The Complainant is Virgin Enterprises Limited, with an office in London, United Kingdom of Great Britain and Northern Ireland.
The Respondent’s true identity is not known, but the Respondent is identified in the WhoIs database for the disputed domain name as “Virgin Orbit, representing an organization named “VirtualOffice”, with an address in Long Beach, California, United States of America.1 2. The Domain Name and Registrar
The disputed domain name is . It is registered with Wild West Domains, LLC (the “Registrar”). 3. Procedural History
According to the information and documents provided by the WIPO Arbitration and Mediation Center (the “Center”), the history of this proceeding is as follows:
- The Complaint was filed with the Center on January 31, 2018.
- On January 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 1, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.
- The Center verified that the 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 Rules paragraphs 2 and 4, the Center sent a Notification of the Complaint to the Respondent, and this proceeding commenced on February 2, 2018. The Notification advised the Respondent that, in accordance with Rules paragraph 5, the due date for a Response was February 22, 2018.
- The Center sent the Notification of the Complaint to the Respondent by email to several email addresses, including the Respondent’s email address specified in the WhoIs database for the disputed domain name, and by courier to the Respondent’s postal address specified in the WhoIs database for the disputed domain name. The Notification of the Complaint sent by email to the Respondent’s email address specified in the WhoIs database for the disputed domain name appears to have been successfully delivered. The Notification of the Complaint sent by courier was delivered and signed for on February 5, 2018.
- The Respondent did not file a Response by the specified due date or at any time thereafter.
- On February 23, 2018, the Center sent a Notification of Respondent Default to the Respondent by email to the Respondent’s email address specified in the WhoIs database for the disputed domain name.
- The Center appointed Bradley J. Freedman as the sole panelist in this proceeding on March 14, 2018. The Panel submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with Rules paragraph 7.
Based on the information and documents in the case file, the Panel finds that the Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules, and that all technical requirements for this proceeding have been met.
The language of the registration agreement for the disputed domain name is English and the Complaint was filed in English. Consequently, the language of this proceeding is English. (See Rules paragraph 11(a).) 4. Factual Background
The following information is derived from the Complaint and supporting evidence (including the WhoIs search results for the disputed domain name) submitted by the Complainant:
- The Complainant is a company incorporated in England and Wales. It is a wholly owned subsidiary of a group of companies known as “the Virgin Group”, and is responsible for the ownership, management, licensing and protection of all trademarks, intellectual property and goodwill of 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. Since then, the Virgin Group has grown significantly in terms of its size, geographic reach and the industries in which it operates. The Virgin Group is now engaged in a diverse range of business sectors, including Travel & Leisure, Telecoms & Media, Music & Entertainment, Financial Services and Health & Wellness.
- The Virgin Group is a leading branded venture capital organisation and is one of the world’s most recognised and respected brands. There are now more than 60 Virgin branded businesses with around 53 million customers worldwide, employing in excess of 69,000 people in 35 countries, with an annual revenue of approximately GBP 16.6 billion. The Complainant and the Virgin Group have invested considerable time and money to develop, promote and advertise the Virgin brand.
- The Virgin brand has been promoted internationally for many years and enjoys a global reputation. As a result of the quality of the Virgin Group’s goods and services, the volume of its customers, and its extensive advertising and promotion, the Virgin name has acquired substantial goodwill.
- Virgin Orbit, LLC is the newest member of the Virgin Group. Virgin Orbit was formed in 2017 to provide launch services for small satellites.
- The Complainant maintains a trademark portfolio that includes registrations for the VIRGIN word mark and the stylised form of the VIRGIN signature logo, together with composite marks such as the VIRGIN ORBIT word mark and the VIRGIN ORBIT signature logo. In particular, the Complainant is the owner of the European Union trade mark registration for VIRGIN (No. EU011991882) registered on December 10, 2013, and the United Kingdom trademark registration for VIRGIN ORBIT (No. UK00003186871) registered on October 20, 2017. The Complainant licences its trademarks to companies both within and outside the Virgin Group, including Virgin Orbit, LLC.
- The Complainant is also the registered owner of over 5,350 domain names either consisting exclusively of the Virgin name or in which the Virgin name is used in combination with other words or numbers, including the domain names , , and .
- The domain name resolves to the official website of the Complainant’s corporate affiliate Virgin Orbit, LLC.
- The disputed domain name was registered on December 11, 2017.
- The WhoIs database for the disputed domain name lists the Respondent’s postal address as being in Long Beach, California, United States of America. That information is false, because the specified address belongs to the Complainant’s corporate affiliate Virgin Orbit, LLC. The Respondent is not connected with Virgin Orbit, LLC.
- In early January 2018, the Complainant was notified that an individual purporting to be a “Senior Purchasing Manager” of “Virgin Orbit, LLC” had used an email address associated with the disputed domain name – “[…]@” – to send at least two fraudulent emails making sham business orders for computer hardware. The signature on the emails refers to “Guided Missiles | Launch | Space Vehicles”, which is suggestive of the business of the Complainant’s corporate affiliate Virgin Orbit, LLC.
- On or about January 19, 2018, the Complainant’s legal counsel sent a cease-and-desist demand letter to the Respondent objecting to the Respondent’s registration and use of the disputed domain name and related email addresses. The letter requested a response by January 22, 2018.
- Neither the Complainant nor its legal counsel received any response to the cease-and-desist demand letter from the Respondent before the Complainant filed the Complaint.
- There is no evidence that the disputed domain name ever resolved to an active website.
- The Respondent has not filed a Response to the Complaint or disputed the Complainant’s factual assertions or evidence in any other manner. 5. Parties’ Contentions A. Complainant
The Complainant contends as follows:
- The Complainant is the owner of the registered VIRGIN and VIRGIN ORBIT trademarks, and the disputed domain name is identical or confusingly similar to the VIRGIN ORBIT trademark.
- The Respondent has no rights or legitimate interests in respect of the disputed domain name, and does not have any right to use the Complainant’s VIRGIN ORBIT trademark.
- The Respondent registered and is using the disputed domain name in bad faith because the Respondent used the disputed domain name as an instrument of fraud. B. Respondent
The Respondent has not filed a Response to the Complaint or answered the Complainant’s contentions in any other manner. 6. Discussion and Findings
The Policy is narrow in scope. It applies only to disputes involving alleged bad faith registration and use of domain names – conduct commonly known as “cybersquatting” or “cyberpiracy”. The Policy does not apply to any other kind of dispute between a trademark owner and a domain name registrant.
To be entitled to relief under the Policy, a complainant must assert and prove the following requirements set out in Policy paragraph 4(a): (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the registrant has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith.
Rules paragraph 10(b) requires that the Panel ensure that the parties are treated with equality and that each party is given a fair opportunity to present its case. The Center discharged its responsibility under Rules paragraph 2(a) to employ reasonably available means calculated to give the Respondent actual notice of the Complaint. In the circumstances, the Panel finds that the Respondent has been given notice of this proceeding in accordance with Rules paragraph 2 and has been given a fair opportunity to answer the Complaint and present its case. In accordance with Rules paragraph 14(a), the Panel will proceed to a decision on the Complaint.
The Respondent’s failure to file a Response to the Complaint does not automatically result in a decision in favor of the Complainant. The Complainant must still prove each of the three elements required by Policy paragraph 4(a). Rules paragraph 15(a) requires the Panel to decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that the Panel deems applicable. In accordance with Rules paragraph 14(b), the Panel may draw inferences as the Panel considers appropriate from the Respondent’s failure to file a Response to the Complaint (see section 4.3 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)). In the circumstances, the Panel’s decision is based on the Complainant’s assertions and evidence and inferences drawn from the Respondent’s failure to file a Response, all as set out in this decision. A. Identical or Confusingly Similar to Complainant’s Trademark
The Complainant asserts that it is the owner of the VIRGIN and VIRGIN ORBIT trademarks registered before the disputed domain name was registered, and has provided evidence of trademark registrations for the VIRGIN and VIRGIN ORBIT word marks. The Respondent has not contested the Complainant’s assertions. In the circumstances, the Panel finds that the Complainant has rights in the VIRGIN and VIRGIN ORBIT trademarks.
The Policy requires that the disputed domain name be “identical or confusingly similar” to the Complainant’s trademark. Neither the Policy nor the Rules provide any explicit guidance with respect to the test to be applied regarding the confusing similarity requirement of the Policy. The consensus reflected in previous UDRP decisions is that the appropriate test for confusing similarity is a literal comparison of the domain name in dispute and the complainant’s trademark. See WIPO Overview 3.0, section 1.7. The literal comparison approach is supported by a number of considerations, which have been discussed in various UDRP decisions. See Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698; Consitex S.A., Lanificio Ermenegildo Zegna & Figli S.p.A., Ermenegildo Zegna Corporation v. Ms. Patricia Chung,WIPO Case No. D2004-0490; Pancil, LLC v. Wan-Fu China, Ltd.,WIPO Case No. D2007-0492; Highlights for Children, Inc. v. Services LLC,WIPO Case No. D2007-0337; Scania CV AB (Publ) v. ScaniaF,WIPO Case No. D2008-0113. For those reasons, the Panel considers the appropriate test for confusing similarity to be a literal comparison of the disputed domain name and the Complainant’s VIRGIN ORBIT trademark.
The disputed domain name is comprised of the Complainant’s VIRGIN ORBIT trademark, the company designation “llc” and the “.com” suffix.
The addition of the company designation “llc” does not distinguish the disputed domain name from the Complainant’s VIRGIN ORBIT trademark, because the VIRGIN ORBIT trademark is the clearly recognizable and dominant part of the disputed domain name. See WIPO Overview 3.0, section 1.8.
The “.com” suffix is typically disregarded for the purpose of determining whether a domain name is identical or confusingly similar to a trademark, because the suffix is a registration requirement and does not distinguish the domain name from the relevant trademark. See WIPO Overview 3.0, section 1.11.
For those reasons, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s VIRGIN ORBIT trademark. Accordingly, the Panel finds that the Complainant has satisfied the first element required by the Policy. B. Rights or Legitimate Interests
The second element required by Policy paragraph 4(a) – the registrant has no rights or legitimate interests in respect of the domain name – requires a complainant to prove a negative proposition, which can be particularly difficult. The consensus reflected in previous UDRP decisions is that a complainant’s burden of proof regarding this element must be applied in light of the fact that the nature of the registrant’s rights or legitimate interests, if any, in a domain name lies most directly within the registrant’s knowledge. As a practical matter, once a complainant makes a prima facie showing that a registrant does not have rights or legitimate interests in a domain name, the evidentiary burden shifts to the registrant to provide evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because: (1) the Complainant has not licensed or authorized the Respondent to use the VIRGIN or VIRGIN ORBIT trademarks; (2) the Respondent used the disputed domain name as part of an email address used to send fraudulent emails; and (3) the disputed domain name does not resolve to an active website. In addition, the Panel notes that the WhoIs database for the disputed domain name includes a false address for the Respondent.
The circumstances of this case (including the distinctive nature of the Complainant’s registered VIRGIN and VIRGIN ORBIT trademarks), the evidence of the Respondent’s use of the disputed domain name as part of an email address used to send fraudulent emails, the false address for the Respondent in the WhoIs database for the disputed domain name, the signed and certified Complaint, and an adverse inference from the Respondent’s failure to respond to the Complaint or provide any justification for the registration and use of the disputed domain name are sufficient to satisfy the Complainant’s evidentiary burden.
Even though the Respondent has not filed a Response to the Complaint and has not contested the Complainant’s assertions, the Panel is obligated to consider whether the Respondent’s use of the disputed domain name demonstrates rights or legitimate interests in the disputed domain name. See WIPO Overview 3.0, section 4.3.
According to Policy paragraph 4(c), each of the following circumstances, if proved, demonstrate a registrant’s rights to or legitimate interests in a domain name: (i) the registrant used or demonstrably prepared to use the domain name or a corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute; (ii) the registrant (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or (iii) the registrant is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s mark.
Policy paragraph 4(c)(i) is not applicable because the Respondent does not contend, and there is no evidence, that the Respondent is using the disputed domain name in connection with any offering of goods or services. Policy paragraph 4(c)(ii) is not applicable because the Respondent does not contend, and there is no evidence, that the Respondent has been commonly known by the disputed domain name or that the disputed domain name is derived from the Respondent’s trademarks or trade names. Policy paragraph 4(c)(iii) is not applicable because the Respondent does not contend, and there is no evidence, that the Respondent is making a noncommercial or fair use of the disputed domain name. To the contrary, the evidence establishes that the Respondent used the disputed domain name as part of an email address used to send fraudulent emails.
For those reasons, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Policy paragraph 4(a)(iii) requires the Complainant to prove that the Respondent registered and is using the disputed domain name in bad faith. The language of Policy paragraph 4(a)(iii) is conjunctive and requires the Complainant to prove both bad faith registration of the disputed domain name and bad faith use of the disputed domain name.
“Bad faith” within the meaning of the Policy is a term of art, and is not intended to apply to distasteful conduct that might constitute bad faith in the ordinary sense of the term. Policy paragraph 4(b) provides that each of the following circumstances is evidence that a registrant has registered and is using a domain name in bad faith:
(i) circumstances indicating that the registrant has registered or has 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 the complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has 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 the registrant has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.
The Policy expressly states that those circumstances are non-exhaustive.
UDRP panels have held that the use of a domain name as part of an email address to send deceptive or fraudulent emails or engage in identity theft constitutes bad faith. See WIPO Overview 3.0, section 3.4. See also Syngenta Participations AG v. Guillaume Texier, Gobain ltd,WIPO Case No. D2017-1147; Datamatics Global Services Limited, CIGNEX Datamatics Technologies Limited v. Registration Private, Domains By Proxy, LLC / Avinash Gupta,WIPO Case No. D2017-2595; Halliburton Energy Services, Inc. v. Gregory Wilson / Infotech Ltd.,WIPO Case No. D2017-0956; and Blackrock, Inc. v. Name Redacted,WIPO Case No. D2017-2090.
The Panel finds that the Respondent knew of the Complainant and the Complainant’s VIRGIN and VIRGIN ORBIT trademarks when the Respondent registered the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith, based on the following circumstances:
- The disputed domain name is confusingly similar to the Complainant’s distinctive VIRGIN ORBIT trademark.
- There is no apparent legitimate justification for the Respondent’s registration and use of the disputed domain name.
- The disputed domain name was registered by the Respondent using the address of the Complainant’s corporate affiliate Virgin Orbit, LLC.
- The Respondent is not using the disputed domain name for an active website.
- The Respondent used the disputed domain name as an instrument of fraud, namely as part of an email address used to send fraudulent emails.
In addition, the Panel draws an adverse inference from the Respondent’s failure to provide any explanation or rationale for the registration or use of the disputed domain name.
For those reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith.
In the circumstances, the Panel need not consider whether there are other grounds for finding that the Respondent registered and is using the disputed domain name in bad faith. 7. Decision
The Complainant has established each of the three requirements set out in Policy paragraph 4(a): (i) the disputed domain name is confusingly similar to the Complainant’s VIRGIN ORBIT trademark; (ii) the Respondent does not have any rights to or legitimate interests in the disputed domain name; and (iii) the Respondent registered and is using the disputed domain name in bad faith.
For those reasons, in accordance with Policy paragraph 4(i) and Rules paragraph 15, the Panel orders that the disputed domain name be transferred to the Complainant.
Bradley J. Freedman
Sole Panelist
Date: March 28, 2018
1 As noted in this decision, the disputed domain name is registered using the name and contact information of a corporate affiliate of the Complainant.
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