WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook Technologies, LLC v. Super Privacy Service LTD c/o Dynadot / Kane Lee, tailiang ren, Mary Smith, Thelma Thdss, Cheryl Marshall, Theresa Chavez, Carmen Keith, keynshir keynshir, Mathew Vanover, Elmer S. Lipscomb, Anita Bailey, azu seedorf, Echo lee, Long benasl, Anne Dudley, KXIN KXIN, k m, Steven Holmes

Case No. D2021-2193

1. The Parties

The Complainant is Facebook Technologies, LLC, United States of America (“United States” or “USA”), represented by Hogan Lovells (Paris) LLP, France.

The Respondent is Super Privacy Service LTD c/o Dynadot, United States, Kane Lee, United States / tailiang ren, China, Mary Smith, United States, Thelma Thdss, United States, Cheryl Marshall, China, Theresa Chavez, United States, Carmen Keith, United States, keynshir keynshir, United States, Mathew Vanover, United States, Elmer S. Lipscomb, United States, Anita Bailey, United States, azu seedorf, United States, Echo lee, United States, Long benasl, United States, Anne Dudley, United States, KXIN KXIN, United States, k m, United States, and Steven Holmes, United States (hereinafter referred as “the Respondent”).

2. The Domain Name and Registrar

The disputed domain names <oculus-clearance.com>, <oculusclearance.store>, <oculuscompany.com>, <oculusfactory.shop>, <oculusfactory.store>, <oculus-gear.com>, <oculus-outlet.com>, <oculus-outlet.deals>, <oculus-outlet.sale>, <oculus-outlets.com>, <oculus-outlet.shop>, <oculusoutlet.shop>, <oculus-outlet.store>, <oculusoutlet.store>, <oculus-outlet-us.com>, <oculus-overstock.com>, <oculusoverstock.com>, <oculusoverstock.shop>, <oculusquest-outlet.com>, <oculus-quest2.sale>, <oculus-sale.com>, <oculus-usa.sale>, <oculus-usa.shop>, <oculususa.shop>, <oculus-usa.store>, <oculususa.store>, <oculus-us.com>, <oculus-us-outlet.com>, <oculus-us.sale>, <oculus-vroutlet.sale>, <oculus-vroutlet.shop>, <oculus-vrsale.com>, <oculus-vrsale.shop>, <oculus-vrusa.shop>, <oculusvr-world.com>, <oculus-vrworld.shop>, <quest2-vr.com>, <vr-oculusoutlet.com>, <vrquestoutlet.com> and <vr-quest2.com> are registered with Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2021. On July 8, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 9, 2021, 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 13, 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 a first amended Complaint on July 23, 2021. On July 23, 2021, the Complainant removed a domain name from the current proceeding and added the 21 additional domain names. On July 27, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the additional disputed domain names. The Center sent an email communication to the Complainant on July 27, 2021, providing the registrant and contact information disclosed by the Registrar, and the Complainant filed a second amended Complaint on July 29, 2021.

The Center verified that the Complaint together with the amended Complaints 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 August 2, 2021. In accordance with the Rules, paragraph 5, the due date for Response was August 22, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 23, 2021.

The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on September 2, 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 subsidiary of Facebook, Inc., having operated until 2018 under the corporate name of its predecessor in interest, Oculus VR LLC, which was acquired by Facebook in March 2014.

The Complainant promotes and distributes various virtual reality (“VR”) software and apparatus, including “Oculus Quest” and “Oculus Quest 2” which were released on May 21, 2019 and September 16, 2020 and are offered via the website available at <oculus.com>.

The Complainant is the owner, amongst others, of the following trademark registrations (Annex 5 to the Amended Complaint):

- International trademark registration No. 1219324 for OCULUS, registered on June 12, 2014, in International Class 28;

- International trademark registration No. 6279215 for QUEST, registered on February 23, 2021, in International Classes 09, 28, 35 and 42;

- United States trademark registration No. 4891157 for OCULUS, registered on January 26, 2016, claiming first use in commerce on March 27, 2013, International Class 28; and

- United States trademark registration No. 5633258 for , registered on December 18, 2018.

The disputed domain names used to resolve to webpages displaying layouts mimicking the Complainant’s official Oculus website, purportedly offering the Complainant’s products for sale. The disputed domain names were registered on and are presently used in connection with:

5. Parties’ Contentions

A. Complainant

The Complainant asserts to be the intellectual property rights holder for various technologies owned by Facebook, also promoting and distributing various virtual reality headsets, including “Oculus Quest” and its successor “Oculus Quest 2”, the terms “oculus” and “quest” being exclusively associated with the Complainant in connection with virtual reality software and apparatus – with previous UDRP panels having concluded that the Complainant’s OCULUS trademark “has attained renown and notoriousness since the release of the OCULUS headgear and software” (Oculus VR, LLC v. Jesica Pecellin and Adan Casado Noguero, WIPO Case No. D2018-0456).

The Complainant submits that the disputed domain names are subject to common control by either the same person or connected parties and for reasons of fairness, equity and efficiency, the Complainant requests consolidation of multiple Respondents to the same Complaint, given that: (i) all the disputed domain names were previously associated with highly similar websites purportedly offering the Complainant’s products for sale and having a similar “look and feel” to the Complainant’s official website (Annexes 8 and 9 to the Amended Complaint); (ii) all the disputed domain names were registered between June and July 2021 and many on overlapping dates; (iii) all the disputed domain names were registered with the same Registrar; (iv) 30 disputed domain names have been registered using the same privacy registration service, i.e., Super Privacy Service LTD c/o Dynadot, based in California, United States, while the redacted registrant information for the other 10 disputed domain names indicates the same geographical location (i.e., California, United States), which strongly suggests that they are also under the Dynadot privacy registration shield; (v) all disputed domain names target the Complainant’s OCULUS and/or QUEST trademarks; (vi) sharing a similar naming pattern i.e., the Complainant’s trademark and various dictionary terms, such as “outlet”, “USA”, “overstock”, and “company”, with or without hyphen(s) or a number; (vii) 34 disputed domain names are/were associated with the same IP ranges (104.21.0.x and 172.67.0.x) and the same Autonomous System Number / ASN (AS13335 Cloudflare Inc. US); three disputed domain names being associated with the same IP address (163.172.59.76) and the same Autonomous System Number / ASN (AS12876 ONLINE SAS, FR); and (viii) the underlying registrant information reveals patterns of irregularities such as cases of: email addresses that bear no resemblance to the corresponding registrant names; the use of clearly false or fictitious names; false postal addresses; and indication of the Andorra phone number country code while the respective registrants indicated United States or China.

According to the Complainant, all of the disputed domain names were previously used to point to highly similar websites prominently displaying the Complainant’s logo and having a similar “look and feel” to that of the Complainant’s official OCULUS website (Annexes 4, 8, and 9 to the Amended Complaint), without any visible disclaimer regarding the lack of relationship with the Complainant as well as purportedly offering the Complainant’s products for sale at discounted prices and allowing Internet users to place orders directly via these websites by providing personal data, such as postal address and telephone number.

In addition to that, the Complainant sustains that the source code of the payment pages of the websites associated with the disputed domain names appear to be various personal PayPal accounts via redirect domain names. Furthermore, according to evidence collected by the Complainant, the websites previously associated with the disputed domain names <oculusoutlet.store> and <oculususa.store> both referred to a company entitled “Buena Deal” on the “About Us” pages, having “Buena Deal” been reported on different consumer review websites as being involved in scams targeting Internet users who never received the products they ordered and paid for, as in one of the reviews which refers to the website that resolved from the disputed domain name <oculususa.store>.

The disputed domain names are, according to the Complainant, confusingly similar to the Complainant’s OCULUS and QUEST trademarks, creating a likelihood of confusion, given that the addition of the dictionary terms or letters such as “outlet”, “US” (United States), “overstock”, and “company”, with of without hyphen(s) or the number “2” do not prevent a finding of confusing similarity given that the Complainant’s trademarks remain clearly recognizable in the disputed domain names.

Moreover, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain names given that:

(a) the Respondent is not an authorised dealer, distributor, or licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make any use of the OCULUS and QUEST trademarks, including in domain names;

(b) the Respondent’s use of the disputed domain names in connection with highly similar websites prominently displaying the Complainant’s distinctive logo and having a similar “look and feel” to the Complainant’s official website, without any visible disclaimer at the bottom of the homepages cannot constitute a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy given that the Respondent is seeking to profit from the Complainant’s goodwill and renown to attract Internet users to its websites for financial gain;

(c) the Respondent’s offer for sale of the Complainant’s products at a significantly lower price strongly suggests that the disputed domain names may be used in connection with a fraudulent scheme, where unsuspecting Internet users were deceived into paying for the Complainant’s products which were never intended to be actually supplied;

(d) the Respondent cannot claim any nominative fair use of the disputed domain names as per the requirements outlined in the “Oki Data test” (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.8; see also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903);

(e) the present use of one of the disputed domain names in connection with a webpage displaying PPC links, from which the Respondent presumably derives revenue, cannot constitute bona fide use as per paragraph 4(c)(i); and

(f) the Respondent is not commonly known by the disputed domain names.

As to the registration of the disputed domain names in bad faith, the Complainant asserts that the Respondent knew or should have known of the Complainant’s trademark rights at the time of the registration of the disputed domain names considering that the OCULUS trademarks are highly distinctive and renowned throughout the world, and have been continuously and extensively used since 2013 in connection with virtual reality headsets.

The Complainant further contends that the Respondent’s previous use of the disputed domain names, pointing to websites mimicking the Complainant’s official website and purportedly offering OCULUS products for sale, without any visible disclaimer, leaves no doubt as to its knowledge of the Complainant’s trademarks at the time of registration and intent for commercial gain, in accordance with paragraph 4(b)(iv) of the Policy, thus seeking to capitalize on the goodwill and fame of the Complainant’s trademark by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of its websites. Moreover, the choice to retain privacy protection services and to provide what appear to be false contact details affirm a finding of the Respondent’s bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth the following three requirements, which have to be met for this Panel to order the transfer of the disputed domain names to the Complainant:

(i) the disputed domain names are 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 names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain names transferred to it, according to paragraph 4(a) of the Policy.

Before turning to these questions, however, the Panel needs to address the issue of the consolidation of multiple Respondents.

A. Consolidation of Multiple Respondents

The Complainant requests that this Panel accept multiple Respondents in a single proceeding in view of the facts enumerated at the section 5.A. above.

Section 4.11.2 of the WIPO Overview 3.0 establishes that “[w]here a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.”

All of the aforementioned criteria are present in this case and therefore this Panel accepts such request considering that it would be more procedurally efficient to have the forty disputed domain names dealt with at the same procedure, given that: (a) all of the disputed domain names were previously pointing to websites with layouts mimicking the Complainant’s official Oculus website, purportedly offering the Complainant’s products for sale, with no disclaimer; (b) all of the disputed domain names were registered between June and July 2021 and many on overlapping dates; (c) all of the disputed domain names were registered with the same Registrar; (d) 30 disputed domain names have been registered using the same privacy registration service, while the other 10 disputed domain names indicate the same geographical location; (e) all of the disputed domain names target the Complainant’s OCULUS and/or QUEST trademarks; (f) sharing a similar naming pattern; (g) 34 disputed domain names were associated with the same IP ranges and ASN number; three disputed domain names were associated with the same IP address and the same ASN number; and (h) the underlying registrant information reveals patterns of irregularities.

Furthermore, the Respondent did not submit any objection to consolidation in the present circumstances, or any reply to the Complainant’s contentions whatsoever.

This Panel is satisfied, in view of the evidence submitted and on balance that the disputed domain names are indeed subject to a common control and that consolidation would be fair and equitable to all Parties.

B. Identical or Confusingly Similar

The Complainant has established rights in the OCULUS and QUEST trademarks duly registered in several countries around the world (Annex 5 to the Amended Complaint).

The Panel finds that the disputed domain names reproduce the Complainant’s respective trademarks in their entirety. The addition of the terms “clearance”, “company”, “factory”, “gear”, ““outlet”, “overstock”, “sale”, “vr” (virtual reality), world, and “us” and “usa” (United States), with or without hyphens or the number “2” do not prevent a finding of confusing similarity under the Policy which, as recognized by past UDRP panels, involves a “comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name” (WIPO Overview 3.0, section 1.7).

The first element of the Policy has therefore been established.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that may indicate the Respondent’s rights to or legitimate interests in the disputed domain names. These circumstances are:

(i) before any notice of the dispute, the Respondent’s use of, or demonstrable preparations to use, the disputed domain names or a name corresponding to the disputed domain names in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the disputed domain names, in spite of not having acquired trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel notes that the Complainant has made out a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The burden of production has therefore shifted to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests.

The Respondent, in not formally responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain names. This entitles the Panel to draw any such inferences from default as it considers appropriate pursuant to paragraph 14(b) of the Rules.

Indeed, the Respondent has used the disputed domain names in connection with websites with layouts mimicking the Complainant’s official Oculus website, purportedly offering the Complainant’s products for sale, with no disclaimer which cannot be considered here a bona fide offering of goods or services under the Policy.

Therefore, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain names. The second element of the Policy has also been met.

D. Registered and Used in Bad Faith

This case presents the following circumstances, which indicate bad faith registration and use of the disputed domain names:

a) the Respondent’s competing and impersonating use of the disputed domain names, which indicates that the Respondent knew of the Complainant’s rights over the OCULUS and QUEST trademarks and products;

b) the Complainant’s trademarks being well known;

c) the indication of the Respondent’s use of the disputed domain names in connection with scams targeting Internet users who never received the products they ordered and paid for, as in one of the reviews which refers to the website that resolved from the disputed domain name <oculususa.store>;

d) the nature of the disputed domain names, comprising the Complainant’s well-known OCULUS and QUEST trademarks and letters, numbers, or terms associated with virtual reality and software, and the fact that the Respondent most likely had the Complainant’s trademarks in mind when registering the disputed domain names in order to take advantage of Complainant and its trademarks;

e) the fact that the currently inactive use of the disputed domain names does not prevent a finding of bad faith;

f) the Respondent giving false physical addresses for the registration of the disputed domain names, to which the Center’s communications could not be delivered; and,

g) the choice to retain a privacy protection service, taking into consideration the broader circumstances of the present case.

For the reasons above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use of the disputed domain names pursuant to paragraph 4(b)(iv) of the Policy.

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 names <oculus-clearance.com>, <oculusclearance.store>, <oculuscompany.com>, <oculusfactory.shop>, <oculusfactory.store>, <oculus-gear.com>, <oculus-outlet.com>, <oculus-outlet.deals>, <oculus-outlet.sale>, <oculus-outlets.com>, <oculus-outlet.shop>, <oculusoutlet.shop>, <oculus-outlet.store>, <oculusoutlet.store>, <oculus-outlet-us.com>, <oculus-overstock.com>, <oculusoverstock.com>, <oculusoverstock.shop>, <oculusquest-outlet.com>, <oculus-quest2.sale>, <oculus-sale.com>, <oculus-usa.sale>, <oculus-usa.shop>, <oculususa.shop>, <oculus-usa.store>, <oculususa.store>, <oculus-us.com>, <oculus-us-outlet.com>, <oculus-us.sale>, <oculus-vroutlet.sale>, <oculus-vroutlet.shop>, <oculus-vrsale.com>, <oculus-vrsale.shop>, <oculus-vrusa.shop>, <oculusvr-world.com>, <oculus-vrworld.shop>, <quest2-vr.com>, <vr-oculusoutlet.com>, <vrquestoutlet.com> and <vr-quest2.com> be transferred to the Complainant.

Wilson Pinheiro Jabur
Sole Panelist
Date: September 16, 2021