Complainant is Virgin Enterprises Limited, United Kingdom (“UK”), represented by A. A. Thornton & Co., UK.
Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Cristian Moisa, Romania.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 29, 2021. On November 30, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 3, 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 Complainant on December 9, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on December 13, 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 Respondent of the Complaint, and the proceedings commenced on December 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was January 19, 2022. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 20, 2022.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on February 10, 2022. 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 BackgroundComplainant is a member of the Virgin Group, an international group of companies established in 1970 providing goods and services in divers sectors such as financial services, health and wellness, music and entertainment, people and planet, telecommunications and media, and travel and leisure. Virgin Galactic is one of the Virgin Group’s sister companies which was established in 2004 to develop space vehicles, promote space tourism and undertake space science exploration. Virgin Galactic’s inaugural passenger flight into space was realized on the July 11, 2021, and was mediatized around the world.
Complainant owns trademark rights in the VIRGIN sign and the VIRGIN GALACTIC sign, notably through the following trademark registrations (”Registered Trademarks”):
- UK trademark registration no. UK00001287268 VIRGIN filed October 2, 1986, and duly renewed, in classes 35, 40, 41, 42 and 43;
- UK trademark registration no. UK00001430290 VIRGIN filed July 3, 1990, and duly renewed in class 35;
- UK trademark registration no. UK00001369779 VIRGIN filed January 12, 1989, and duly renewed, in class 9;
- UK trademark registration no. UK00001585773 VIRGIN filed September 15, 1994, and duly renewed, in class 36;
- European Union (“EU”) trademark registration no. 004262093 VIRGIN filed January 28, 2005, and duly renewed, in classes 35, 36, 37 and 44;
- International trademark registration no. 1141309 VIRGIN registered May 21, 2012, in classes 9, 35, 36, 38 and 41;
- UK trademark registration no. UK00003187698 VIRGIN GALACTIC filed September 26, 2016, in classes 12, 16, 25, 28 and 39;
- EU trademark registration no. 004756921 VIRGIN GALACTIC filed December 1, 2005, and renewed, in classes 12, 16, 25, 28 and 39;
- International trademark registration no. 1489392 VIRGIN GALACTIC registered July 10, 2019, in classes 37, 40 and 42;
- UK trademark registration no. UK00003163127 filed May 5, 2016, in classes 3, 5, 9, 11, 12, 14, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44 and 45;
- EU trademark registration no. 015415061 dated of May 5, 2016, in classes 1, 2, 4, 6, 7, 8, 10, 13, 15, 17, 18, 19, 20, 21, 22, 23, 24, 25, 26, 27, 28, 29, 30, 34, 37 and 40.
In addition, Complainant owns the domain name
Respondent owns the disputed domain name, which was registered on July 23, 2021. The disputed domain points to a website that offers Internet users the chance to win tickets on a Virgin Galactic passenger flight. Hereby, the site encourages the website visitors to buy certain cryptocurrency tokens and even provides a presale discount of 23 percent. The aim of this promotion is to create a financial structure allegedly needed to enable commercial trips out of space. Moreover, the home page of the website literally refers to Virgin Galactic Token and uses the VIRGIN signature logo without authorization of Complainant. Neither Complainant nor the Virgin Group has endorsed cryptocurrency investment schemes.
5. Parties’ Contentions A. ComplainantFirst, Complainant argues that the disputed domain name is confusingly similar to its registered VIRGIN and VIRGIN GALACTIC trademarks.
Complainant claims being the owner of numerous trademarks, and underlines the international renown based on the worldwide mediatization of the inaugural passenger flight into space on July 11, 2021, the ISTA Price of 2011, its cooperation with NASA and its sponsoring of Brawn UK team cars for the Bahrain Grand Prix.
Complainant asserts the disputed domain name entirely incorporates its trademark and that the addition of the term “token” in the disputed domain name does not neutralize the similarity with Complainant’s trademark. Complainant states that the term is a descriptive as it refers to a financial voucher, a voucher which is exchangeable for a space flight ticket or cryptocurrency. Complainant states that this does not alter the fact that the disputed domain name is confusingly similar to said trademark.
Complainant further claims that Respondent has no rights or legitimate interests in respect of the disputed domain name. Complainant adds that the lack of evidence Respondent is using, or has made demonstrable preparations to use, the disputed domain in connection with a bona fide offering of goods and services.
Complainant underlines that Respondent was not commonly known by the disputed domain name prior to the adoption and use by Complainant of the VIRGIN and VIRGIN GALACTIC trademarks. Complainant states that it has not granted any license nor authorization to Respondent to register the disputed domain name and that there was/is no relationship of any kind between Complainant and Respondent. Furthermore, Complainant asserts that Registrant’s aim to register and use the disputed domain name is to take advantage of the company’s reputation to attract Internet to its website.
Finally, Complainant asserts that Respondent registered and uses the disputed domain name in bad faith. Relying on the well-known character of its Registered Trademarks, Complainant argues that Respondent could not have ignored Complainant’s trademarks at the time of registration of the disputed domain name. As a result, Complainant concludes that the disputed domain name was registered with actual knowledge of Complainant’s rights in Complainant’s Registered Trademarks, very likely for the purpose of creating confusion with Complainant’s trademark to divert or mislead third parties for Respondent’s illegitimate profit.
Complainant states that Registrant attempts to create the false impression that the disputed domain name is somehow affiliated with or endorsed by Complainant to obtain sensitive, personal and financial information of Internet users and to obtain funds from users through enticing them to invest in what is almost certainly a fraudulent cryptocurrency scheme. Hence, Complainant states that the disputed domain name is intentionally used to attract Internet users for commercial gain, as well as to disrupt Complainant’s business as the cryptocurrency investment scheme is likely to tarnish Complainant’s business and trademarks. Complainant asserts thus that this use is unfair and illegitimate and therefore in bad faith.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsParagraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
Pursuant to paragraph 4(a) of the Policy, Complainant must prove each of the following three elements to obtain an order that the disputed domain name should be cancelled or transferred:
(i) the disputed domain name registered by Respondent is identical or confusingly similar to a trademark or a service mark in which Complainant has rights;
(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and are being used in bad faith.
The onus of proving these elements is on Complainant.
A. Identical or Confusingly SimilarAccording to paragraph 4(a)(i) of the Policy, Complainant must prove that the disputed domain name is confusingly similar to the registered trademarks in which Complainant has rights.
Ownership of a nationally or regionally registered trademark serves as prima facie evidence that Complainant has trademark rights for the purposes of standing to file this Complaint (see WIPO Overview 3.0, section 1.2.1). In this regard, Complainant has submitted evidence proving its rights in the VIRGIN and VIRGIN GALACTIC trademarks. The Panel finds that Complainant’s rights in the said trademarks have thus been established pursuant to the first element of the Policy.
The disputed domain name reproduces Complainant’s trademarks VIRGIN and VIRGIN GALACTIC in its entirety. In several WIPO decisions, Panels have considered that the incorporation of a trademark in its entirety may be sufficient to establish that the domain name is identical or confusingly similar to a complainant’s trademark (Virgin Enterprises Limited v. Guman Sulaen, Sulaen Company / Ivan Petrenkos / Leonid Duhar / Josh White, Build LMTD / Name Redacted,WIPO Case No. D2021-2689; L’Oréal, Lancôme Parfums et Beauté & Cie v. Jack Yang,WIPO Case No. D2011-1627; Rapidshare AG, Christian Schmid v. InvisibleRegistration.com, Domain Admin,WIPO Case No. D2010-1059; F. Hoffmann-La Roche AG v. Relish Entreprises,WIPO Case No. D2007-1629; and, The Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Inc.,WIPO Case No. D2000-0113, and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7). This happens to be the case here.
Further, the extension “.com” is not to be taken into consideration when examining the identity or similarity between Complainant’s Registered Trademarks and the disputed domain name, as it is viewed as a standard registration requirement (see section 1.11 of the WIPO Overview 3.0.). Indeed, the mere adjunction of a generic Top Level Domain (“gTLD”) such as “.com” is irrelevant as it is well established that the gTLD is insufficient to avoid a finding of confusing similarity (Virgin Enterprises Limited v. Guman Sulaen, Sulaen Company / Ivan Petrenkos / Leonid Duhar / Josh White, Build LMTD / Name Redacted, supra.; Compagnie Générale des Etablissements Michelin v. Eduard Wolowitz,WIPO Case No. D2020-0801; De Beers Intangibles Limited v. Registration Private, Domains By Proxy, LLC /??,WIPO Case No. D2019-1450; Rolex S.A. v. Mr. Peter Kaeppeli,WIPO Case No. D2003-0569; and, Swatch Ltd. v. Peter Kaeppeli,WIPO Case No. D2002-0956).
The relevant part of the disputed domain name is “virgin galactic”, as the added gTLD – being a required element of every domain name – is irrelevant when assessing whether or not a mark is identical or confusingly similar. The addition of the term “token” makes no difference. A previous Panel defined the term “digital token” as something that “facilitates real-world transactions via a decentralized technology – blockchain” (The Tolkien Estate Limited v. Domain Investments / Matthew Jensen,WIPO Case No. D2021-2571). In this regard, WIPO Overview 3.0, section 1.8 stipulates that the addition of terms “whether descriptive, geographic, pejorative, meaningless, or otherwise” do not prevent a finding of confusing similarity where the relevant trademark is recognizable within the disputed domain name.
Therefore, the mere addition of the suffix “token”– referring to a digital currency – does not prevent the finding of confusing similarity between Complainant’s trademark and the disputed domain name (Sanofi v. Sarah Plaschg, Astara Immobilien GmbH,WIPO Case No. D2020-2632; Facebook Inc. v. Laura Yun, Offshore Hosting Solutions Ltd.,WIPO Case No. D2019-1288; The Tolkien Estate Limited v. Domain Investments / Matthew Jensen, supra.; De Beers Intangibles Limited v. Registration Private, Domains By Proxy, LLC /??,WIPO Case No. D2019-1450; Compagnie Générale des Etablissements Michelin v. Eduard Wolowitz, supra.).
For all of the above-mentioned reasons, the disputed domain name is confusingly similar to the Registered Trademarks in which Complainant has rights, and therefore the condition of paragraph 4(a)(i) of the Policy is fulfilled.
B. Rights or Legitimate InterestsUnder Policy paragraph 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the disputed domain name and then the burden of production, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. If Respondent fails to do so, Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy (See WIPO Overview 3.0, section 2.1; Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Association des Centres Distributeurs E. Leclerc - A.C.D. Lec v. Domain Administrator, See PrivacyGuardian.org / Ghuilo Dhulio,WIPO Case No. D2020-2200; and, Facebook Inc. v. Laura Yun, Offshore Hosting Solutions Ltd.,WIPO Case No. D2019-1288).
Respondent is neither affiliated with Complainant in any way nor has it been authorized by Complainant to use and register its Registered Trademarks, or to seek registration of any domain name incorporating them. Furthermore, Respondent cannot claim prior rights or legitimate interest in the disputed domain name as the Registered Trademarks precede the registration of the disputed domain name with many years.
Further, there is no evidence that Respondent is commonly known by the disputed domain name or the VIRGIN GALACTIC sign, in accordance with paragraph 4(c)(ii) of the Policy. As the disputed domain name is confusingly similar to Complainant’s well-known Registered Trademarks, and the content to which the disputed domain name resolves repeatedly references and make use of the Complainant’s Registered Trademarks, Respondent cannot reasonably pretend it was intending to develop a legitimate activity through the disputed domain name. Rather the risk of implied affiliation created by the confusingly similar disputed domain name is exacerbated by the impersonating nature of the content, featuring no disclaimer as to the relationship (or lack thereof) to Complainant.
Moreover, Respondent is not authorized or licensed in any way by Complainant to use its Registered Trademarks, or to seek registration of any domain name incorporating them. In previous decisions, UDRP Panels have found that in the absence of any license or permission from a complainant to use such widely-known trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed (Virgin Enterprises Limited v. Guman Sulaen, Sulaen Company / Ivan Petrenkos / Leonid Duhar / Josh White, Build LMTD / Name Redacted,WIPO Case No. D2021-2689; Linklaters LLP v. WhoisGuard Protected / Cindy Smith,WIPO Case No. D2019-0941; LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master,WIPO Case No. D2010-0138).
Third, there is no evidence that Respondent, before any notice of this dispute, was using or had made demonstrable preparations to use the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, in accordance with paragraph 4(c)(i) of the Policy. The disputed domain name resolves to a website promoting an alleged Virgin Galactic passenger flight into space and encouraging visitors to invest in cryptocurrency tokens to win flight tickets. Whereas the disputed domain name wholly incorporates Complainant’s Registered Trademarks, this cryptocurrency scheme is not affiliated with, or endorsed by Complainant, the Virgin Group’s founder or the Virgin Galactic business. Finally, Respondent did not reply to the Complaint in order to assess its rights in the disputed domain name.
Therefore, the Panel finds that Complainant has made a prima facie case showing Respondent’s lack of rights to or legitimate interest in the disputed domain name. As Respondent has failed to respond, the latter fails to rebut the prima facie case established by Complainant.
Considering the above circumstances, the Panel finds, on the balance of probabilities, that Respondent has no rights or legitimate interests in respect of the disputed domain name and the requirement of paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad FaithTo fulfill the third requirement of the Policy, Complainant must prove that the disputed domain name was registered and is used in bad faith.
First, bad faith can be found where Respondent “knew or should have known” of Complainant’s trademark rights and, nevertheless registered a domain name in which they had no rights or legitimate interest (Research In Motion Limited v. Privacy Locked LLC/Nat Collicot,WIPO Case No. D2009-0320, and The Gap, Inc. v. Deng Youqian,WIPO Case No. D2009-0113). The Panel considers Complainant’s Registered Trademarks well-known throughout the world. As the Virgin Galactic’s inaugural passenger flight into space on July 11, 2021, was a worldwide mediatized event and the Virgin Group owns trademark registrations all around the world, the Panel finds it highly unlikely that Respondent was not aware of Complainant’s rights in said trademark. Besides, previous UDRP panels have also found that “the 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” (See section 3.1.4 of the WIPO Overview 3.0).
Secondly, the composition of the disputed domain name, which entirely reproduces Complainant’s VIRGIN trademark and VIRGIN GALACTIC trademark – consisting of two randomly combined words – while simply adding the descriptive suffix “token” confirms that Respondent was aware of Complainant and its Registered Trademarks. Prior UDRP Panels have held that bad faith can be found where a domain name is so obviously connected with a well-known trademark that its very use by someone with no connection to the trademark suggests opportunistic bad faith (LEGO Juris A/S v. store24hour,WIPO Case No. D2013-0091; Lancôme Parfums et Beauté & Cie, L’Oréal v. 10 Selling,WIPO Case No. D2008-0226; Caixa D´Estalvis I Pensions de Barcelona (“La Caixa”) v. Eric Adam,WIPO Case No. D2006-0464; and, Virgin Enterprises Limited v. Guman Sulaen, Sulaen Company / Ivan Petrenkos / Leonid Duhar / Josh White, Build LMTD / Name Redacted,WIPO Case No. D2021-2689).
This awareness is confirmed by the fact that the disputed domain name was registered 12 days after Virgin Galactic made its famous inaugural passenger spaceflight. In addition, the awareness is confirmed by the reference to Virgin Galactic Token and use of the VIRGIN signature logo on Respondent’s website as well as the promotion of so-called official Virgin Galactic flights.
Thirdly, the registration of Complainant’s VIRGIN and VIRGIN GALACTIC trademarks significantly predate the registration date of the disputed domain name. In this regard, previous UDRP Panels have established that knowledge of Complainant’s intellectual property rights, including trademarks, at the time of registration of the disputed domain name proves bad faith registration (WIPO Case No. D2008-0287, Alstom v. Domain Investments LLC;WIPO Case No. D2007-0077, NBC Universal Inc. v. Szk.com andWIPO Case No. D2021-2689, Virgin Enterprises Limited v. Guman Sulaen, Sulaen Company / Ivan Petrenkos / Leonid Duhar / Josh White, Build LMTD / Name Redacted).
In this day and age of the Internet and advancement in information technology, as well as the worldwide reputation of the Virgin Group and its Registered Trademarks, the Panel excludes the possibility of Respondent’s unawareness of the existence of Complainant and its trademarks at the time of registration of the disputed domain name. The Panel finds it more likely that Respondent registered the disputed domain name based on the notoriety and attractiveness of Complainant’s business and Registered Trademarks to divert Internet traffic to its website. Hence, Respondent has not demonstrated that the registration of the disputed domain name was done in good faith.
Further, under paragraphs 4(b)(iv) of the Policy, the following circumstances evidence use in bad faith of a domain name: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location”.
Previous UDRP Panels have considered that in the absence of any license or permission from a complainant to use a well-known trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed (Alstom, Bouygues v. Webmaster,WIPO Case No. D2008-0281; Guerlain S.A. v. Peikang,WIPO Case No. D2000-0055). As the disputed domain name wholly incorporates Complainant’s Registered Trademarks, while this cryptocurrency scheme is not affiliated with, or endorsed by Complainant, the Virgin Group’s founder, or the Virgin Galactic business, the Panel finds that Respondent’s use cannot qualify as a bona fide or legitimate use.
Hence, other UDRP Panels have ruled that “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from Complainant’s site to Respondent’s site” (MasterCard International Incorporated (“MasterCard”) v. Wavepass AS,WIPO Case No. D2012-1765,and Edmunds.com, Inc. v. Triple E Holdings Limited,WIPO Case No. D2006-1095). In this regard, given the disputed domain name is confusingly similar to Complainant’s Registered Trademarks, which are well-known as evidenced by numerous (inter)national registrations, the Panel presumes that Respondent’s primary motive in registering and using the disputed domain name was to capitalize on or otherwise take advantage of Complainants’ trademark rights, through the creation of initial interest of confusion.
The disputed domain name promotes cryptocurrency giveaways that requires Internet users to buy “virgin galactic tokens”. The Panel finds that, in all likelihood, these are scams operated with an intent for commercial gain. Moreover, the disputed domain name falsely indicates that users can win so-called official Virgin Galactic spaceflight tickets. Therefore, it is clearly evidenced that Respondent is engaged in a fraudulent scheme, impersonating Complainant in order to trick investors into paying (via a cryptocurrency transaction) money to Respondent. Thus, the Panel finds that the disputed domain name is intended to attract Internet users by creating a likelihood of confusion with Complainant’s Registered Trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website (Virgin Enterprises Limited v. Guman Sulaen, Sulaen Company / Ivan Petrenkos / Leonid Duhar / Josh White, Build LMTD / Name Redacted,WIPO Case No. D2021-2689.
In light of the above, the Panel finds that Respondent registered and uses the disputed domain name in bad faith 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 disputed domain name
Nathalie Dreyfus
Sole Panelist
Date: February 24, 2022