The Complainant is Virgin Enterprises Limited, United Kingdom (the “UK”), represented by A.A.Thornton & Co, UK.
The Respondent is Privacy Protection, the Russian Federation /LLC Ruslan Khaziev, the Russian Federation.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on August 10, 2021. On August 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 12, 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 August 16, 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 18, 2021.
On August 16, 2021, the Center sent an email to the Parties in English and Russian regarding the language of the proceedings. On August 17, 2021, the Complainant reconfirmed its request that English be the language of the proceedings referring to respective arguments in support of its request. The Respondent did not provide any comments regarding the language of the proceedings.
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 in both English and Russian, and the proceedings commenced on August 26, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 15, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 6, 2021.
The Center appointed Piotr Nowaczyk as the sole panelist in this matter on October 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 BackgroundVirgin Enterprises Limited, the Complainant in the present proceedings, is a member of a group of companies collectively known as “the Virgin Group”.
The Virgin Group operates in a diverse range of sectors covering Financial Services, Health & Wellness, Music & Entertainment, People & Planet, Telecommunications & Media and Travel & Leisure. According to the Complainant, the Virgin Group has now over 53 million customers worldwide. Its annual revenue amounts to GBP 16.6 billion.
In 2004 the Virgin Group established Virgin Galactic. The aim of the company is, along with its sister company Virgin Orbit, to develop space vehicles, promote space tourism and undertake space science exploration.
The Complainant is the owner of numerous VIRGIN and VIRGIN GALACTIC trademark registrations, including:
- UK Trade Mark Registration VIRGIN No. UK00001287268 registered on April 5, 1991;
- European Union Trade Mark Registration VIRGIN No. 004262093 registered on March 17, 2006;
- International Trade Mark Registration VIRGIN No. 1141309 registered on May 21, 2012;
- International Trade Mark Registration VIRGIN GALACTIC No. 1489392 registered on July 10, 2019;
- European Union Trade Mark Registration No. 004757217 registered on October 23, 2006.
The Complainant is also the owner of numerous domain names incorporating its VIRGIN mark, including
The Respondent registered the Domain Name on July 19, 2021.
As of the date of this Decision, the Domain Name resolves to a website inviting Internet users to participate in the Bitcoin (the “BTC”) giveaway. According to the rules presented on the website, if BTC is sent to a named payment account, double the amount of BTC is sent back (the “Website”).
5. Parties’ Contentions A. ComplainantThe Complainant requests that the Domain Name be transferred to the Complainant. According to the Complainant, each of the three elements specified in paragraph 4(a) of the Policy are satisfied in the present case.
First, the Complainant submits that the Domain Name is confusingly similar to the trademark registrations of the Complainant.
Second, the Complainant argues that the Respondent has neither rights nor legitimate interests in the Domain Name.
Third, the Complainant submits that the Domain Name was registered and is being used in bad faith.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and FindingsParagraph 4(a) of the Policy places a burden on the Complainant to prove the presence of three separate elements, which can be summarized as follows:
(i) the disputed domain name is 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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The requested remedy may only be granted if the above criteria are met.
At the outset, the Panel notes that the applicable standard of proof in UDRP cases is the “balance of probabilities” or “preponderance of the evidence”. See section 4.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
A. Language of ProceedingsThe language of the Registration Agreement for the Domain Name is Russian. Paragraph 11(a) of the Rules provides that “unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding”. The Panel may also order that any documents submitted in a language other than that of the proceeding be translated.
As noted by previous UDRP panels, paragraph 11 of the Rules must be applied in accordance with the overriding requirements of paragraphs 10(b) and 10(c) of the Rules that the parties are treated equally, that each party is given a fair opportunity to present its case, and that the proceeding takes place with due expedition (see, e.g., General Electric Company v. Edison Electric Corp. a/k/a Edison Electric Corp. General Energy, Edison GE, Edison-GE and EEEGE.COM,WIPO Case No. D2006-0334).
The Complainant has submitted a request that the language of the proceedings be English. The Complainant contends that it is clear from the use of English terms within the Domain Name and the content of the Website, which is written in fluent English, that the Respondent has a good understanding of the English language.
This Panel finds that substantial additional expense and delay would likely be incurred if the Complaint had to be translated into Russian. Moreover, given the content of the Website written in fluent English, this Panel accepts that the Respondent is familiar with the English language. Finally, the Panel notes that the Respondent did not comment on the language of the proceedings.
Thus, taking all these circumstances into account, the Panel finds that it is appropriate to exercise its discretion and allow the proceedings to be conducted in English.
B. Identical or Confusingly SimilarThe first element that the Complainant must establish is that the Domain Name is identical or confusingly similar to the Complainant’s trademark rights.
The Complainant holds several valid VIRGIN trademark registrations, which precede the registration of the Domain Name.
The Domain Name incorporates the Complainant’s VIRGIN trademark in its entirety. As numerous UDRP panels have held, incorporating a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to a registered trademark (see PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS),WIPO Case No. D2003-0696).
This Panel finds that the addition of the letters/term “bit” does not prevent confusing similarity between the Domain Name and the Complainant’s trademark. UDRP panels have consistently held that 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. See WIPO Overview 3.0, section 1.8.
The Top-level domain “.info” in the Domain Name is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See WIPO Overview 3.0, section 1.11.1.
Given the above, the Panel finds that the Domain Name is confusingly similar to the Complainant’s trademark. Thus, the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate InterestsThe second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the Domain Name.
The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(a) that it has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute; or
(b) that it is commonly known by the domain name, even if it has not acquired any trademark rights; or
(c) that it is making a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
Although given the opportunity, the Respondent has not submitted any evidence indicating that any of the circumstances foreseen in paragraph 4(c) of the Policy are present in this case.
On the contrary, it results from the evidence in the record that there are the Complainant’s VIRGIN trademark registrations, which predate the Respondent’s registration of the Domain Name. There is no evidence in the case that the Complainant has licensed or otherwise permitted the Respondent to use the VIRGIN trademark or to register the Domain Name incorporating this trademark. There is also no evidence to suggest that the Respondent has been commonly known by the Domain Name.
Moreover, it results from the evidence in the record that the Respondent does not make use of the Domain Name in connection with a bona fide offering of goods or services, as well as it does not make a legitimate, noncommercial or fair use of the Domain Name without intent for commercial gain.
The Panel acknowledges the Complainant’s allegations that it has been recently targeted by a number of BTC and cryptocurrency related scams, which seek to suggest that the Complainant is associated with or endorse a purported BTC scheme that is actually a scam. The Complainant underlines that it has never endorsed the BTC investment schemes.
As of the date of this Decision, the Domain Name resolves to the Website featuring the Complainant’s marks and inviting Internet users to participate in the BTC giveaway. The participant needs to send the BTC to a named payment account in order to allegedly receive double the amount of the BTC. The Panel accepts that it is highly likely that the activity carried out through the Website is fraudulent and is not a bona fide giveaway. Thus, the Complainant’s marks have been used in the Domain Name and on the Website to give credibility to the scheme with a view to scamming Internet users out of money. Such use of the Domain Name does not qualify as a legitimate noncommercial or fair use.
Furthermore, the nature of the Domain Name suggests an affiliation with the Complainant and its VIRGIN trademark, as the Domain Name reproduces the Complainant’s trademark in entirety with the additional letters/term “bit”. Also, the Website features the Complainant’s VIRGIN GALACTIC mark. Fundamentally, the Respondent’s use of the Domain Name will not be considered “fair” if it falsely suggests affiliation with the Complainant as a trademark owner. See WIPO Overview 3.0, section 2.5.
Given the above, the Respondent has failed to invoke any circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the Domain Name. Thus, there is no evidence in the case file that refutes the Complainant’s submissions. The Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad FaithThe third requirement the Complainant must prove is that the Domain Name has been registered and is being used in bad faith.
Bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant’s mark. See WIPO Overview 3.0, section 3.1.
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the domain name were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or
(iii) circumstances indicating that the domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the domain name has intentionally been used in an attempt to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.
As indicated above, the Complainant’s rights in the VIRGIN and VIRGIN GALACTIC marks predate the registration of the Domain Name. This Panel finds that the Respondent was or should have been aware of the Complainant’s trademarks at the time of registration of the Domain Name. This finding is supported by the content of the Website. Also, it has been proven to the Panel’s satisfaction that the Complainant’s VIRGIN trademark is well-known and unique to the Complainant. Thus, the Respondent could not likely reasonably ignore the reputation of products and service the trademarks identify. In sum, the Respondent in all likelihood registered the Domain Name with the expectation of taking advantage of the reputation of the Complainant’s trademarks.
Moreover, the Domain Name is being used in bad faith by the Respondent to invite Internet users to participate in the BTC giveaway, in which BTC needs to be sent to a named payment account in order to allegedly receive double the amount of BTC. Using the Complainant’s trademarks in the Domain Name and on the Website is undoubtedly aimed at giving credibility to the Respondent’s activity carried out through the Website. Such use of the Domain Name also risks damage to the Complainant’s reputation, as customers would expect to be participating in the giveaway organized or endorsed by the Complainant. Additionally, as previously noted, the nature of the Domain Name suggests an affiliation with the Complainant. In consequence, the Panel accepts that the Respondent is using the Domain Name in an attempt to attract, for commercial gain, Internet users to the Website by creating a likelihood of confusion with the VIRGIN and VIRGIN GALACTIC trademarks as to the source, sponsorship, affiliation, or endorsement of the Website or the activity carried out through this Website by the Respondent.
For the reasons discussed above, the Panel finds that the Complainant has proved the requirements under 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 Domain Name
Piotr Nowaczyk
Sole Panelist
Date: November 9, 2021