WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. Craigs Fochs, CR Fochs Electrical Contractors / Barbara Yesnosky, CR Fochs Electrical Contractors

Case No. D2018-2183

1. The Parties

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

The Respondent is Craigs Fochs, CR Fochs Electrical Contractors, of Neenah, Wisconsin, United States of America / Barbara Yesnosky, CR Fochs Electrical Contractors, of Neenah, Wisconsin, United States of America.

2. The Domain Names and Registrars

The disputed domain name <virgingalactics.net> is registered with Shinjiru Technology Sdn Bhd.

The disputed domain name <virginorbits.net> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 26, 2018. On September 26, 2018, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On September 27, 2018, the Registrar Shinjiru Technology Sdn Bhd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On the same day, the Registrar PDR Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 4, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 24, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 25, 2018.

The Center appointed Mihaela Maravela as the sole panelist in this matter on November 1, 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.

Consolidation

Paragraph 10(e) of the Rules provide for the possibility of the Panel to consolidate multiple domain name disputes. According to Section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.”

Considering the facts in this case as put forward by the Complainant and not rebutted by the Respondent, the Panel finds that the Complainant has made out a case for consolidation on the basis that:

a. the registrants of both disputed domain names originate from the same organization (CR Fochs Electrical Contractors) and share the same address;

b. the disputed domain names incorporate the Complainant’s registered trademarks VIRGIN, VIRGIN GALACTIC and VIRGIN ORBIT respectively, with the same misspelling (addition of the letter “s” after the trademarks of the Complainant) and both disputed domain names are registered in the same generic Top-Level Domain (“gTLD”) “.net”;

c. the emails sent from the disputed domain names are similar in appearance, length and style and both purportedly originate from the senior vice president of Virgin Orbit;

d. Consolidation would avoid unnecessary duplication of time, effort and expense and ultimately would be fair and equitable to all parties.

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 sell 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 & Leisure, Telecoms & Media, Music & Entertainment, Financial Services and Health & 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 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 Galactic is a spaceflight company within the Virgin Group, founded in 2004, with a view to develop commercial spacecraft and aims to provide the world’s first commercial spaceline.

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 Community Trademark for the word VIRGIN GALACTIC with registration number 004756921 registered as of January 18, 2007,

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

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

The disputed domain name <virgingalactics.net> was registered on August 2, 2018 and the disputed domain name <virginorbits.net> was registered on August 21, 2018 and they both resolve to inactive websites.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are identical and/or confusingly similar to the Complainant’s trademarks as the disputed domain names incorporate the Complainant’s VIRGIN and VIRGIN GALACTIC or VIRGIN ORBIT trademarks. The addition of the letter “s” to the Complainant’s trademarks VIRGIN GALACTIC and VIRGIN ORBIT in the disputed domain names should be disregarded for the purposes of establishing whether the disputed domain names are identical or similar to the Complainant’s trademarks. The Complainant also argues that findings of deliberate misspelling of trademarks by adding, deleting, substituting or reversing the order of letters in a trademark (“typosquatting”) is well established.

The Complainant also argues that the Respondent cannot demonstrate any circumstance that would evidence rights to, and legitimate interests in, the disputed domain names since there is no evidence that the Respondent is using the disputed domain names in connection with a bona fide offering of goods or services. To the contrary, the websites hosted at the disputed domain names currently resolve to webpages displaying an “unknown host” error message. Moreover, the Complainant has not licensed or authorized the Respondent to use the VIRGIN, VIRGIN GALACTIC or VIRGIN ORBIT trademarks. In addition, the disputed domain names are used in a fraudulent manner for email correspondence purportedly sent on behalf of the Senior VP of Virgin Orbit with the intention to defraud the targeted organization into corresponding with (whom they believed to be) the Virgin Orbit representative in connection with a purchase of an upgraded telephone system and/or into supplying goods to the sender. In this regard, the Complainant adduced evidence that it was recently notified of two instances involving fraudulent email correspondence being sent from, and/or citing, email addresses associated with the disputed domain name (“[...]@virgingalactics.net” and “[...]@virginorbits.net”). The Complainant infers that the disputed domain names were registered solely for the purpose of hosting an email address from which to perpetrate fraud. The Complainant states that neither the disputed domain names nor the email addresses from which the email correspondence was sent are in any way connected with the Complainant, Virgin Orbit, Virgin Galactic or the Virgin Group.

Moreover, the Complainant argues that the disputed domain names were registered and are being used in bad faith considering the email scams that were 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. The Complainant considers that the impersonation of a Virgin Group employee amounts to 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, VIRGIN GALACTIC and VIRGIN ORBIT trademarks into the disputed domain names 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 scams originating from the disputed domain names.

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 names are 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 names; and

(iii) that the disputed domain names were registered and are 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, VIRGIN GALACTIC 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 names to the trademarks in which the Complainant holds rights.

Numerous 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 names incorporate in its entirety the Complainant’s VIRGIN well known trademark and also consist of the obvious misspelling of the VIRGIN GALACTIC and VIRGIN ORBIT trademarks, respectively, with the addition of the letter “s” in the disputed domain names. This misspelling in the disputed domain names, also referred as typosquatting is insufficient to avoid a finding of confusing similarity. See Virgin Enterprises Limited v. Registration Private, Domains by Proxy, LLC / Name Redacted, WIPO Case No. D2018-0644 (<virgingalaitic.com>); Virgin Enterprises Limited v. Alan Smith, WIPO Case No. D2018-0202 (<virgnorbit.com>); Virgin Enterprises Limited v. Name Redacted, WIPO Case No. D2018-0970 (<virgingalanctic.com>) and also Section 1.9 of the WIPO Overview 3.0.

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

This Panel concludes that the disputed domain names are 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 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 names. The Complainant has established that it holds rights over the trademarks VIRGIN, VIRGIN GALACTIC and VIRGIN ORBIT and claims that the Complainant has not licensed or authorized the Respondent to use the VIRGIN, VIRGIN GALACTIC or VIRGIN ORBIT trademarks. There is no evidence indicating that the Respondent is commonly known by the disputed domain names or the names “virgin”, “virgin galactic” 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 names in connection with a bona fide offering of goods and services. Rather, according to the unrebutted evidence put forward by the Complainant, the Respondent used the disputed domain names for scamming activities and such activity cannot amount to a fair use of the disputed domain names 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, supra.

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 names in August 2018. The disputed domain names incorporate the Complainant’s trademark in addition to the relevant gTLD. The email sent from the disputed domain names use the name of the vice president 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 names.

Furthermore, according to the evidence submitted by the Complainant, the Respondent used the disputed domain names immediately after registration to pass of as the vice president of Virgin Orbit in connection with the purchase of an upgraded telephone system and/or into supplying goods to the sender. Given such evidence, the Panel agrees with previous 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 Virgin Enterprises Limited v. Vincent Battista, WIPO Case No. D2018-1416.

As regards the use of the disputed domain names, given that the Respondent has registered the disputed domain names with a misspelling of the Complainant’s trademarks (“typosquatting”) 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.

In addition, the Respondent used email addresses corresponding to the disputed domain names 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, supra.

In light of the above, the Panel concludes that the disputed domain names were 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 names <virgingalactics.net> and <virginorbits.net> be transferred to the Complainant.

Mihaela Maravela
Sole Panelist
Date: November 15, 2018