WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Issane Tabibo Momade
Case No. D2021-2516
1. The Parties
The Complainant is Virgin Enterprises Limited, United Kingdom (“UK”), represented by A. A. Thornton & Co, United Kingdom.
The Respondent is Issane Tabibo Momade, Mozambique.
2. The Domain Name and Registrar
The disputed domain name <virgingalacticspace.info> is registered with Wild West Domains, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 3, 2021. On August 4, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 9, 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 12, 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 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 5, 2021. On August 17, 2021, the Respondent submitted an informal communication.
Following the informal communication from the Respondent, and upon request from the Complainant, the Center suspended the proceedings on August 25, 2021, for purposes of settlement discussions concerning the disputed domain name. Upon request from the Complainant, the Center reinstituted the proceedings on September 13, 2021, setting October 12, 2021 as the Response due date. The Respondent did not submit a formal Response.
Accordingly, the Center notified the Parties that it would proceed to Panel Appointment on October 14, 2021.
The Center appointed Christian Gassauer-Fleissner as the sole panelist in this matter on October 20, 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 Complainant is a member of the Virgin Group of companies, established in 1970. The Complainant is responsible for registering and maintaining the group’s VIRGIN trademarks and licensing them to Virgin businesses. There are now over 60 such businesses in a diverse range of sectors. One of these is Virgin Galactic, established in 2004 as a company to develop space vehicles, promote space tourism, and undertake space science exploration. On July 11, 2021, Virgin Galactic made its inaugural passenger flight into space. This event was widely reported around the world. The Complainant owns multiple trademarks in multiple jurisdictions, including the following registrations for VIRGIN:
- UK Trade Mark Registration No. UK00001287268 for the mark VIRGIN in classes 35, 40, 41, 42 and 43 filed October 2, 1986 and registered April 5, 1991;
- UK Trade Mark Registration No. UK00001430290 for the mark VIRGIN in class 35 filed July 3, 1990 and registered May 29, 1992;
- UK Trade Mark Registration No. UK00001369779 for the mark VIRGIN in class 9 filed
January 12, 1989 and registered March 20, 1992;
- UK Trade Mark Registration No. UK00001585773 for the mark VIRGIN in class 36 filed
September 15, 1994 and registered October 20, 1995;
- European Union Trade Mark Registration No. 004262093 for the mark VIRGIN in classes 35, 36, 37 and 44 filed January 28, 2005 and registered March 17, 2006;
- International Trade Mark Registration No. 1141309 for the mark VIRGIN in classes 9, 35, 36, 38 and 41 filed May 21, 2012 and registered May 21, 2021;
- UK Trade Mark Registration No. UK00003187698 for the mark VIRGIN GALACTIC in classes 12, 16, 25, 28 and 39 filed September 26, 2016 and registered January 13, 2017;
- European Union Trade Mark Registration No. 004756921 for the mark VIRGIN GALACTIC in classes 12, 16, 25, 28 and 39 filed December 1, 2005 and registered January 18, 2021;
- International Trade Mark Registration No. 1489392 for the mark VIRGIN GALACTIC in classes 37, 40 and 42 registered July 10, 2019.
The Complainant has also registered multiple domain names, including the domain name <virgingalactic.com>, which has been operated since 2002. This domain name is used in connection with a website to promote the activities of Virgin Galactic.
The disputed domain name was registered on July 18, 2021 and at the moment of the Decision it resolves to a website that supposedly offers the opportunity of a space flight in exchange for bitcoins.
5. Parties’ Contentions
Complainant alleges that the disputed domain name is confusingly similar to the VIRGIN GALACTIC mark. The added element “space” is deceptive in the context of the Complainant’s business and will confuse Internet users into believing that the disputed domain name is associated with the Complainant.
The Respondent has no rights or legitimate interests in respect to the disputed domain name. The Respondent has not been authorized to use the Complainant’s trademarks in any way, despite the website connected to the disputed domain providing a link that resolves to a video posted by the Complainant. There is no evidence that the Respondent has been commonly known by the disputed domain name.
Furthermore, the Complainant asserts that the disputed domain name was registered and is being used in bad faith. The disputed domain name is being used to resolve to a website promoting fraudulent cryptocurrency schemes, which evidences bad faith on behalf of the Respondent.
The Respondent did not formally reply to the Complainant’s contentions but sent an email on August 17, 2021 asserting that “The domain name can be terminated”.
6. Discussion and Findings
Paragraph 15(a) of the Rules requires that the Panel’s decision be made “on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
A Complainant must evidence each of the three elements required by paragraph 4(a) of the Policy in order to succeed on the complaint, namely that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark VIRGIN GALACTIC, in which the Complainant has established rights through registration.
The disputed domain name wholly incorporates the trademark followed by the element “space”. The generic Top-Level Domain (“gTLD”) “.info” follows at the end.
Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) reads: “Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”. Therefore, the element “space” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademarks.
The Panel notes that gTLDs are generally disregarded when evaluating the identity or similarity of the Complainant’s mark to the disputed domain name under paragraph 4(a)(i) of the Policy (see section 1.11 of the WIPO Overview 3.0).
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
While the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of “proving a negative”, requiring information that often is primarily within the knowledge or control of the respondent. As such, 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. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element (see section 2.1 of the WIPO Overview 3.0).
The Panel notes that the Respondent has not filed any formal response and thus did not deny the Complainant’s assertions, nor has it brought any information or evidence for demonstrating any rights or legitimate interests.
The Complainant has made a prima facie showing that the Respondent does not have any rights or legitimate interests in the disputed domain name, particularly by asserting that the Respondent is not affiliated with it in any way and that the Complainant has never authorized the Respondent to use its trademark as part of the disputed domain name. However, since the website under the disputed domain shows content held by the Complainant, such as a video produced and published by it, it can be assumed that authorization by Complainant would have been necessary.
The Respondent is not known by the domain name or any trademarks being used on the website that are all trademarks belonging to the Complainant.
The Complainant therefore made a prima facie case that the Respondent lacks rights or legitimate interests to which the Respondent failed to respond.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of registration and use of a domain name in bad faith, even though these do not constitute an exhaustive list. The fourth circumstance is as follows:
“(iv) by using the domain name, the respondent has intentionally attempted 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 the respondent’s website or location.”
The disputed domain name was registered on July 18, 2021, years after the Complainant had obtained its trademark registrations for VIRGIN and for VIRGIN GALACTIC and just a few days after the Complainant’s public awareness-boosting inaugural flight. The disputed domain name wholly incorporates the VIRGIN GALACTIC trade mark. Due to the fact that the Complainant’s business operates in the field of space travel/tourism, the element “space” has to be qualified as descriptive. The Panel considers these circumstances not to be a coincidence. Moreover, the website to which the disputed domain name incorrectly resolves claims to provide the opportunity to participate in one of the Complainant’s future space flights. These facts indicate that the Respondent was aware of the Complainant and targeted its VIRGIN GALACTIC trademark when it registered the disputed domain name.
The offered opportunity to participate in a space flight requires Internet users first to remit cryptocurrency to a given wallet address. In all likelihood, this is a scam operated with an intent of commercial gain. In view of these circumstances, the Panel finds that the disputed domain name is intended to attract Internet users by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a service on this website, within the terms of paragraph 4(b)(iv) of the Policy.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith.
Accordingly, the Panel finds that the Complainant has 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 <virgingalacticspace.info> be transferred to the Complainant.
Date: November 3, 2021