WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Virgin Enterprises Limited v. Name Redacted, Gambit and Co

Case No. D2021-3188

1. The Parties

The Complainant is Virgin Enterprises Limited, United Kingdom, represented by A. A. Thornton & Co., United Kingdom.

The Respondent is Name Redacted, Gambit and Co, United States of America.¹

2. The Domain Name and Registrar

The disputed domain name <virginorbitsinc.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2021. On September 27, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 28, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed slightly from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on November 11, 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 November 18, 2021.

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 November 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 9, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 16, 2021.

The Center appointed Frank Schoneveld as the sole panelist in this matter on January 7, 2022. 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 owns, amongst others, the following trademark registrations:

- International Registration No. 1358590 of the VIRGIN ORBIT trademark registered on January 25, 2017 at WIPO.

- United States of America (“United States” or “US”) Registration No. 5635644 of the VIRGIN ORBIT trademark registered at the United States Patent and Trademark Office (USPTO) on December 25, 2018;

- European Union (“European Union” or “EU”) Registration No. 0016972663 of the trademark VIRGIN ORBIT registered on April 10, 2018 at the European Union Intellectual Property Office (EUIPO);

- United Kingdom (“United Kingdom” or “UK”) Registration No. 00003230710 of the VIRGIN ORBIT trademark registered at the United Kingdom Intellectual Property Office (UKIPO) on October 20, 2017;

The disputed domain name <virginorbitsinc.com> was registered on August 13, 2021, more than two years after registration of the VIRGIN ORBIT trademarks in the United States, the EU, the UK and internationally with WIPO.

According to Whois.com (accessed January 23, 2022) the domain name <virginorbit.com> owned by the Complainant was registered on March 22, 2000 over 20 years prior to registration of the disputed domain name <virginorbitsinc.com>.

By email to a third party from [<....>@virginorbitsinc.com] dated August 25, 2021 a sales enquiry was made seeking “information on your discount rate for product purchase” of certain electronic equipment. This email was signed “[Name Redacted] Business Development, Virgin Orbits Inc.” and under the signature block there was included the trademark of “Virgin Orbit” with the contact name and address, which is the same name, street name, district and State address (but not street number or postcode number) as the administrative contact, registrant contact and technical contact for the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant states that it is a member of a group of companies that are collectively known as “the Virgin Group”, originally established by its founder in the United Kingdom in 1970 when he started a business under the VIRGIN name. The Complainant asserts that there are now over 60 VIRGIN branded businesses that span a diverse range of sectors having between them over 53 million customers worldwide and employing more than 69,000 people in 35 countries, with annual revenue of GBP 16.6 billion. The Complainant indicates that it is responsible for registering and maintaining registrations for trademarks containing the VIRGIN name and licensing these to the VIRGIN businesses.

The Complainant contends that the VIRGIN name has been consistently and intensively used across all VIRGIN operations since the company was founded, that the VIRGIN businesses are branded with marks incorporating the distinctive VIRGIN name (or VIRGIN logo) for example, Virgin Active, Virgin Money, Virgin Media, and that the Complainant has built up a considerable online presence and is the registered proprietor of over 5,000 domain names consisting of or incorporating the VIRGIN mark. The Complainant asserts that it has operated a website at “www.virgin.com” since 2000 to promote the activities of the VIRGIN Group and its businesses, ventures and foundations. The Complainant contends that the VIRGIN businesses operate pages on various social media platforms where the VIRGIN marks also feature prominently and collectively these social media platforms receive over 37 million views each year, and according to the Complainant, thereby demonstrating the widespread exposure of the VIRGIN brand to people all over the world and its allegedly significant global reputation.

The Complainant submits that Virgin Orbit, a part of the Virgin Group, was formed in 2017 to develop flexible launch services for small satellite operators and operates a website at “www.virginorbit.com” (the “Virgin Orbit Website”), where it provides information on the services and projects of the VIRGIN ORBIT business.

The Complainant notes that the disputed domain name is comprised of the terms “virgin”, “orbits” and “inc”, and therefore incorporates the Complainant’s Registered Marks VIRGIN and VIRGIN ORBIT in their entirety. The Complainant contends that (a) the additional letter “s” at the end of “Orbit” is a pluralization of and a possible typing error for “orbit” and is not sufficient to prevent the domain being understood as referring to Virgin Orbit”, and (b) the additional element “inc” is a common generic abbreviation for “Incorporated”, often used to indicate that a company’s business structure is a legal corporation, so that the addition of “inc” will therefore mean the disputed domain name is perceived by Internet users to refer to the legal entity behind the VIRGIN ORBIT programme and the online location for information about that entity, with the Complainant concluding that the inclusion of “inc” is therefore insufficient to distinguish the disputed domain name from the Complainant’s Registered Marks VIRGIN and VIRGIN ORBIT.

The Complainant argues that previous decisions establish that the addition of descriptive or generic indications to a third party trade mark does not avoid the disputed domain name being confusingly similar to the third party trade mark giving examples (such as in Valero Energy Corporation and Valero Marketing and Supply Company v. Valero Energy, WIPO Case No. D2017-0075 <valeropetroleum.org>).

The Complainant contends that the disputed domain name is being used as part of communications sent to third party companies posing as a representative of the VIRGIN ORBIT business, on the pretext of wanting to purchase goods from those companies, and provides a redacted copy of an enquiry sent by email to the sales department of a third party purporting that the sender was interested in acquiring a specific product from the third party, and provided a contact name that is identical to that of a member of the senior management team of the VIRGIN ORBIT business, as well as a contact email address clearly based on this name using the disputed domain name (the “Unauthorized Email Address”). The enquiry falsely indicates in the signature block that the sender is in the Business Development team for Virgin Orbits Inc and also uses the Complainant’s Registered Virgin Signature Logo and Virgin Orbit mark in the signature block. The Complainant emphasises that neither the disputed domain name, the Unauthorized Email Address nor the enquiry are authorized by or connected to the Complainant, the VIRGIN ORBIT business or any individuals of their management teams.

The Complainant argues that such an email is likely to deceive recipients into believing that the communication has come from the VIRGIN ORBIT business, and the disputed domain name and the Unauthorized Email Address are being used to carry out this deception. The Complainant states that, from its’ experience, any successful deception will be used to obtain specialist and highly technical goods with no intention of paying for those goods, or may be used to obtain information for other illegitimate purposes such as phishing. The Complainant says that the deception being carried out using the disputed domain name and the Unauthorized Email Address is for the purpose of commercial gain through fraud, and such use indicates that the Respondent is not using the disputed domain name in connection with a bona fide offering or goods or services, and there is no indication that the Respondent has ever used the Disputed Domain Name in connection with a bona fide offering or goods or services.

The Complainant asserts that in the event any members of the public or third party companies suffer loss or harm as a result of the use of the disputed domain name, this will be disruptive to the Complainant’s business and that of the VIRGIN ORBIT business, and is liable to tarnish the significant reputation the Complainant has in the Complainant’s Registered Marks.

The Complainant states it is clear that by using the disputed domain name, the Respondent is intentionally attempting to attract, for commercial gain, Internet users and the recipients of its communications, to communicate with the Unauthorized Email Address, by creating a likelihood of confusion with the Complainant’s Registered Marks as to the source or affiliation of communications sent from the Unauthorized Email Address, and in this way, the Respondent has no legitimate interests or rights in the disputed domain name. The Complainant submits that on the balance of probabilities the Respondent does not have a legitimate interest or right in the disputed domain name.

The Complainant also contends that use of the disputed domain name as part of the Unauthorized Email Address to pose as a member of the senior management team of the VIRGIN ORBIT business to try and place orders for goods from third party companies, allegedly with no intention to pay for those goods, is an illegitimate fraudulent use of the disputed domain name carried out for commercial gain.

The Complainant says that the disputed domain name, which takes the Complainant’s Registered trademarks VIRGIN and VIRGIN ORBIT in their entirety and only adds the additional letter “s” to orbit and the generic business designation of “inc”, has clearly been registered intentionally to enable this fraud and deceive recipients of communications (such as that provided) into believing that such communications originate from the VIRGIN ORBIT business or have been sent on behalf of it. The Complainant contends that such activity is likely to cause loss or harm to the third party companies that receive the allegedly deceptive fraudulent enquiries from the Respondent, (a) in the event that any goods are delivered but with no payment being received, or (b) in the event communications with the Unauthorized Email Address are used to obtain sensitive personal information for phishing purposes. The Complainant argues that this will be disruptive to the Complainant’s business and that of the VIRGIN ORBIT business, and is liable to tarnish the significant reputation the Complainant has in the Complainant’s Registered Marks.

The Complainant further submits that it is clear from the fact that the Respondent has used a name identical to that of a member of the senior management team of the VIRGIN ORBIT business in the communication as part of the Unauthorized Email Address, that the Respondent was aware of the Complainant and the VIRGIN ORBIT business at the time of registering the disputed domain name. In addition, the Complainant submits that the Respondent has clearly used false details to register the disputed domain name since the Respondent is identified as a senior member of the VIRGIN ORBIT business with the genuine address of the Virgin Orbit business Headquarters in Long Beach California (as provided in the first line of the address field). However, in the registration address details, references to Illinois and Chicago have also been provided in the City and State address fields so that the entire name and address of the Respondent is clearly falsified and is intended to make the disputed domain name appear legitimate by falsely providing the name and address of the Complainant’s Virgin Orbit business.

The Complainant concludes by contending that, after considering the allegedly clear fraudulent purposes for which the disputed domain name is being used, it is inconceivable the Respondent could have had any good faith intention at the time of registering the disputed domain name, so that the Respondent has (according to the Complainant) registered and is using the disputed domain name in bad faith.

B. Respondent

The Respondent provided no response to the Complaint.

6. Discussion and Findings

Pursuant to UDRP paragraph 4(a), in order to have a domain name transferred or cancelled the Complainant must prove that each of the following three elements are present:

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

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

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

The Rules at paragraph 15(a) require that “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.” In the absence of any rebuttal by the Respondent to the Complainant’s contentions, the Panel proceeds on the basis of the Complaint submitted by the Complainant, as well as in accordance with the Policy, the Rules and any rules and principles of law that are applicable.

A. Identical or Confusingly Similar

The Complainant provides evidence that its VIRGIN ORBIT’ trademark has been registered in the United States (where the Respondent apparently has its address) since December 2018, registered in the United Kingdom since October 2017 and registered in the European Union since April 2018. The Complainant therefore has rights in this trademark.

The difference between the disputed domain name and the Complainant’s VIRGIN ORBIT trademark is the additional letter “s” at the end of “Orbit” and the additional element “inc”. The disputed domain name is therefore, confusingly similar to the Complainant’s trademarks, because the disputed domain name includes the VIRGIN ORBIT trademark in its entirety. As the Complainant’s registered trademarks, or significant portions thereof, are clearly recognizable within the disputed domain name, the addition of the letter “s” and “inc” after the Complainant’s registered trademark does not prevent a finding of confusing similarity to the Complainant’s trademark.

The Respondent does not challenge the evidence submitted by the Complainant and does not respond to the Complainant’s contentions.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

There is no evidence that the Respondent has any rights or legitimate interests in the disputed domain name. It is clear that:

(i) the Respondent is not affiliated with the Complainant in any way;

(ii) the Complainant has not given permission to the Respondent to register or use any domain name incorporating the Complainant’s VIRGIN ORBIT trademark or to use the VIRGIN ORBIT business name;

(iii) registration of the VIRGIN ORBIT trademark in the USA, EU and UK preceded by more than two years registration of the disputed domain name;

(iv) there is no evidence the Respondent’s name bears any resemblance to the disputed domain name; and

(v) there is nothing in the evidence before the Panel, including in the WhoIs record for the disputed domain name, that suggests the Respondent might be known by the disputed domain name or any part of it.

Further, rather than a legitimate use, there is evidence that the Respondent may be making an illegitimate use of the disputed domain name. The email to a third party enquiring about pricing information (copy provided as evidence by the Complainant) indicates the disputed domain name is likely being used to deceive the third party to believe that the email enquiry comes from a representative of the VIRGIN ORBIT business, when the email did not originate from the VIRGIN ORBIT business or any of its representatives. This is evident from the fact the email prominently uses (without authorisation) the VIRGIN ORBIT trademark and provides a contact name identical to a member of the senior management team of the VIRGIN ORBIT business, as well as a contact email address using the disputed domain name, when the email originated from another source and not the named representative, thereby falsely indicating in the signature block that the sender is in the Business Development team for Virgin Orbits Inc when clearly he in fact a representative of the Virgin Orbit business. Such conduct could amount to fraud.

The evidence provided by the Complainant, particularly the email showing unauthorized use of the VIRGIN ORBIT trademark and name of its representative, shows that the Respondent is very unlikely to have any rights or legitimate interests in the disputed domain name. At the same time there is no evidence before the Panel that the Respondent has any rights or legitimate interests in the disputed domain name. In the absence of any submission from the Respondent, a strong prima facie case has been established that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has failed to provide any rebuttal of this prima facie case. In those circumstances, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.

C. Registered and Used in Bad Faith

Given that the disputed domain name includes the VIRGIN ORBIT trademark in its entirety it is likely that at the time of registration of the disputed domain name, the Respondent knew of the Complainant’s rights in the trademark VIRGIN ORBIT and chose to incorporate that mark into the disputed domain name to take advantage of the confusing similarity between the disputed domain name and the trademark. This is particularly the case when the VIRGIN ORBIT trademark was registered in the US, where the Respondent has its’ address, more than two years before registration of the disputed domain name, noting the similarities with Complainant’s domain name <virginorbit.com>, and considering the use of the disputed domain name in at least one email to a third party that is false and misleading.

The use of the disputed domain name with unauthorized use of the name of a senior member of the Virgin Orbit business together with a patently false address on emails, is evidence of falsely attempting to mislead others into believing the disputed domain name was associated with or related to the Complainant when clearly it is not. In such a case there could be a commercial gain by misleading others into believing the disputed domain name is associated with or related to the disputed domain name. The Complainant contends that such activity is likely to cause loss or harm to any third party companies that receive the misleading enquiries from the Respondent, (a) in the event that any goods are delivered but with no payment being received, or (b) in the event communications with the Unauthorized Email Address are used to obtain sensitive personal information for phishing purposes. The Respondent does not respond to these very serious allegations of the Complainant.

The Panel accepts that the unauthorized use of the name of a senior member of the VIRGIN ORBIT business when registering the disputed domain name and use of the Respondent’s address together with that name, is evidence of bad faith registration and use of the disputed domain name. Further, the use in an email of the disputed domain name together with the Complainant’s VIRGIN ORBIT trademark, and use of the name of the same senior member of the VIRGIN ORBIT business in the email so that the recipient is very likely to be deceived by the use of the disputed domain name, is also evidence of bad faith use of the disputed domain name.

The Panel accepts that such conduct would be evidence of registration and use in bad faith of the disputed domain name. In the absence of any response by the Respondent to such serious allegations, the Panel accepts there would be a serious risk of harm to third parties leading to serious harm to the reputation and business of the Complainant because of such use of the disputed domain name.

All of the above, including the failure of the Respondent to rebut or respond to the Complainant’s contentions of bad faith registration and use of the disputed domain name, leads the Panel to find that it is more likely than not, the disputed domain name was registered and is being 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 <virginorbitsinc.com> be transferred to the Complainant.

Frank Schoneveld
Sole Panelist
Date: January 26, 2022

¹ The Respondent appears to have used the name and contact details of a member of the senior management of the Complainant when registering the disputed domain name. In light of the potential identity theft, the Panel has redacted the Respondent’s name from this decision. However, the Panel has attached as Annex 1 to this decision an instruction to the Registrar regarding transfer of the disputed domain name, which includes the name of the Respondent. The Panel has authorized the Center to transmit Annex 1 to the Registrar as part of the order in this proceeding, and has indicated Annex 1 to this decision shall not be published due to the exceptional circumstances of this case. See Banco Bradesco S.A. v. FAST-12785241 Attn. Bradescourgente.net / Name Redacted, WIPO Case No. D2009-1788.