WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. Frank Clancy

Case No. D2018-2174

1. The Parties

The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”), represented by Burges Salmon LLP, United Kingdom.

The Respondent is Frank Clancy of Rancho Cordova, California, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <virginorbit-ae.com> is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 24, 2018. On September 25, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, 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 October 3, 2018, 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 October 5, 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 the Respondent of the Complaint, and the proceedings commenced on October 8, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 28, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 29, 2018.

The Center appointed Mihaela Maravela as the sole panelist in this matter on November 12, 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 Virgin Enterprises Limited, a wholly owned subsidiary of Virgin Group and owner and manager of the VIRGIN trademark. The Virgin Group was originally established in the United Kingdom in 1970 for the sale of popular music records 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 ranging from Travel and Leisure, Telecoms and Media, Music and Entertainment, Financial Services and Health and Wellness. There are more than 60 Virgin branded business with around 53 million customers worldwide, employing in excess of 60,000 people in 35 countries. The Complainant has registered its first VIRGIN trademark on April 11, 1973 (United Kingdom Trademark registration number 00001009534) and it currently has a portfolio of approximately 3,000 trademark applications and registrations in over 150 countries. The Complainant has registered over 5,350 domain names either consisting exclusively of the VIRGIN trademark or in which the VIRGIN name is used in combination with other words and/or numbers.

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 Complainant is the exclusive owner of a number of registered trademarks consisting of the word VIRGIN in various jurisdictions throughout the world, including the following:

- the United Kingdom Trademark for the word VIRGIN ORBIT with registration number 00003186871 registered as of October 20, 2017,

- the European Union Trademark for the word VIRGIN with registration number 011991882 registered as of December 10, 2013.

The disputed domain name was registered on August 6, 2018. According to the evidence provided by the Complainant, the disputed domain name has been used as an email address pretending to be the procurement manager of Virgin Orbit.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is identical and/or confusingly similar to the Complainant’s trademarks as the disputed domain name incorporates the Complainant’s VIRGIN and VIRGIN ORBIT trademarks. The addition of the letters “-ae” to the Complainant’s trademarks VIRGIN ORBIT in the disputed domain name should be disregarded for the purposes of establishing whether the disputed domain name is identical or similar to the Complainant’s trademarks. The Complainant argues that given that the email scam, discussed below, purports to originate from a United Arab Emirates (the “UAE”) branch of Virgin Orbit, supposedly “-ae” refers to the location of the Virgin Orbit entity corresponding with the organization targeted by the email scam. The addition of “-ae” does not remove the likelihood of confusion between the Complainant’s trademarks and the disputed domain name.

The Complainant also argues that the Respondent cannot demonstrate any circumstance that would evidence rights to, and legitimate interests in, the disputed domain name since there is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. To the contrary, the website hosted at the disputed domain name currently resolves to a webpage displaying a webhosting platform design page. Moreover, the Complainant has not licensed or authorized the Respondent to use the VIRGIN or VIRGIN ORBIT trademarks. In addition, the disputed domain name is used in a fraudulent manner for email correspondence purportedly sent on behalf of the procurement manager of Virgin Orbit with the intention to defraud the targeted organization into corresponding with the sender in respect of a sham order for computer/electronic goods. In this regard, the Complainant adduced evidence that it was recently notified of an instance involving fraudulent email correspondence being sent from an email address associated with the disputed domain name (“[….]@virginorbit-ae.com”). The Complainant infers that the disputed domain name was registered solely for the purpose of hosting an email address from which to perpetrate fraud.

Moreover, the Complainant argues that the disputed domain name was registered and is being used in bad faith considering the email scam that was designed to mislead the recipients into believing that they are corresponding with a representative of Virgin Orbit when this is not the case. The Complainant considers that 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 Complainant also shows that it has amassed tremendous goodwill and reputation through its intensive use of the VIRGIN trademarks across a very wide range of businesses and business and consumers sectors and that the Respondent has intentionally incorporated the Complainant’s VIRGIN and VIRGIN ORBIT trademarks into the disputed domain name in an attempt to capitalize on such fame and goodwill by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the email scam originating from the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Noting the fact that the Respondent has not filed a Response, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.

“A Panel shall 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 15(a) of the Rules.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) that the disputed domain name was registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.

Given the evidence put forward by the Complainant, the Panel is satisfied that it proved it has rights over the VIRGIN and VIRGIN ORBIT trademarks.

As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name to the trademarks in which the Complainant holds rights.

Numerous prior UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See, Aldermore Bank Plc v. Hildegard Gruener, WIPO Case No. D2016-1617.

Here the disputed domain name incorporates in its entirety the Complainant’s VIRGIN well-known trademark and also the country code abbreviation “ae” that stands in short for “United Arab Emirates”, “ae” being the country code Top-Level Domain for United Arab Emirates. The mere addition of such geographical term to the disputed domain name is insufficient to dispel the confusing similarity with the Complainant’s trademark. For a similar finding see Dubai Natural Gas Company Limited - Dugas LLC v. Hulli Atude, WIPO Case No. D2014-1851.

It is well accepted by UDRP panels that a generic Top-Level Domain (“gTLD”), such as “.com”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark.

This Panel concludes that the disputed domain name is confusingly similar to the trademarks of the Complainant and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate a respondent’s rights or legitimate interests in a disputed domain name:

(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the disputed domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

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”), which states: “[…] 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 the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has established that it holds rights over the trademarks VIRGIN and VIRGIN ORBIT and claims that the Complainant has not licensed or authorized the Respondent to use the VIRGIN or VIRGIN ORBIT trademarks. There is no evidence indicating that the Respondent is commonly known by the disputed domain name or the names “virgin”, or “virgin orbit”. See for a similar finding ALDI GmbH & Co. KG v. zhou xiaolei, WIPO Case No. D2014-0957.

There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Rather, according to the unrebutted evidence put forward by the Complainant, the Respondent used the disputed domain name for scamming activities and such activity cannot amount to a fair use of the disputed domain name by the Respondent. See also Virgin Enterprises Limited v. Zanta Consult, WIPO Case No. D2018-1496.

By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. See for a similar finding Virgin Enterprises Limited v. Name Redacted, WIPO Case No. D2018-0970.

With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

To fulfill the third requirement of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.

According to the unrebutted assertions of the Complainant, its VIRGIN trademark is widely used in commerce since 1970, well before the registration of the disputed domain name in August 2018. The disputed domain name incorporates the Complainant’s trademark with the addition of a geographical term. The email sent from the disputed domain name uses the name of the procurement manager of Virgin Orbit. Under these circumstances, it is most likely that the Respondent was aware of the Complainant’s trademark at the registration of the disputed domain name and sought to take advantage of the reputation of the VIRGIN trademark.

Furthermore, according to the evidence submitted by the Complainant, the Respondent used the disputed domain name shortly after registration to pass of as the procurement manager of Virgin Orbit apparently as part of a phishing scam. Given such evidence, the Panel agrees with previous UDRP decisions that, “the Respondent’s fraudulent use of the disputed domain name, which began almost immediately after its registration, confirms the possibility that the disputed domain name was registered to conduct a “social engineering” attack or other type of scam”. For such reasons, the Panel finds that the Respondent must have been fully aware of the Complainant’s trademarks and activities when it registered the disputed domain name. See, e.g., Virgin Enterprises Limited v. Vincent Battista, WIPO Case No. D2018-1416.

As regards the use of the disputed domain name, given that the Respondent has registered the disputed domain name confusingly similar to the trademark of the Complainant, an intention of the Respondent to attract Internet users and consumers for commercial gain by creating a likelihood of confusion with the Complainant and its business can be inferred. See Virgin Enterprises Limited v. On behalf of virgnimedia.com Owner, c/o whoisproxy.com / Tulip Trading Company, WIPO Case No. D2018-1135.

The Respondent used an email address corresponding to the disputed domain name in an attempt to mislead Internet users and customers that the Respondent is an authorized representative of the Complainant’s organization Virgin Orbit, presumably to provide the Respondent a fraudulent gain. As held by previous UDRP panels, such fraudulent use constitutes bad faith. See Virgin Enterprises Limited v. Michelle Grand, WIPO Case No. D2018-1119 and the decisions cited there; Virgin Enterprises Limited v. Name Redacted, supra; Virgin Enterprises Limited v. Alan Smith, WIPO Case No. D2018-0202.

In light of the above, the Panel concludes that the disputed domain name was registered and 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 <virginorbit-ae.com> be transferred to the Complainant.

Mihaela Maravela
Sole Panelist
Date: November 26, 2018