The Complainant is Virgin Enterprises Limited, United Kingdom (“UK”), represented by A.A.Thornton & Co, United Kingdom.
The Respondent is Kozlytin Sergey Alexandrovich, Russian Federation.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2021. On October 7, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 14, 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 October 21, 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 October 22, 2021.
On October 21, 2021, the Center sent an email to the Parties in English and Russian regarding the language of the proceeding. The Complainant requested that English be the language of the proceeding and provided additional arguments in support of its request in the Complaint. The Respondent has not provided any response regarding 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 Russian of the Complaint, and the proceedings commenced on October 27, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 16, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 17, 2021.
The Center appointed Oleksiy Stolyarenko as the sole panelist in this matter on December 8, 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 BackgroundAccording to the Complaint, the Complainant is the UK company and 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 when he started a business selling popular music records by mail order under the VIRGIN name. There are now over 60 VIRGIN branded businesses that span a diverse range of sectors covering financial services, health and wellness, music and entertainment, people and planet, telecommunications and media, travel and leisure. The group has over 53 million customers worldwide and employ more than 69,000 people in 35 countries. Annual revenue is GBP16.6 billion.
In 2004, the Virgin Group established a new company, Virgin Galactic, the aim of which is, along with its sister company Virgin Orbit, to develop space vehicles, promote space tourism and undertake space science exploration. Virgin Galactic made its first test flight in 2010.
The Complainant has registered a number of VIRGIN and VIRGIN GALACTIC trademarks worldwide, including in the Russian Federation, for a broad range of goods and services related to electronics and computers, aircraft, clothing, advertising, financial consultancy, health insurance and health assessments, building construction, transportation and other goods and services related to the activities of the Complainant. Some of the VIRGIN and VIRGIN GALACTIC trademark registrations are indicated below:
- United Kingdom trademark Registration for VIRGIN No. UK00001287268 registered on March 20, 1992, in classes 35, 40, 41, 42 and 43;
- United Kingdom trademark Registration for VIRGIN No. UK00001430290 registered on May 29, 1992, in class 35;
- International Registration for VIRGIN No. 1141309 registered on May 21, 2012 for the goods and services in classes 9, 35, 36, 38 and 41 designating inter alia the Russian Federation;
- International Registration for VIRGIN GALACTIC No. 1489392 registered on August 16, 2012 for the services in classes 37, 40, 42;
- European Union (“EU”) Trademark for VIRGIN GALACTIC and design No. 004757217 registered on October 23, 2006, for the goods and services in classes 12, 16, 25, 28 and 39.
The Complainant is the owner of the domain names
The Complainant also owns
On July 11, 2021, the Virgin Galactic company made its first passenger flight into space with Sir Richard Branson and three other passengers on board. This milestone was widely reported in the media around the world.
The Respondent appears to be a Russian individual. According to the WhoIs, the disputed domain name was registered in the name of the Respondent on September 16, 2021. The disputed domain name does resolve to an active website prominently depicting VIRGIN and VIRGIN GALACTIC marks and also showing a video of the space travel on a spaceship branded with VIRGIN mark. The website also contains links to the official social media of the Virgin Galactic company and a copyright notice "Virgin Galactic" "All Rights Reserved".
5. Parties’ Contentions A. ComplainantThe Complainant contends that it has strong rights in VIRGIN and VIRGIN GALACTIC trademarks by virtue of its longstanding use and registration of the marks in a number of jurisdictions around the world. Also the Complainant indicates that its activities, activities of the Virgin Galactic company, and the founder, Sir Richard Branson receive substantial attention of the media worldwide, especially in connection with the recent first in the history of the Virgin Galactic company passenger flight into space.
The Complainant argues that the disputed domain name is identical or confusingly similar to the Complainant’s VIRGIN trademark as it incorporates the Complainant’s registered VIRGIN trademark entirely. While the word “galaktik” in the disputed domain name is an obvious misspelling of GALACTIC which merely replaces the letter “c” with a letter “k” and the word will be instantly understood by the Internet users as referring to the Complainant’s VIRGIN GALACTIC mark.
The additional word in the disputed domain name “invest” is a descriptive reference indicating that the domain name resolves to a website targeting current or potential investors in the Virgin Galactic company.
The Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant has not authorized the Respondent to use the VIRGIN and VIRGIN GALACTIC trademarks in the disputed domain name, along with reproduction of images and text which appear on the Complainant’s genuine Virgin Galactic website.
The Respondent is not commonly known by the disputed domain name.
The Respondent was fully aware of the Complainant’s reputation and the Complainant’s trademark rights on the VIRGIN and VIRGIN GALACTIC trademarks when he registered the disputed domain name.
The disputed domain name as of September 20, 2021 resolved to an active website depicting the VIRGIN and VIRGIN GALACTIC trademarks and many of the pages of this website were exact copies of elements of the Complainant’s genuine Virgin Galactic website.
The disputed domain name was registered in bad faith for the purpose of fraudulently obtaining funds and personal information from the public. The website under the disputed domain name close copying the official Virgin Galactic website and requests from the user to provide personal information such as their name, phone number and email address. Therefore, such website is likely to deceive members of the public into providing sensitive and personal information, including financial information and potentially investing in the Registrant’s business.
The use of the disputed domain name by the Respondent is disruptive to the Complainant’s business and will harm the significant reputation that exists in the VIRGIN and VIRGIN GALACTIC trademarks, and members of the public would suffer as a result of the Respondent’s activity.
Therefore, the disputed domain name has been registered and used by the Respondent in an unfair manner and in bad faith. It is also inconceivable that the Respondent had any good faith intentions at the point of registering the disputed domain name.
The Complainant seeks a decision that the domain name be transferred to the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings A. Language of ProceedingAccording to paragraph 11(a) of the Rules “unless otherwise agreed by the Parties, 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”.
In this case, the Registrar has confirmed that the language of the Registration Agreement for the disputed domain name is Russian. The Panel also notes that the Respondent is located in the Russian Federation.
The Complainant filed the Complaint in English and requested English to be the language of this proceeding indicating that, the Respondent clearly has a working knowledge of English, not least because it has chosen to target the Complainant’s the VIRGIN and VIRGIN GALACTIC trademarks, which consist of English words, and that requiring the Complainant to translate the Complaint and all documents into Russian would cause unjustified delay in resolution of this case.
The Panel notes that the disputed domain name is composed of Latin characters, and that “virgininvestgalaktik” is not a dictionary word or phrase in Russian.
Furthermore, the website under the disputed domain name is completely written in English, that shows a good command of English by the Respondent.
In previous similar cases, panels have found that certain scenarios may warrant proceeding in a language other than that of the registration agreement (see section 4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).
While applying the provision on the language of the proceeding the Panel considers that it should be also ensured 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.
The Center duly notified the Respondent in English and in Russian on the request of the Complainant to use English as the language of the proceeding. The Respondent was also provided with an opportunity to object and request the proceeding to not be carried in English.
Furthermore, the Panel notes that the Center sent the notification of the Complaint and commencement of the proceeding to the Parties in both languages (English and Russian), accepting the Complaint filed in English, and giving equal opportunities to the Parties to participate in the proceeding. In addition, the Panel notes that the Respondent did not submit a formal Response, and did not use an opportunity to argue his case.
The Center also appointed the Panel that is familiar with both English and Russian in order to treat the Parties equally in the proceeding.
Therefore, the Panel concludes that each Party of the proceeding was treated fairly and was provided a fair opportunity to present its case.
The Panel also finds additional translation of the filings would unfairly disadvantage and burden the Parties and delay the proceeding and adjudication of this matter.
Based on the foregoing, the Panel concludes that it is not unfair to the Parties to proceed in English and finds that it is appropriate to exercise its discretion and allow the proceeding to be conducted in English.
B. Identical or Confusingly SimilarThe Complainant has proved its rights in the VIRGIN and VIRGIN GALACTIC trademarks through international registrations dating back to 1992 designating numerous countries worldwide including the Russian Federation, and also through national trademark registrations registered in various countries of the world.
Therefore, the Panel considers that the Complainant has satisfied the threshold requirement of having relevant trademark rights.
The disputed domain name is comprised of the words “virgin", "invest” and “galaktik” combined with the generic Top-Level Domain (“gTLD”) “.com”.
Thus, the Panel finds that the disputed domain name incorporates the Complainant’s VIRGIN and VIRGIN GALACTIC trademarks entirely.
Furthermore, the Panel considers that the disputed domain name is confusingly similar to the Complainant’s the VIRGIN and VIRGIN GALACTIC trademarks.
The Panel notes that the disputed domain misspells word "galactic" as “galaktik” which does not prevent the Complainant’s trademarks from being recognizable in the disputed domain name.
The gTLD is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See section 1.11.1 of the WIPO Overview 3.0. Therefore, the Panel disregards the TLD for the purposes of this comparison.
The Panel finds that according to a side-by-side comparison the disputed domain name reproduces the Complainant’s the VIRGIN and VIRGIN GALACTIC trademarks and, thus, that the Complainant’s the VIRGIN and VIRGIN GALACTIC trademarks are recognizable within the disputed domain name.
Previous UDRP panels have consistently held that the addition of a descriptive term to a disputed domain name that incorporates a trademark in its entirety typically does not prevent the finding of confusing similarity. See LEGO Juris A/S v. DBA David Inc/ DomainsByProxy.com,WIPO Case No. D2011-1290.
For all the foregoing reasons, the Panel finds that the first element of paragraph 4(a) of the Policy has therefore been satisfied by the Complainant.
C. Rights or Legitimate InterestsParagraph 4(a)(ii) of the Policy requires the complainant to establish that the respondent has no rights or legitimate interests in the domain name. Once the Complainant establishes a prima facie case against the Respondent under this ground, the burden of production shifts to the Respondent to rebut it. See section 2.1 of the WIPO Overview 3.0. In this case, the Respondent did not rebut the Complainant’s prima facie case regarding the lack of rights or legitimate interests.
However, the overall burden of proof remains with the Complainant. Paragraph 4(c) of the Policy provides circumstances that demonstrate the respondent’s rights or legitimate interests to the disputed domain name, and that complainants frequently address to show that the activities of the respondent does not fall under the bona fide offering of goods or services (paragraph 4(c)(i) of the Policy), that the respondent is not commonly known by the disputed domain name (paragraph 4(c)(ii) of the Policy) and that the respondent is not involved into a legitimate noncommercial or fair use of the disputed domain name (paragraph 4(c)(iii) of the Policy).
The Panel finds that because the disputed domain name
Furthermore, the disputed domain name resolves to a website which impersonates the official website of the Complainant, prominently displaying the VIRGIN and VIRGIN GALACTIC trademarks, text and videos from the Complainant’s website “www.virgingalactic.com”.
According to the Complainant, the Respondent is not an authorized or licensed to use the VIRGIN and VIRGIN GALACTIC trademarks in the disputed domain name, as well as not authorized to use text, videos and other elements of the official Complainant’s website.
The fact that the Respondent’s website under the disputed domain name contains links to the official Complainant’s pages in social media confirms that the Respondent was well aware that the VIRGIN and VIRGIN GALACTIC are trademark of the Complainant, and of the Complainant’s products and activities.
The Panel notes, that as it was found by the previous UDRP panels any type of impersonation or passing off supports finding that the respondent has no rights or legitimate interests in the domain name. See section 2.13.1 of the WIPO Overview 3.0.
The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
Therefore, the Panel also finds that the Respondent is not involved in a bona fide offering of goods or services (under paragraph 4(c)(i) of the Policy) and the Respondent’s activities does not fall under a legitimate noncommercial use (under paragraph 4(c)(iii) of the Policy).
According to the Registrar’s information, “Kozlytin Sergey Alexandrovich” is the registrant of the disputed domain name. The Panel did not find any evidence that the Respondent is commonly known by the disputed domain name
Thus, the Panel finds that the Complainant has satisfied the second element of the Policy, namely paragraph 4(a)(ii).
D. Registered and Used in Bad FaithAs the Panel established above, the Complainant’s the VIRGIN and VIRGIN GALACTIC trademarks were widely used in commerce well before the registration of the disputed domain name on September 16, 2021.
The Panel finds that the Respondent knew of the Complainant’s the VIRGIN and VIRGIN GALACTIC trademarks when registering the disputed domain name. This conclusion is supported by the facts that the disputed domain name is confusingly similar to the Complainant’s the VIRGIN and VIRGIN GALACTIC trademarks, that the disputed domain name is linked to a page prominently displaying the VIRGIN and VIRGIN GALACTIC trademarks, text and videos from the Complainant’s website “www.virgingalactic.com”, it also has links to official Complainant’s pages in social media and the Respondent offers an opportunity to "invest" into the "Complainant's business" subject to registration and provision of personal information by the Internet users.
Previous panels found that bad faith is demonstrated when the Respondent registered the disputed domain name with the purpose of using it for unlawful purposes, profiting from the attempts to solicit business transactions with third parties while impersonating the Complainant, creating a likelihood of confusion and aiming to take undue advantage of the Complainant’s reputation and goodwill. See Minerva S.A. v. TT Host,WIPO Case No. D2016-0384.
Furthermore, previous panels also indicated that when the disputed domain name links to a webpage containing complainant’s trademark and offers to the user to complete an online questionnaire for a reward that could be an evidence of a fraudulent activity and intention of the respondent to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the complainant. See Decathlon v. WhoisGuard Protected, WhoisGuard, Inc. / Christopher Bost, Drone Squad, WIPO Case No. D2018-1649.
The Panel finds here as well that the Respondent’s intention has always been to use the disputed domain name to intentionally attract, for commercial gain, Internet users to the website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location (see paragraph 4(b)(iv) of the Policy).
Furthermore, the Panel finds it implausible that the disputed domain name could be used by the Respondent in good faith considering that it is identical to the Complainant’s trademark.
The Responded failed to submit a response or provide any evidence of a good-faith use or to show rights or legitimate interests in the disputed domain name.
Therefore, under the totality of the circumstances, the Panel finds the Respondent registered and used the disputed domain name in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, 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
Oleksiy Stolyarenko
Sole Panelist
Date: December 25, 2021