Virgin takes on ‘fictitious’ entity for trademark infringement
UK-based Virgin Enterprises Limited ( VEL) yesterday accused a “fictitious” entity of infringing its ‘Virgin’ trademark.
The claim, which was filed at the US District Court for the Southern District of New York, alleged that Virgin Capital Partners (the “fictitious” entity), US-individual ‘Frenchie Benjamin’ and internet service provider Namecheap are liable for trademark infringement.
Namecheap is the domain name registrar for the websites virgincapitalpartners.com and virgincapitalpartners.net, both of which were registered by Benjamin.
According to VEL, it owns 115 trademark registrations and applications that include ‘Virgin’ as the dominant element in the US alone.
In addition, VEL owns over 4,500 domain names that incorporate the ‘Virgin’ mark.
VEL has registered ‘Virgin’ in a range of goods and services, including for air travel and mobile phones.
In November 2016, Benjamin allegedly launched the website virgincapitalpartners.net. According to VEL, the website prominently displays the ‘Virgin’ mark in connection to financial services.
VEL claimed that it has tried to resolve the alleged infringement with Benjamin and Namecheap outside of court. However, the company said that Benjamin refused to comply, and instead has attempted to “lull VEL into believing he would or did cease the infringing conduct”.
In June 2017, VEL sent a letter to Benjamin informing him of his alleged infringement. After the letter was sent, the .net website was disabled. One month later, the two domain name registrations expired, according to VEL.
Although VEL was able to acquire the domain name virgincapitalpartners.net, Benjamin reacquired virgincapitalpartners.com.
In December 2017, after Benjamin had reacquired the site, VEL sent another letter to him about his “blatant and wilful” trademark infringement.
VEL alleged that Benjamin declined to rebrand or disable the website unless VEL agreed to compensate him.
In addition, VEL said that Benjamin refused a settlement and that after it received a cease-and-desist letter, Namecheap denied that it hosted the allegedly infringing website.
VEL is seeking damages, a permanent injunction against the parties, and for the ownership of virgincapitalpartners.com to be transferred to the company.
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