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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. San Giovanni

Case No. D2017-0426

1. The Parties

The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”) represented by Stobbs IP Limited, United Kingdom.

The Respondent is San Giovanni of Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <virginamerica.space> is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 2, 2017. On March 2, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 Complainant submitted an amended Complaint on March 8, 2017.

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 proceeding commenced on March 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 31, 2017.

The Center appointed Sebastian M.W. Hughes as the sole panelist in this matter on April 6, 2017. 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

A. Complainant

The Complainant is a company incorporated in the United Kingdom and the owner of numerous registrations in jurisdictions around the world for the trade mark VIRGIN (the “VIRGIN Trade Mark”).

The Complainant is also the owner of several registrations in the United States of America (the “USA”) for the trade mark VIRGIN AMERICA (the “VIRGIN AMERICA Trade Mark”), the earliest registration (No. 3541731) having been registered since December 2, 2008.

The Complainant is the brand owner for the Virgin Group of Companies (the “Virgin Group”), which originated in 1970 when Richard Branson began selling music records under the VIRGIN Trade Mark. Since that date, the Virgin Group has expanded into a wide variety of businesses. As a result, the Virgin Group now comprises over 200 companies worldwide operating in 32 countries including throughout Europe and the USA. The number of employees employed by the Virgin Group is in excess of 40,000, generating an annual group turnover in excess of GBP 4.6 billion.

The Complainant uses the VIRGIN Trade Mark and the VIRGIN AMERICA Trade Mark (the “Trade Marks”) in relation to the world’s first commercial space flight programme.

B. Respondent

The Respondent appears to be an individual. As the Respondent provided incomplete information on the publicly available WhoIs for the disputed domain name, the place of residence of the Respondent is unknown.

C. The Disputed Domain Name

The disputed domain name was registered on October 27, 2016.

D. The Website at the Disputed Domain Name

The disputed domain name resolves to a noncommercial website which posts rambling conspiracy theories (the “Website”).

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical or confusingly similar to the Trade Marks, the Respondent has no rights or legitimate interests in respect of the disputed domain name, and the disputed domain name was registered and is being used in bad faith.

B. Respondent

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

6. Discussion and Findings

The Complainant must prove each of the three elements in paragraph 4(a) of the Policy in order to prevail.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has rights in the Trade Marks acquired through use and registration.

The disputed domain name comprises the Trade Marks in their entirety and is, excluding the generic Top-Level Domain (“gTLD”) “.space” (in accordance with previous UDRP decisions), identical to the VIRGIN AMERICA Trade Mark.

The Panel therefore finds that the disputed domain name is identical or confusingly similar to the Trade Marks.

Accordingly, the first element under paragraph 4(a) of the Policy has been made out.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of non-exhaustive circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent (as an individual, business, or other organization) has been commonly known by the disputed domain name even if the respondent has acquired no trade mark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.

The Complainant has not authorised, licensed, or permitted the Respondent to register or use the disputed domain name or to use the Trade Marks. The Panel finds on the record that there is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name, and the burden is thus on the Respondent to produce evidence to rebut this presumption.

The Respondent has failed to show that he or she has acquired any trade mark rights in respect of the disputed domain name or that the disputed domain name has been used in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name has been used in respect of the Website, a website which posts conspiracy theories; which does not offer any goods or services; and which makes no reference to the Trade Marks.

There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain name.

There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name. On the present record, it is not apparent to the Panel why the Respondent needed to register a domain name identical to the Complainant’s Trade Marks to host its Website; the absence of any such rationale may even support an inference of intent to unfairly profit from the Complainant’s reputation.

The Panel finds that the Respondent has failed to produce any evidence to rebut the Complainant’s prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name, and therefore finds that the requirements of paragraph 4(a)(ii) are met.

C. Registered and Used in Bad Faith

The Complainant submits that the conduct of the Respondent falls under each of the four non-exclusive sub‑paragraphs under paragraph 4(b) of the Policy.

The Complainant also submits that the Respondent is associated with 45,900 other domain names, many of which comprise other famous third party trade marks, or institutions of the government of the USA.

Given the notoriety of the Complainant and its Trade Marks; its publicly announced commercial space programme; the fact the disputed domain name is identical to the VIRGIN AMERICA Trade Mark and contains the gTLD “.space”; and given the undisputed evidence of the Respondent’s pattern of conduct in registering domain names comprising third party marks, the Panel concludes that the Respondent has registered the disputed domain name with the Complainant’s Trade Marks in mind and in order to prevent the Complainant from reflecting the Trade Marks in a corresponding domain name, paragraph 4(b)(ii) of the Policy.

The Panel does not find that sufficient evidence has been adduced to support findings of bad faith under paragraphs 4(b)(i), 4(b)(iii) and 4(b)(iv) of the Policy. However, the Panel concludes that the Respondent must have had the Complainant and its well-known Trade Marks in mind when registering the disputed domain name and, in all the circumstances, finds that bad faith has additionally been made out under the Panel’s general discretion.

For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is being used in bad faith, and the requirements of paragraph 4(a)(iii) have been made out.

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 <virginamerica.space> be transferred to the Complainant.

Sebastian M.W. Hughes
Sole Panelist
Dated: April 20, 2017

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