WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Zhuhai Yingxun Keji Limited / John Riley
Case No. D2018-0197
1. The Parties
The Complainant is Virgin Enterprises Limited of London, United Kingdom, represented by Burges Salmon LLP, United Kingdom.
The Respondent is Zhuhai Yingxun Keji Limited of Zhuhai, China / John Riley of Long Beach, California, United States of America (“United States”).
2. The Domain Name and Registrar
The disputed domain name <virgin-orbit.com> is registered with Eranet International Limited (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 31, 2018. On January 31, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name(s). On February 5, 2018, the Registrar transmitted by email to the Center its verification 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 February 13, 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 February 13, 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 February 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 8, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 9, 2018.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on March 20, 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 part of the Virgin Group and owner and manager of the VIRGIN trademarks and brand.
The Complainant is the proprietor of, inter alia,the following trademark registrations.
European Union Trademark Registration No. 011991882, registered on December 10, 2013 for the word mark VIRGIN 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;
UK Trademark Registration No. UK00003186871, registered on October 20, 2017 for the word mark VIRGIN ORBIT for goods and services in classes 9, 12, 16, 25, 28, 38 and 39.
UK Trademark Registration No. UK00003186871 registered on October 13, 2017 for a figurative mark containing the word elements VIRGIN ORBIT for goods and services in classes 9, 12, 16, 25, 28, 38 and 39.
The disputed domain name was registered on January 9, 2018.
5. Parties’ Contentions
The Complainant mainly alleges the following.
The Virgin Group, of which the Complainant is part, is engaged in a diverse range of business sectors such as Travel & Leisure, Telecoms & Media, Music & Entertainment, Financial Service and Health & Wellness.
Virgin Orbit is a part of the Virgin Group. It was formed in 2017 to provide launch services for small satellites.
The disputed domain name is identical and/or confusingly similar to the Complainant’s trademarks. The disputed domain name incorporates the Complainant’s VIRGIN and VIRGIN ORBIT trademarks in full, with the mere addition of a hyphen separating the words VIRGIN and ORBIT of the latter and the suffix “.com”.
The Respondent has no rights or legitimate interests in respect of 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. Further, nothing suggests that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. To the contrary, the disputed domain name currently resolves to the genuine <virginorbit.com> webpage, which has the potential to create further confusion as to the authenticity of any email correspondence sent from an associated account.
The disputed domain name has been used as a part of an email scam. The Complainant has recently been notified of an instance of fraudulent email involving fraudulent email correspondence being sent to computer hardware suppliers from email addresses associated with the disputed domain name. The emails in question were purportedly sent on behalf of “a Mr.” (who is listed in the email footer as the “Senior Purchasing Manager” of Virgin Orbit), and a Mr. (the name of the genuine Director of Supply Chain for Virgin Orbit). The email scams were intended to defraud the targeted organizations into corresponding with the sender in connection with sham business orders relating to computer hardware in the belief that they were, in fact, dealing with Virgin Orbit, when that was not the case. Neither the disputed domain name nor the email addresses from which the email correspondence was sent from are in any way connected with the Complainant, Virgin Orbit or the Virgin Group.
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. The Respondent, by using the disputed domain name to register an email account which looks to be affiliated with Virgin Orbit, has intentionally attempted to create a likelihood of confusion with the Complainant’s VIRGIN and VIRGIN ORBIT trademarks as to the source of the email scam. The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of the Complainant.
Against this background the Complainant considers that the disputed domain name was registered and is being used in bad faith by the Respondent.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy requires the Complainant to prove all three 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;
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The disputed domain name contains the trademark VIRGIN in its entirety and, with the addition of a hyphen and the generic Top-Level Domain (“gTLD”) .“com”, it also contains the trademark VIRGIN ORBIT. It is well-established among UDRP panels that the gTLD is not distinguishing. Both of the afore-mentioned trademarks are registered trademarks owned by the Complainant. The hyphen is not sufficient to distinguish the distinguishing part of the disputed domain name from the Complainant’s trademark VIRGIN ORBIT. The Panel therefore finds that the disputed domain name is confusingly similar to the Complainant’s VIRGIN ORBIT trademark and that the first requirement of the Policy is fulfilled.
B. Rights or Legitimate Interests
In cases when a Respondent fails to present a response, the Complainant is still required to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent has not proven otherwise. The Panel therefore finds the requirements of the second element of the Policy fulfilled.
C. Registered and Used in Bad Faith
The Complainant’s registered trademarks VIRGIN and VIRGIN ORBIT predate the disputed domain name and it is not probable that the Respondent registered the disputed domain name without knowledge of the Complainant or its trademarks. The circumstances presented by the Complainant and the submitted supporting evidence regarding an email scam with use of the disputed domain name supports a finding of bad faith. The Panel therefore finds that the third requirement of the Policy is fulfilled.
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, <virgin-orbit.com> be transferred to the Complainant.
Date: March 27, 2018