when assessing confusing similarity under the first element. In some instances, panels have however taken note of the content of the website associated with a domain name to confirm confusing similarity whereby it appears prima facie that the respondent seeks to target a trademark through the disputed domain name. In the present case, the Panel finds that the content of the website associated with the disputed domain name allows it to conclude in favor of finding confusing similarity of the disputed domain name and the Complainant’s trademark.

Considering the above, the Panel finds the disputed domain name is confusingly similar to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.

Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain name.

The Respondent is not commonly known by the disputed domain name, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).

The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPO Case No. D2014-1875).

The disputed domain name redirects Internet users to a website with a logo similar to the Complainant’s and designed similarly to the Complainant’s website to make Internet users believe that they actually access the Complainant’s website. Past UDRP panels confirmed that such actions prove that a registrant has no rights or legitimate interests in a disputed domain name (see, e.g., Daniel C. Marino, Jr. v. Video Images Productions, et al., WIPO Case No. D2000-0598, Houghton Mifflin Co. v. The Weathermen, Inc., WIPO Case No. D2001-0211).

Noting the high risk of implied affiliation between the disputed domain name and the confusingly similar well-known trademark of the Complainant, the Panel finds that there is no plausible fair use to which the disputed domain name could be put that would not have the effect of being somehow connected to the Complainant (see, e.g., Instagram, LLC v. Super Privacy Service LTD c/o Dynadot / Zayed, WIPO Case No. D2019-2897).

Considering the above, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Given the level of reputation the Complainant has acquired in its VIRGIN trademarks in connection with telecommunications and mobile services, and the fact that the website to which the disputed domain name resolves copies a substantial amount of the Complainant’s Relevant Website, it is inconceivable that the Respondent coincidentally selected the disputed domain name without any knowledge of the Complainant and its trademark VIRGIN, which confirms the bad faith registration (see, e.g., Virgin Enterprises Limited v. David Okechi, WIPO Case No. D2020-2297).

Redirecting the disputed domain name confusingly similar to the Complainant’s trademark, to a website that copies substantial elements of the Complainant’s Relevant Website, including the Complainant’s trademark, is a clear indication that the Respondent intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the Respondents’ website (see, e.g., Virgin Enterprises Limited v. Kalu Tall and Abdul Umeh, WIPO Case No. D2020-2653).

According to section 3.2.2 of the WIPO Overview 3.0, further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark. In the present case, the Respondent shortly after registration of the disputed domain name incorporating the Complainant’s trademark placed a website being merely copy of the Complainant’s Relevant Website. Based on the balance of probabilities, and noting the Complainant’s submissions in the case file (see also section 5.A above), the Panel finds that registration of the disputed domain name demonstrates a pattern of yet another attempt to register and maintain confusingly similar domain names and websites orchestrated by the same person or group of persons. The Panel finds these confirm the bad faith.

Considering the above, the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case 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 disputed domain name, <virginiwideband.com> be transferred to the Complainant.

Taras Kyslyy
Sole Panelist
Date: March 18, 2021