The Complainant is Virgin Enterprises Limited, United Kingdom, represented by A.A.Thornton & Co, United Kingdom.
The Respondent is Contact Privacy Inc. Customer 12410609270, Canada / John Specogna, Canada.
2. The Domain Name and RegistrarThe Disputed Domain Name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 30, 2021. On July 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On July 30, 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 2, 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 3, 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 6, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2021. The Respondent’s informal communication email was received by the Center on August 3, 2021. The Center sent Commencement of Panel Appointment Process to the Parties on August 27, 2021.
The Center appointed Colin T. O'Brien as the sole panelist in this matter on September 3, 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 BackgroundThe 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. There are over 60 VIRGIN branded businesses that span a diverse range of sectors which have between them over 53 million customers worldwide and employ more than 69,000 people in 35 countries. Annual revenue for the Virgin Group is GBP 16.6 billion.
The Complainant owns a portfolio of 3,500 trademark applications and registrations in over 150 jurisdictions covering the majority of the 45 Nice classes of goods and services:
United Kingdom Trademark Registration No. UK00001287268 for the mark VIRGIN in classes 35, 40, 41, 42, and 43, registered on April 5, 1991;
United Kingdom Trademark Registration No. UK00001430290 for the mark VIRGIN in class 35, registered on May 29, 1992;
United Kingdom Trademark Registration No. UK00001369779 for the mark VIRGIN in class 9, registered on March 20, 1992;
United Kingdom Trademark Registration No. UK00001585773 for the mark VIRGIN in class 36, registered on October 20, 1995;
European Union Trademark Registration No. 004262093 for the mark VIRGIN in classes 35, 36, 37, and 44, registered on March 17, 2006;
International Trademark Registration No. 1141309 for the mark VIRGIN in classes 9, 35, 36, 38, and 41, registered on May 21, 2012;
United Kingdom Trademark Registration No. UK00003187698 for the mark VIRGIN GALACTIC in classes 12, 16, 25, 28, and 39, registered on January 13, 2017;
European Union Trademark Registration No. 004756921 for the mark VIRGIN GALACTIC in classes 12, 16, 25, 28, and 39, registered on January 18, 2007;
International Trademark Registration No. 1489392 for the mark VIRGIN GALACTIC in classes 37, 40, and 42, registered on July 10, 2019.
The Complainant 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.
In 2004, the Complainant established Virgin Galactic, to develop space vehicles, promote space tourism, and undertake space science exploration. The Virgin Galactic made its first test flight in 2010.
On July 11, 2021, the same day on which the Disputed Domain Name was registered, Virgin Galactic made its inaugural passenger flight into space with Sir Richard Branson and three other passengers on board. The spaceship used to make the first VIRGIN GALACTIC flight to the edge of space was named “Unity”.
5. Parties’ Contentions A. ComplainantThe Disputed Domain Name is comprised of the terms “virgin galactic” and “unity”, and therefore incorporates the Complainant’s registered mark VIRGIN GALACTIC entirely. The Complainant’s registered mark VIRGIN GALACTIC has been combined with the Complainant’s unregistered mark UNITY, which is a reference to the name of the space plane which made its first passenger flight to the edge of space on July 11, 2021. The combination of the Complainant’s registered mark VIRGIN GALACTIC with its unregistered mark UNITY will confuse the relevant public into believing that the Disputed Domain name is associated with the Complainant and is intended to refer to the Complainant’s Unity space plane.
The Disputed Domain redirects to the website “www.teslametalsltd.com”. The domain name
The Disputed Domain Name resolves to the website, which is seeking investment in a business associated with mining materials for use in space related projects. The website indicates the name of its business is TesLa Metals Ltd., Tesla being the name of a well-known business owned by Elon Musk who is competing with the Complainant in the field of space travel via his company SpaceX. The website claims it has no association with Tesla but makes frequent reference to quotes by Elon Musk and displays YouTube videos of Elon Musk. This activity is an indication of suspicious behavior by the registrant of domain name
The use of the Disputed Domain name to redirect to another website displaying videos and frequent reference to quotes by the Complainant’s competitor is an indication of bad faith, and such bad faith supports a finding that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
There is no evidence that the Respondent has any rights or legitimate interests in the Disputed Domain Name. Nor is there any evidence the Respondent is using, or has made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods and services. There is no evidence that the Respondent has been commonly known by the Disputed Domain Name or any trademarks being used in the Disputed Domain Name which are all trademarks belonging to the Complainant and in which the Complainant has a strong reputation and goodwill.
The selection of the Disputed Domain Name that contains terms identical to the entirety of the Complainant’s registered mark VIRGIN GALACTIC, together with the Complainant’s unregistered mark UNITY is to take advantage of the significant reputation in those marks in order to drive traffic to the third party’s website.
It is highly likely that the registration of the Disputed Domain Name is solely for the purpose diverting traffic to the third party’s website for the Respondent’s commercial gain. Use of a domain name to redirect to the commercial website has consistently been held by WIPO UDRP Panels to create a presumption of bad faith.
It is clear that the Respondent was aware of the Complainant’s business at the time the Disputed Domain Name was registered, as evidenced by the strong reputation the Complainant had in its trademarks at the date the Disputed Domain Name was registered, and as evidence by the coincidental registration of the Disputed Domain Name on the same day the Complainant made its journey to the edge of space and was receiving significant media attention.
The use of the Complainant’s registered marks and unregistered mark within the Disputed Domain Name is likely to confuse the public into believing that the website at the Disputed Domain Name which redirected to “www.teslametalsltd.com” is affiliated with or endorsed by the Complainant. This is likely to deceive Internet users into providing sensitive and personal information, including financial information and potentially investing in the Respondent’s business. It is also inconceivable that the Respondent had any good faith intentions at the point of registering the Disputed Domain Name.
B. RespondentAfter receiving the Amended Complaint and related Annexes, the Respondent emailed the following to the Center “Acknowledge receipt you imbecile scumbags”, but did not refute any of the claims made by the Complainant.
6. Discussion and Findings A. Identical or Confusingly SimilarThe Complainant has demonstrated it owns registered trademark rights in the VIRGIN and VIRGIN GALACTIC trademarks both worldwide and in the United States of America. The Complainant has also established the fame of its space plane named Unity. The Disputed Domain Name incorporates the Complainant’s VRIGIN and VIRGIN GALACTIC marks in their entirety as well as the Complainant’s unregistered mark UNITY. The addition of the generic Top-Level Domain (“gTLD”) “.com” does not avoid a finding of confusing similarity.
Accordingly, the Disputed Domain Name is confusingly similar to marks in which the Complainant has rights.
B. Rights or Legitimate InterestsThe Complainant has presented a prima facie case that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and has not at any time been commonly known by the Disputed Domain Name. The fact that the Respondent registered the Disputed Domain Name on the same day the Virgin Galactic Unity space plane made its maiden flight into space indicates that the Respondent likely sought to obtain a windfall based on the sale of the Disputed Domain Name to the Complainant.
After a complainant has made a prima facie case, the burden of production shifts to the respondent to present evidence demonstrating rights or legitimate interests in the domain name. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455.
Here, the Respondent has provided no evidence of any rights or legitimate interests in the Disputed Domain Name; rather, the evidence suggests that it was registered to make an undue profit based on the Complainant’s rights. See, e.g., Bottega Veneta SA v. ZhaoJiafei,WIPO Case No. D2013-1556.
In the absence of any evidence rebutting the Complainant’s prima facie case indicating the Respondent’s lack of rights or legitimate interests in respect of the Disputed Domain Name, the Panel finds that the Complainant has satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad FaithThe Disputed Domain Name was registered many years after the Complainant first registered and used its famous VIRGIN and VIRGIN GALACTIC trademarks. The evidence on the record provided by the Complainant with respect to the extent of use of its VIRGIN and VIRGIN GALACTIC trademarks, combined with the absence of any evidence provided by the Respondent to the contrary, is sufficient to satisfy the Panel that, at the time the Disputed Domain Name was registered, the Respondent undoubtedly knew of the Complainant’s VIRGIN and VIRGIN GALACTIC trademarks, and knew that it had no rights or legitimate interests in the Disputed Domain Name. The Complainant has provided evidence the Disputed Domain Name was registered on the same day that the Complainant’s space plane Unity first entered space.
There is prima facie no non-benign reason for the Respondent to have registered the Disputed Domain Name containing VIRGIN and VIRGIN GALACTIC trademarks and unregistered UNITY trademark. The Complainant has provided evidence that the Disputed Domain Name resolves to a website which claims to be for an entity called TesLa Metals Ltd. which does not appear to be an actual company. Further, Tesla and its CEO Elon Musk are well-known competitors to the Complainant and its own CEO, Richard Branson. While there is no evidence that Mr. Musk or Tesla is associated with the Disputed Domain Name, the use of the TESLA mark and videos of Mr. Musk on the website indicate to the Panel that the Respondent sought to create a situation in which the Complainant would have to purchase the Disputed Domain Name from the Respondent, so that Internet users searching for
The evidence in the file indicates the Respondent’s decision to register the Disputed Domain Name was deliberate with the intention to illegitimately benefit from the Complainant’s successful launch of its Unity space plane, and the ensuing increased reputation and goodwill of the Complainant’s trademarks and the decision to place videos of Elon Musk on the website further establishes the bad faith registration and use on the part of the Respondent.
This Panel finds that the Complainant has satisfied paragraph 4(a)(iii) of the Policy.
7. DecisionFor 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
Colin T. O'Brien
Sole Panelist
Date: September 20, 2021