The Complainant is Virgin Enterprises Limited, United Kingdom, represented by A. A. Thornton & Co., United Kingdom.
The Respondent is 石磊 (Shi Lei), China.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint in English was filed 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 disputed domain names. On August 12, 2021, 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 23, 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 in English on August 25, 2021.
On August 23, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On August 24, 2021, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.
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 in English and Chinese of the Complaint, and the proceedings commenced on August 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 19, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 19, 2021.
The Center appointed Rachel Tan as the sole panelist in this matter on October 21, 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, Virgin Enterprises Limited, is member of a group of companies that are collectively known as “the Virgin Group” which was established in 1970. There are now over 60 VIRGIN branded businesses covering financial services, health, music and entertainment, telecommunications and media, and travel and leisure. It has over 53 million customers worldwide and employs more than 69,000 people in 35 countries. The Virgin Group established Virgin Galactic in 2004 to develop space vehicles, promote space tourism, and undertake space science exploration.
The Complainant is responsible for registering and maintaining registrations for trade marks containing the Virgin name worldwide, including United Kingdom Trade Mark Registration No. UK00001287268 for the mark VIRGIN, registered on April 5, 1991, in classes 35, 40, 41, 42, and 43; International Trade Mark Registration No. 1141309 for the mark VIRGIN, registered on May 21, 2012, in classes 9, 35, 36, 38, and 41;United Kingdom Trade Mark Registration No. UK00003187698 for the mark VIRGIN GALACTIC, registered on January 13, 2017, in classes 12, 16, 25, 28, and 39; and International Trade Mark Registration No. 1489392 for the mark VIRGIN GALACTIC, registered on July 10, 2019, in classes 37, 40, and 42.
The Complainant has operated a website at “www.virgin.com” since 2000 to promote the activities of the VIRGIN Group and a website at “www.virgingalactic.com” since around 2002 to provide information about the VIRGIN GALACTIC branded business and projects.
The Respondent is 石磊 (Shi Lei), China.
The disputed domain names were registered on July 11, 2021, which is the same day Virgin Galactic made its first passenger flight into space. At the date of this decision, all the disputed domain names resolve to active webpages that list out multiple third-party links related to different advertisements covering a variety of content, such as “Air Flights”, “Team Galactic”, “Space Trip”, “Richard Branson”, “Casio Online”, and “Online Travel Ticket Booking”, among others.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the disputed domain names are confusingly similar to its registered marks. The disputed domain name
The Complainant further alleges that the disputed domain names either redirect to pay-per-click advertising, fake news articles, or promotions of cryptocurrency schemes which are almost certainly fake schemes and scams designed to take advantage of the Complainant’s significant reputation in its marks in order to drive traffic to the Respondent’s websites and gain money from the public. There is no evidence that the Respondent has any rights or legitimate interests in the disputed domain names, nor is there any evidence the Respondent is using, or has made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods and services. Further, there is no evidence that the Respondent has been commonly known by the disputed domain names.
The Complainant finally asserts that the disputed domain names are being used to resolve to different kinds of websites, including pay per click advertising pages and websites promoting fraudulent cryptocurrency schemes. Those disputed domain names which are used to promote cryptocurrency schemes are being used in bad faith to deceive the public into signing up for the fraudulent schemes which is likely done for illegitimate commercial gain. Those disputed domain names which resolve to pay-per-click advertising websites are also being used in bad faith as adverts displayed on these websites promote competitors of the Complainant. The Respondent was aware of the Complainant’s business at the time the disputed domain names were registered, and has no reasonable justification for choosing the disputed domain names which comprise the Complainant’s marks. The Complainant further alleges that the Respondent has historically engaged in a pattern of bad faith behaviour by abusively registering third party marks as domains names.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1 Language of the ProceedingInitially, the Panel must address the language of the proceeding. Paragraph 11(a) of the Rules provides that the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the parties, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceeding. The panel may choose to write a decision in either language, or request translation of either party’s submissions.
In this case, the Registrar has confirmed to the Center that the language of the Registration Agreement as used by the Respondent for the disputed domain names is Chinese. However, the Complainant has requested that English be adopted as the language of the proceeding because the text of the websites is in fluent English which demonstrates that the Respondent has a good understanding of the English language.
It is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding, in order to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding.
The Panel having considered the circumstances finds that English shall be the language of this proceeding. The reasons are set out below:
(a) The Complainant is a company based in the United Kingdom. Requiring the Complainant to submit documents in Chinese would lead to delay and cause the Complainant to incur in translation expenses;
(b) The Respondent’s choice of Roman letters for the disputed domain names and the English content of the webpages under the disputed domain names, indicates some familiarity with the English language;
(c) Even if the Respondent does not possess a sufficient command of English to understand the Complaint, there were ample opportunities for the Respondent to raise an objection. The Center notified the Parties in English and Chinese of the Complainant’s request for English to be the language of the proceeding, but the Respondent did not protest against this request; and
(d) The Respondent has failed to participate in the proceeding even though the Center sent the notification of the Complaint in English and Chinese, and has been notified of its default.
The Complaint has been submitted in English. No foreseeable procedural benefit may be served by requiring Chinese to be used. On the other hand, the proceeding may proceed expeditiously in English.
Accordingly, the Panel will proceed with issuing this decision in English.
6.2 Substantive Issues A. Identical or Confusingly SimilarThe Panel is satisfied that the Complainant has adduced evidence to demonstrate its established rights in the VIRGIN and VIRGIN GALACTIC trade marks.
The Panel notes the disputed domain name
The Panel notes the rest of the disputed domain names are all consist of intentional misspelling (i.e., addition of a letter or substitution of an adjacent keyboard letter) of the Complainant’s VIRGIN and VIRGIN GALACTIC marks. The misspellings do not prevent a finding of confusing similarity between the VIRGIN and VIRGIN GALACTIC marks and these disputed domain names. In cases where a domain name consists of a common, obvious, or intentional misspelling of a trade mark, the domain name will normally be considered confusingly similar to the relevant mark for purposes of UDRP standing. See section 1.9 of the WIPO Overview 3.0; see also Mediarex Enterprises Limited v. Yong Woon Chin, Webolutions,WIPO Case No. DCO2020-0014.
Further, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”), in this case “.com”. See section 1.11.1 of the WIPO Overview 3.0.
Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsIn circumstances where the Complainant possesses exclusive rights to the VIRGIN and VIRGIN GALACTIC marks, whereas the Respondent seems to have no trade mark rights, and considering the facts and arguments set out above, the Panel is satisfied that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, and the burden of production shifts to the Respondent. See section 2.1 of the WIPO Overview 3.0.
The Respondent has not provided evidence of a legitimate use of the disputed domain names or reasons to justify the choice of terms that are identical or closely similar to “virgin” and “virgin galactic”. Further, there is no indication to show that the Respondent is commonly known by the disputed domain names or otherwise has rights or legitimate interests in any of them. In addition, the Complainant has not granted the Respondent a license or authorization to use the Complainant’s VIRGIN and VIRGIN GALACTIC marks or register the disputed domain names. The Respondent is not making a noncommercial use of the disputed domain names in the terms of paragraph 4(c)(iii) of the Policy since at the date of this Decision all the disputed domain names are resolving to websites with links to third-party websites including some that directly reference the Complainant’s business. Such usage may reasonably be assumed to be commercial in its intent and effect. Past UDRP panels have found that the use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering of goods or services where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. See section 2.9 of the WIPO Overview 3.0.
Therefore, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names. Accordingly, the Panel finds that the Complainant has satisfied the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithThe Complainant’s VIRGIN and VIRGIN GALACTIC marks have been widely registered around the world. The disputed domain names were registered well after the registration of the Complainant’s VIRGIN and VIRGIN GALACTIC marks. Through extensive use and advertising, the Complainant’s VIRGIN and VIRGIN GALACTIC marks are known throughout the world. Search results using the key words “virgin” and “virgin galactic” on the Internet search engine direct Internet users to the Complainant and its products and services, which indicates that an exclusive connection between the VIRGIN and VIRGIN GALACTIC marks and the Complainant has been established. As such, the Respondent either knew or should have known of the Complainant’s VIRGIN and VIRGIN GALACTIC marks when registering the disputed domain names, and has exercised “the kind of willful blindness that numerous panels have held support a finding of bad faith”. See eBay Inc. v. Renbu Bai,WIPO Case No. D2014-1693; Barclays Bank PLC v. Andrew Barnes,WIPO Case No. D2011-0874.
Section 3.1.4 of the WIPO Overview 3.0 states that “[…] mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith”. In this case, the disputed domain names are confusingly similar to the VIRGIN and VIRGIN GALACTIC marks, meaning that bad faith registration of the disputed domain names can be presumed.
The disputed domain names currently direct Internet users to parking websites where Internet users are presented with different third-party websites of a commercial nature, some of which are the Complainant’s competitors. The adoption by the Respondent of the “pay per click” business model using the Complainant’s trade mark without authorization for the purpose of attracting Internet users, may lead Internet users to be confused into thinking, even if only initially, that these websites are in some way endorsed by the Complainant. Such use constitutes evidence of bad faith registration and use as contemplated under paragraph 4(b)(iv) of the Policy.
The Panel also notes that the Respondent appears to be engaged in a pattern of abusive registration having registered multiple domain names comprising third-party trade marks. The Panel finds this case is a continuation of that bad faith pattern. See Sidley Austin LLP v. 石磊 (Shi Lei),WIPO Case No. D2020-3004. Such use constitutes evidence of bad faith registration and use as contemplated under paragraph 4(b)(ii) of the Policy.
The Respondent has kept silent in the face of the Complainant’s allegations of bad faith. Taking into account these circumstances, the Panel finds that the Respondent must have known of the Complainant before registering the disputed domain names and, considering the Respondent’s lack of rights or legitimate interests, and by registering and using the disputed domain names as discussed above, the Panel is led to conclude that the disputed domain names were registered and are being used in bad faith.
Accordingly, the Panel finds that the Complainant has satisfied the third element under paragraph 4(a) 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 names
Rachel Tan
Sole Panelist
Date: November 4, 2021