(Trade mark No. 5633258) registered on December 18, 2018 in the United States of America.The Complainant is Facebook Technologies, LLC (formerly known as Oculus VR, LLC), United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondents are 洪增加 (Hong Zeng Jia), China, and 吕晋 (Lv Jin), China (collectively referred to as “Respondent”).
The disputed domain names <oculusale.com>, <oculusaus.com>, <oculusers.com>, <oculusku.com>, <oculusok.com>, <vipoculus.com> are registered with Jiangsu Bangning Science & technology Co. Ltd. (the “Registrar”).
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2020. On July 14, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 15, 2020, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 17, 2020 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 July 27, 2020.
On July 17, 2020, the Center transmitted an email in English and Chinese to the Parties regarding the language of the proceeding. The Complainant confirmed the request that English be the language of the proceeding on July 17, 2020. The Respondent did not comment on the language of the proceeding.
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 in English and Chinese, and the proceedings commenced on July 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 19, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 20, 2020.
The Center appointed Jonathan Agmon as the sole panelist in this matter on August 25, 2020. 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 Technologies, LLC, is a subsidiary of Facebook, Inc. (“Facebook”). As a technology company, the Complainant is the intellectual property rights holder for various technologies owned by Facebook. Until recently, the Complainant operated under the corporate name of its predecessor in interest, Oculus VR LLC (“Oculus”). Oculus is a virtual reality technology company founded in 2012 that developed Oculus Rift, a virtual reality head-mounted display that uses advanced display technology enabling the sensation of presence and immersion. The Complainant markets and offers its Oculus products via its website at “www.oculus.com.”
The Complainant is the owner of numerous domain names consisting of the term “oculus” under generic Top-Level Domain (“gTLD”) extensions, such as <oculus.com> and <oculusgo.com> as well as under many country code Top-Level Domain extensions, such as <oculus.org.cn> (China), <oculus.co> and <oculus.com.co> (Colombia), <oculus.cr> (Costa Rica), <oculus.ec> (Ecuador), <oculus.co.in> (India), <oculus.co.ke> (Kenya), <oculus.com.my> and <oculus.my> (Malaysia), <oculus.ma> (Morocco), <oculus.com.pk> (Pakistan), <oculus.pe> and <oculus.com.pe> (Peru), <oculus.ph> and <oculus.com.ph> (Philippines), <oculus.pt> and <oculus.com.pt> (Portugal), <oculus.tw> and <oculus.com.tw> (Taiwan, China) and <oculus.co.il> (Israel).
The Complainant owns numerous trademark registrations of the term OCULUS in many jurisdictions worldwide, including but not limited to the following:
- OCULUS (Trade mark No. 014185441) registered on December 17, 2015 in the European Union;
- OCULUS (Trade mark No. 4891157) registered on January 26, 2016 in the United States of America;
- OCULUS (International Trade mark No. 1219324) registered on June 12, 2014 designating China; and
- (Trade mark No. 5633258) registered on December 18, 2018 in the United States of America.
The disputed domain names were registered on the following dates respectively and resolved to websites purportedly offering the Complainant’s products for sale at a significant lower price than the actual prices of the Complainant’s products:
- <oculusale.com> registered on May 26, 2020;
- <oculusaus.com> registered on May 26, 2020;
- <oculusers.com> registered on May 26, 2020;
- <oculusku.com> registered on May 18, 2020;
- <oculusok.com> registered on May 21, 2020;
- <vipoculus.com> registered on May 26, 2020.
The Complainant’s contentions include the following:
The Complainant argues that the disputed domain names are confusingly similar to the Complainant’s registered OCULUS mark as the disputed domain names each wholly incorporates the OCULUS mark with a descriptive term along with a gTLD “.com” that are insufficient to avoid confusing similarity.
The Complainant also argues that the Respondent has no rights or legitimate interests in respect of the disputed domain names as it has not licensed or permitted the Respondent to use any of its trademarks or register the disputed domain names.
The Complainant further argues that the disputed domain names were registered and are being used in bad faith for commercial gain by creating a likelihood of confusion with the Complainant’s OCULUS mark.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 11 of the Rules provides that:
“(a) Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative 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 proceeding.”
The language of the Registration Agreements for the disputed domain names is Chinese.
The Complainant requested that the language of the proceeding be English.
The Respondent did not comment on the language of the proceeding.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (See Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
(i) the disputed domain names consist of Latin letters, rather than Chinese characters;
(ii) the Complainant may be unduly disadvantaged by having to conduct the proceeding in the Chinese language;
(iii) the disputed domain names resolve to websites displaying English words; and
(iii) the Respondent did not object to the Complainant’s request that English be the language of the proceeding.
Upon considering the above, the Panel determines that English be the language of the proceeding.
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The disputed domain names <oculusale.com>, <oculusaus.com>, <oculusers.com>, <oculusku.com>, <oculusok.com>, <vipoculus.com> each wholly integrate the Complainant’s OCULUS mark in its entirety (see Wal-Mart Stores, Inc. v. Kuchora, Kal, WIPO Case No. D2006-0033; Hoffmann-La Roche Inc. v. Andrew Miller, WIPO Case No. D2008-1345). The addition in the disputed domain names of the terms “ale”, “aus”, “ers”, “ku”, “ok” and “vip”, does not prevent a finding of confusing similarity with the Complainant’s trademark. (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), sections 1.8 and 1.12.)
Further, it is well established that the addition of the gTLD “.com”, as a standard registration requirement, is disregarded under the first element confusing similarity test. (See WIPO Overview 3.0, section 1.11.1.)
Consequently, the Panel finds that the Complainant has shown that the disputed domain names are confusingly similar to a trademark in which the Complainant has rights.
Once the Complainant establishes a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names, the burden of production shifts to the Respondent to show that it has rights or legitimate interests in respect to the disputed domain names (see WIPO Overview 3.0, section 2.1).
In the present case, the Complainant has demonstrated prima facie that the Respondent lacks rights or legitimate interests in respect of the disputed domain names and the Respondent has failed to assert any such rights or legitimate interests.
The Complainant has provided evidence that it owns trademark registrations long before the disputed domain names were registered and that it is not affiliated with nor has it licensed or otherwise permitted the Respondent to use the Complainant’s trademark (see LEGO Juris A/S v. DomainPark Ltd, David Smith, Above.com Domain Privacy, Transure Enterprise Ltd, Host master, WIPO Case No. D2010-0138). The Panel finds that the Complainant’s trade mark has acquired considerable goodwill and reputation worldwide as a result of its continuous and extensive use since at least April 2012.
There is also no evidence on record showing that the Respondent is commonly known by the disputed domain names (see WIPO Overview 3.0, section 2.3).
Furthermore, the Complainant provided evidence showing that the Respondent has been using the disputed domain names to offer the Complainant’s products for sale at a significant lower price than the actual prices of the Complainant’s products. Such use has been consistently held not to represent a bona fide offering of goods or services. (See WIPO Overview 3.0, section 2.13.1)
Further, the Respondent did not submit a Response in the present case and did not provide any explanation or evidence to show rights or legitimate interests in the disputed domain names sufficient to rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Complainant must also show that the Respondent registered and is using the disputed domain names in bad faith (see Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may evidence bad faith under paragraph 4(a)(iii) of the Policy.
The Complainant has submitted evidence, which shows that the Respondent registered the disputed domain names long after the Complainant registered its trademark. According to the evidence filed by the Complainant, the Complainant has owned registration for the OCULUS mark since the year 2014. In view of the evidence filed by the Complainant, and the global widespread use of the OCULUS mark, it is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain names. Therefore, it is unlikely that the Respondent did not know of the Complainant’s mark prior to registration of the disputed domain names (see Sanofi-Aventis v. Abigail Wallace, WIPO Case No. D2009-0735).
Furthermore, the disputed domain names incorporate the Complainant’s trademark in its entirety with additional terms, which the Panel finds is an attempt by the Respondent to confuse and/or mislead Internet users seeking or expecting the Complainant. Given that the Complainant owns numerous domain names consisting of the term “oculus” under gTLD extensions, unsuspecting Internet users may be confused when looking for the Complainant online. The Panel finds such act by the Respondent amounts to intentionally confuse and/or mislead Internet users seeking or expecting the Complainant. Previous UDRP panels have ruled that in such circumstances “a likelihood of confusion is presumed, and such confusion will inevitably result in the diversion of Internet traffic from the Complainant’s site to the Respondent’s site” (see Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095). To this end, prior UDRP panels have established that attracting Internet traffic by using a domain name that is identical or confusingly similar to a registered trademark may be evidence of bad faith under paragraph 4(b)(iv) of the UDRP.
Given the distinctive nature of the Complainant’s OCULUS mark, and given the evidence provided by the Complainant, the Panel is of the view that the Respondent’s use of the disputed domain names’ websites, which offered products bearing the Complainant’s mark at a lower price, constitutes bad faith and is indicative of the Respondent’s registration and use of the disputed domain names to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s OCULUS mark.
The Complainant also provided evidence that the disputed domain names presently do not resolve to active websites and it is well established that passive holding or non-use of a domain name does not prevent a finding of bad faith (see WIPO Overview 3.0, section 3.3) and such non-use will not change the Panel’s findings above. In the Panel’s view, having taken the above circumstances into account, such behavior by the Respondent constitutes further evidence of registration and use of the disputed domain names in bad faith.
Based on the particular circumstances of the present case and the distinctive nature of the OCULUS mark, and based on the evidence presented to the Panel, including the registration of the disputed domain names after the registration of the Complainant’s marks, the confusing similarity between the disputed domain names and the Complainant’s marks, the Respondent’s use of the disputed domain names, the fact that there is no plausible good faith use the Respondent may put the disputed domain names to, and the fact that no Response was submitted by the Respondent, the Panel finds that the disputed domain names were registered and are being used 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 names, <oculusale.com>, <oculusaus.com>, <oculusers.com>, <oculusku.com>, <oculusok.com>, and <vipoculus.com> be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Date: September 8, 2020