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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. WhoisSecure, WhoisSecure / Eric Mboma

Case No. D2021-1731

1. The Parties

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

The Respondent is WhoisSecure, WhoisSecure, United States of America (“United States”) / Eric Mboma, Canada.

2. The Domain Name and Registrar

The disputed domain name <virginwidebandi.com> is registered with OwnRegistrar, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 2, 2021. On June 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 3, 2021, 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 7, 2021 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 11, 2021.

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 14, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 4, 2021. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on July 13, 2021.

The Center appointed Beatrice Onica Jarka as the sole panelist in this matter on July 27, 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”, established by Sir Richard Branson in the United Kingdom in 1970 as a business selling popular music records by mail order under the VIRGIN name.

There are now over sixty VIRGIN branded businesses that span a diverse range of sectors covering Financial Services, Health & Wellness, Music & Entertainment, People & Planet, Telecommunications & Media and Travel & Leisure, with annual revenue is GBP16.6 billion.

The Complainant is responsible for registering and maintaining registrations for trade marks containing the VIRGIN name and VIRGIN signature logo and licensing these rights to the VIRGIN businesses. The Complainant owns a substantial portfolio of approximately 3,500 trade mark applications and registrations in over 150 countries covering the majority of the 45 Nice classes of goods and services.

In particular, the Complainant owns the following trade mark registrations (‘the Complainant’s Registered Marks’):

- UK Trade Mark Registration No. UK00003163121 for the mark VIRGIN in classes 3, 5, 9, 11, 12, 14, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44, and 45;
- European Union (“EU”) Trade Mark Registration No. 015255235 for the mark VIRGIN in classes 3, 5, 9, 11, 12, 14, 16, 31, 32, 35, 36, 38, 39, 41, 42, 43, 44,and 45;
- Australia, Bahrain, Egypt, EU, Morocco, Oman, Russian Federation, Ukraine and United States Designations of International Trade Mark Registration No. 1141309 for the mark VIRGIN in classes 9, 35, 36, 38, and 41;
- UK Trade Mark Registration No. UK00003163127 for the mark (the “VIRGIN Signature Logo”) in classes 3, 5, 9, 11, 12, 14, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44, and 45.
- EU Trade Mark Registration No. 015404841 for the mark (the “VIRGIN Signature Logo”) in classes 3, 5, 9, 11, 12, 14, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44, and 45;
- UK Trade Mark Registration No. UK00002365570 for the mark VIRGIN MOBILE in classes 9, 38.
- Egypt, Oman, Russian Federation and Ukraine Designations of International Trade Mark Registration No. 1117877 for the mark (the “VIRGIN MOBILE Logo”) in classes 09, 35, 36, and 38.
- Canada Trade Mark Registration No. 1013044 in classes 9, 35, 36 and 38 (the “VIRGIN MOBILE Logo - greyscale”).

In 1999, the Complainant launched Virgin Mobile Telecoms Limited in the UK, offering telecommunications services under the brand VIRGIN MOBILE, spreading in numerous other territories, including Australia, Canada, Chile, Colombia, France, India, Mexico, Poland, Saudi Arabia, South Africa and United Arab Emirates.

The Respondent registered the disputed domain name on May 12, 2021. The disputed domain name used to resolve to a website copying text, content, images and layout of the website Virgin Mobile of the Complainant.

5. Parties’ Contentions

A. Complainant

By the Complaint, the Complainant contends that:

- The disputed domain name is comprised of “virgin”, “wideband” and “i”, and therefore takes the entirety of the Complainant’s registered mark VIRGIN, the entirety of the verbal element of the Complainant’s registered mark VIRGIN signature and the entirety of the main distinctive verbal element of the Complainant’s registered mark VIRGIN MOBILE and VIRGIN MOBILE logo.

- The term “wideband” can refer to a particular capability of telecommunications systems and is perceived by a consumer as a generic term describing an aspect of a telecommunications service.

- The element “i” is a commonly used prefix that consumers are accustomed to seeing used in relation to products or services in the IT and technology sectors as part of domain names or terms.

- The general consumer and Internet user will understand the disputed domain name to be the online location where information about wideband telecommunications services provided by the Complainant and the VIRGIN MOBILE businesses can be found.

- The disputed domain name resolves to a website (the “"www.virginwidebandi.com” Website”) that copies a substantial amount of the text, content, images and layout of the homepage of the Virgin Mobile Canada Website. The disputed domain name website reproduces without authorization marks identical or highly similar to the Complainant’s registered marks and purports to provide information on mobile phone services and to provide webpages to access online accounts related to mobile phone services.

- The text and images of the disputed domain name website and the Complainant’s registered marks VIRGIN signature and VIRGIN MOBILE logo are works in which copyright subsists.

- Some of the links on the disputed domain name do not work, and some redirect to the Virgin Mobile Canada website.

- In the Complainant’s experience, it is very likely that the disputed domain name will be used for phishing purposes, and it is likely that any communications sent by members of the public to the unauthorized email address will be used to obtain sensitive personal information, for illegitimate commercial gain.

- There are similarities between the website to which the disputed domain name resolves and the websites to which several domain names (<virginwideband.com>, <virginwideiband.com> and <virginiwideband.com>) which had been subject to UDRP proceedings won by the Complainant resolved to.

- Given the similarities of the disputed domain name and the said domain names, the Complainant is of the view that the disputed domain name is operated by the same entity that operated the websites at <virginwideband.com>, <virginwideiband.com> and <virginiwideband.com>.

- The domain names <virgindigitalmedia.com>, <virgincrowdcube.com> and <virgincarbonwarroom.com>, with the WhoIs details for which all listed “Eric Mboma” as the name of the Registrant and the email ericmboma12@[...].com as the Registrant email address, have all been used in relation to websites that copy content from other websites operated by or connected to companies or organizations within the Virgin Group, without the Complainant’s authorization.

- Given the identity of the registrant name and email address contained in the WhoIs for the disputed domain name and the domain names <virgindigitalmedia.com>, <virgincrowdcube.com> and <virgincarbonwarroom.com>, and the similarity of the nature of the use of these domains, it is very likely that the disputed domain name are under the same control as <virgindigitalmedia.com>, <virgincrowdcube.com> and <virgincarbonwarroom.com>.

- It is highly likely that Internet users searching for the Complainant’s genuine mobile and telecommunications services will be deceived into thinking that the disputed domain name is operated by or otherwise connected to the Complainant or a VIRGIN MOBILE business.

- The redirection of some of the links to the Virgin Mobile Canada website will add to this confusion on the part of Internet users and reinforce the deception that the disputed domain name is connected to or operated by the Complainant. This will divert Internet users from the Virgin Mobile businesses, which will be disruptive to the Complainant’s and the VIRGIN MOBILE businesses.

- Such disruption could create a negative perception on the part of consumers around the services offered by the Complainant and could tarnish the reputation that exists in the Complainant’s registered marks.

- This use and the fact the Respondent, or a linked entity, has in the past been found to have lacked legitimate interest or rights in connection with very similar domain names used in an identical manner, and in relation to the domains <virgindigitalmedia.com>, <virgincrowdcube.com> and <virgincarbonwarroom.com>, indicates that the Respondent has no legitimate interests or rights in the disputed domain name, and is evidence of a pattern of behavior of registering domain names without any such interests or rights.

- The disputed domain name is being used to resolve to a website that copies a significant amount of the Virgin Mobile Canada website and reproduces marks identical to the Complainant’s registered marks and to provide links to locations to login to online accounts in relation to VIRGIN MOBILE, which represent a bad faith use.

- It is clear that by using the disputed domain name the Respondent is intentionally attempting to attract, likely for commercial gain, Internet users to the disputed domain name website and the unauthorized email address by creating a likelihood of confusion with the Complainant’s registered marks as to the source sponsorship, affiliation, or endorsement of the disputed domain name.

- Furthermore it appears the Respondent has a pattern of bad faith behavior as it is likely that it previously registered and used the domain names <virginwideband.com>, <virginwideiband.com>, <virginiwideband.com> in bad faith, and registered and used the domain names <virgindigitalmedia.com>, <virgincrowdcube.com< and <virgincarbonwarroom.com> also in bad faith. This adds to the evidence that the disputed domain name has also been registered and is being used in bad faith.

- Given the significant reputation of the Complainant’s registered marks and of the VIRGIN MOBILE businesses and the fact that the disputed domain name website has copied the Virgin Mobile Canada website and reproduces marks identical to those of the Complainant, it is clear that the Respondent was aware of the Complainant at the time of registering the disputed domain name.

B. Respondent

Despite of being properly notified, the Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the VIRGIN trademark and VIRGIN signature logo trade marks acquired through use and registration.

The disputed domain name is confusingly similar to the VIRGIN trademark and VIRGIN signature logo trade mark of the Complainant, as it reproduces the entirety of the Complainant’s registered mark VIRGIN, the entirety of the verbal element of the Complainant’s registered VIRGIN signature trade mark and the entirety of the main distinctive verbal element of the Complainant’s registered mark VIRGIN MOBILE and VIRGIN MOBILE logo, with the adjunction of two descriptive terms: “wideband” and “i”.

The Panel agrees with the Complainant that the term “wideband” can refer to a particular capability of telecommunications systems and is perceived by a consumer as a term describing an aspect of a telecommunications service, while the element “i” is a commonly used prefix that consumers are accustomed to seeing used in relation to products or services in the IT and technology sectors as part of domain names or terms. However, the presence in the disputed domain name of the main verbal element of the Complainant’s registered marks VIRGIN, VIRGIN signature logo, VIRGIN MOBILE and VIRGIN MOBILE logo is sufficient for finding a of confusing similarity under the first element. Where a relevant trade mark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8).

The Panel therefore, finds that the disputed domain name is confusingly similar to the Complainant’s trade marks and the first element under of paragraph 4(a) of the Policy is therefore established.

B. Rights or Legitimate Interests

It is common practice under the UDRP that in order to establish the second element of the Policy, the Complainant has to show that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes a prima facie showing, the burden of production shifts to the Respondent (see WIPO Overview 3.0, section 2.1).

In these proceedings, this Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and such showing has not been rebutted by the Respondent, as it did not reply to the Complainant’s contentions.

The disputed domain name resolves to the “www.virginwidebandi.com” Website that copies a substantial amount of the text, content, images and layout of the homepage of the Virgin Mobile Canada Website. The Website reproduces without authorization marks identical or highly similar to the Complainant’s registered marks and purports to provide information on mobile phone services and to provide webpages to access online accounts related to mobile phone services.

The Panel agrees that the text and images on the Website are reproducing the Complainant’s registered marks VIRGIN signature and VIRGIN MOBILE logo, and this cannot be considered as a use in connection with a bona fide offering of goods or services.

Moreover, considering the fact that some of the links available on the Website redirect to the Virgin Mobile Canada website, this Panel finds that it is very likely that the disputed domain name will be used for phishing purposes, and even more likely that any communications sent by members of the public to the unauthorized email address will be used to obtain sensitive personal information, for illegitimate commercial gain.

Such use of the disputed domain name, accordingly, cannot represent a legitimate noncommercial or fair use of the disputed domain name. On the contrary, the Respondent’s behavior shows a clear intent to obtain an unfair commercial gain, with a view to misleadingly diverting consumers, as the Respondent reproduced in the disputed domain name the Complainant’s well known trade marks.

In view of all the above elements, in the opinion of this Panel, the Complainant has sufficiently demonstrated that the Respondent lacks any rights or legitimate interests in the disputed domain name, and consequently, the second element of paragraph 4(a) of the Policy is therefore established.

C. Registered and Used in Bad Faith

The circumstances of this case and the submissions of the Complainant fully are, in the opinion of this Panel, relevant evidence for the bad faith of the Respondent in registering and using the disputed domain name.

The full reproduction of the Complainant’s registered marks in the disputed domain name, the redirection of some of the links available on the Website to the Virgin Mobile Canada website reinforce the deception that the disputed domain name is connected to or operated by the Complainant and will divert Internet users from the VIRGIN MOBILE businesses.

In addition, the fact that the same Respondent has in the past been found to have registered and used in bad faith similar domain names (i.e. <virgindigitalmedia.com>, <virgincrowdcube.com> and <virgincarbonwarroom.com>) indicates further a pattern of behavior of the Respondent in registering domain names in bad faith. See Virgin Enterprises Limited v. Domain Administrator, See PrivacyGuardian.org / Eric Mboma, WIPO Case No. D2021-0406; Virgin Enterprises Limited v. Domain Administrator, See PrivacyGuardian.org / Eric Mboma, WIPO Case No. D2021-1161 and Virgin Enterprises Limited v. Domain Administrator, PrivacyGuardian.org / Eric Mboma, WIPO Case No. D2021-0461.

Finally, by using the disputed domain name in this way, the Respondent is intentionally attempting to attract, likely for commercial gain, Internet users to the Website and to the unauthorized email address, by creating a likelihood of confusion with the Complainant’s registered marks as to the source sponsorship, affiliation, or endorsement of the disputed domain name.

All the above circumstances, which were not rebutted by the Respondent demonstrate for this Panel that the disputed domain name was registered and is being used in bad faith as described under paragraphs 4(b)(iv) and 4(b)(ii) of the Policy.

The Panel, therefore, finds that the disputed domain name is registered and is being used in bad faith and the third element under paragraph 4(a) of the Policy is therefore established.

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 <virginwidebandi.com> be transferred to the Complainant.

Dr. Beatrice Onica Jarka
Sole Panelist
Date: August 10, 2021

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