Virgin Enterprises Limited v. Whois Agent, Whois Privacy Protection Services Inc. / Goutham Reddy Posam
Case No. D2015-1546
1. The Parties Complainant is Virgin Enterprises Limited of London, the United Kingdom of Great Britain and Northern Ireland (the “United Kingdom”), represented by Stobbs IP Limited, United Kingdom.
Respondent is Whois Agent, Whois Privacy Protection Services Inc. of Kirkland, Washington, the United States of America / Goutham Reddy Posam of Houston, Texas, the United States of America, self-represented.
2. The Domain Name and Registrar The disputed domain name (the “Domain Name”) is registered with Name.com LLC (the “Registrar”).
3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 28, 2015. On August 28, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 28, 2015, 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 Complainant on September 3, 2015 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 September 7, 2015.
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 September 9, 2015. In accordance with the Rules, paragraph 5, the due date for Response was September 29, 2015. On September 29, 2015, Respondent requested four days extension to file his Response. The Response was filed with the Center on October 3, 2015.
The Center appointed Alexandre Nappey as the sole panelist in this matter on October 19, 2015. 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 Background Virgin Enterprises Limited was created by Sir Richard Branson in 1970 originally to sell musical recordings under the “Virgin” name. After decades of expansion in a wide range of business activities, it now consists of 200 companies worldwide, with over 40,000 employees in 32 countries. The global turnover for Complainant’s group of companies amounts to GBP 4.6 billion (USD 7 billion).
Complainant is the owner of numerous trademark registrations comprising VIRGIN around the world, including VIRGIN GALACTIC.
Complainant launched Virgin Galactic in October 2004 and has gained reputation in relation to space travel since then. The company is working towards launching the first privately funded space ship carrying commercial passengers. Virgin Galactic has become a well-known part of Complainant’s business.
Complainant has owned the trademark VIRGIN GALACTIC in the European Community (Registration No. 004756921) since 2007 which is used to identify space travel services.
Complainant is also the owner of 4,500 domain name registrations, including (registered on May 8, 2002), which resolves to an active website through which Complainant offers consumers information about its space travel services.
Respondent registered the Domain Name on January 29, 2015. The Domain Name first resolved to a click-through site, and after Complainant’s cease and desist letter to Respondent on February 5, 2015, it is now inactive.
5. Parties’ Contentions A. Complainant Complainant claims that it owns extensive rights in the VIRGIN trademark and rights in VIRGIN GALACTIC. Complainant relies on a significant reputation and a vast amount of goodwill in the VIRGIN trademark in the United Kingdom and abroad in relation to a wide range of goods and services, especially in space travel services under the trademark VIRGIN GALACTIC.
The Domain Name comprises Complainant’s famous brand. The word “space” is closely associated with Complainant’s brand on account of the nature of its business: the Domain Name is identical and confusingly similar to trademarks in which Complainant has rights and the public has become accustomed to seeing the word “Virgin” in conjunction with “Galactic”.
Bearing in mind the reputation of the VIRGIN brand and Complainant’s operations in a wide range of activities since as early as 1970, there is no believable or realistic reason for registration or use of the Domain Name other than to take advantage of Complainant’s rights. The reply made by Respondent to the formal notice sent by Complainant, in which he confirmed his awareness of the VIRGIN trademark, confirms that Respondent does not have any right or legitimate interest in the Domain Name.
Complainant infers that Respondent registered the Domain Name in the full knowledge of Complainant’s trademark rights and the infringing nature of the Domain Name. The Domain Name was registered primarily to disrupt the business of Complainant and was therefore registered in bad faith. As the Domain Name initially resolved to a click-through site that was generating profit for Respondent, Complainant claims that Respondent has profited through the advertisements displayed on the site and used the Domain Name in bad faith.
B. Respondent In his response filed online on October 3, 2015, Respondent claims that there was no bad faith intention in his registration. He noticed that the Domain Name was available, despite many opportunities offered to Complainant to register it during the sunrise period, and he thought that Complainant was not interested in the Domain Name.
Then Respondent observes that the Registrar did not make any legal notice during the registration process.
Respondent states that he did not try to sell the Domain Name to Complainant nor to a competitor, did not make any commercial use of it and undertakes not to do so. Therefore he requests that the Domain Name remain under his control.
6. Discussion and Findings
Having consideration to the parties’ contentions, the Policy, Rules, Supplemental Rules and applicable substantive law, the Panel’s findings on each of the Policy elements are the following:
A. Identical or Confusingly Similar
According to Paragraph 4(a)(i) of the Policy, Complainant must prove that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant has clearly established prior rights in the VIRGIN trademark. Complainant quotes several prior UDRP decisions in which panels have recognized the well-known character of the VIRGIN trademark.
See among many others cited by Complainant, Virgin Enterprises Limited v. Imran Zafar, WIPO Case D2002-0696: “From the details supplied by the Complainant it is clear that the VIRGIN Group is an extremely substantial concern of both local and international repute. It is understandable, therefore, that the VIRGIN Group constitutes an entity ‘which deals with, and depends upon, the general public for its business’. In doing so, ‘it trades very much upon the VIRGIN name, which has considerable goodwill with the public and is associated with an extremely wide variety of products and services’.”
Respondent does not challenge the fact that he knows of Complainant and the VIRGIN mark, and knew of them when he registered the Domain Name . The Panel refers to the reply made by Respondent to the cease and desist letter sent by Complainant, and thereafter to his Response to the Complaint during these proceedings.
The Domain Name is entirely composed of the VIRGIN GALACTIC trademark, which is part of the large trademark portfolio held by Complainant. This trademark serves to identify the space travel services offered by Complainant’s business unit Virgin Galactic.
UDRP panels have commonly disregarded the generic Top-Level Domain (“gTLD”) suffix in evaluating identity or confusing similarity. In more recent cases involving new gTLDs, UDRP panels have maintained this practice, typically only considering the second level domain, see: BHP Billiton Innovation Pty Ltd v. Geosum, WIPO Case No. D2015-1272. But in some cases the gTLD suffix has a direct connection with the distinctive part of the domain name at issue, and it may have consequence on the likelihood of confusion between the domain name and the trademark in the Internet user’s mind. See Canyon Bicycles GmbH v. Domains By Proxy, LLC / Rob van Eck, WIPO Case No. D2014-0206:
“The Panel finds that, given the advent of multiple new gTLD domain names, panels may determine that it is appropriate to include consideration of the top-level suffix of a domain name for the purpose of the assessment of identity or similarity in a given case, and indeed that there is nothing in the wording of the Policy that would preclude such an approach.”
In this case, the Panel finds that the new gTLD suffix “.space” does not dispel the confusing similarity between the Domain Name and Complainant’s trademark; on the contrary, the Panel agrees with Complainant that it likely adds to any confusion since the gTLD infers a relationship between the words “virgin”, “galactic” and “space” since the gTLD is precisely describing the area where Complainant’s business is focused on with its trademark VIRGIN GALACTIC.
Therefore, the Panel finds that the Domain Name is identical or confusingly similar to Complainant’s trademarks.
The condition of the paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(i) the use of the domain name in connection with a bona fide offering of goods or services;
(ii) being commonly known by the domain name; or
(iii) the making of a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers.
To rebut Complainant’s assertions that he has not been authorized to use the trademarks VIRGIN or VIRGIN GALACTIC, nor is he commonly known under those marks, nor making a fair use or legitimate noncommercial use of the Domain Name, Respondent merely states that he registered the Domain Name as he was “very excited” by the new gTLD opportunities and his application was accepted by the Registrar.
In the Panel’s view, the assertions made by Respondent do not demonstrate rights or legitimate interests in the Domain Name, especially not any actual “preparation to use” the Domain Name in connection with a bona fide offering of goods or services. The Panel does not find in Respondent’s submissions any relevant evidence to suggest that he has rights or legitimate interests in the Domain Name .
Accordingly, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out examples of circumstances that will be considered by a panel to be evidence of bad faith registration and use of a domain name. It provides that:
“For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) 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.”
In the present case it is an uncontested fact that Respondent was clearly aware of Complainant and its trademarks VIRGIN and VIRGIN GALACTIC when he registered the Domain Name.
By doing so, and considering that Complainant’s trademarks, at least VIRGIN, are well-known, Respondent has clearly acted in bad faith by registering the Domain Name. The assertions that Complainant did not register the Domain Name during the sunrise period and that his application was accepted by the Registrar are completely irrelevant within the scope of the Policy. On the contrary, they give more substance to the finding of bad faith registration.
As the website formerly associated with the Domain Name displayed “sponsored links”, the Domain Name was clearly used for commercial gain. The Panel also observes that Respondent is ultimately responsible for how the Domain Name is used, which is illustrated here by the fact that Respondent stopped any use of the Domain Name upon receipt of Complainant’s formal notice.
There is no likely explanation for the choice of the Domain Name other than it being a deliberate reference to Complainant’s mark. There is no indication on this record that Respondent had any plans for a conceivably legitimate use of the Domain Name.
As a matter of fact, the Panel finds that the Domain Name in issue is used in bad faith, and the various commitments made by Respondent not to use it in the future do not alter this finding.
Accordingly, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied.
7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.