The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”), represented by Burges Salmon LLP, United Kingdom.
The Respondent is Registration Private, Domains by Proxy, LLC of Scottsdale, United States of America (or “US”) / Name Redacted.1 2. The Domain Name and Registrar
The disputed domain name is registered with Wild West Domains, 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 disputed domain name and an additional domain name. On March 26, 2018, the Registrar transmitted by email to the Center its verification response disclosing multiple underlying registrants and contact information for the domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 28, 2018 providing the registrants and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on April 6, 2018, which removed the other domain name from these proceedings.
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 the 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. On April 17, 2018 and April 24, 2018, the Center received communications from the named registrant of the disputed domain name reporting identity theft. On April 24, 2018, the Center informed the Parties of the receipt of these communications. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 1, 2018.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on May 8, 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. Factual Background
The Complainant is the registered owner of numerous trademark registrations for and/or including the term VIRGIN, in particular European Union trade mark (No. 011991882) registered on December 10, 2013 for goods and services 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 and UK word mark VIRGIN ORBIT (No. UK00003186871) registered on October 20, 2017 for goods and services in classes 9, 12, 16, 25, 28, 38 and 39.
The disputed domain name was registered by the Respondent on March 1, 2018. It results from the Complainant’s documented allegations that domain hosting content is displayed on the website to which the disputed domain name resolves. 5. Parties’ Contentions A. Complainant
The Complainant is a wholly owned subsidiary of a group of companies known collectively as “the Virgin Group”, which was originally established in United Kingdom in 1970. It is now engaged in a diverse range of business sectors ranging from Travel and Leisure, Telecommunications and Media, Music and Entertainment, Financial Services and Health and Wellness.
The Complainant contends to be one of the world’s most recognized brands with a global reputation. 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, its annual revenue is approximately GBP 16.6 billion. Virgin Orbit is the newest member of the Virgin Group of companies, which was formed in 2017 to provide launch services for small satellites.
The Complainant applied for its first trademark VIRGIN, now registered under UK Trademark Registration No.1009534 in 1973. Currently, the Complainant claims to hold a portfolio of approximately 3,000 trademark applications and registrations incorporating the term VIRGIN in over 150 countries, spanning across the majority of the 45 classes of goods and services.
The Complainant contends to be is currently the target of significant fraudulent activity involving the “Virgin Orbit” name. More specifically, domain names incorporating these trademarks (or misspellings thereof) are being registered in order to send email correspondence aimed at defrauding targeted organizations into parting with goods and/or money in the belief that they are corresponding with Virgin Orbit.
In particular, the Complainant provided evidence that it was recently notified of an instance involving fraudulent email correspondence being sent from, and/or citing, an email address associated with the disputed domain name. The email in question was purportedly sent by “Mr Clancy” of Virgin Orbit, LLC. The email was intended to defraud the targeted organization into sending medical training equipment to the value of USD 8,300 to a US address unconnected with the Virgin Orbit business (the “Email Scam”). The goods were then intercepted by the organization before any significant harm was caused. The Complainant contends that neither “Mr Clancy”, nor the disputed domain name nor the email addresses from which the email correspondence was sent are in any way connected with the Complainant, Virgin Orbit or the Virgin Group.
The Complainant contends that the disputed domain name is identical and/or confusingly similar to the Complainant’s trademarks, since it incorporates the Complainant’s VIRGIN and VIRGIN ORBIT trademarks in full, combining with the suffix “.com” and the generic and descriptive word “group”, that apart from being indistinctive suggests a connection between the disputed domain name and a business entity in the same group of companies as the Virgin Group’s Virgin Orbit business.
The Complainant further contends that the Respondent has no prior rights or legitimate interests in the disputed domain name. There is no information to suggest a legitimate right to use the Complainant’s VIRGIN and VIRGIN ORBIT trademarks by the Respondent. Given the fraudulent use to which the disputed domain name is being put, it is clear that the Complainant has not licensed or authorized the Respondent to use the VIRGIN and/or VIRGIN ORBIT trademarks. In addition, there is no evidence that the Respondent uses the disputed domain name in connection with a bona fide offering of goods or services. To the contrary, according to the Complainant’s non-contested allegation, the disputed domain name currently resolves to a holding page, from which the Complainant reasonably infers that the disputed domain name was registered solely for the purpose of hosting an email address from which to perpetrate fraud.
Finally, the Complainant contends that the disputed domain name was registered and/or is being used in bad faith. In particular, the Email Scam was designed to mislead the recipient into believing that they are corresponding with a representative of Virgin Orbit 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. The Respondent, by using the disputed domain name, has intentionally attempted to create a likelihood of confusion with the Complainant’s VIRGIN, and/or VIRGIN ORBIT trademarks as to the source of the disputed domain name and/or any emails sent from associated email addresses. The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant, the intellectual property rights holder, and/or Virgin Orbit. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 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”. Paragraph 4(a) of the Policy requires a complainant to prove each of the following three elements in order to obtain an order that the disputed domain name 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 therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the Complainants must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainants have rights.
It results from the evidence provided that the Complainant is the registered owner of various trademarks for and/or including the term “Virgin”. Reference is made in particular to European Union word mark VIRGIN (No. 011991882) registered on December 10, 2013, and the UK word mark VIRGIN ORBIT (No. UK00003186871) registered on October 20, 2017. These trademarks predate the creation date of the disputed domain name, which is March 1, 2018.
Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant’s trademark where the disputed domain name incorporates the complainant’s trademark in its entirety (e.g., “Dr. Martens” International Trading GmbH and “Dr. Maertens” Marketing GmbH v. Elliot Elliot,WIPO Case No. D2018-0213; F. Hoffmann-La Roche AG v. Jason Barnes, ecnopt,WIPO Case No. D2015-1305; Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812; Rhino Entertainment Company v. DomainS,WIPO Case No. D2006-0968; SurePayroll, Inc. v. Texas International Property Associates,WIPO Case No. D2007-0464). This Panel shares this view and notes that the Complainant’s registered trademark VIRGIN is fully included in the disputed domain name.
In addition, the disputed domain name combines the Complainant’s registered trademark VIRGIN as its distinctive element with the generic terms “orbit” and “group”, which are totally applicable as descriptive terms of the Complainant and one of its business activity. The elements “orbit” and “group” do not therefore reduce the confusing similarity between the trademark and the disputed domain name. The addition of these descriptive terms to the distinctive trademark is insufficient in itself and it does not serve to distinguish the disputed domain name from the trademark, but rather, reinforce the association of the Complainant’s trademark with the disputed domain name (see e.g., KOC Holding A.S. v. VistaPrint Technologies Ltd,WIPO Case No. D2015-1910; Deutsche Lufthansa AG v. Kudakwashe Musunga / PrivacyP,WIPO Case No. D2009-1754; Viacom International Inc. v. Frank F. Jackson and Nancy Miller,WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet, Ltd.,WIPO Case No. D2000-0275; Deutsche Lufthansa AG v. Mustermann Max, Muster AG,WIPO Case No. D2015-1320).
In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark
in which the Complainant has rights. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent’s rights or legitimate interests in the disputed domain name. In the Panel’s view, based on the undisputed allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
According to the Complainant’s allegations, which have remained unchallenged, the Complainant has not authorized the Respondent’s use of the trademarks VIRGIN and VIRGIN ORBIT through the registration of the disputed domain name consisting of a reproduction of said trademarks in their entirety. In addition, the Panel notes that there is no evidence showing that the Respondent might be commonly known by the disputed domain name pursuant to paragraph 4(c)(ii) of the Policy.
In addition, it results from the undisputed evidence before the Panel that the disputed domain name is used for Email Scam activities and had been registered by using the name and credit card details of another person (impersonation). UDRP panels have categorically held that the use of a domain name for illegal activity can never confer rights or legitimate interests on a respondent (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 2.13.1 with further references). In the case at hand, the Complainant submitted substantial evidence of such illegal activities by providing email correspondence sent from an email account under the disputed domain name. These emails have been signed in the name of a natural person and “VIRGIN ORBIT LLC”. The Panel considers this evidence as sufficient to support the Complainant’s credible claim of the illegality of the Respondent’s activity.
It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence in this regard, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, “in particular but without limitation”, be evidence of the disputed domain name’s registration and use in bad faith.
One of those circumstances are those specified in paragraph 4(b)(iv), i.e., where the domain name is used to intentionally attempt to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
This Panel approves the approach taken by previous UDRP panels following which the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution. Many such cases involve the respondent’s use of the domain name to send deceptive emails, e.g., to obtain sensitive or confidential personal information from prospective job applicants, or to solicit payment of fraudulent invoices by the complainant’s actual or prospective customers (see WIPO Overview 3.0 at section 3.4). As explained above under section 6.B., it results from the undisputed evidence submitted by the Complainant that the disputed domain name has been used for Email Scam in the name of the Complainant by using its company name. In addition, this use of the disputed domain name in such an illegal scheme additionally demonstrates that the Respondent not only knew of the Complainant, its business and marks, but also attempted to pass itself off as the Complainant.
Finally, the further circumstances surrounding the disputed domain name’s registration and use confirm the findings that the Respondent has registered and is using the disputed domain name in bad faith. In fact, (1) the Respondent originally used a privacy service hiding its identity; (2) it further registered the disputed domain name by using the contact and credit card details of a third person without this person’s consent; and finally (3) the Respondent did not provide any response with conceivable explanation of its behavior.
Consequently, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy. The Complainant is therefore deemed to also have satisfied the third element, paragraph 4(a)(iii) of the Policy. 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 disputed domain name, be transferred to the Complainant.
Tobias Malte Müller
Sole Panelist
Date: May 22, 2018
1 “The 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 the 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 the 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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