Virgin Enterprises Limited v ChavezTheresa

WIPO Case No. D2024-0433

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. ChavezTheresa

Case No. D2024-0433

1. The Parties

The Complainant is Virgin Enterprises Limited, United Kingdom (“UK”), represented by AA Thornton IP LLP,

UK.

The Respondent is ChavezTheresa, United States of America (“US”).

2. The Domain Name and Registrar

The disputed domain name <virgin-casino.one> is registered with Dynadot Inc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 30, 2024. On January 31, 2024, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verif ication response disclosing registrant and contact information for the disputed domain name, which differed from the named Respondent (Redacted for Privacy) and contact information in the Complaint. The Center sent an email communication to the Complainant on February 1, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant f iled an amendment to the Complaint on February 5, 2024.

The Center verif ied that the Complaint together with the amendment to the Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on February 6, 2024. In accordance with the Rules, paragraph 5, the due date for Response was February 26, 2024. The Respondent did not submit any response. Accordingly, the Center notif ied the Respondent’s default on February 27, 2024.

The Center appointed Pablo A. Palazzi as the sole panelist in this matter on March 4, 2024. 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.

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4. Factual Background

The Complainant is a part of the Virgin Group, a British multinational venture capital conglomerate founded in 1970. The Complainant’s business spans a diverse range of sectors covering f inancial services, health and wellness, music, gaming and entertainment, people and planet, telecommunications and media, travel and leisure, and space. The Complainant has over 50 million customers worldwide and employs more than 60,000 people across f ive business sectors and f ive continents.

The Complainant is responsible for registering and maintaining registrations for trademarks containing the “Virgin” name and “Virgin” signature logo and licensing these rights to its businesses. The Complainant owns a substantial portfolio of approximately 3,500 trademark applications and registrations in over 150 jurisdictions covering the majority of the 45 Nice classes of goods and services.

In particular, the Complainant owns the following trademark registrations:

- UK Trademark 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, f iled May 5, 2016, registered July 29, 2016;

- European Union Trademark Registration No. 015415061 for the VIRGIN Signature Logo in classes 1, 2, 4, 6, 7, 8, 10, 13, 15, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 34, 37, 40 f iled May 5, 2016, and registered September 26, 2016;

- US Trademark Registration No. 4951766 for the mark VIRGIN CASINO in class 41 f iled 16 October 2013 and registered May 3, 2016;-UK Trademark Registration No. UK00003664585 for the VIRGIN Games Diamond Logo in class 9, 38, 41, and 42, filed 5 July 5, 2021, and registered December 24, 2021.

The disputed domain name was registered on November 17, 2023, and resolves to a website that purports to of fer online gaming, betting and casino services using the Complainant’s trademarks and logo without his authorization.

5. Parties’ Contentions
A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain name.

Notably, the Complainant contends that:

- the disputed domain name is confusingly similar to its trademarks;
- the Respondent has no rights or legitimate interests in respect of the disputed domain name;

- the Respondent has registered and is using the disputed domain name in bad faith.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, a complainant to succeed must satisfy the panel that:

(i)        the disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights;

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(ii)       the respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii)      the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the f irst element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively 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 has shown rights in respect of a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The entirety of the Complainant’s VIRGIN CASINO and the VIRGIN trademarks are reproduced within the disputed domain name. In particular, the Panel finds that the addition of the hyphen between “virgin” and “casino” does not prevent a finding of confusing similarity, since the trademarks are readily recognizable within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the trademark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

The Panel f inds the f irst element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name.

Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is of ten primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisf ied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain name such as those enumerated in the Policy or otherwise.

Panels have held that the use of a domain name for illegal activity, e.g., impersonation/passing off, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The Panel f inds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

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In the present case, the Panel notes that:

- The Complainant has been operating in the market for several decades and its trademarks are well
known.

- The disputed domain name reproduces the Complainant’s VIRGIN and VIRGIN CASINO trademarks in
their entirety.

- The disputed domain name was only registered on November 17, 2023.

- The disputed domain name resolves to a website that purports to of fer online gaming, betting and casino services using the Complainant’s trademarks and logo without his authorization. In particular, the disputed domain name uses the VIRGIN, VIRGIN CASINO and VIRGIN CASINO ONE trademarks of the Complainant, in several parts of the website.

Panels have held that the use of a domain name for illegal activity like impersonation/passing off constitutes bad faith. WIPO Overview 3.0, section 3.4. Having reviewed the record, the Panel f inds the Respondent’s registration and use of the disputed domain name constitutes bad faith under the Policy.

The Panel concludes that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 the Respondent’s web site or location or of a product or service on the Respondent’s web site or location. Paragraph 4(b)(iv) of the Policy, and

WIPO Overview 3.0, section 3.1.4.

The Panel f inds 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 disputed domain name <virgin-casino.one> be transferred to the Complainant.

/Pablo A. Palazzi/
Pablo A. Palazzi
Sole Panelist
Date: March 18, 2024