WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Mark Miller, ca domains
Case No. D2019-0680
1. The Parties
Complainant is Virgin Enterprises Limited, United Kingdom, represented by A.A. Thornton & Co, United Kingdom.
Respondent is Mark Miller, ca domains, Canada.
2. The Domain Name and Registrar
The disputed domain name <virgingalacticinc.com> (the “Domain Name”) is registered with NameSilo, LLC (“Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on March 26, 2019. On March 26, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 26 and April 2, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name that differed from that in the Complaint while confirming other details of the registration. The Center sent an email communication to Complainant on April 3, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 5, 2019.
The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“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 8, 2019. In accordance with the Rules, paragraph 5, the due date for Response was April 28, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 29, 2019.
The Center appointed Debra J. Stanek as the sole panelist in this matter on May 21, 2019. 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 a member of the Virgin Group of companies. The VIRGIN mark is well-known worldwide for an array of services. Complainant owns registrations for the mark VIRGIN GALACTIC for the businesses of its affiliated companies in the Virgin Group, including in the United Kingdom (Reg. No. 3187698, registered on January 13, 2017), European Union (Reg. No. 4756921, registered on January 18, 2007), and United States of America (Reg. No. 4481359, registered on February 11, 2014) for the mark VIRGIN GALACTIC for space-related vehicles and space travel and transportation services.
Respondent registered the Domain Name <virgingalacticinc.com> on January 16, 2019. It does not appear that Respondent actively used the Domain Name for a website. However, the Domain Name has been used in email addresses used to communicate with third parties.
5. Parties’ Contentions
1. Identical or Confusingly Similar
The VIRGIN marks are well-known throughout the world. Complainant owns a portfolio of thousands of VIRGIN marks for a variety of goods and services, including the mark VIRGIN GALACTIC for space-related vehicles and space-related travel and transportation services. In addition, Complainant operates a website at “www.virgingalactic.com” and promotes its VIRGIN GALACTIC mark through social media platforms.
The Domain Name is comprised of “virgin,” “galactic,” and “inc” and therefore includes the entirety of Complainant’s VIRGIN GALACTIC mark. The additional element “inc” would be understood as referring to an incorporated company, specifically, the company that operates the VIRGIN GALACTIC business. Therefore, it is insufficient to distinguish the Domain Name from Complainant’s mark.
Further, the Domain Name includes Complainant’s VIRGIN marks.
B. Rights or Legitimate Interests
Respondent is not using the Domain Name in connection with an active website.
Complainant has not authorized Respondent to use its marks.
It appears that Respondent is using the Domain Name to send email messages from “@virgingalacticinc.com” that falsely purport to be from Complainant’s affiliate, Virgin Galactic LLC. The message is in the name of an actual Virgin Supply Chain Director and includes other address information and names from Virgin Galactic LLC.
The message seeks to set up an account with the recipient and likely is part of an effort to obtain personal and sensitive information for financial gain. Complainant is aware of a similar fraudulent effort, using the <virgiingalactic.com> domain name, which was the subject of a proceeding decided under the Policy on March 3, 2019. Virgin Enterprises Limited v. Eric Johnson, Eric Johnson Group, WIPO Case No. D2019-0093.
There is no evidence that Respondent is commonly known by the Domain Name.
C. Registered and Used in Bad Faith
Respondent is using the Domain Name to send and receive fraudulent email messages for financial gain by creating a likelihood of confusion between the Domain Name and Complainant’s mark.
The messages include information specific to Complainant’s affiliate – the name of a Supply Chain Director, a business address, etc. The information, combined with the fame of the VIRGIN marks, make it inconceivable that Respondent did not know of Complainant and Complainant’s mark before registering the Domain Name.
The Domain Name was registered on the same date that Complainant filed WIPO Case No. D2019-0093 with the Center and copied the relevant registrar. Complainant believes there is a strong possibility that Respondent registered the Domain Name when faced with the prospect that the <virgiingalactic.com> domain name would be locked.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
6.1. Procedural Matters
When this proceeding was initiated, the holder of the Domain Name registration was a “privacy” service. Thereafter, the Registrar disclosed the underlying registrant name and organization. Consistent with section 4.4.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), the Panel finds that the underlying registrant is the appropriate Respondent.
6.2. Substantive Matters
To prevail, a complainant must prove, as to a disputed domain name, that:
(i) It is identical or confusingly similar to a mark in which the complainant has rights.
(ii) The respondent has no rights or legitimate interests in respect to it.
(iii) It has been registered and is being used in bad faith.
Where, as here, Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. See WIPO Overview 3.0, section 4.3. Complainant has the burden of establishing the required elements. The Panel may, however, draw such inferences from Respondent’s default as it considers appropriate. See Rules, paragraph 14(b).
A. Identical or Confusingly Similar
Complainant has established its rights in the VIRGIN GALACTIC mark by virtue of its United Kingdom, European Union, and United States registrations.
The Domain Name is not identical to Complainant’s mark. However, based on a straightforward comparison of the Domain Name and the textual components of the mark, the Panel finds that the mark is recognizable in the Domain Name (excluding the Top-Level Domain). See WIPO Overview 3.0, sections 1.7 and 1.8. The additional of “inc” does not differentiate or distinguish the Domain Name from the mark.
The Panel finds that the Domain Name is confusingly similar to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
The Panel also shares the consensus view that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing. See WIPO Overview 3.0, section 2.1 (once complainant makes a prima facie case, burden of showing rights or legitimate interests in the domain name shifts to respondent). The Panel finds that Complainant has made a prima facie showing under this element.
There is no indication or reason to believe that Respondent is commonly known by the Domain Name. Respondent’s use of the Domain Name is not in connection with a bona fide offering and is not a legitimate noncommercial or fair use. It is evident that the Domain Name was being used as part of a scheme to mislead recipients into believing the messages were from Complainant’s affiliate. Given the fame of the VIRGIN marks, it is difficult to find any circumstances under which Respondent could be using, or intending to use, the Domain Name in connection with a bona fide offering of any kind.
Respondent has not rebutted Complainant’s prima facie showing. The Panel concludes that Complainant has established that Respondent lacks any rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Complainant must establish that the Domain Name was registered and is being used in bad faith.
The documentary evidence submitted by Complainant consists of copies of email messages using the Domain Name as part of the sender’s email address. The messages identify the sender as “[...]@virgingalacticinc.com” and, below sender’s name, the title “Supply Chain Director.” The message requests a price quote and contemplates creating an account. This use evidences Respondent’s registration and use of the Domain Name as part of a scheme to defraud. These actions also show that Respondent actually knew of Complainant’s mark and adopted and used it intending recipients to believe that the communications were from Complainant.
In light of these facts and the adverse inferences that arise from Respondent’s failure to respond to the Complaint, the Panel finds that Complainant has established that Respondent has registered and is using the Domain Name in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <virgingalacticinc.com> be transferred to Complainant.
Debra J. Stanek
Date: May 27, 2019