WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. Proxy Protection LLC, Proxy Protection LLC / Steve Barriere

Case No. D2019-2564

1. The Parties

The Complainant is Virgin Enterprises Limited, United Kingdom (“UK”), represented by A. A. Thornton & Co., UK.

The Respondent is Proxy Protection LLC, Proxy Protection LLC, United States of America (“United States”) / Steve Barriere, United States.

2. The Domain Name and Registrar

The disputed domain name <virgingalacticairway.com> (“the Disputed Domain Name”) is registered with DreamHost, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2019. On October 22, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 8, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 11, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on November 15, 2019.

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 proceedings commenced on November 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 8, 2019. The Response was filed with the Center on November 18, 2019.
The Center appointed Jacques de Werra as the sole panelist in this matter on November 20, 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 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 and there are now over 60 VIRGIN branded businesses that span a diverse range of sectors covering Financial Services, Health & Wellness, Music & Entertainment, People & Planet, Telecommunications & Media, and Travel & Leisure. The Virgin Group has over 53 million customers worldwide and employs more than 69,000 people in 35 countries and generates annual revenue of £16.6 billion.

In 2004, the Virgin Group established Virgin Galactic, the aim of which is, along with its sister company Virgin Orbit, to develop space vehicles, promote space tourism and undertake space science exploration. Virgin Galactic made its first test flight 2010. Virgin Galactic operates under the VIRGIN GALACTIC brand and operates a website at “www.virgingalactic.com”, since around 2002. Virgin Galactic and its various achievements and milestones are frequently documented in the media since September 2004.

The Virgin Group launched Virgin Direct, which is a financial services provider, in 1995, which led to the formation of Virgin Money UK in 2002, which offers a range of financial services such as pensions and insurance policies and operates a website at “virginmoney.com”.

The Complainant owns numerous registered trademarks, including the following ones (“the Trademarks”):

- UK Trade Mark Registration No. UK00001287268 for the mark VIRGIN in classes 35, 40, 41, 42, and 43, filed on October 2, 1986, and registered on April 5, 1991;

- European Union (“EU”) Trade Mark Registration No. 004262093 for the mark VIRGIN in classes 35, 36, 37, and 44, filed on January 28, 2005, and registered on March 17, 2006;

- International Trade Mark Registration No. 1141309 for the mark VIRGIN in classes 9, 35, 36, 38, and 41, registered on May 21, 2012;

- EU Trade Mark Registration No. 004756921 for the mark VIRGIN GALACTIC in classes 12, 16, 25, 28, and 39, filed on December 1, 2005 and registered on January 18, 2007.

The Complainant also claims to have unregistered trademark rights on the trademark VIRGIN GALACTIC (the “Unregistered Trademark”) as a result of the use of the trademark VIRGIN GALACTIC since the inception of the Virgin Galactic business in 2004.

The Disputed Domain Name was registered on January 13, 2005. It is used to resolve to a webpage titled “holdmybitcoin” that provides information on bitcoin and promotes “cryptoinfluencers”, and also recommends visitors to follow certain cryptocurrency influencers on social media.

5. Parties’ Contentions

A. Complainant

The Complainant alleges that the Disputed Domain Name is comprised of “virgin”, “galactic”, and “airway” and therefore includes the entirety of the Complainant’s Trademarks (i.e. VIRGIN and VIRGIN GALACTIC) and the Complainant’s Unregistered Trademark (i.e. VIRGIN GALACTIC). The additional element “airway” will be seen as a descriptive reference concerning a characteristic of the service offered by the Virgin Galactic business, being that it follows recognized flying routes in space. The addition of “airway” is not sufficient therefore to distinguish the Disputed Domain Name from the Complainant’s Trademarks and the Complainant’s Unregistered Trademark.

The Disputed Domain Name is being used to resolve to a webpage titled “holdmybitcoin” that provides information on bitcoin and promotes “cryptoinfluencers”, and also recommends visitors to follow certain cryptocurrency influencers on social media. Through the use of the Disputed Domain Name to promote certain cryptoinfluencers and make recommendations as to who to follow on social media, the Respondent is likely to receive a commercial gain in return for the advertising of the cryptoinfluencers, as well as an increased social media following as a result of clickthroughs.

Considering the content of the website to which the Disputed Domain Name resolves, lack of evidence that the Respondent has ever been known by the marks VIRGIN, VIRGIN GALACTIC, or VIRGIN GALACTIC AIRWAY, coupled with the Complainant’s rights and reputation in the Trademarks and the Unregistered Trademark, it is clear that the Respondent has no legitimate interests or rights in the Disputed Domain Name. Considering the financial gain that the Respondent is likely to gain from the use of the Disputed Domain Name, the confusion the Disputed Domain Name will cause to consumers, the unfair advantage that the use of the Complainant’s Trademarks and Unregistered Trademark provides to the Respondent, and the potential for tarnishment of the Complainant’s Trademarks and Unregistered Trademark, the Respondent is therefore not 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 trademark or service mark at issue.

The incorporation of the Complainant’s Trademarks and Unregistered Trademark in the Disputed Domain Name will cause confusion on the part of consumers and attract Internet users to the website associated with the Disputed Domain Name on the basis of this confusion. Particularly given the Complainant’s activities within the space and fintech sectors, Internet users could easily believe that the Disputed Domain Name and the website associated to it are associated with, or endorsed by, the Complainant. This will be disruptive to the business of the Complainant. Internet users looking for information on the Complainant’s space projects or for bitcoin and fintech products and schemes endorsed by the Complainant will be diverted to the website through use of the Disputed Domain Name due to the confusion. This may mean that the Complainant loses prospective customers, supporters, or partners of the Virgin Galactic business and space projects. This will also harm the reputation of the Complainant’s Trademarks and Unregistered Trademark by creating an impression that the Complainant is operating a website that does not provide the information it indicates it does from the domain at which it is hosted, or at the very least, create the impression that the Complainant is allowing that to happen.

The use of the Disputed Domain Name in relation to the website associated with it could lead Internet users, who were looking for bitcoin and fintech products and schemes endorsed by the Complainant, to take recommendations provided on the website. If any Internet users who take the recommendations or advice provided on the website, or by any of the cryptoinfluencers promoted on the website, suffer negative consequences or financial losses because of those recommendations and information, this will further tarnish the reputation of the Complainant’s Trademark and Unregistered Trademark. The use of the Disputed Domain Name to utilize the Complainant’s Trademarks and Unregistered Trademark and reputation therein to attract more visitors to the website and to add credibility to the content of the website, will diminish the ability of the Complainant to immediately identify through use of its VIRGIN trademark its own fintech and financial services, or those that are endorsed by it. This may also lead to a financial loss to the Complainant, whose business model is to license its Trademarks to its branded businesses.

B. Respondent

The Respondent sent an email to the Center on November 18, 2019, in which he first alleges that he registered the Disputed Domain Name on January 13, 2005, and that the Complainant filed for the trademark for the same name approximately 11 months later on December 1, 2005.

The Respondent further rejects (in essence) that he would make a commercial use of the Disputed Domain Name. He particularly rejects the statement of the Complainant that the redirection of the Disputed Domain Name to “holdmybitcoin.com” is likely to have resulted in a commercial gain in return for the advertising of the cryptocurrency influencers. The Respondent states that he has never sold, offered, nor received any kind of financial gain from anyone that is mentioned or not mentioned within that website since its creation. The Respondent rejects the statement of the Complainant according to which the redirection of the Disputed Domain Name to “holdmybitcoin.com” is likely to have resulted in an increased social media following as a result of click-through from the website. The Respondent states that this accusation is false, given that there has never been any click tags within the site to record pass through data that would affirm that there was intent or incentives for an increase in social media following.

The Respondent further rejects the statement of the Complainant that the redirection of the Disputed Domain Name to “holdmybitcoin.com” is unfairly taking advantage, for a commercial gain, of the reputation for that the Complainant. The Respondent states that this accusation is false, given that he has never sold, offered, nor received any kind of financial gain from anyone that is mentioned or not mentioned within that website since its creation.

The Respondent claims that the website associated with the Disputed Domain Name is strictly an informative website to bring awareness to an emerging new technology and that all experts that are noted within the site, promote free content on their respected social media accounts and are in the space to bring awareness to the community. The Respondent states in summary that he has never mentioned or posted any of the Complainant’s trademarks, names, or references to anyone connected to them and that he has never sold, promoted, nor received any form of monetary compensation from anyone in direct connection to this website. The Respondent claimed that he paid for and registered the Disputed Domain Name 11 months before the Complainant filed for a trademark and held it in good standings for the last 14 years.

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that the complainant must prove each of the following three elements in order to succeed in a UDRP proceeding:

(i) the respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the respondent’s domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainant has rights to a trademark or service mark as reflected in the Trademarks.

A comparison between the Disputed Domain Name and the Trademarks shows that the Disputed Domain Name is confusingly similar to the Trademarks, whereby the generic Top Level Domain (i.e. “.com”) shall be disregarded. The Disputed Domain Name consists of the Trademarks, and specifically of the VIRGIN GALATIC trademark, to which the generic term “airway” is added, which is obviously connected to the activities conducted by the Complainant and the Complainant’s group under the VIRGIN GALACTIC brand. On this basis, the addition of the term “airway” does not prevent a finding of confusing similarity between the Disputed Domain Name and the Trademarks.

The Panel notes that the Disputed Domain Name was registered before the registration of one the Trademarks (i.e. the VIRGIN GALACTIC trademark). This has however no bearing because the fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant’s standing to file a UDRP case, nor a panel’s finding of identity or confusing similarity under the first element. See WIPO Overview 3.0, section 1.1.3. This has even less bearing in this case given that the registration of the other of the Trademarks (i.e. the VIRGIN trademark) was made a long time before the registration of the Disputed Domain Name. On this basis, the Panel does not consider that it is necessary to refer to the Unregistered Trademark in this decision given that the Panel can decide the dispute on the basis of the Trademarks of the Complainant.

As a result, based on the rights of the Complainant in the Trademarks and on the confusing similarity between the Trademarks and the Disputed Domain Name, the Panel finds that the condition of paragraph 4(a)(i) of the Policy is met.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights or legitimate interests in the Disputed Domain Name by demonstrating any of the following:

(i) before any notice to it 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 has been commonly known by the Disputed Domain Name, even if it has acquired no trademark 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 trademark or service mark at issue.

Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests, and once such prima facie case is made the burden of production shifts to the respondent to come forward with relevant evidence of rights or legitimate interests in the domain name. WIPO Overview 3.0, section 2.1.

In the Panel’s opinion, the Complainant has made a prima facie case against the Respondent. The Respondent indeed registered the Disputed Domain Name that reflects the Trademarks owned by the Complainant without the authorization of the Complainant, in a way that can only reasonably be explained as a reference to the Complainant’s Trademark.

The Panel notes that the Respondent registered the Disputed Domain Name shortly after the initial communication and launch of the “Virgin Galactic” venture by the group of the Complainant: the media coverage (based on the documents filed by the Complainant) establish that a public communication was made in September 2004, while the Disputed Domain Name was registered in January 2005. In this respect, it is not relevant that the registration of the Disputed Domain Name was made before the registration of the VIRGIN GALACTIC trademark.

Based on the prima facie case made by the Complainant, the burden of proof shifts to the Respondent to come forward with relevant evidence of rights or legitimate interests in the Disputed Domain Name.

The Respondent claims in essence that it is making a legitimate noncommercial or fair use of the Disputed Domain Name (by stating that “[t]his website is strictly an informative website to bring awareness to an emerging new technology”) without intent for commercial gain by using the Disputed Domain Name in connection with a website titled “holdmybitcoin” that provides information on bitcoin and promotes “cryptoinfluencers” and also recommends visitors to follow certain cryptocurrency influencers on social media.

However, fundamentally, a respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with the trademark owner; the correlation between a domain name and the complainant’s mark is often central to this inquiry. See WIPO Overview 3.0, section 2.5.

In this respect, even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. See WIPO Overview 3.0, section 2.5.1.

The Respondent has not submitted any explanation justifying the choice of the Disputed Domain Name which corresponds to the Trademarks of the Complainant. The Panel notes that the terms contained in the Disputed Domain Name (and specifically the descriptive term “airway”) have no connection at all with the activities that are featured on the website to which the Disputed Domain Name resolves, which provides information on bitcoin and promotes “cryptoinfluencers”.

The Panel considers that there is a very high and confusing correlation between the Disputed Domain Name and the Complainant’s Trademarks and that the Disputed Domain Name (because of the terms that it contains which clearly refer to the Trademarks and to the Complainant) cannot constitute fair use given that it effectively impersonates or suggests sponsorship or endorsement of the Disputed Domain Name by the Complainant.

On this basis, the Panel considers that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that the Respondent has not established evidence of its alleged rights or legitimate interests in the Disputed Domain Name.

Even if the argument of laches has not been expressly raised by the Respondent (who has however stated that it has held the Disputed Domain Name “in good standings for the last 14 years”), the Panel notes that a mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits. See WIPO Overview 3.0, section 4.17.

As a result, the Panel finds that the Respondent has no rights or legitimate interests in the Disputed Domain Name and that paragraph 4(a)(ii) of the Policy is met.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of the complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Given that the scenarios described in UDRP paragraph 4(b) are non-exclusive and merely illustrative, even where a complainant may not be able to demonstrate the literal or verbatim application of one of the above scenarios, evidence demonstrating that a respondent seeks to take unfair advantage of, abuse, or otherwise engage in behavior detrimental to the complainant’s trademark would also satisfy the complainant’s burden. See WIPO Overview 3.0, section 3.1. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

In this case, the Panel holds that the Respondent registered the Disputed Domain Name in bad faith because the Disputed Domain Name clearly targets the Complainant’s Trademarks and the Complainant’s activities in the area of air and space transportation services also in light of the timing of registration of the Disputed Domain Name which was short after the launch of the Virgin Galactic activities by the Complainant’s group. See WIPO Overview 3.0, section 3.2.1 (listing among additional bad faith consideration factors the timing and circumstances of the registration particularly following a product launch).

Consequently, the choice of the Disputed Domain Name cannot be reasonably explained otherwise than as a reference to the Complainant’s Trademarks and to the Complainant’s activities. The Panel notes that the Disputed Domain Name was registered before the registration of one the Trademarks (i.e. the VIRGIN GALACTIC trademark). This has however no bearing because the registration of the Disputed Domain Name was made after the public launch of the Virgin Galactic activities and well after the registration of the other of the Trademarks (i.e. the VIRGIN trademark) which was made a long time before the registration of the Disputed Domain Name.

The Panel notes that the Respondent uses the Disputed Domain Name in connection with a website that provides information on bitcoin and promotes “cryptoinfluencers” which has no connection at all with the terms reflected in the Disputed Domain Name which refer to the Complainant’s Trademarks and business activities. The Panel considers that this use of the Disputed Domain Name is in bad faith because it may generate a connection and a risk of confusion with the financial activities operated by the Complainant’s group in certain countries under the VIRGIN MONEY brand. The Panel notes that a finding of bad faith can be made in case of clear absence of rights or legitimate interests of the Respondent in the Disputed Domain Name coupled with absence of credible explanation for the Respondent’s choice of the Disputed Domain Name, which is a finding that the Panel can make in this case. See WIPO Overview 3.0, section 3.2.1.

On this basis, the Panel finds that the Respondent registered and uses the Disputed Domain Name in bad faith pursuant to paragraph 4(b) of the Policy, so that the conditions of paragraph 4(a)(iii) of the Policy are met.

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 <virgingalacticairway.com> be transferred to the Complainant.

Jacques de Werra
Sole Panelist
Date: December 3, 2019