WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. Domain ID Shield Service, Domain ID Shield Service Co Limited / Aleksandr N Ivanov

Case No. D2021-2508

1. The Parties

The Complainant is Virgin Enterprises Limited, United Kingdom, represented by A.A.Thornton & Co, United Kingdom.

The Respondent is Domain ID Shield Service, Domain ID Shield Service Co Limited, Hong Kong, China / Aleksandr N Ivanov, Hong Kong, China.

2. The Domain Name and Registrar

The disputed domain name <investorsvirgingalactic.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2021. On August 3, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 3, 2021, 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 August 4, 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 August 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 August 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 30, 2021. The Respondent did not submit any formal response except that on August 5, 2021, August 7, 2021, August 10, 2021 and September 14, 2021, respectively, the Respondent sent four emails indicating mainly that the website associated with the disputed domain name had been taken down. Accordingly, the Center notified the Parties on September 14, 2021 that it would proceed to panel appointment.

The Center appointed Kateryna Oliinyk as the sole panelist in this matter on September 24, 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

According to the Complaint, the Complainant is a member of a group of companies collectively known as the Virgin Group. The Virgin Group was established in 1970 in the United Kingdom (“UK”) and there are now 60 VIRGIN branded businesses spanning a range of sectors including financial services, health and wellness, music and entertainment and travel and leisure. The Virgin Group has over 53 million customers worldwide, employs more than 69,000 people in 35 countries and has an annual revenue of GBP 16.6 billion.

The Complainant is responsible for registering and maintaining registrations for trademarks containing the VIRGIN name and logo and licenses these trademarks to other members of the Virgin Group. The Complainant owns a substantial portfolio of approximately 3,500 trademark applications and registrations in over 150 countries covering the majority of the Nice classes of goods and services. In particular, the Complainant owns the following trademark registrations (“the VIRGIN trademarks”):

- UK Trademark Registration No. UK00001287268 for the VIRGIN trademark in classes 35, 40, 41, 42, and 43 filed on October 2, 1986 and registered on April 5, 1991;
- UK Trademark Registration No. UK00001430290 for the VIRGIN trademark in class 35 filed on July 3, 1990 and registered on May 29, 1992;
- UK Trademark Registration No. UK00001369779 for the VIRGIN trademark in class 9 filed on
January 12, 1989 and registered on March 20, 1992;
- UK Trademark Registration No. UK00001585773 for the VIRGIN trademark in class 36 filed on September 15, 1994 and registered on October 20, 1995;
- European Union (“EU”) Trademark Registration No. 004262093 for the VIRGIN trademark in classes 35, 36, 37, and 44 filed on January 28, 2005 and registered on March 17, 2006;
- International Trademark Registration No. 1141309 for the VIRGIN trademark in classes 9, 35, 36, 38, and 41 filed and registered on May 21, 2012.

Furthermore, the Complainant holds the trademark rights in the VIRGIN GALACTIC trademark (“the VIRGIN GALACTIC trademarks”) under the following trademark registrations:

- UK Trademark Registration No. UK00003187698 for the VIRGIN GALACTIC trademark in classes 12, 16, 25, 28, and 39 filed on September 26, 2016 and registered on January 13, 2017;
- EU Trademark Registration No. 004756921 for the VIRGIN GALACTIC trademark in classes 12, 16, 25, 28, and 39 filed on December 1, 2005 and registered on January 18, 2007;
- International Trademark Registration No. 1489392 for the VIRGIN GALACTIC trademark in classes 37, 40, and 42 filed and registered on July 10, 2019;
- EU Trademark Registration No. 004757217 for the VIRGIN GALACTIC trademark (word&device) in classes 12, 16, 25, 28, and 39 filed on December 1, 2005 and registered on October 23, 2006.

The VIRGIN trademarks 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 trademarks, for example, VIRGIN ACTIVE, VIRGIN MONEY, VIRGIN MEDIA.

According to the Complaint, 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 trademarks. 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, which website contains links to the specific web pages for most of the companies in the Virgin Group.

The Virgin Group operate pages on various social media platforms where the VIRGIN trademarks also feature prominently.

Individually, 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 in 2010. Information about the Virgin Galactic business and projects can be found at the Complainant’s website at “www.virgingalactic.com”, which has been operated since around 2002. The Virgin Galactic projects are promoted on social media as well, and these projects are prominently reported in various publications.

The disputed domain name was created on June 21, 2021 and resolved to the website which impersonated the Virgin Galactic business. Upon filing of the Complaint, the access to the content of the website has been disabled.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the VIRGIN trademarks and VIRGIN GALACTIC trademarks in which it has rights. The additional element “investors” will be seen as a descriptive reference indicating the disputed domain name resolves to a website targeting current or potential investors in the Virgin Galactic business. The addition of the descriptive term “investors” is not sufficient to distinguish the disputed domain name from the Complainant’s VIRGIN and VIRGIN GALACTIC trademarks.

The Disputed Domain name is being used to resolve to a website which impersonates the Virgin Galactic business and imitates the layout of the Complainant’s original website “www.virgingalactic.com”.

The Complainant contends that the Respondent lacks rights and legitimate interests in the disputed domain name because the Complainant has never granted the Respondent a license or other authorization to use its VIRGIN and VIRGIN GALACTIC trademarks, nor has the Respondent any relationship with the Complainant that would entitle the Respondent to use the Complainant’s mark. Furthermore, to the best of the Complainant’s knowledge, the Respondent has not been commonly known by, or associated with, the disputed domain name.

The Complainant further contends that there is no evidence that the Respondent is using, or has made demonstrable preparations to use, the disputed domain name with a bona fide offering of goods and services. Rather, the disputed domain name is used to scam Internet traffic as the disputed domain name is likely to divert persons seeking information about the Complainant.

The Complainant further contends that the disputed domain name has been registered and is being used in bad faith for the purpose of fraudulently obtaining funds and personal information from the public. The close copying of the Complainant’s original website “www.virgingalactic.com” at the website to which the disputed domain name resolves is designed to take advantage of the Complainant’s reputation and to confuse consumers into believing the disputed domain name is operated by, endorsed by or somehow associated with the Complainant. This is likely to deceive members of the public into providing sensitive and personal information, including financial information and potentially investing in the Registrant’s business.

The Complainant contends that the Respondent registered the disputed domain name with the purpose of disrupting the business of the Complainant.

The Complainant further avers that hiding the true identity of the Respondent by using a privacy protection service and submission of the confusing contact details is another factor indicating bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions on the merits. On August 5, 2021, August 7, 2021, August 10, 2021 and September 14, 2021, respectively, the Respondent sent four emails indicating that the website associated with the disputed domain name had been taken down.

6. Discussion and Findings

A. Identical or Confusingly Similar

Ownership of a nationally or regionally registered trademark serves as prima facie evidence that the Complainant has trademark rights for the purposes of standing to file this Complaint. See section 1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). The Complainant submitted evidence that the VIRGIN and VIRGIN GALACTIC trademarks have been registered in various jurisdictions. Thus, the Panel finds that the Complainant’s rights in the VIRGIN and VIRGIN GALACTIC trademarks have been established pursuant to the first element of the Policy.

The disputed domain name is comprised of the terms “investors” and “virgin galactic” combined with the generic Top-Level Domain (“gTLD”) “.com”.

Thus, the Panel finds that the disputed domain name incorporates the Complainant’s VIRGIN and VIRGIN GALACTIC trademarks entirely.

The Complainant’s VIRGIN and VIRGIN GALACTIC trademarks are clearly recognizable within the disputed domain name. Once the gTLD is ignored as a standard registration requirement, as reflected in section 1.11.1 of the WIPO Overview 3.0, the addition of the element “investors” does not prevent a finding of confusing similarity of the disputed domain name with the Complainant’s trademarks. As provided in section 1.8 of the WIPO Overview 3.0, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element.

Previous UDRP panels have consistently held that the addition of a descriptive term to a disputed domain name that incorporates a trademark in its entirety typically does not prevent the finding of confusing similarity. See Philip Morris USA Inc. v. Ma Jia Huan, WIPO Case No. D2018-1291, <marlborocode.com>; eBay Inc. v. ebayMoving / Izik Apo, WIPO Case No. D2006-1307, <ebaymoving.com>; LEGO Juris A/S v. DBA David Inc/ DomainsByProxy.com, WIPO Case No. D2011-1290, <legoninjagokai.com>.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the VIRGIN and VIRGIN GALACTIC trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

According to the Complaint, the disputed domain name is being used to resolve to a website which impersonates the Virgin Galactic business and the layout of which imitates the Complainant’s genuine website “www.virgingalactic.com”. The website to which the disputed domain name resolves displays the Complainant’s VIRGIN GALACTIC trademarks and many of the pages of the website are exact copies of elements of the Complainant’s genuine website “www.virgingalactic.com”. The website under the disputed domain name references “Virgin Galactic” at the bottom of each page next to the copyright notice and includes social media links which resolve to the Complainant’s genuine social media pages. The “contact us” pages of the website provide a Gmail email address and a physical address in the Russian Federation, neither of which are associated with the Complainant.

Under paragraph 4(a)(ii) of the Policy, a complainant must make at least a prima facie showing that a respondent possesses no rights or legitimate interests in a disputed domain name. See, e.g., Malayan Banking Berhad v. Beauty, Success & Truth International, WIPO Case No. D2008-1393. Once a complainant makes such a prima facie showing, the burden of production shifts to the respondent, though the burden of proof always remains on the complainant. If the respondent fails to come forward with evidence showing rights or legitimate interests, the complainant will have sustained its burden under the second element of the UDRP.

Based on the Complainant’s contentions, the Respondent is not a licensee of, or otherwise affiliated with, the Complainant, and has not been authorized by the Complainant to use its VIRGIN and VIRGIN GALACTIC trademarks.

Based on the case records, the Panel established that the Respondent has not been commonly known by or associated with the disputed domain name, and there is no similarity or association between the name of the Respondent and the disputed domain name.

Furthermore, the nature of the disputed domain name, including additional terms, carries a risk of implied affiliation and cannot constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the Complainant. See section 2.5.1 of the WIPO Overview 3.0.

In the Panel’s view, the use of the disputed domain name by the Respondent does not constitute either a bona fide use or a legitimate noncommercial or fair use of the disputed domain name, as it is clearly used to target the Complainant and trade off the goodwill of the VIRGIN and VIRGIN GALACTIC trademarks.

The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

As the website under the disputed domain name contains a section which invites Internet users to register an account and to fill in a registration form, and another section with a login form, the Panel cannot preclude that the website is seeking for personal data and other sensitive information in a fraudulent manner. Prior UDRP panels have held that use of a domain name for illegal activity - including phishing for personal information and other types of fraud - can never confer rights or legitimate interests on a respondent. See, e.g., Aareal Bank AG v. Domain Administrator, See PrivacyGuardian.org / Carl Max, WIPO Case No. D2019-2031.

In light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location”.

As the Panel established that the Complainant’s VIRGIN and VIRGIN GALACTIC trademarks have been fully incorporated into the disputed domain name, and as the Respondent has imitated the official website of the Complainant, it is the Panel’s view that at the time of the registration of the disputed domain name, the Respondent was well aware of the Complainant’s trademarks and of its activity. The additional term “investors” is emblematic of the Respondent’s bad faith attempts to divert the Complainant’s genuine audience to the website under the disputed domain name.

Previous UDRP panels have also found bad faith based upon the inclusion of the Complainant’s entire mark in a disputed domain name. See, e.g., Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028 (registration of <cellularonechina.com> constituted bad faith use because the domain name included Complainant’s entire CELLULAR ONE mark; “it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the domain name”).

On the balance of probabilities, the Panel establishes that it is highly likely that the registration of the disputed domain name is in bad faith for the purpose of fraudulently obtaining funds and personal information from the public. The imitation of the Complainant’s genuine website is designed to take advantage of the Complainant’s reputation and to confuse consumers into believing the disputed domain name is operated by, endorsed by or somehow associated with the Complainant. This is likely to deceive members of the public into providing sensitive and personal information, including financial information and potentially investing in the Respondent’s business.

Furthermore, the Respondent has masked its identity to avoid being contactable and employed the privacy protection service for this purpose, this factor also supports an inference of bad faith. See section 3.6. of the WIPO Overview 3.0. Use of a privacy or proxy registration service or false contact details to shield a respondent’s identity and elude or frustrate enforcement efforts by a legitimate complainant demonstrates (in addition to other circumstances) bad-faith use and registration of a disputed domain name. See, e.g., Fifth Third Bancorp v. Secure Whois Information Service, WIPO Case No. D2006-0696 (“the use of a proxy registration service to avoid disclosing the identity of the real party in interest is also consistent with an inference of bad faith when combined with other evidence of evasive, illegal, or irresponsible conduct”).

As the Panel established that the risks of phishing or other illegal activity cannot be precluded in this case as the website under the disputed domain name collects personal data of its visitors, the use of the disputed domain name for illegal activity is also considered abusive registration of the disputed domain name under the Policy. See e.g., WSI Holdings Ltd. v. WSI House, WIPO Case No. D2004-1089 (“Respondent appears to be engaged in ‘phishing’ for mistaken potential employees of the Complainant … Respondent (1) has adopted a confusingly similar domain name, (2) it has used the trade dress of the Complainant’s website, and (3) it has sought to attract users to its site by creating confusion between its site and the Complainant’s. It has clearly engaged in activity which fulfils the bad faith requirements of Paragraph 4(b)(iv) of the Policy.”)

In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.

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 <investorsvirgingalactic.com> be transferred to the Complainant.

Kateryna Oliinyk
Sole Panelist
Date: October 8, 2021