WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Derek Kagimoto, Virginiorbit
Case No. D2021-1828
1. The Parties
The Complainant is Virgin Enterprises Limited, United Kingdom, represented by A.A.Thornton & Co, United Kingdom.
The Respondent is Derek Kagimoto, Virginiorbit, United States of America.
2. The Domain Name and Registrar
The disputed domain name <virginiorbit.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 June 10, 2021. On June 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 10, 2021, 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 June 15, 2021 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 June 18, 2021.
The Center verified that the Complaint 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 June 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 14, 2021.
The Center appointed Louis-Bernard Buchman as the sole panelist in this matter on August 3, 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
The Complainant is a member of the Virgin Group, originally established in the United Kingdom (“UK”) in 1970 by its founder and chairman Sir Richard Branson.
The Complainant registers and maintains registrations for trademarks containing the VIRGIN name and licenses these rights to the members of the Virgin Group, which between them have over 53 million customers worldwide and employ more than 69,000 people in 35 countries. The annual revenue of the Virgin Group is GBP 16,6 billion.
One member of the Virgin Group, formed in 2017, is Virgin Orbit, an innovative business, the aim of which is to develop flexible launch services for small satellite operators, making space more accessible for all.
The Complainant owns over 5,000 domain names, including the <virginorbit.com> domain name operated by Virgin Orbit, which resolves to its website, where Internet users may find information on its services, projects, and achievements.
The disputed domain name was initially registered in the name of a privacy service. The identity of the Respondent was disclosed by the Registrar in response to the Center’s request for registrar verification in connection with the disputed domain name.
The Complainant owns a portfolio of approximately 3,500 trademarks, including the international trademark VIRGIN ORBIT, registered under No. 1358590 on January 25, 2017, the UK trademark VIRGIN ORBIT, registered under No. UK00003186871 on October 20, 2017, the European Union trademark VIRGIN ORBIT, registered under No. 3 975,527 on April 10, 2018, and the United States of America trademark VIRGIN ORBIT, registered under No. 5635644 on December 25, 2018 (together hereinafter referred to as: “the Mark”).
The disputed domain name <virginiorbit.com> was created on April 25, 2021.
The Complainant has submitted evidence that the disputed domain name resolved to a parking page and was used to send phishing e-mails. At the time of this decision, the disputed domain name still resolves to this parking page.
5. Parties’ Contentions
(i) The Complainant submits that the disputed domain name reproduces the Mark, in which the Complainant has rights, and is identical to the Mark, insofar as its two elements are contained in their entirety in the disputed domain name <virginiorbit.com>.
(ii) The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name. Furthermore, the Complainant contends it never authorized the Respondent to use the Mark in any manner and that the Respondent has never had any affiliation with the Complainant.
(iii) The Complainant submits that the Respondent has registered the disputed domain name in bad faith and alleges that the Respondent had knowledge of the Mark when registering the disputed domain name.
(iv) The Complainant submits that the Respondent is using the disputed domain name in bad faith, having sent phishing e-mails.
(v) The Complainant requests that the disputed domain name be transferred to the Complainant.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Procedural Aspects - Failure to Respond
As aforementioned, no Response was received from the Respondent.
Under the Rules, paragraphs 5(f) and 14(a), the effect of a default by the Respondent is that, in the absence of exceptional circumstances, the Panel shall proceed to a decision on the basis of the Complaint.
Under paragraph 4(a) of the Policy, it is the Complainant’s burden to establish that all three of the required criteria for a transfer of the disputed domain name have been met, even in the event of a default.
Under paragraph 14(b) of the Rules, the Panel is empowered to draw such inferences from the Respondent’s default as it considers appropriate under the circumstances.
In this case, the Panel finds that as a result of the default, the Respondent has failed to rebut any of the reasonable factual assertions that are made and supported by evidence submitted by the Complainant. In particular, by defaulting and failing to respond, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy or otherwise, from which the Panel might conclude that the Respondent has any rights or legitimate interests in the disputed domain name, such as making legitimate noncommercial or fair use of the disputed domain name.
Moreover, as discussed below, the Respondent has failed to provide any exculpatory information or reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent has acted in bad faith.
6.2. Requirements of Paragraph 4(a) of the Policy
A. Identical or Confusingly Similar
In comparing the Mark with the disputed domain name <virginiorbit.com>, it is evident that the latter consists of the Mark, with the letter “i” inserted between its two elements, followed by the generic Top-Level Domain (“gTLD”) “.com”.
It is well established that a gTLD does not generally affect the assessment of a domain name for the purpose of determining identity or confusingly similarity.
The Panel finds that the disputed domain name <virginiorbit.com> is almost identical to the Mark, which is incorporated in its entirety, the insertion of the letter “i” being unable to prevent the Mark from being recognizable in the disputed domain name.
Thus, the Complainant has satisfied the requirement of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that with regard to paragraph 4(a)(ii) of the Policy, this could result in the often impossible task of proving a negative proposition, requiring information that is primarily, if not exclusively, within the knowledge of a respondent.
Thus, the consensus view of UDRP panels is that paragraph 4(c) of the Policy shifts the burden of production of evidence to the respondent to come forward with evidence of rights or legitimate interests in a domain name, once the complainant has made a prima facie showing, as the Panel believes the Complainant has made in this case. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
As previously noted, the Respondent offered no reason for selecting the disputed domain name. There is no evidence that the Respondent is known by the disputed domain name. The way the Respondent has used the disputed domain name is not bona fide (see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903). The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. The disputed domain name resolves to a parking page and was used to send phishing e-mails, showing a clear intent to fraudulently obtain an illicit commercial gain, whilst misleadingly diverting Internet users and potentially tarnishing the Mark.
No information is provided on what rights or legitimate interests the Respondent may have in the disputed domain name.
In the circumstances, the Panel concludes that the Complainant has established the requirement of paragraph 4(a)(ii) of the Policy with respect to the disputed domain name.
C. Registered and Used in Bad Faith
As noted above, the Respondent has failed to provide any exculpatory information or persuasive reasoning that might have led the Panel to question the Complainant’s arguments that the Respondent acted in bad faith by creating confusion to the detriment of the Complainant by registering the disputed domain name almost identical or highly similar to the Mark, which can be considered as “cybersquatting”.
It is established in prior UDRP decisions that where the respondent knew or should have known of a trademark prior to registering the disputed domain name, such conduct may be, in certain circumstances, sufficient evidence of bad faith registration and use. See Weetabix Limited v. Mr. J. Clarke, WIPO Case No. D2001-0775.
In this case, given that the Respondent sent phishing e-mails and considering that the disputed domain name resolves to a parking page, the Panel finds that it is impossible to believe that the Respondent chose to register the disputed domain name randomly with no knowledge of the Mark. See Barney’s Inc. v. BNY Bulletin Board, WIPO Case No. D2000-0059; Kate Spade, LLC v. Darmstadter Designs, WIPO Case No. D2001-1384, citing Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028; and SembCorp Industries Limited v. Hu Huan Xin, WIPO Case No. D2001-1092.
Furthermore, considering the Respondent’s use of the disputed domain name, the Panel concludes that the Respondent knew of the Mark when the Respondent registered the disputed domain name, and that such registration was made in bad faith.
The Panel finds that the Respondent has attempted to attract Internet users for commercial gain by creating a likelihood of confusion with the Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, and that such use is constitutive of bad faith.
Prior UDRP panels have also held that bad faith use of a domain name by a respondent may also result from the fact its good faith use is in no way plausible, considering the specificity of the activity (see Audi AG v. Hans Wolf, WIPO Case No. D2001-0148). The Panel finds it is indeed not possible to imagine any plausible future active use of the disputed domain name that would not be illegitimate, considering the specificity of the Complainant’s activity.
Moreover, in this case, the Respondent took active steps to hide its identity. Although using a proxy or privacy service to hide the identity of the registrant is not per se conclusive of bad faith registration and use (see Trinity Mirror Plc and MGN Ltd. v. Piranha Holdings, WIPO Case No. D2008-0004), the Panel notes that the fact that the Respondent used a privacy service to hide its identity and contact details prevented the Complainant from contacting it. Prior UDRP panels have held that deliberate concealment of identity and contact information may in certain circumstances be indicative of registration in bad faith (see TTT Moneycorp Limited v. Diverse Communications, WIPO Case No. D2001-0725, and Schering Corporation v. Name Redacted, WIPO Case No. D2012-0729). See section 3.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”).
Finally, some UDRP panels have held that in certain circumstances, registrants of domain names have an affirmative duty to abstain from registering and using a domain name which is either identical or confusingly similar to a prior trademark held by others and that contravening that duty may constitute bad faith. See Policy, paragraph 2(b); Nike, Inc. v. B. B. de Boer, WIPO Case No. D2000-1397; Nuplex Industries Limited v. Nuplex, WIPO Case No. D2007-0078; Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304; BOUYGUES v. Chengzhang, Lu Ciagao, WIPO Case No. D2007-1325; Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964; and mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. D2007-1141.
The Panel concludes in the light of all these circumstances that the Respondent’s registration and use of the disputed domain name constitute bad faith, and that the requirement of paragraph 4(a)(iii) of the Policy is also satisfied in this case.
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, <virginiorbit.com>, be transferred to the Complainant.
Date: August 12, 2021