31 May 2016

Virgin avoids being derailed by cybersquatter

Multinational company the Virgin Group has recovered a domain name that is confusingly similar to its trademark.

The domain, virgintrains.online, was registered in February 2016, 18 years after the Virgin Group registered its ‘Virgin Trains’ trademark in the UK.

The Virgin Group established Virgin Trains in 1996.

In April, the Virgin Group filed a complaint under the Uniform Domain Name Dispute Resolution Policy with the Geneva-based World Intellectual Property Organization (WIPO).

The Virgin Group argued that the respondent, named WhoisGuard, had used its mark in connection with the company, that the domain is confusingly similar to its mark, that the respondent has no rights or legitimate interests in it, and that the respondent is using the domain in bad faith.

The respondent did not reply to the complaint.

In a decision dated May 23, but published yesterday, May 30, WIPO panellist Clive Duncan Thorne handed the Virgin Group the domain.

He said that it was confusingly similar to the group’s trademark as the disputed domain name “comprises the entirety of the complainant’s trademark” with the addition of “.online”.

Further, he referred to a screenshot sent by the Virgin Group where it showed that the respondent was not offering bona fide goods or services.

He also said that the domain is being used in bad faith because the website contains many “references” to the Virgin Trains brand and “has the look and feel” of an official Virgin Trains website.

Thorne also said the site contains an unauthorised advertisement for Virgin Trains which automatically redirects users to the group’s official website, therefore causing confusion.

The decision is available here.

This was first published on  Trademarks and Brands Online.

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