Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Burges Salmon LLP, United Kingdom.
Respondents are Registration Private, Domains by Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Name Redacted1 of Long Beach, California, United States. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 22, 2018. On March 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 26, 2018, 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 March 27, 2018, 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 April 6, 2018.
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 April 9, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 29, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 30, 2018.
The Center appointed Dinant T. L. Oosterbaan as the sole panelist in this matter on May 3, 2018. 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. Preliminary matter – Identity Theft
In its amended Complaint, Complainant states that the Domain Name had been falsely registered under the address of one Complainant’s associated companies with one of the two Respondents against whom the Complaint was filed (“Name Redacted”) mentioned as the Registrant.
The Panel has reviewed the relevant information and has come to the conclusion that Name Redacted is not the proper Respondent to this Complaint. The Panel notes in particular that the name of this person (Name Redacted) is an existing individual employed by Complainant’s associated company at the address as provided by the Registrar. In the view of the Panel this is an obvious and clear example of identity theft.
The Panel is satisfied that this person against whom the Complaint was filed has no interest in the Domain Name or what might become of it. In the circumstances, references to Respondent or Respondents in this Decision (and the findings of the Panel set out hereafter) do not refer or have application to this person against whom the Complaint was filed. This Decision is directed to and affects the unknown third party registrant of the Domain Name who wrongly used the name of another person (the third party also described in this decision as “Registrant”). It is Registrant’s rights and legitimate interests in the Domain Name and Registrant’s good or bad faith acting with which this proceeding is concerned, and not those of Respondents.
Given the circumstances, the Panel has decided that no useful purpose is to be served by referring to the name of this individual against whom the Complaint was filed and has therefore not included this individual’s name in the heading or body of this Decision. The Panel has, however, attached as an Annex to this Decision an instruction to the Registrar regarding transfer of the Domain Name that does include the name of this person against whom the Complaint was filed so as to enable effect to be given to the order contained herein. To this end the Panel authorizes the Center to transmit the Annex to this Decision to the Registrar and the parties but further directs the Center and Registrar, pursuant to paragraph 4(j) of the Policy and paragraph 16(b) of the Rules, that the Annex to this Decision shall not be published based on exceptional circumstances. 5. Factual Background
Complainant is a wholly owned subsidiary of a group of companies known collectively as “the Virgin Group”. The Virgin Group was originally established in the United Kingdom in 1970. Since then the Virgin Group has grown significantly in terms of its size, geographic reach and the industries in which it operates. There are now more than 60 Virgin branded businesses employing in excess of 69,000 people in 35 countries. Virgin Galactic is a spaceflight company within the Virgin Group, founded in 2004; this company is currently in the process of developing commercial spacecraft and aims to provide the world’s first commercial spaceline.
Complainant has obtained multiple registrations for the trademarks VIRGIN and for VIRGIN GALACTIC, including:
- European Union Trademark VIRGIN number 011991882, filed on July 17, 2013 and registered on December 10, 2013;
- European Union Trademark VIRGIN GALACTIC number 004756921, filed on December 1, 2005 and registered on January 18, 2007.
The Domain Name was registered on January 22, 2018. The Domain Name does not resolve to an active website. The trademark registrations were issued prior to the registration of the Domain Name. 6. Parties’ Contentions A. Complainant
Complainant submits that the Domain Name is identical and/or confusingly similar to Complainant’s trademarks. The Domain Name incorporates Complainant’s VIRGIN and VIRGIN GALACTIC trademarks in full, save that it omits the first letter “c” in the word “GALACTIC” and replaces this with an extra “i” (i.e. “galaitic”) and includes the generic Top-Level Domain (“gTLD”) “.com”.
Complainant submits that Respondent has no rights or legitimate interests in respect of the Domain Name. According to Complainant, there is no information to suggest a legitimate right to use Complainant’s VIRGIN and VIRGIN GALACTIC trademarks by Respondent. There is also no evidence that Respondent is using the Domain Name in connection with a bona fide offering of goods or services as the website hosted at the Domain Name currently resolves to a webpage displaying an error message. According to Complainant, the Domain Name was registered solely for the purpose of hosting an email address from which to perpetrate fraud. In this respect, Complainant states that Complainant was recently notified of an instance (although there may feasibly be more instances of which it has not been made aware) involving fraudulent email correspondence being sent from, and/or citing, an email address associated with the Domain Name. The emails in question were purportedly sent on behalf of Name Redacted of Virgin Orbit, LLC (Virgin Orbit is the newest member of the Virgin Group of companies; the company was formed in 2017 to provide launch services for small satellites). The scam was intended to defraud the targeted financial organization into corresponding with the sender in connection with the opening of a sham business bank account in the belief that they were, in fact, dealing with Virgin Orbit (and/or a representative of Virgin Galactic), when that was not the case (the “Email Scam”).
Complainant concludes that for the reasons outlined above Respondent has no rights or legitimate interests in respect of the Domain Name.
According to Complainant, the Domain Name was registered and is being used by Respondent in bad faith. In particular, Complainant considers that the Email Scam was designed to mislead the recipient into believing that they are corresponding with a representative of Virgin Orbit and/or Virgin Galactic when this is not the case. A false representation that deceives and is intended to deceive another so that the individual will act upon it to her or his legal injury constitutes fraud. In addition, Respondent, by using the Domain Name to register and use an email account which looks to be affiliated with Virgin Orbit and/or Virgin Galactic, has intentionally attempted to create a likelihood of confusion with Complainant’s VIRGIN and VIRGIN GALACTIC trademarks as to the source of the Email Scam. As discussed above, the impersonation of a Virgin Group employee amounts to fraud and is an extremely serious matter. Whilst Complainant has been forwarded one instance of such use of the Domain Name, it is reasonable to infer that there may be further instances of which Complainant is not aware.
Complainant concludes that the registration and use of the Domain Name constitutes bad faith within the meaning of paragraph 4(a)(iii) of the Policy. B. Respondent
Respondent did not reply to Complainant’s contentions. 7. Discussion and Findings
Paragraph 15(a) of the Rules instructs the 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”.
Paragraph 4(a) of the Policy requires that the complainant proves each of the following three elements to obtain an order that the disputed domain name should be transferred or cancelled:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied in this proceeding. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, Complainant must first of all establish rights in a trademark or service mark and secondly that the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights.
Complainant has established that it is the owner of trademark registrations for VIRGIN and VIRGIN GALACTIC.
The Domain Name contains the entirety of the VIRGIN well-known trademark and consists of the obvious and intentional misspelling of the VIRGIN GALACTIC trademark as the letter “c” of the trademark is replaced by the letter “i” in the Domain Name. This obvious misspelling in the Domain Name, also referred to as typosquatting, is insufficient to avoid a finding of confusing similarity.
The Panel finds that Complainant has proven that the Domain Name is confusingly similar to Complainant’s VIRGIN and VIRGIN GALACTIC trademarks and paragraph 4(a)(i) of the Policy has been satisfied. B. Rights or Legitimate Interests
In the opinion of the Panel, Complainant has made a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Complainant has not licensed or otherwise permitted Respondent to use any of its VIRGIN or VIRGIN GALACTIC trademarks or to register the Domain Name incorporating its marks. Respondent is not making a legitimate noncommercial or fair use of the Domain Names without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks of Complainant. Based on the undisputed submission and evidence provided by Complainant, Respondent uses the Domain Name for an Email Scam as mentioned above. In addition, Respondent is not commonly known by the Domain Name nor has Respondent acquired trademark rights. Finally, Respondent engaged in identity theft.
In these circumstances, it is clear to the Panel that Respondent is engaged in some form of deceptive and fraudulent activity with a view to commercial gain and that the Domain Name was registered with that in mind. Such activity cannot confer any rights or legitimate interests upon Respondent.
No Response to the Complaint was filed and Respondent has not rebutted Complainant’s prima facie case.
Under these circumstances, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
The Panel finds that the Domain Name has been registered and is being used in bad faith. The trademarks of Complainant have been existing for a long time and are well-known. The Panel notes that Complainant’s registrations of its trademarks predate the registration date of the Domain Name. Respondent knew or should have known that the Domain Name is an obvious and intentional misspelling of Complainant’s VIRGIN GALATIC trademark.
The Panel notes that there is no website at the Domain Name. However, the Panel accepts the undisputed submission of Complainant that the registration and use of the Domain Name was for obvious fraudulent purposes (the Email Scam, as mentioned above). The Panel finally adds that the identity theft mentioned in Section 4 above is a further indication of the bad faith of Respondent.
The Panel finds that Complainant has proven that the Domain Name has been registered and is being used in bad faith and paragraph 4(a)(iii) of the Policy has been satisfied. 8. 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.
Dinant T. L. Oosterbaan
Sole Panelist
Date: May 9, 2018
1 Respondent appears to have used the name and contact details of a third party when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted Respondent’s name from this Decision. However, the Panel has attached as Annex 1 to this Decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this Decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. B / Name Redacted,WIPO Case No. D2009-1788.
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