If Virgin Enterprises Limited (“Virgin”) was notably known by the French public as a megastore on the Champs Elysées, now permanently shut down; the company, on the contrary, is still very active in many different sectors such as travel, under the Virgin Voyages brand, or even in the mobile sector under the Virgin Mobile brand. As we all know, success is often followed by harm. Having detected the registration of domain names by a third party taking over its brands, namely <virgincruisevoyages.com>, <virginmediabiz.com>, <virginmobilewifi.com>, Virgin has filed an UDRP complaint against these names, July 23, 2020.
On the day the complaint was notified, July 27, the name <govirginvoyages.com> was registered and the applicant added it to his complaint. The expert reminds that a complaint can indeed cover several names, if they are registered by the same person or under the same name or under a common control.
In order to accept the request for consolidation, the expert takes in consideration the following elements:
* the names <govirginvoyages.com> and <virgincruisevoyages.com> that refer to identical sites and the same email contact;
* the registrant of the name <govirginvoyages.com> has the same first name as the registrant of of <virgincruisevoyages.com>, <virginmovilewifi.com> and <virginmediabiz.com>.
Thus, it seems possible to add a reserved name to a complaint after the filing.
Subsequently, the expert was able to conclude without difficulty that there was no legitimate interest of the defendant and bad faith. The defendant did not respond to the complaint.
All names resolved to sites copying those of Virgin and two of them, in particular, <virgincruisevoyages.com> and virginmobilewifi.com> were used in the context of fraud, aimed at “obtaining public information for commercial gain”. In addition, the registrar already used, in the past, other domain names related to Virgin’s brands. The expert said that “the use of some of the domain names involved in conducting an e-mail phishing scam is the type of illegal activity that is clearly considered to be the proof of bad faith”. This decision also highlights the need to be vigilant when mail servers – also known as “servers MX” – are set on a domain name. When such servers are set up, the reservee can send to anyb0ody e-mails from an address that includes the domain name, and endanger the company and its consumers; just checking if a website is in place on the names cybersquatted is not enough.
In this case, each single name was associated with a fake site and two of them had in addition a mail server that was carrying an e-mail fraud campaign. Thus, would be preferable to set up adequate surveillance on the company’s brands and to carefully analyze those, which are closest to the brand in order to take the right actions once the registration is detected.
Source: WIPO, Arbitration and Mediation Center, Oct. 23, 2020, aff. D2020-1921, Virgin Enterprises Limited v. Aladin Chidi, NA / Aladin Tg.