WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Virgin Enterprises Limited v. Alan Smith
Case No. D2018-0202
1. The Parties
The Complainant is Virgin Enterprises Limited of London, United Kingdom of Great Britain and Northern Ireland ("UK"), represented by Burges Salmon LLP, UK.
The Respondent is Alan Smith of New York, New York, United States of America.
2. The Domain Name and Registrar
The <virgnorbit.com> (the "Disputed Domain Name") is registered with NameSilo, LLC (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. On January 31, 2018, the Registrar 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 February 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was February 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on February 26, 2018.
The Center appointed Jacob (Changjie) Chen as the sole panelist in this matter on March 5, 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 a member of the Virgin Group which was found in 1970 and is now engaged in multiple business sectors including Travel & Leisure, Telecoms & Media, Music & Entertainment and Financial Services. Virgin Orbit, LLC is the newest member of the Virgin Group and was formed in 2017 to provide launch services for small satellites. The Complainant is responsible for the ownership, management, licensing and protection of all trademarks, intellectual property and goodwill of the Virgin Group, including Virgin Orbit, LLC.
The Complainant is the owner of several VIRGIN and VIRGIN ORBIT trademarks registered in the UK and the European Union. For example, VIRGIN, European Union Trade Mark Registration No. 011991882, was registered on December 10, 2013 and designated in 26 different classes; and VIRGIN ORBIT, UK trademark Registration No. UK00003186871 was registered on October 20, 2017 and designated in class 9, 12, 16, 25, 28, 38 and 39. The Complainant also owns a series of domain names incorporating the VIRGIN and VIRGIN ORBIT trademark, such as <virgin.com> and <virginorbit.com>.
The Disputed Domain Name was registered on January 29, 2018. The Disputed Domain Name appears to have been used in connection with a fraudulent email scheme. There is no active website at the Disputed Domain Name.
5. Parties' Contentions
The Complainant contends that the Disputed Domain Name is confusingly similar to its trademarks. The Disputed Domain Name fully incorporates the Complainant's registered VIRGIN and VIRGIN ORBIT trademarks, save that it omits the second letter "i" in the word "virgin" (i.e., "virgn") and includes the suffix ".com". The Complainant held that the misspelling of "virgin" does not impede findings of confusing similarity to the Complainant's trademarks in the Disputed Domain Name. Furthermore, the addition of suffix ".com" is irrelevant in determining whether the Disputed Domain Name is confusingly similar to the Complaint's trademarks.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Complainant confirms that it has never licensed or authorized the Respondent to use the VIRGIN or VIRGIN ORBIT trademarks. And there is no evidence indicating that the Respondent is using the Disputed Domain Name in connection with a bona fide offering of goods or services.
The Complainant finally contends that the Disputed Domain Name was registered and is being used in bad faith. The Disputed Domain Name was registered by the Respondent for the sole purpose of misleading organizations and/or members of the public into thinking that the Disputed Domain Name is owned or operated by Virgin Orbit, a subsidiary of the Virgin Group. And the Respondent's use of the Disputed Domain Name has disrupted the business of the Complainant and Virgin Orbit, by sending out fraudulent emails from email addresses registered under the Disputed Domain Name and appeared to be affiliated to Virgin Orbit.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has successfully established its rights over the VIRGIN and VIRGIN ORBIT trademarks.
Apart from the generic Top-Level Domain ".com", the Disputed Domain Name fully incorporates the Complainant's VIRGIN and VIRGIN ORBIT trademarks but with the omission of second letter "i" in the word "virgin". Section 1.9 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0) states that "a domain name which consists of a common, obvious, or intentional misspelling of a trademark is considered by panels to be confusingly similar to the relevant mark for purposes of the first element. This stems from the fact that the domain name contains sufficiently recognizable aspects of the relevant mark. Under the second and third elements, panels will normally find that employing a misspelling in this way signals an intention on the part of the respondent (typically corroborated by infringing website content) to confuse users seeking or expecting the complainant". Given the above, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainant's trademarks.
B. Rights or Legitimate Interests
The Panel is satisfied that the Complainant has made out a prima facie case that the Respondent does not have rights or legitimate interests in the Disputed Domain Name, and the burden of production is hence shifted to the Respondent to rebut the Complainant's contentions. See WIPO Overview 3.0, section 2.1 in this case, the Respondent's failure to submit a response to rebut the Complainant's prima facie case is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
Therefore, the Panel concludes that the Respondent has no rights or legitimate interests in the Disputed Domain Name.
C. Registered and Used in Bad Faith
The Panel notes that the registration date of the Complainant's VIRGIN and VIRGIN ORBIT much predates that of the Disputed Domain Name. The Respondent chose a domain name that fully incorporates the Complainant's mark with hardly noticeable misspelling. UDRP panels have consistently held that the mere registration of a domain name comprising a typo of a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See WIPO Overview 3.0, section 3.1.3.
The Panel also notes that the Respondent has engaged in a fraudulent email scheme by approaching Virgin Orbit's business partner with email addresses registered under the Disputed Domain Name and appeared to be affiliated with Virgin Orbit. The Complainant has presented correlative email correspondences between the Respondent and Virgin Orbit's business partner, which shows that the Respondent has intentionally pretended to be a representative of Virgin Orbit trying to intercept the latter's receivables. By registering and using the Disputed Domain Name, the Respondent has intentionally attempted to profit from the goodwill associated with the Complainant and its marks. The bad faith in the Respondent's use of the Disputed Domain Name can be established under paragraph 4(b)(iv) of the Policy.
For the reasons above, the Panel concludes that the Respondent has registered and is using the Disputed 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 Disputed Domain Name <virgnorbit.com> be transferred to the Complainant.
Jacob (Changjie) Chen
Date: March 19, 2018