The Complainants are Facebook, Inc. (“Facebook”) and Oculus VR, LLC (“Oculus”) of Menlo Park, California, United States of America (“USA”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Junyi Li, Li Junyi of Shanghai, China, self-represented.
The disputed domain names <facebookoculus.com>, <facebookrobots.com> and <facebookvip.com> (the “Domain Names”) are registered with HiChina Zhicheng Technology Ltd. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 3, 2018. On July 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On July 5, 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. On July 6, 2018, the Center sent an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainants requested that English be the language of the proceeding on the same day. The Respondent requested that Chinese be the language of the proceeding on July 11, 2018.
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 in English and Chinese of the Complaint, and the proceedings commenced on July 13, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2018. The Respondent did not submit any response. Accordingly, on August 3, 2018, the Center notified the Parties that it would proceed to panel appointment.
The Center appointed Karen Fong as the sole panelist in this matter on August 8, 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.
The Complainant, Facebook, is a provider of online social networking services. Founded in 2004, the Complainant allows Internet users to stay connected with friends and family, and to share information mainly via its official website located at “www.facebook.com”. Since its launch in 2004, Facebook rapidly developed considerable renown and goodwill worldwide, with 1 million active users by the end of 2004, 5.5 million in December 2005, 12 million in December 2006, 50 million in October 2007, 100 million in August, 2008, 500 million in July, 2010, and 1.5 billion users worldwide by the end of 2015. As at March 2018, Facebook has approximately 2.20 billion monthly active users and 1.45 billion daily active users on average worldwide. Thus, Facebook enjoys a widespread reputation and high degree of recognition as a result of its fame and notoriety throughout the world for its online social networking services. In China, though currently inaccessible, Facebook is nevertheless known to the public because of the numerous Chinese press articles on its global popularity and the blogs and forums on how to access Facebook in China.
The Complainant, Oculus, a wholly-owned subsidiary of the Complainant Facebook, is a virtual technology company founded in 2012 that developed Oculus Rift, a groundbreaking virtual reality head-mounted display that uses advanced display technology that enables the sensation of presence and emersion. It was acquired by Facebook in March, 2014. Oculus has acquired and developed considerable goodwill and reputation in connection with virtual reality software and apparatus, including headsets and helmets.
The Complainants own numerous trade mark registrations in many jurisdictions throughout the world for FACEBOOK and OCULUS. Such trade mark registrations include, but are not limited to, the following: FACEBOOK, Chinese Trade Mark Registration No. 5251162, registered on September 21, 2009; OCULUS, Chinese Trade Mark Registration No. 15098478, registered on July 21. 2015; FACEBOOK, International Registration No. 1075094 designating China, registered on July 16, 2010; and OCULUS, International Registration No. 1210634 designating China, registered on June 12, 2014 (the “Trade Marks”).
Besides the domain names of their official websites at “www.facebook.com” and “www,oculus.com”, the Complainants also own numerous domain names consisting of and including the terms “facebook” and “oculus” under various generic and country code extensions.
The Domain Names were registered by the Respondent, an individual based in China as follows: <facebookoculus.com> and <facebookvip.com> were registered on August 2, 2015; <facebookrobots.com> was registered on August 26, 2015. The Domain Names do not currently resolve to active websites. However, the Domain Name <facebookoculus.com> was until recently pointing to a pornographic website containing commercial banners.
On March 16, 2018, the Complainants’ legal representative sent a cease-and-desist letter to the Respondent by email and post asserting the Complainants’ trade mark rights and asking the Respondent to transfer the Domain Names to Facebook. The letters sent by post were returned undelivered given the insufficient address. However, the Respondent got in touch with the Complainants’ lawyers by email to arrange a telephone call to discuss the matter. The Respondent asked for CNY 5,000 (approximately EUR 672) per Domain Name. The lawyers said that the Complainants would not pay anything more than the registration and renewal fees connected to the Domain Names. The Respondent did not agree to a transfer in those terms.
The Complainants contend that the Domain Names are confusingly similar to the Trade Marks, that the Respondent has no rights or legitimate interests with respect to the Domain Names, and that the Domain Names were registered and are being used in bad faith. The Complainants request transfer of the Domain Names to Facebook.
The Respondent did not reply to the Complainants’ contentions.
The case before the Panel involves two individual brand owners who wish to bring a single consolidated complaint in relation to three domain names against a single registrant. The preliminary issue to be determined is whether the Complainants are entitled to bring a consolidated complaint against the Respondent.
Paragraph 5(f) of the Policy allows a panel to consolidate multiple disputes between parties at its sole discretion and paragraph 10(e) of the Rules empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and Rules. Neither the Policy nor the Rules expressly provide for the consolidation of multiple complainants in a single complaint in a single administrative proceeding. Paragraph 3(c) of the Rules, provides that a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder. While both the Policy and Rules use the term “complainant” throughout, the Policy and Rules do not expressly preclude multiple legal persons from falling within the term “complainant”.
Section 4.11.1 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) provides that in assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.
With regard to the first limb of the test, the Complainants are related to each other as Oculus is a wholly owned subsidiary of Facebook. Although each individually own the two separate Trade Marks, the corporate relationship means that they have a common legal interest and therefore a common grievance against the Respondent who they allege has registered and used the Domain Names in bad faith. Further, the Respondent has also engaged in common conduct that has affected the Complainants in a similar fashion. Common conduct has been found to exist in the following cases:
(i) where the rights relied on and the disputed domain names in question involve readily identifiable commonalities; or (ii) where there is a clear pattern of registration and use of all the disputed domain names.
In this case, the indications of the Respondent engaging in common conduct which has affected the Complainants’ legal rights in a similar fashion are as follows:
(i) the Complainants are related companies with one being the parent of the other;
(ii) the Respondent was prepared to sell the Domain Names as a package deal for CNY 15,000 (approximately EUR 2,000);
(iii) Both Trade Marks were used in combination in a Domain Name which was linked to a pornographic website.
The Panel is satisfied from the above that common conduct is found to exist.
The Panel now turns to the second limb of the test as to whether it would be equitable and procedurally efficient to permit the consolidation. In considering this, the Panel also is satisfied that this is the case for the following reasons:
(i) the Complainants’ substantive arguments made under each of the three elements of the Policy are common to the Domain Names;
(ii) Both the Complainants are represented by a single authorized representative for the purpose of the proceedings.
Accordingly, the Panel determines that this Complaint consisting of multiple Complainants should, for the reasons discussed above, be permitted to have their complaints consolidated into a single Complaint for the purpose of the present proceedings under the Policy. The Respondent has not chosen to file a Response and consequently there are no submissions to be taken into account on the procedural issues. In light of the above, the Complainants may be referred to collectively as the “Complainant” hereafter.
The Rules, paragraph 11, provide that unless otherwise agreed by the parties or specified otherwise in the registration agreement between the respondent and the registrar in relation to the disputed domain name, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the panel to determine otherwise, having regard to the circumstances of the administrative proceedings. According to the information received from the Registrar, the language of the registration agreement for the Domain Names is Chinese.
The Complainant submits that the language of the proceeding should be English for the following reasons:
- The Domain Names have been registered under the “.com” extension.
- The Domain Names identically reproduce or consist of a misspelling of the FACEBOOK and OCULUS marks which are highly distinctive terms in English.
- Two of the Domain Names include the English word “robots” and “vip” which suggest that the Respondent is targeting English speakers which indicates that that the Respondent is likely to have a good understanding of the English language.
- It would be disproportionate to require the Complainant to submit the Complaint in Chinese as this would result in additional expense and unnecessary delay for the Complainant for the translation.
Although the Respondent did not respond to the Complaint, he did respond to the Center’s request as to language of the proceeding. He submits that Chinese should be the language of the proceeding for the following reasons:
- He is a Chinese citizen.
- His mother tongue is Chinese.
- The Domain Names are all registered with Chinese registrars.
In exercising its discretion to use a language other than that of the Registration Agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both Parties, taking into account all relevant circumstances of the case, including matters such as the Parties’ ability to understand and use the proposed language, time and costs.
The Panel accepts the Complainant’s submissions regarding the language of the proceeding. Whilst the Respondent failed to file a Response to the Complaint, he did challenge the Complainant’s request which suggests that he is familiar with the English language. The Panel is also mindful of the need to ensure the proceeding is conducted in a timely and cost effective manner. In this case, the Complainant may be unduly disadvantaged by having to conduct the proceeding in Chinese. The Panel notes that all of the communications from the Center to the Parties were transmitted in both Chinese and English.
In all the circumstances, the Panel therefore finds that the Respondent would not be prejudiced, should the decision be rendered in English.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that:
(i) It will accept the filings on behalf of the Complainant in English;
(ii) It will accept the filings on behalf of the Respondent in Chinese; and
(iii) It will render this decision in English.
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names, the Complainant must prove each of the following, namely that:
(i) The Domain Names are identical or confusingly similar to trade marks or service marks in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) The Domain Names were registered and being used in bad faith.
The Panel is satisfied that the Complainant has established that it has registered and unregistered rights to the Trade Marks. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the trade mark and the domain name to determine whether the domain name is confusingly similar to the trade mark. The test involves a side-by-side comparison of the domain name and the textual components of the relevant trade mark to assess whether the mark is recognizable within the domain name.
In this case the Domain Names contain the Complainant’s distinctive Trade Marks in their entirety in combination for <facebookoculus.com> and the FACEBOOK marks plus the word “robots” in <facebookrobots.com> and the acronym “vip” in the case of <facebookvip.com>. The addition of these terms does not negate the confusing similarity encouraged by the Respondent’s complete integration of the Trade Marks in the Domain Names. E.g., N.V. Organon Corp. v. Vitalline Trading Ltd., Dragic Veselin / PrivacyProtect.org, WIPO Case No. D2011-0260; Oakley, Inc. v. Wu bingjie aka bingjie wu/Whois Privacy Protection Service, WIPO Case No. D2010-0093; X-ONE B.V. v. Robert Modic, WIPO Case No. D2010-0207. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the generic Top-Level Domain (“gTLD”) which in this case is “.com”. It is viewed as a standard registration requirement.
The Panel finds that the Domain Names are identical or confusingly similar to trade marks in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trade mark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain, to misleadingly divert consumers.
Although the Policy addresses ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, it is well established that, as it is put in section 2.1 of the WIPO Overview 3.0, that a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent does come forward with some allegations of evidence of relevant rights or legitimate interests, the panel weighs all the evidence, with the burden of proof always remaining on the complainant.
The Complainant submits that the Respondent is not a licensee of the Complainant nor has he been otherwise allowed by the Complainant to make any use of the Trade Marks. The Respondent cannot assert that he was using or had made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services. The use of a third party’s trade mark in a domain name in connection with a pornographic site which has commercial banners cannot be considered a bona fide offering of goods or services as it is clearly a case where a respondent is seeking to unduly profit from the complainant’s goodwill and reputation.
The Complainant also submits that the Respondent has never been commonly known by the Domain Names or Trade Marks nor does he operate a business or other organizations under the Trade Marks. Further he does not own any trade mark rights in the Trade Marks which comprise the Domain Names. The Domain Names <facebookrobots.com> and <facebookvip.com> are being passively held and therefore does not amount to bona fide offering of goods or services or legitimate noncommercial fair use under the Policy.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not provided any reasons why he chose to register a well-known trade mark which he has no connection to. The Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Names.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names.
To succeed under the Policy, the Complainant must show that the Domain Names have been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent must have been aware of the Trade Marks when he registered the Domain Names. It is implausible that he was unaware of the Complainants when he registered the Domain Names. The Trade Marks are well known particularly FACEBOOK.
In the WIPO Overview 3.0, section 3.2.2 states as follows:
“Noting the near instantaneous and global reach of the Internet and search engines, and particularly in circumstances where the complainant’s mark is widely known (including in its sector) or highly specific and a respondent cannot credibly claim to have been unaware of the mark (particularly in the case of domainers), panels have been prepared to infer that the respondent knew, or have found that the respondent should have known, that its registration would be identical or confusingly similar to a complainant’s mark. Further factors including the nature of the domain name, the chosen top-level domain, any use of the domain name, or any respondent pattern, may obviate a respondent’s claim not to have been aware of the complainant’s mark.”
The fact that there is a clear absence of rights or legitimate interests coupled with no explanation for the Respondent’s choice of the Domain Names is also a significant factor to consider (as stated in section 3.2.1 of WIPO Overview 3.0). In light of the above, the Panel finds that registration is in bad faith.
The Domain Names are also used in bad faith. Firstly, the Domain Name <facebookoculus.com> was connected to a pornographic site containing commercial advertisements. The Respondent was clearly seeking to benefit from the Complainant’s reputation and goodwill to attract traffic to his website for commercial gain. Using the Domain Names to intentionally attract for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s as the source, sponsorship, affiliation or endorsement of the website is bad faith in accordance with paragraph 4(b)(iv) of the Policy
The fact that the Domain Names <facebookrobots.com> and <facebookvip.com> are not now resolving to active websites does not prevent a finding of bad faith under the Telstra principles which are laid out in section 3.3 of the WIPO Overview 3.0. In this case the totality of the circumstances to be considered include the fame of the Trade Marks, the failure of the Respondent to submit a response, his failure to provide accurate contact information which resulted in all post being returned as undeliverable, the implausibility of any good faith use for which the Domain Names can be put to especially in light of what one of them have been used for. The Respondent also indicated that he was prepared to sell the Domain Names for CNY 15,000 (approximately EUR 2,000). The registration of the Domain Names together with the attempt to sell the Domain Names for a sum far in excess of his out-of-pocket costs relating to the Domain Names, which is the case here, is bad faith under paragraph 4(b)(i) of the Policy.
From the above, the Panel finds that the Respondent has registered and used the Domain Names in bad faith and the Complainant has succeeded in proving the third element.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <facebookoculus.com>, <facebookrobots.com> and <facebookvip.com> be transferred to the Complainant, Facebook, Inc.
Karen Fong
Sole Panelist
Date: August 19, 2018