WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Obi Frank
Case No. D2021-1328
1. The Parties
The Complainant is Virgin Enterprises Limited, United Kingdom, represented by A.A. Thornton & Co., United Kingdom (or “UK”).
The Respondent is Obi Frank, Canada.
2. The Domain Name and Registrar
The disputed domain name <virginspaceship2.com> (the “Domain Name”) is registered with 1API GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 29, 2021. On April 29, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 30, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 30, 2021, 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 May 4, 2021.
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 May 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 26, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2021.
The Center appointed Ellen B Shankman as the sole panelist in this matter on June 15, 2021. 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 date of the Domain Name registration was confirmed by the Registrar to be April 15, 2021. The Domain Name resolves to a website offering information and sign up options for the services and products offered by the Complainant, including buttons on the website that offer access to customers to log into accounts.
The Complainant provided evidence of multiple trademark registrations for the VIRGIN wordmark and logo, VIRGIN ORBIT, and other marks in multiple jurisdictions, including, inter alia:
- UK Trade Mark Registration No. UK00003163121 for the mark VIRGIN in classes 03, 05, 09, 11, 12, 14, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44, and 45, registered on July 29, 2016;
- European Union Trade Mark (“EUTM”) Registration No. 015255235 for the mark VIRGIN in classes 03, 05, 09, 11, 12, 14, 16, 31, 32, 35, 36, 38, 39, 41, 42, 43, 44, and 45, registered on March 21, 2016;
- Australia, Bahrain, Egypt, EU, Morocco, Oman, Russian Federation, Ukraine and United States of America Designations of International Trade Mark Registration No. 1141309 for the mark VIRGIN in classes 09, 35, 36, 38, and 41, registered on May 21, 2021;
- UK Trade Mark Registration No. UK00003163127 for the VIRGIN logo mark (VIRGIN Signature Logo) in classes 03, 05 ,09, 11, 12, 14, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44, and 45, registered on July 29, 2016; and
- UK Trade Mark Registration No. UK00003186871 for the mark VIRGIN ORBIT in classes 9, 12, 16, 25, 28, 39, and 39, registered on October 20, 2017.
5. Parties’ Contentions
The Complaint alleges that 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. 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, have between them over 53 million customers worldwide and employ more than 69,000 people in 35 countries. Annual revenue is GBP 16.6 billion.
The Complainant is responsible for registering and maintaining registrations for trademarks containing the VIRGIN name and VIRGIN signature logo and licensing these rights to the VIRGIN businesses. The Complainant owns a substantial portfolio of approximately 3,500 trade mark applications and registrations in over 150 countries covering the majority of the 45 Nice Classes of goods and services. The “Virgin” name and “Virgin” signature logo have all been consistently and intensively used across all Virgin operations since the company was founded. The “Virgin” businesses, ventures and foundations are branded with marks incorporating the distinctive “Virgin” name or “Virgin” signature logo, for example, “Virgin Active”, “Virgin Money”, and “Virgin Media”.
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 (the “Virgin.com Website”). The Virgin.com Website contains links to the specific web pages for most of the companies in the VIRGIN Group.
The VIRGIN businesses operate pages on various social media platforms where the VIRGIN marks also feature prominently. Collectively these social media platforms receive over 37 million views each year. This considerable online public following serves to demonstrate the widespread exposure of the VIRGIN brand to people all over the world and its significant global reputation.
The Complainant operates two primary businesses in the field of space travel and exploration: Virgin Orbit and Virgin Galactic.
Virgin Orbit was formed in 2017 as an innovative business to develop flexible launch services for small satellite operators. Along with its sister companies Virgin Galactic and The Spaceship Company, the aim of the Virgin Orbit business is to make space more accessible for all.
Virgin Orbit operates a website at “www.virginorbit.com” (the “Virgin Orbit Website”), where it provides information on the services and projects of the VIRGIN ORBIT business along with details on its achievements and successes.
SpaceShipTwo is a suborbital space plane designed for space tourism by The Spaceship Company, which is a business owned by Virgin Galactic. The spaceship was first unveiled to the public on December 7, 2009, and performed its first successful test flight in April 2013. The Virgin Galactic business intends to use SpaceShipTwo planes to offer private passenger flights into space and is already taking bookings. The interior cabin of SpaceShipTwo was unveiled to the public for the first time in July 2020.
SpaceShipTwo has received wide press coverage relating to the announcement of the vehicle, its various test flights, and the design of the spaceship. Through continuous use of the mark SpaceShipTwo since it was unveiled in 2009, the Virgin Galactic business has acquired a significant reputation and goodwill in the mark and has unregistered trade mark rights in the mark.
The Domain Name is comprised of the terms “virgin” and “spaceship2” and therefore incorporates the Complainant’s Registered Mark VIRGIN entirely. The Complainant’s Registered Mark VIRGIN has been combined with the Complainant’s unregistered mark SPACESHIP2 which is a reference to the name of a spacecraft designed by the Virgin Group with “two” having been replaced with the figurative representation of the same number, namely “2”. The combination of the Complainant’s Registered Mark VIRGIN with its unregistered mark SPACESHIPTWO will confuse the relevant public into believing that the Domain Name is associated with the Complainant and is intended to refer to the Complainant’s SpaceShipTwo space plane.
The Domain Name purports to offer information on and sign up options for the services and products offered by the Complainant, including buttons on the website that offer access to customers to log into accounts. The Domain Name has also been configured to send and receive emails and set up email addresses, as well as allow access to email accounts online using the Domain Name. The confusion caused by the use of the Domain Name could be hugely disruptive to the Complainant’s business and a source of frustration to Internet users who are deceived into thinking the Domain Name is connected with the Complainant. In the Complainant’s experience, it is very likely that the Domain Name will be used for phishing purposes. The use of the Domain Name as part of a webmail service indicates that the Respondent has the capability to contact members of the public using an email address based on the Domain Name, which will confuse consumers into thinking they are being contacted by the Complainant and deceive them into disclosing sensitive information.
To summarize the Complaint, the Complainant is the owner of multiple registrations for the trademarks VIRGIN and VIRGIN ORBIT and logos, in respect of a wide variety of goods and services. The Domain Name is confusingly similar to the trademarks owned by the Complainant together with the term “spaceship” and the number “2” instead of “two” in which the Complainant claims unregistered trademark rights. Therefore, the Domain Name could be considered virtually identical and/or confusingly similar to the Complainant’s trademarks. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. That continued use of the Domain Name would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant, especially for fraudulent purposes. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Name registered by the Respondent 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 respect of the Domain Name; and
(iii) That the Domain Name has been registered and used in bad faith
The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the Domain Name.
In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. Since the Respondent did not respond to this Complaint, the facts regarding the use and reputation of the Complainant’s mark are taken from the Complaint and are generally accepted as true in the circumstances of this case.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for VIRGIN and VIRGIN ORBIT. The Panel further finds that that the Complainant has sufficient rights in SPACESHIPTWO, in particular in connection with the VIRGIN house mark, for purposes of the UDRP.
Further, the Panel finds that the Domain Name integrates the Complainant’s marks in its entirety and that the Domain Name is confusingly similar to the Complainant’s trademarks. Even if the Panel did not find sufficient rights in SPACESHIPTWO, the Panel finds such addition does not prevent the overall impression of the designation as being connected to the trademarks of the Complainant. It does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademarks. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating, “The incorporation of a Complainant’s well-known trademark in the registered Domain Name is considered sufficient to find the Domain Name confusingly similar to the Complainant’s trademark.”
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Name is confusingly similar to the Complainant’s trademarks, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks. The Respondent is not known by the Domain Name, does not have permission to use the Complainant’s marks, and is not using the Domain Name for a bona fide offering of goods or services nor making a legitimate noncommercial or fair use of the Domain Name. The Respondent has also used the Domain Name to imitate the Complainant which is not a legitimate noncommercial purpose.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Name.
The Panel agrees with the Complainant’s argument that the Respondent knew about the Complainant and its goods and services. See Inter IKEA Systems B.V. v. Targetclix / Anh Vo, WIPO Case No. D2011-1087 (“It is not conceivable that Respondent would not have had actual notice of Complainant’s trademark rights at the time of the registration of the Domain Names…. [Therefore] the Domain Names are not one that one could legitimately adopt other than for the purpose of creating an impression of an association with Complainant.”). Such unauthorized use with prior knowledge is not legitimate.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Name with full knowledge of the Complainant’s trademarks and uses them for deceptive purposes, including attempted phishing and/or misleading and diverting Internet traffic, constituting bad faith.
By registering the Domain Name that comprises the Complainant’s trademarks in their entirety, together with the photos of the Complainant’s logos and offering of services on the website, the Respondent has demonstrated a knowledge of and familiarity with Complainant’s brand and business. In light of the facts set forth within this Complaint, the Panel finds that it is “not possible to conceive of a plausible situation in which the Respondent would have been unaware of” the Complainant’s brand at the time the Domain Name was registered. See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003. Further, “it defies common sense to believe that Respondent coincidentally selected the precise domain without any knowledge of Complainant and its trademarks.” See Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415. The Panel agrees with the Complainant’s contention that indeed, the Respondent's purpose in registering the Domain Name was probably to capitalize on the reputation of the Complainant's trademarks by diverting Internet users seeking information about this distinctive sign to its own website, where similar goods had been published, and that the Respondent’s purpose in registering the Domain Name was to capitalize on the reputation of the Complainant’s trademark by diverting Internet users seeking information about or goods of the Complainant. See Hoffmann-La Roche Inc. v. Doroven, WIPO Case No. D2010-1196.
A respondent’s use of a complainant’s mark – for said respondent’s commercial benefit – to attract Internet users otherwise seeking said complainant evinces a finding of bad faith is also consistent with the Policy 4(b)(iv). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) at section 3.1.4 (“Panels have moreover found the following types of evidence to support a finding that a respondent has registered a domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant’s mark: (i) actual confusion, (ii) seeking to cause confusion (including by technical means beyond the domain name itself) for the respondent’s commercial benefit, even if unsuccessful, (iii) the lack of a respondent’s own rights to or legitimate interests in a domain name, (iv) redirecting the domain name to a different respondent-owned website, even where such website contains a disclaimer, (v) redirecting the domain name to the complainant’s (or a competitor’s) website, and (vi) absence of any conceivable good faith use.”). These criteria apply in the present case, which supports the Panel’s finding that the Respondent registered and is using the Domain Name in bad faith.
The Panel’s view is that, when considering the balance of probabilities, the Respondent clearly had actual or constructive knowledge of the Complainant’s trademarks, that registration of the Domain Name would be identical or confusingly similar to the Complainant’s trademarks, and that the use was intended to ride on the reputation of the Complainant.
The Respondent’s bad faith registration and use of the Domain Name is also evidenced by the fact that the Respondent has intentionally attempted to attract Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademarks as to the source, affiliation, or endorsement of Respondent’s website. See e.g., David Foox v. Kung Fox and Bill Hicks, WIPO Case No. D2008-0472 (“A substantial proportion of Internet users visiting the site will be doing so in the hope and expectation of reaching a site of (or authorized by) the trade mark owner. When they reach the site they may realize that they have been duped, but in any event the registrant’s objective of bringing them there will already have been achieved.”).
The Panel finds that this is a classic example of the unfortunate fraudulent and opportunistic registration to create confusion that the UDRP is intended to address, and finds that the Respondent is using the Domain Name opportunistically to benefit from the Complainant’s trademark, in bad faith use and registration.
Given the evidence of the Complainant’s prior rights in the trademark, the timing of the registration of the Domain Name with apparent full knowledge of the Complainant, the evidence of photos posted on the website, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Name in bad faith, under 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 Domain Name <virginspaceship2.com> be transferred to the Complainant.
Ellen B Shankman
Date: June 24, 2021