Complainant is Virgin Enterprises Limited, United Kingdom, represented by A. A. Thornton & Co., United Kingdom.
Respondent is Rick Schnarr, United States of America. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 17, 2021. On March 17, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 18, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. In response to a request for clarification by the Center, Complainant filed an amended Complaint on April 14, 2021. 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 16, 2021. In accordance with the Rules, paragraph 5, the due date for Response was May 6, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 7, 2021. The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on May 17, 2021. 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 Complainant is Virgin Enterprises Limited, a member of a group of companies that are collectively known as “the Virgin Group”. The Virgin Group was originally established in the United Kingdom in 1970 and, since then, the operations of the Virgin Group have grown significantly. Nowadays, there are more than 60 VIRGIN branded businesses acting in a diverse range of sectors such as Financial Services, Health & Wellness, Music & Entertainment, People & Planet, Telecommunications & Media, and Travel & Leisure. The company has over 53 million customers worldwide and employ more than 69,000 people in 35 countries. Virgin Orbit, a company also part of the Virgin Group, was formed in 2017 as an innovative business to develop flexible launch services for small satellite operators. Along with its sister companies Virgin Galactic and The Spaceship Company, the aim of Virgin Orbit is to make space more accessible for all and in particular for small satellites. Complainant owns a substantial portfolio of approximately 3,500 trademark applications and registrations in over 150 countries covering the majority of the 45 Nice classes of goods and services. Among others, Complainant owns the following trademark registrations: Trademark Registration number Goods and Services Registration date VIRGIN European Union Trade Mark Registration No. 15255235 Classes 3, 5, 9, 11, 12, 14, 16, 31, 32, 35, 36, 38, 39, 41, 42, 43, 44, and 45 March 21, 2016 VIRGIN ORBIT United Kingom Trade Mark Registration No. UK00003186871 Classes 9, 12, 16, 25, October 20, 2017 (composite mark) United Kingdom Trade Mark Registration No. UK00003230710 Classes 9, 12, 16, 25, October 13, 2017 (composite mark) European Union Trade Mark Registration No. 016972663 Classes 09,12,16, 25, April 10, 2018 VIRGIN ORBIT International Trade Mark Registration No. 1358590 designating Australia, China, Classes 09, 12, 16, 25, January 25, 2017 VIRGIN ORBIT United States Trade Mark Registration No. 5646174 for the mark VIRGIN ORBIT Classes 9, 12, 38, and 39 January 8, 2019 Complainant has built up a considerable online presence and is the registered proprietor of over 5,000 domain names consisting of, or incorporating the trademark VIRGIN, including the domain name Complainant’s trademark VIRGIN ORBIT and the domain name Complainant submits that the disputed domain name Furthermore, Complainant affirms that Respondent does not have any rights or legitimate interests in respect of the trademark VIRGIN ORBIT, since Respondent is not acting in connection with a bona fide offer of products or services. In this regard, Complainant affirms that Respondent is intentionally attempting to attract, for commercial gain, Internet users by causing a likelihood of confusion with Complainant, as far as Respondent created an e-mail address as from the disputed domain name to make look like it is in any way affiliated to Complainant. This fact would be sufficient to prove the illegitimate nature of Respondent’s interest on the disputed domain name, also fulfilling paragraph 4(a)(ii) of the Policy and paragraph 3(b)(ix)(2) of the Rules. Moreover, Complainant submits that Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Indeed, it has come to Complainant’s attention that the disputed domain name has been used by Respondent to create an “@virginorbitinc.com” e-mail address as an attempt to pass itself off as Complainant’s employee, which implies an intent to use the disputed domain name for purposes of phishing or other fraudulent financial gain. Thus, Complainant sustain that paragraphs 4(a)(iii) and 4(b) of the Policy and paragraph 3(b)(ix)(3) of the Rules would be fulfilled. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings To succeed in a UDRP complaint, complainants must demonstrate that all the elements listed in paragraph 4(a) of the Policy have been satisfied, as following: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) 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 burden of proving these elements is upon Complainant. Respondent had 20 days to submit a response in accordance with paragraph 5(a) of the Rules and failed to do so. Paragraph 5(f) of the Rules establishes that if a respondent does not respond to the Complaint, the Panel’s decision shall be based upon the Complaint. A. Identical or Confusingly Similar Complainant has duly proven the first element under paragraph 4(a) of the Policy by showing evidence that it is the owner of several trademark registrations for VIRGIN and VIRGIN ORBIT in jurisdictions throughout the world and that such trademark is contained in its entirety in the disputed domain name The Panel finds that the addition of the element “inc” is not sufficient to distinguish the disputed domain name from Complainant’s registered marks VIRGIN and VIRGIN ORBIT and it would not prevent a finding of confusing similarity under the first element. Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s trademark and that the requirement of the first element of paragraph 4(a) of the Policy is satisfied. B. Rights or Legitimate Interests The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) as follows: “[w]hile the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often impossible task of ‘proving a negative’, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.” In this case, noting the facts and contentions listed above, the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests, so the burden of production shifts to Respondent. As Respondent has not replied to Complainant’s contentions, that burden has not been discharged, and the Panel has considered Complainant’s unrebutted prima facie case to be sufficient to demonstrate that Respondent has no rights to or legitimate interests in the disputed domain name Therefore, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists several circumstances that, without limitation, are deemed to be evidence of the registration and use of a domain name in bad faith. Those circumstances include: “(iv) by using the domain name, you have intentionally attempted 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.” Firstly, the Panel considers to be highly unlikely that Respondent had no knowledge of Complainant’s rights over the trademark VIRGIN ORBIT at the time of registration of the disputed domain name, taking into consideration that (i) Complainant is a global and well-known company, spanning multiple sectors; (ii) Complainant’s trademark VIRGIN ORBIT and domain name In relation to this last point, the Panel finds that Respondent is using the disputed domain name with the purpose to intentionally mislead and confuse Respondent’s business partners into believing that it is associated or affiliated with Complainant for obtaining a fraudulent financial gain. Such conclusion arises from the fact that the disputed domain name was used to create an “@virginorbitinc.com” email address, impersonating on of Complainant’s employee, to place orders for goods from third party companies, possibly with no intention to pay for those goods. In a similar case in which the disputed domain name was being used to implement a fraud scheme, Carrefour v. WhoisGuard, Inc., WhoisGuard Protected / Robert Jurek, Katrin Kafut, Purchasing clerk, Starship Tapes & Records,WIPO Case No. D2017-2533, the panel found the use/registration in bad faith of the domain name into the fact that “Respondents’ activities appear to be calculated to obtain an illegitimate benefit from the Complainant’s goodwill. This is inferred from both the email servers configured on the disputed domain name, and the invisible redirection from the disputed domain name to the Complainant’s website. As the Complainant pointed out, this presents a risk that the Respondents are engaged in a phishing scheme. The consequences of such a scheme can be detrimental not only to the company whose goodwill has been taken advantage of, but to third party staff and customers who may entrust what appears to be the Complainant with sensitive information such as credit card details”. In the present case, thus, the Panel notes that such practice is not only likely to cause loss or harm to the companies that receive the deceptive fraudulent enquiries from Respondent – in case any goods are delivered but with no payment being received, or in the event communications with the disputed domain name are used to obtain sensitive personal information for phishing purposes – but this is also likely to tarnish Complainant’s reputation and harm the confidence that customers place in Complainant’s trademarks. Lastly, in conjunction with all the above mentioned, the Panel notes that the fact that Respondent did not present a response to the Complaint reinforces the conclusion that Respondent acted in bad faith. Accordingly, the Panel concludes that the disputed domain name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy. As such, the Panel finds that Complainant has satisfied 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 Gabriel F. Leonardos
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the European Union, Japan and New Zealand
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Sole Panelist
Date: May 31, 2021
Full & Egal Universal Law Academy