WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Francis Martin, MarinerTek
Case No. D2018-0784
1. The Parties
Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Burges Salmon LLP, United Kingdom.
Respondent is Francis Martin, MarinerTek of Eastlake, Ohio, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <virgingalactic.one> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 9, 2018. On April 9, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 10, 2018, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 Respondent of the Complaint, and the proceedings commenced on April 19, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 9, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 11, 2018.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on May 17, 2018. 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
Complainant is a company organized under the laws of the United Kingdom that belongs to the Virgin group of companies which is engaged in a diverse range of business sectors including travel & leisure, telecoms and media, music and entertainment, financial services and health and wellness.
Complainant has provided evidence that it is the registered owner of numerous trademarks relating to the designations “Virgin Galactic” as well as “Virgin” including, inter alia:
- Word mark VIRGIN GALACTIC, European Union Intellectual Property Office (“EUIPO”), Registration No.: 004756921, Registration Date: January 18, 2007, Status: Active;
- Word-/device mark VIRGIN GALACTIC, EUIPO, Registration No.: 004757217, Registration Date: October 23, 2006, Status: Active;
- Word-/device mark VIRGIN GALACTIC, United States Patent and Trademark Office (“USPTO”), Registration No.: 4682319, Registration Date: February 3, 2015, Status: Active;
- Word-/device mark “VIRGIN”, USPTO, Registration No.: 1591952, Registration Date: April 17, 1990, Status: Active.
Complainant, moreover, owns a number of domain names relating to the designation “Virgin Galactic”, e.g. <virgingalactic.com>, which redirects to Complainant’s official website at “www.virgingalactic.com” where Complainant promotes the business of Virgin Galactic, LLC, a spaceflight company within the Virgin group of companies.
Respondent, according to the WhoIs information for the disputed domain name, is a resident of Ohio/United States, who registered the disputed domain name on March 17, 2018. As of the time of the rendering of this decision, the disputed domain name resolves to a website at “www.virgingalactic.one” which announces “website coming soon!”.
Complainant requests that the disputed domain name be transferred to Complainant.
5. Parties’ Contentions
Complainant contends that the Virgin group of companies was originally established by its founder and chairman Sir Richard Branson in the United Kingdom back in 1970 and has grown significantly ever since in terms of its size, geographic reach and the industry in which it operates. There are nowadays more than 60 Virgin branded businesses with around 53 million customers worldwide, employing in excess of 69,000 people in 35 countries. The annual revenue is approximately GBP 16.6 billion and growing. Complainant’s VIRGIN trademark portfolio includes approximately 3,000 trademark applications and registrations in over 150 countries, spanning across the majority of the 45 classes of goods and services. Consequently, the VIRGIN brand has been promoted internationally for many years and enjoys a global reputation and has acquired substantial goodwill. Complainant also is the registered proprietor of over 5,350 domain names either consisting exclusively of the “Virgin” name or in which the “Virgin” name is used in combination with other words such as “galactic”, e.g. as in <virgingalactic.com>.
Complainant states that it is currently the target of significant fraudulent activity involving the VIRGIN GALACTIC brand in that domain names incorporating this trademark (or misspellings thereof) are being registered in order to send email correspondence aimed at defrauding targeted organizations into parting with goods and/or money with the belief that they are corresponding with “Virgin Galactic”.
Complainant submits that the disputed domain name is identical and/or confusingly similar to Complainant’s trademarks VIRGIN GALACTIC and VIRGIN as it incorporates them in full with a mere addition of the suffix “.one”. Moreover, Complainant asserts that Respondent has no rights or legitimate interests with respect to the disputed domain name since Complainant has not licensed or authorized Respondent to use the VIRGIN GALACTIC and VIRGIN trademarks in any way and there is no evidence that Respondent is using the disputed domain name in connection with a bona fide offering of goods or services, but simply to redirect to a generic holding webpage displaying the words “website coming soon!”. Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) given the worldwide reputation of Complainant’s trademarks VIRGIN GALACTIC and VIRGIN, it is highly unlikely that at the time of the registration of the disputed domain name Respondent was not aware of Complainant’s and/or the Virgin group of companies’ extensive reputation, particularly in view of the fact that recognition amongst the public of the VIRGIN brand in the United Kingdom stands at 99% in the United States, (2) Respondent, by registering the disputed domain name, has prevented Complainant from registering or using the disputed domain name which is associated with its own trademarks and has failed to provide any evidence that it is using, or has undertaken demonstrable preparations to use, the disputed domain name in connection with the genuine offering of goods and services and (3) by registering an identical domain name to Complainant’s VIRGIN GALACTIC trademark, Respondent intentionally attempted to attract, for commercial gain, Internet users to the disputed domain name by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement thereof.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, the Panel may draw such inferences as are appropriate from Respondent’s failure to submit a Response.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <virgingalactic.one> is identical to the VIRGIN GALACTIC trademark and at least confusingly similar to the VIRGIN trademark in both of which Complainant has rights.
The disputed domain name incorporates the VIRGIN GALACTIC as well as the VIRGIN trademark in their entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish that the disputed domain name is at least confusingly similar to a registered trademark (see, e.g., PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). The applicable Top-Level Domain in the disputed domain name, here “.one”, is viewed as a standard registration requirement and as such is generally disregarded under the first element confusing similarity test (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.11.1).
Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent has not been authorized to use Complainant’s VIRGIN GALACTIC and/or VIRGIN trademarks, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the name “Virgin Galactic” and/or “Virgin”. Finally, Respondent so far has merely used the disputed domain name to redirect to a so-called “under construction” website with no content other than the announcement “website coming soon!”. Previous UDRP panels, however, have recognized that the mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase, does not by itself automatically confer rights or legitimate interests in the disputed domain name (see WIPO Overview 3.0, section 2.10.1).
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate allegations or evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, Respondent has not met that burden.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
As a general rule, Panelists have found that the non-use of a domain name (including a blank or “coming soon” page) would not prevent a finding of bad faith under the doctrine of passive holding (see WIPO Overview 3.0, section 3.3). While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include e.g.: the degree of distinctiveness or reputation of Complainant’s mark, the failure of Respondent to submit a response or to provide any evidence of actual or contemplated good faith use, or the implausibility of any good faith use to which the domain name may be put.
In the present case, Complainant contends, and Respondent has not challenged these contentions, that both its VIRGIN GALACTIC and VIRGIN trademarks enjoy considerable reputation. This Panel has undertaken limited research within its powers set forth by paragraphs 10 and 12 of the Rules according to which a Google research for “Virgin Galactic” provides search results, the vast majority of which among the 50 top search results point exclusively to Virgin Galactic, LLC and its spaceflight business. The Panel, therefore, is willing to accept the plausibility of Complainant’s line of argumentation that both of Complainant’s trademarks VIRGIN GALACTIC and VIRGIN enjoy a considerable reputation worldwide and that Respondent most likely was aware of Complainant and its VIRGIN GALACTIC trademark when registering the disputed domain name. Respondent failed to submit any explanation as to why he still needed to rely on the inclusion of Complainant’s VIRGIN GALACTIC trademark in the disputed domain name, but rather decided to stay silent instead of responding to Complainant’s allegations set forth in the Complaint which was duly notified to Respondent on April 19, 2018. In the circumstances of this case, the Panel finds it more likely than not that Respondent aimed at targeting Complainant’s VIRGIN GALACTIC brand when registering the disputed domain name. To sum up, in the opinion of this Panel, Respondent’s overall conduct amounts to evidence of bad faith registration and use of the disputed domain name.
Accordingly, the Panel finds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).
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 <virgingalactic.one> be transferred to Complainant.
Stephanie G. Hartung
Date: May 29, 2018