The Complainant is Virgin Enterprises Limited, United Kingdom (or “UK”), represented by A.A.Thornton & Co, United Kingdom.
The Respondent is Domain Administrator, See PrivacyGuardian.org, United States of America (“United States”) / Prosper Williams, United States. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 4, 2020. On June 5, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 5, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 7, 2020 providing the registrant 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 June 10, 2020. 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 June 23, 2020. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 14, 2020. The Center appointed Daniel Peña as the sole panelist in this matter on August 3, 2020. 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 a UK company, member of the group of companies that are collectively known as “the Virgin Group”. The Complainant pursues a diverse range of sectors covering Financial Services, Health & Wellness, Music & Entertainment, People & Planet, Telecommunications & Media and Travel & Leisure, over 60 virgin branded businesses in 35 countries. The Complainant has over 53 million customers worldwide and employs more than 69,000 people in 35 countries. The Complainant is the owner of numerous trademarks, including: - UK Trade Mark Registration No. UK00003186871 for the mark VIRGIN ORBIT in classes 9, 12, 16, 25, 28, 38 and 39, registered on October 20, 2017; - UK Trade Mark Registration No. UK00003230710 for the series of two marks (VIRGIN ORBIT Black Logo and VIRGIN ORBIT Logo) in classes 9, 12, 16, 25, 28, 38 and 39, registered on October 13, 2017; - European Union Trade Mark Registration No. 016972663 for the mark (VIRGIN ORBIT Logo) in classes 9, 12, 16, 25, 28, 38 and 39, registered on April 10, 2018; - International Trade Mark Registration No. 1358590 designating Australia, China, European Union, Japan and New Zealand for the mark VIRGIN ORBIT in classes 9, 12, 16, 25, 28, 38 and 39, registered on January 25, 2017; - UK Trade Mark Registration No. UK00003163121 for the mark VIRGIN in classes 3, 5, 9, 11, 12, 14, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44 and 45, registered on July 29, 2016; - United States Registration No. 5635644 for the mark (VIRGIN ORBIT Logo) in classes 9, 12, 28 and 39, registered on May 12, 2017; - United States Registration No. 5646174 for the mark VIRGIN ORBIT in classes 9, 12, 38 and 39, registered on January 8, 2019; - European Union Trade Mark Registration No. 015404841 for the mark (VIRGIN Signature Logo) in classes 5, 9, 11, 12, 14, 16, 31, 32, 33, 35, 36, 38, 39, 41, 42, 43, 44 and 45, registered on December 2, 2016. The Complainant has built up a considerable online presence and is the registered proprietor of over 5,000 domain names consisting of or incorporating the VIRGIN mark. The Complainant has operated a website at “www.virgin.com” since 2000 to promote the activities of the VIRGIN Group and its businesses, ventures and foundations (the “Virgin.com Website”). The Virgin.com Website contains links to the specific web pages for most of the companies in the VIRGIN Group. Virgin Orbit is a part of the Virgin Group. Virgin Orbit operates a website at “www.virginorbit.com” (the “Virgin Orbit Website”), where it provides information on the services and projects of the VIRGIN ORBIT business along with details on its achievements and successes. The disputed domain name The Complainant contends that the disputed domain name is confusingly similar to its VIRGIN and VIRGIN ORBIT trademarks. The disputed domain name is comprised of “virgin” and “orbits” separated by a hyphen. As the hyphen will not be pronounced and can simply be seen as indicating a space between two words, the disputed domain name incorporates the entirety of the Complainant’s VIRGIN and VIRGIN ORBIT trademarks, and the entire verbal element of the Complainant’s VIRGIN ORBIT logo. The disputed domain name simply adds an “s” on the end of the Complainant’s VIRGIN ORBIT trademark and is therefore almost identical. Consequently, there is a likelihood of confusion between the disputed domain name and the Complainant’s prior trademarks rights. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has no trademark rights on the expression “Virgin” and “Virgin Orbit”. The Respondent is not commonly known by the disputed domain name, nor does it have a business or legal relationship with the Complainant, nor does the Respondent have any authorization from the Complainant to register the disputed domain name or a domain name corresponding to the VIRGIN and VIRGIN ORBIT trademarks. The Complainant alleges that the “s” and the “hyphen” in the disputed domain name do not distinguish the disputed domain name from the Complainant’s trademarks. The “s” in particular reinforces the connection to the VIRGIN ORBIT business, as it pluralises the Complainant’s VIRGIN ORBIT trademark. Internet users could perceive the disputed domain name as an alternative web address for information about the VIRGIN ORBIT business, or might assume the genuine website for the VIRGIN ORBIT business is located at the disputed domain name, or might add a hyphen and an “s” to the end of the Complainant’s VIRGIN ORBIT trademark as a typographical error. The Complainant asserts that the Respondent is using the disputed domain name as part of an email address (the “Phishing Email Address”) to send emails purporting to be from the Supply Chain Director of Virgin Orbit to genuine suppliers of Virgin Orbit, to place orders for goods with those suppliers and take delivery of goods without payment. Neither the disputed domain name, the Phishing Email Address nor the Phishing Emails are authorized by, sent by or are in any way connected to the Complainant or Virgin Orbit. The Complainant argues that the disputed domain name is being used by the Respondent to impersonate a director of Virgin Orbit for commercial gain, by acquiring expensive specialist equipment from the suppliers of Virgin Orbit that are targeted without payment to them. The fact that the sender of the Phishing Emails obtains credit clearance from the genuine suppliers to Virgin Orbit that are targeted for large amounts of money means there is the potential for the genuine suppliers to suffer considerable losses in the future. The Complainant also indicated that the disputed domain name has been registered and is being used, through creation of the Phishing Email Address, to intentionally create a likelihood of confusion with the Complainant, the Complainant’s trademarks and the Virgin Orbit business, as to the source of the disputed domain name and the Phishing Emails for the purposes of commercial gain in the form of acquisition of expensive goods without paying for those goods. Considering the bad faith registration and use of the disputed domain name, the Complainant asserts that the Respondent could not have acquired the disputed domain name in good faith. The Complainant submits that the disputed domain name was therefore registered and is being used in bad faith. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (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. Considering these requirements, the Panel rules as follows: A. Identical or Confusingly Similar The Panel holds that the disputed domain name is confusingly similar to the Complainant’s trademarks. The Respondent’s incorporation of the Complainant’s trademarks VIRGIN and VIRGIN ORBIT in full in the disputed domain name is evidence that the disputed domain name is confusingly similar to the Complainant’s marks. Mere addition of the “s” and the hyphen symbol to the Complainant’s marks does not prevent a finding of confusing similarity. The addition of other terms (whether descriptive, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element. The nature of such term(s) may however bear on assessment of the second and third elements. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). This Panel finds, similarly to other UDRP panels, that the Top-Level Domain (“TLD”) “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test (see section 1.11 of the WIPO Overview 3.0). The Panel is satisfied that the disputed domain name is identical or confusingly similar to the Complainant’s marks and the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must prove that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant bears the burden of proof in establishing this requirement. In view of the difficulties inherent in proving a negative and because the relevant information is mainly in the possession of the Respondent, it is enough for the Complainant to establish a prima facie case which, if not rebutted by sufficient evidence from the Respondent will lead to this ground being set forth. Refraining from submitting a Response, the Respondent has brought to the Panel’s attention no circumstances from which the Panel could infer that the Respondent has rights or legitimate interests in the disputed domain name. The Panel will now examine the Complainant’s arguments regarding the absence of rights or legitimate interests of the Respondent in connection with the disputed domain name. The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, to use the Complainant’s trademarks in a domain name or in any other manner. Furthermore, the unrebutted claim of the Complainant that the disputed domain name is being used for phishing at sensitive data supports a finding that the Respondent lacks rights or legitimate interests in the disputed domain name (see WIPO Overview 3.0, section 2.13). The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a disputed domain name in bad faith: (i) the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; (ii) the respondent 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 respondent has engaged in a pattern of such conduct; (iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 respondent’s website or location or of a product or service on its website or location. In the Panel’s view, a finding of bad faith may be made where the Respondent “knew or should have known” of the registration and/or use of the trademark prior to registering the disputed domain name. In this case, the widespread commercial recognition of the trademarks VIRGIN and VIRGIN ORBIT is such that the Respondent, must have had knowledge of the trademarks before registering the disputed domain name. The Respondent appears to have chosen the disputed domain name in order to deliberately attract Internet users to its website in the mistaken belief that it was the website of the Complainant, or otherwise linked to or authorized by the Complainant. As such, the Panel is satisfied that by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or of the products on its website. Under paragraph 4(b)(iv) of the Policy, this circumstance shall be evidence of the registration and use of a domain name in bad faith. In addition, the use of the disputed domain name for phishing, supported by the Complainant’s claims and evidence, affirms a finding of bad faith (see WIPO Overview 3.0, section 3.4). The Panel concludes that the disputed domain name was registered and is being used in bad faith. 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, Daniel Peña
The Respondent did not submit a Response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).
Sole Panelist
Date: August 13, 2020
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