WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Eric Johnson, Eric Johnson Group
Case No. D2019-0093
1. The Parties
The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland (the “United Kingdom”), represented by A. A. Thornton & Co., United Kingdom.
The Respondent is Eric Johnson, Eric Johnson Group of Edgewood, Maryland, United States of America (the “United States”).
2. The Domain Name and Registrar
The disputed domain name <virgiingalactic.com> (the “Disputed Domain Name”) 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 January 16, 2019. On January 17, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 19, 2019, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant, 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 January 21, 2019. In accordance with the Rules, paragraph 5, the due date for Response was February 10, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 11, 2019.
The Center appointed Ada L. Redondo Aguilera as the sole panelist in this matter on February 19, 2019. 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 in this administrative proceeding is Virgin Enterprises Limited, a company incorporated under Company Registration No. 01073929 under the laws of England and Wales.
The Complainant is a member of a group of companies that are collectively known as “the Virgin Group”. The Virgin Group was originally 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 operations of the Virgin Group have grown significantly.
The Complainant owns the trademarks VIRGIN and VIRGIN GALACTIC registered in many countries of the world, including the United Kingdom and the United States:
- United Kingdom trademark Registration No. 3187698 for the mark VIRGIN GALACTIC filed on September 26, 2016 in classes 12, 16, 25, 28 and 39;
- European Union trademark Registration No. 4756921 for the mark VIRGIN GALACTIC filed on December 1, 2005 in classes 12, 16, 25, 28 and 39;
- United States trademark Registration No. 4481359 for the mark VIRGIN GALACTIC filed on January 20, 2010 in classes 12, 16, 18, 25, 28 and 39;
- European Union trademark Registration No. 15255235 for the mark VIRGIN filed on June 3, 2013 in classes 3, 5, 9, 11, 12, 14, 16, 31, 32, 35, 36, 38, 39, 41, 42, 43, 44, 45; and
- United States trademark Application No. 87641469 for the mark VIRGIN filed on October 11, 2017 in classes 12, 35, 37, 39 and 40.
The Virgin Galactic space program and its various achievements and milestones are frequently documented in the media. In 2011, Sir Richard Branson was awarded the ISTA Prize by the International Space Transport Association in The Hague for his pioneering achievements in the development of suborbital transport systems with Virgin Galactic. NASA awarded Virgin Galactic a contract in 2015 to put more than a dozen satellites into orbit using the LauncherOne vehicle developed by Virgin Galactic’s sister company Virgin Orbit.
The Complainant has built up a considerable online presence and is the registered proprietor of over 5,000 domain names consisting of, or incorporating the Virgin mark. The Complainant has operated a website at “www.virgin.com” since 2000 to promote the activities of the VIRGIN Group and its businesses, ventures and foundations and the Virgin Galactic program operates the official website: “www.virgingalactic.com”.
The Disputed Domain Name <virgiingalactic.com> was registered on October 24, 2018.
The Respondent is Eric Johnson, Eric Johnson Group, who in these proceedings has not presented a response.
5. Parties’ Contentions
The Complainant has asserted that the three elements required under paragraph 4(a) of the Policy for the transfer of the Disputed Domain Name are present in this case.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has established that it has rights in the registered trademarks VIRGIN and VIRGIN GALACTIC.
The Disputed Domain Name incorporates the entirety of the Complainant’s trademarks VIRGIN and VIRGIN GALACTIC.
In this case the Disputed Domain Name is comprised of “virgiin” and “galactic”, with no other added elements, and so it is almost identical to the Complainant’s trademarks VIRGIN GALACTIC, save for the fact that it contains an obvious misspelling: “virgiin”. This typographical error would easily be made and not noticed by Internet users.
Accordingly, the Panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s trademarks VIRGIN GALACTIC and VIRGIN. As previously noted, the Disputed Domain Name includes a misspelling of the word “virgin”, i.e. with “virgiin”. This typographical misspelling does not prevent a finding of confusing similarity between the Disputed Domain Name and the Complainant’s trademarks VIRGIN GALACTIC and VIRGIN. This opinion has already been recognized in other cases involving the Complainant, for example: Virgin Enterprises Limited and Virgin Limited Edition v. Moore Williams, WIPO Case No. D2018-2210: “The Complainant Virgin Enterprises indisputably holds registered VIRGIN, VIRGIN ATLANTIC, and VIRGIN UNITE trademarks. The Domain Name <virginatlancticairways.com> is a clear case of ‘typosquatting’ with the VIRGIN ATLANTIC mark, interposing an additional letter ‘c’, and also adding the generic word ‘airways’. The generic addition does not avoid a finding of confusing similarity, especially as the trademark is recognizable in the Domain Name and the added word is also in the name of the Complainant’s subsidiary Virgin Atlantic Airways Limited. As in most cases, the generic Top-Level Domain (‘gTLD’) ‘.com’ is not a distinguishing feature. Id. Thus, the Panel finds the Domain Name <virginatlancticairways.com> confusingly similar with the VIRGIN and VIRGIN ATLANTIC trademarks. Similarly, the Domain Name <virginunitefoundation.com> is confusingly similar to the VIRGIN UNITE trademark. The mark is incorporated in its entirety in the Domain Name, adding the generic term ‘foundation’, which does not avoid confusing similarity”.
In conclusion, the Disputed Domain Name incorporates the Complainant’s trademark in their entirety and the typographical error “virgiin” does not avoid confusing similarity. See section 1.9 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).Therefore, the Panel concludes that the first element of the Policy has been established.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish its rights or legitimate interests in the Disputed Domain Name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Paragraph 4(a)(ii) of the Policy requires the Complainant to establish that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The consensus view among UDRP panels is that where a complainant makes out a prima facie case that the Respondent lacks rights or legitimate interests, the burden of production on this element shifts to the Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. See section 2.1 of WIPO Overview 3.0. In this case the Respondent did not file a response, therefore it did not rebut the Complainant’s prima facie case regarding the lack of rights or legitimate interests.
The Complainant contends that it is not affiliated or associated with the Respondent in any way.
The Complainant also argues that it has not authorized or given any license to the Respondent to register, use or include its trademarks VIRGIN or VIRGIN GALACTIC in a domain name. Also, the Complainant established that the Respondent is not commonly known by the Disputed Domain Name nor the name Virgin or Virgin Galactic.
Based on the record, the Panel finds that the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services, or any legitimate non commercial or fair use.
The Complainant presented as evidence an email sent on January 6, 2019 to a member of a United States company from the email address “[…]@virgiingalactic.com”. The email purports to be from the Supply Chain Director of Virgin Galactic LLC and mentioned a connection with Virgin Orbit regarding a price request, and fraudulently uses the real name of Virgin Orbit’s actual Supply Chain Director. According to the Complainant neither the e-mail nor the use of the Disputed Domain Name by the Respondent is authorized by, or connected in any way, to Virgin Galactic LLC, Virgin Orbit Company that is not part of this proceeding but is mentioned in the email or the Virgin Group.
This is a clear fraudulent attempt to deceive the recipient into communicating with the Respondent, on the pretense that the Respondent is from a globally recognized space project and highly renowned brand. This use strongly indicates that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
The phishing email included a request for details to set up an account with the recipient. The sender of the phishing email tried to extract personal and sensitive information from the recipient for fraudulent financial gain.
For all the above-mentioned reasons the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Therefore, the Panel finds that the second element of the Policy is also fulfilled.
C. Registered and Used in Bad Faith
In this case the Panel finds that the Respondent has registered the Disputed Domain Name, which is almost identical to the Complainant’s registered trademarks VIRGIN and VIRGIN GALACTIC in bad faith. The Disputed Domain Name does not display to an active webpage, but the Complainant proved that the registration of the Disputed Domain Name was therefore solely for the purpose of creating and sending fraudulent emails.
The Panel also finds that the use of the Disputed Domain Name to send the phishing email impersonating someone employed as the Supply Chain Director of Virgin Galactic LLC is a fraudulent use. In addition, this fraudulent use proves that the Respondent clearly had an intention of bad faith at the time of registering the Disputed Domain Name.
As another panelist stated in Datamatics Global Services Limited, CIGNEX Datamatics Technologies Limited v. Registration Private, Domains By Proxy, LLC / Avinash Gupta, WIPO Case No. D2017-2595, who also cited other UDRP cases: “In Go Daddy Operating Company, LLC v. Wu Yanmei, WIPO Case No. D2015-0177, emails sent by the respondent from domain names using the complainant's trademark in an attempt to obtain complainant's customer information was held to be use of the disputed domain name for a phishing scheme and consequently bad faith under the Policy. See also Fareportal Inc. v. Jarin Lawrence, WIPO Case No. D2016-2453, where the respondent's use of the disputed domain name for purposes of phishing activity of attempting to solicit sensitive information was held to constitute bad faith registration and use under the Policy, and AB Electrolux v. Piotr Pardo, WIPO Case No. D2017-0368, where engaging in fraudulent email phishing activities through unauthorized use of a trademark for obtaining data or deriving information is construed as bad faith under the Policy. Misuse of information derived from phishing activity is likely to lead to tainting or tarnishing the trademark. See Banca Intesa S.p.A v. Moshe Tal, WIPO Case No. D2006-0228. The use of a disputed domain name in a "phishing" scheme is in itself evidence that the disputed domain name was registered and is being used in bad faith. See Yahoo Holdings, Inc. v. Registration Private, Domains By Proxy, LLC / Technonics Solutions, WIPO Case No. D2017-1336; BHP Billiton Innovation Pty Ltd v. Domains By Proxy LLC/ Douglass Johnson, WIPO Case No. D2016-0364. In Intesa Sanpaolo S.p.A v. Name Redacted, WIPO Case No. D2016-1286, it was held that phishing is bad faith use according to paragraph 4(b)(iv) of the Policy. Paragraph 4(b)(iv) of the policy that specifies that bad faith is established where a respondent has intentionally registered and used the disputed domain name in an attempt to attract, for commercial gain, Internet users to an online location by creating a likelihood of confusion with the complainant's mark. In Archer-Daniels-Midland Company v. Chamiris Mantrana, WIPO Case No. D2013-0257, citing the case Halifax plc v. Sontaja Sunducl, WIPO Case No. D2004-0237, it was stated that "[t]he potential for 'phishing' and obtaining information by deception, is not just evidence of bad faith, but possibly suggestive of criminal activity”. In conclusion, the Panel finds from the entire circumstances of the case that there appears to be no convincing legitimate reason for the Respondent's choice of the disputed domain name. The Respondent has targeted the Complainant's mark, by registering the disputed domain name that is a confusingly similar variant of the Complainants' trademarks and setting up a scheme to use the disputed domain name for phishing activities. Such is the basis to find bad faith registration and use of the disputed domain name. Further inference of bad faith can be drawn from the fact that the Respondent has used privacy services to register the disputed domain name and opted to deactivate the disputed domain name when confronted with a dispute.”
On the basis of the distinctiveness and significant reputation of the Complainant’s registered VIRGIN and VIRGIN GALACTIC trademarks, the fraudulent behavior of the Respondent, and the absence of any evidence of possible good faith by the Respondent, the Panel finds that the Complainant has successfully established the third element under paragraph 4(a) 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, <virgiingalactic.com> be transferred to the Complainant.
Ada L. Redondo Aguilera
Date: March 3, 2019