WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. Guman Sulaen, Sulaen Company / Ivan Petrenkos / Leonid Duhar / Josh White, Build LMTD / Name Redacted

Case No. D2021-2689

1. The Parties

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

The Respondents are Guman Sulaen, Sulaen Company, Afghanistan / Ivan Petrenkos, Russian Federation / Leonid Duhar, Russian Federation / Josh White, Build LMTD, Germany / Name Redacted.¹

2. The Domain Name and Registrar

The disputed domain names <virgin-galactic.ceo>, <virgingalactic.fund>, <virgingalactic.life>, <virgin-galactic.net> and, <virgin-galactic.org> are registered with NameCheap, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2021. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 24, 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 the following day.

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 Respondents of the Complaint, and the proceedings commenced on August 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 19, 2021.

The Center appointed Matthew Kennedy as the sole panelist in this matter on September 26, 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, which was established in 1970. The Complainant is responsible for registering and maintaining the group’s VIRGIN trademarks and licensing them to the 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 with the Virgin group’s founder and three other passengers on board. This event was widely reported around the world. The Complainant owns multiple trademarks in multiple jurisdictions, including the following registrations for VIRGIN:

- United Kingdom trademark registration number UK00001287268, registered on April 5, 1991, specifying services in classes 35, 40, 41, 42, and 43;

- European Union Trade Mark registration number 004262093, registered on March 17, 2006, specifying services in classes 35, 36, 37, and 44; and

- International trademark registration number 1141309, registered on May 21, 2012, specifying goods and services in classes 9, 35, 36, 38, and 41.

The Complainant also owns the following registrations for VIRGIN GALACTIC:

- European Union Trade Mark registration number 004756921 registered on January 18, 2007, specifying goods and services in classes 12, 16, 25, 28, and 39;

- United Kingdom trademark registration number UK00003187698, registered on January 13, 2017, specifying goods and services in classes 12, 16, 25, 28, and 39; and

- International trademark registration number 1489392, registered on July 10, 2019, specifying goods and services in classes 37, 40, and 42.

The Complainant has also registered multiple domain names, including the domain name <virgingalactic.com> that it uses in connection with a website to promote the activities of Virgin Galactic. Neither the Complainant nor the Virgin group’s founder has endorsed cryptocurrency investment schemes.

The Respondents are named as various individuals and two companies. The disputed domain names were registered on the dates and in the names shown in the following table:

The disputed domain name <virgin-galactic.ceo> formerly resolved to a website claiming to promote an “Official Virgin Galactic event” consisting of an alleged cryptocurrency giveaway. This disputed domain name was subsequently disabled by the server administrator. The disputed domain name <virgin-galactic.org> formerly resolved to a similar website that also claimed to promote an “Official Virgin Galactic event” consisting of an alleged cryptocurrency giveaway and displayed an image of the Virgin group’s founder. This disputed domain name no longer resolves to any active website. The disputed domain name <virgingalactic.life> formerly resolved to a website claiming to promote an “Official Ethereum event” also consisting of an alleged cryptocurrency giveaway and displaying graphics and text identical to some of those found on the website to which the disputed domain name <virgin-galactic.ceo> resolved but referring to a co-founder of Ethereum. This disputed domain name was subsequently disabled by the server administrator. The disputed domain names <virgingalactic.fund> and <virgin-galactic.net> do not appear to have ever resolved to any active website.

5. Parties’ Contentions

A. Complainant

The disputed domain names are all confusingly similar to the Complainant’s VIRGIN GALACTIC mark.

The Respondent has no rights or legitimate interests in respect of the disputed domain names. None of the cryptocurrency schemes referenced at any of the disputed domain names are affiliated with or endorsed by the Complainant, its founder or the Virgin Galactic business. The Respondent has not been authorized to use the Complainant’s trademarks in any way. It is highly likely the schemes are fraudulent. There is no evidence that the Respondent has been commonly known by the disputed domain names.

The disputed domain names were registered and are being used in bad faith. The disputed domain names are being used to resolve to websites promoting fraudulent cryptocurrency schemes, which is evidence of bad faith on behalf of the Respondent. While some of the disputed domain names do not resolve, the circumstances of use of the others means that it is reasonable to assume that the Respondent intends to use them to link to websites promoting equally fraudulent cryptocurrency schemes.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1 Consolidation: Multiple Domain Name Registrants

The amended Complaint initiates disputes in relation to nominally different domain name registrants. The Complainant alleges that all the disputed domain names were registered by the same person or are under common control and requests consolidation of the disputes against the disputed domain name registrants pursuant to paragraph 10(e) of the Rules. The disputed domain name registrants, if there are indeed more than one, did not comment on the Complainant’s consolidation request.

Paragraph 3(c) of the Rules states that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. However, the Panel does not consider that paragraph 3(c) was intended to enable a single person or entity to put a complainant to the unnecessary time, expense and effort of initiating multiple proceedings against technically different domain name registrants, particularly when each registration raises the same issues. In addressing the Complainant’s request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 and WIPO Overview 3.0, section 4.11.2.

As regards common control, the Panel notes that the disputed domain names were all registered within a very short period of three days using the same privacy service and they all incorporate the same trademarks in similar configuration. Three of the disputed domain names currently resolve or formerly resolved to similar websites promoting cryptocurrency schemes, sharing the same layout and displaying some identical content. The other two disputed domain names do not appear to have ever resolved to any active website. Although the disputed domain names are registered in the names of different individuals and companies, the contact addresses for all of them are manifestly false, from which, inter alia, the Panel infers the entirety of the registrant details are false. In this regard, the Panel also notes the disputed domain name <virgin‑galactic.org> appears to have been registered, presumably without authorization, in the name of a famous individual, using contact details that appear unrelated to any details that could reasonably be expected to be associated with such person. In these circumstances, the Panel is persuaded that all five disputed domain names are under common control.

As regards fairness and equity, the Panel sees no reason why consolidation of the disputes would be unfair or inequitable to any Party.

Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding.

6.2. Substantive Issues

Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:

(i) the disputed domain names are 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 disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the VIRGIN and VIRGIN GALACTIC marks.

All the disputed domain names wholly incorporate the VIRGIN GALACTIC mark. Three of them also include a hyphen between the two words but the VIRGIN GALACTIC mark is clearly recognizable in all the disputed domain names. Consequently, the disputed domain names also wholly incorporate the VIRGIN mark. Although they also include the word “galactic”, this does not prevent a finding of confusing similarity because the VIRGIN mark is also clearly recognizable in all the disputed domain names.

The only additional element in the disputed domain names is a generic Top-Level Domain (“gTLD”) (variously “.ceo”, “.fund”, “.life”, “.net”, or “.org”). As a mere technical requirement of domain name registration, a gTLD is normally disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy.

Therefore, the Panel finds that all the disputed domain names are identical or confusingly similar to trademarks in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] 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] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent 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.

As regards the first and third circumstances set out above, the disputed domain names <virgin-galactic.ceo>, <virgingalactic.life>, and <virgin-galactic.org> formerly resolved to websites promoting alleged cryptocurrency giveaways, two of which claimed to be an “Official Virgin Galactic event” and one of which claimed to be an official event of a third party. All the disputed domain names wholly incorporate the Complainant’s VIRGIN and VIRGIN GALACTIC marks. However, the Complainant submits that none of these cryptocurrency schemes is affiliated with, or endorsed by, the Complainant, the Virgin group’s founder, or the Virgin Galactic business and, further, that the Respondent has not been authorized to use the Complainant’s trademarks in any way. The other two disputed domain names do not appear to have ever resolved to an active website. At the time of this decision, none of the disputed domain names resolves to any active website. The Panel considers that the Complainant has made a prima facie case that the Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services within the circumstances of paragraph 4(c)(i) of the Policy nor that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names within the circumstances of paragraph 4(c)(iii) of the Policy.

As regards the second circumstance, the Respondent is identified in the Registrar’s WhoIs database by various names, none of which corresponds to a disputed domain name. There is no evidence indicating that the Respondent has been commonly known by any of the disputed domain names as envisaged by paragraph 4(c)(ii) of the Policy.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent failed to rebut that prima facie case because it did not allege any rights or legitimate interests in respect of the disputed domain names.

Therefore, based on the record of this proceeding, the Panel finds that the Complainant has satisfied the second element in paragraph 4(a) 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 the registration or use of a domain name in bad faith, but they do not constitute an exhaustive list. The fourth circumstance is as follows:

“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] web site 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 names were registered in 2021, years after the Complainant obtained its trademark registrations for VIRGIN and for VIRGIN GALACTIC. All the disputed domain names wholly incorporate the VIRGIN GALACTIC mark, which is a combination of two dictionary words that appears to have no meaning other than as the Complainant’s trademark. Consequently, the disputed domain names all wholly incorporate the VIRGIN mark as well. All the disputed domain names were registered on the day, or within days, of the announcement of Virgin Galactic’s inaugural passenger flight into space. The Panel does not consider these circumstances to be a coincidence. Moreover, the websites to which two of the disputed domain names formerly resolved claimed to promote an “Official Virgin Galactic event”, one of which displayed an image of the Virgin group’s founder. These facts indicate to the Panel that the Respondent was aware of the Complainant and targeted its VIRGIN and VIRGIN GALACTIC trademarks at the times at which it registered the disputed domain names.

The disputed domain names <virgin-galactic.ceo>, <virgingalactic.life>, and <virgin-galactic.org> were formerly used with websites promoting alleged cryptocurrency giveaways that required Internet users first to remit cryptocurrency to a given address operated by an unidentified person or entity. One site displayed what appeared to be transaction fees for remittances. Two of these disputed domain names were later disabled by the server administrator and the other has also ceased to resolve to any active website. In all likelihood, these were scams operated with an intent for commercial gain. Two of these disputed domain name falsely claimed that their alleged giveaways were an “Official Virgin Galactic event”. In view of these circumstances, the Panel finds that these three disputed domain names are intended to attract Internet users by creating a likelihood of confusion with the Complainant’s VIRGIN and VIRGIN GALACTIC trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of a service on those websites, within the terms of paragraph 4(b)(iv) of the Policy.

The disputed domain names <virgingalactic.fund> and <virgin-galactic.net> do not appear to have ever resolved to an active website but this does not preclude a finding of use in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. In the present case, the Complainant’s VIRGIN mark, in particular, has acquired a strong reputation in multiple sectors through longstanding and widespread use. These two disputed domain names were registered at or around the same time as the other disputed domain names that have been actively used, with identical operational elements. In the Panel’s view, the most likely intended uses of the passively-held disputed domain names are the same as those of the disputed domain names that have been actively used, which are in bad faith. The Respondent provides no explanation of any other potential use of the passively‑held disputed domain names. In all these circumstances, the Panel considers that the Respondent is also using the passively-held disputed domain names in bad faith.

Therefore, the Panel finds that all the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) 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 names <virgin-galactic.ceo>, <virgingalactic.fund>, <virgingalactic.life>, <virgin-galactic.net> and <virgin-galactic.org> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: October 10, 2021

¹ The original Complaint was filed against a privacy service only, “Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf”, but the Complainant amended the Complaint to add the Registrar‑confirmed underlying registrants. In the present circumstances, the Panel considers the Registrar-confirmed underlying registrant details of the disputed domain names to constitute the concerned Respondents at issue. Furthermore, the Respondent associated with the disputed domain name <virgin-galactic.org> appears to have used the name of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the concerned Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name <virgin-galactic.org>, which includes the name of the concerned Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST‑12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.