WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Name Redacted
Case No. D2018-0970
1. The Parties
The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Burges Salmon LLP, United Kingdom.
The Respondent is Name Redacted of Hapeville, Georgia, United States of America (“United States”).1
2. The Domain Name and Registrar
The disputed domain name <virgingalanctic.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 2, 2018. On May 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 5, 2018, 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 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 the Respondent of the Complaint, and the proceedings commenced on May 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 28, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 29, 2018.
The Center appointed Theda König Horowicz as the sole panelist in this matter on June 12, 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
The Complainant is a subsidiary of the Virgin Group which was established by its founder and chairman Sir Richard Branson in the United Kingdom in 1970, when he started a business selling popular music records by mail order under the VIRGIN name. Since then the Virgin Group has grown significantly in terms of its size, geographic reach and the industries in which it operates. The Virgin Group is now engaged in a diverse range of business sectors ranging from Travel & Leisure, Telecoms & Media, Music & Entertainment, Financial Services and Health & Wellness, business sectors which are described at the official website “www.virgin.com”.
The Company Virgin Galactic was founded in 2004 by Sir Richard Branson and is a spaceflight company within the Virgin Group. Information on its activities can be found at the website of the domain name <virgingalactic.com>.
The Virgin Group of Companies also comprises Virgin Orbit, LLC which was founded in 2017 in the United States.
The Complainant is responsible for the ownership, management, licensing and protection of all intellectual property rights of the Virgin Group, including Virgin Orbit, LLC. The Complainant holds several trademark registrations worldwide incorporating the VIRGIN, VIRGIN ORBIT and VIRGIN GALACTIC names including:
- United Kingdom Trademark No. 1009534 registered on April 11, 1973 for the mark VIRGIN for “sounding records in the form of discs”.
- European Union Trademark No. 011991882 registered December 10, 2013 for the word mark VIRGIN for goods and services in classes 1, 2, 4, 6-8, 10, 13, 15, 17-30, 34, 37 and 40.
- European Union Trademark No. 004756921 registered on January 18, 2007 for the word mark VIRGIN GALACTIC for goods and services in classes 12, 16, 25, 28 and 39.
The Complainant also owns several domain name registrations, including <virgin.com>, <virginorbit.com> and <virgingalactic.com>.
The Respondent registered the disputed domain name on March 7, 2018. It resolves to a webpage displaying an “unknown host” error message.
It was brought to the Complainant’s attention since the disputed domain name was used in fraudulent email correspondence being sent from, and/or citing, an email address associated with the disputed domain name.
5. Parties’ Contentions
The Complainant notes that the disputed domain name has been falsely registered under the address of one of the Virgin Group companies, by an unknown third party without the Complainant’s consent.
The Complainant submits that the disputed domain name is identical and/or confusingly similar to the Complainant’s trademarks as it incorporates the Complainant’s VIRGIN and VIRGIN GALACTIC trademarks in full, save that it incorporates the letter “n” and the suffix “.com”. The misspelling of “galactic” should be discounted.
The Complainant further states that the Respondent cannot demonstrate any circumstances that would evidence rights or legitimate interests in the disputed domain name. No information suggests a legitimate right to use the Complainant’s VIRGIN and VIRGIN GALACTIC trademarks, particularly since the disputed domain name has been used for fraudulent purposes. Furthermore, there is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services.
Finally the Complainant underlines that the disputed domain name was used for an email scam which was designed to mislead the recipient into wrongly believing that they are corresponding with a representative of Virgin Orbit and/or Virgin Galactic. The disputed domain name was in particular registered primarily for the purpose of disrupting the business of the Complainant, Virgin Galactic and/or Virgin Orbit. The disputed domain name was thus used as an instrument of fraud, in order to take advantage of the tremendous goodwill and reputation of the VIRGIN trademarks which have been used extensively for several types of businesses.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Under the Policy, in order to prevail, a complainant must prove the following three elements for obtaining the transfer of a domain name:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) that the respondent has no rights or legitimate interests in the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has shown it has trademark rights in the names VIRGIN, VIRGIN ORBIT and VIRGIN GALACTIC.
The trademark VIRGIN is reproduced in its entirety in the disputed domain name. Furthermore, the slight misspelling of the word GALACTIC (“galanctic” instead of “galactic”) is not significant to remove the confusing similarity with the VIRGIN and VIRGIN GALACTIC trademarks.
The Panel therefore concludes that the disputed domain name is confusingly similar to the Complainant’s marks.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(1) the use of the domain name in connection with a bona fide offering of goods and services;
(2) being commonly known by the domain name; or
(3) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
The Panel finds that the Complainant has made a prima facie case showing that the Respondent has no rights or legitimate interests in the disputed domain name.
Indeed, the Complainant has shown that the disputed domain name was used for an email scam and therefore made a prima facie case out against the Respondent.
Consequently, the burden of production shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights or legitimate interests in the disputed domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
The Respondent submitted no reply to the case against it. No evidence is contained in the case file which would evidence that the Respondent has rights or legitimate interests in the disputed domain name.
The Panel thus finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The third element requires that the respondent registered and is using the disputed domain name in bad faith. See the Policy, paragraph 4(a)(iii). Paragraph 4(b) of the Policy enumerates non-exhaustive circumstances in which evidence of bad faith registration and use can be found. Evidence of the registration and use of a domain name in bad faith may include the following:
(i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that he has engaged in a pattern of such conduct; or
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to his web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of his web site or location or of a product or service on his web site or location.
The disputed domain name was used by the Respondent in order to send fraudulent emails, notably by giving the impression that the emails were sent by Virgin Galactic, a company actually belonging to the Virgin Group, which is a clear cut example of bad faith registration and use.
Furthermore, the Respondent appears to be illegitimately using the name and address of Virgin Orbit, LLC, another company of the Virgin Group.
As a matter of fact, it is public knowledge that the Virgin Group of companies is active in very diversified fields. The use of Complainant’s well-known VIRGIN trademark and of its VIRGIN ORBIT and VIRGIN GALACTIC trademarks was obviously done in order to profit from the Complainant’s goodwill in the VIRGIN trademarks. This is constitutive of a bad faith use.
The silence of the Respondent within these proceedings is also suggestive of bad faith.
Considering the above-mentioned circumstances, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(iii) of the Policy.
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 <virgingalanctic.com> be transferred to the Complainant.
Theda König Horowicz
Date: June 29, 2018
1 The Panel has decided to redact the name of the named Respondent, adopting the criterion of the panel in Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788 ("The Panel has decided that no purpose is to be served by including the named Respondent in this decision, and has therefore redacted its name from the caption and body of this decision. The Panel has, however, attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name that includes the named Respondent, and has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding. However, the Panel has further directed the Center, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that Annex 1 to this Decision shall not be published based on exceptional circumstances").