The Complainant is Oculus VR, LLC of Menlo Park, California, United States of America, represented by Fenwick & West LLP, United States of America.
The Respondent is Levickii Vitalii Jurevich of Lviv, Ukraine, and Levickaja Valentina Vasilevna of Kiev, Ukraine / Privacy protection service - of Moscow, Russian Federation. 2. The Domain Names and Registrar
The disputed domain names and are registered with JSC Registrar R01 (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10, 2016. On November 10, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 11, 2016, the Registrar transmitted by email to the Center its verification 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 November 21, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant informed the Center on December 2, 2016, that it does not wish to amend the Complaint.
On November 21, 2016, the Center notified the Parties in both English and Russian that the language of the Registration Agreement in this case was Russian. The Complainant requested English to be the language of the proceedings on November 21, 2016. The Respondent did not reply.
Regarding consolidation of multiple respondents, the Center informed the Parties on November 21, 2016 that it would proceed to commencement and formal Complaint notification on the basis that there appears to be at least prima facie grounds argued in the Complaint sufficient to warrant accepting the Complaint for the Panel’s final determination of the consolidation request on appointment.
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 in both English and Russian, and the proceedings commenced on December 2, 2016. In accordance with the Rules, paragraph 5, the due date for Response was December 22, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default in both English and Russian on December 28, 2016.
The Center appointed Assen Alexiev as the sole panelist in this matter on January 13, 2017. 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. On January 30, 2017, due to exceptional circumstances, the Panel extended the due date for rendering its decision until February 6, 2017.
The Complaint submitted in this proceeding refers to two disputed domain names that according to the information provided by the Registrar are registered by different persons. This raises the question whether a consolidation of the proceedings in relation to these two disputed domain names is appropriate. The Complainant submits that it is well established that consolidation of multiple respondents may be appropriate, under paragraphs 3(c) and 10(e) of the Rules, even where differently named domain name registrants are involved, where the particular circumstances indicate that common control is being exercised over the disputed domain names or the websites to which the disputed domain names resolve. The Complainant contends that the disputed domain names are operated or controlled by a common entity or enterprise based on the facts that the Respondent listed in the WhoIs information for the disputed domain names lists the same privacy protection service in the Russian Federation and the disputed domain names were registered with the same Registrar, the websites at the disputed domain names display an identical disclaimer in the same font and color, and the disputed domain name contains a hyperlink to “”, which lists the same phone number and location as that listed in respect of the disputed domain name . According to the Complainant, the consolidation of the proceedings in respect of the two disputed domain names would be procedurally efficient and equitable to all the Parties. The Respondent has not denied any of the contentions of the Complainant and has not objected to the request for consolidation.
As discussed in paragraph 4.16 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), UDRP panels have articulated principles governing the question of whether a complaint may be brought against more than one respondent. These criteria encompass situations where the domain names or the websites to which they resolve are subject to common control, and the consolidation would be fair and equitable to all parties.
Having reviewed the arguments of the Complainant and the evidence submitted by it, the Panel is satisfied that it is more likely than not that the two disputed domain names are indeed under common control and that a consolidation of the proceedings in respect of them would lead to procedural efficiency without putting either of the Parties into a disadvantage. Therefore, the Panel decides to accept the consolidation request of the Complainant, and will take a decision in respect of the two disputed domain names in a single proceeding.
In respect of the language of the proceedings, the Panel notes the following. According to the information provided by the Registrar, the language of the Registration Agreements for the disputed domain names is Russian. Under paragraph 11 of the Rules, 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 Complainant requests that the proceedings be held in English. In support of its request, the Complainant points out that it would be inefficient if the proceedings be held in Russian, and that it would be cumbersome and to the Complainant’s disadvantage to be forced to conduct this proceeding in the Russian language. The disputed domain names identically reproduce the term “oculus,” as well as the English term “touch” and geographical term “ukraine.” In particular, the domain name reproduces in its entirety the name of the Complainant’s “Oculus Touch” accessory. The websites at the disputed domain names contain explicit references to the OCULUS trademark, including references to the OCULUS RIFT and OCULUS TOUCH trademarks. After receipt of the Complainant’s letters written in English, the Respondent altered its website to remove one of the Complainant’s logos. There is English language found throughout the webpages of the disputed domain names, including the Complainant’s OCULUS trademark and a disclaimer.
The Respondent has not rejected the Complainant’s request and has not expressed any preference as to the language of the proceeding. The Center has sent all its messages to the Respondent in both English and Russian and has informed the Parties that it will accept a Response in either English or Russian.
In these circumstances, it appears to the Panel that rendering this Decision in English will be fair and efficient and will not put either of the parties at a disadvantage. Therefore, in exercise of its powers under paragraph 11 of the Rules, the Panel decides that the language of this administrative proceeding be English. At the same time, the Panel will review and take into account the relevant evidence that is available in this case in either Russian or English. 4. Factual Background
The Complainant markets virtual reality products. It is the owner of the trademarks OCULUS, OCULUS VR and OCULUS RIFT (collectively, the “OCULUS trademarks”), including:
- the United States trademark OCULUS with registration No. 4,891,157, for goods in International Class 28, filed on December 13, 2013, and registered on January 26, 2016;
- the United States trademark OCULUS with registration No. 4,906,934, for services in International Class 9, filed on December 13, 2013, and registered on March 1, 2016;
- the United States trademark OCULUS with registration No. 4,991,015, for services in International Class 42, filed on December 13, 2013, and registered on July 5, 2016;
- the Canadian trademark OCULUS with registration No. TMA 892,835, registered on December 22, 2014;
- the International trademark OCULUS with registration No. 1,210,634, registered on June 12, 2014 for the territories of Australia, China, Colombia, European Union, Japan, Mexico, New Zealand, Norway, Republic of Korea, the Russian Federation and Switzerland.
The Complainant launched its website at “” on April 14, 2012.
The disputed domain name was registered on June 11, 2015, and the disputed domain name was registered on February 16, 2015. The domain name resolves to a website called “Oculus Touch” which prominently displayed the Complainant’s OCULUS trademark at the top of the homepage. The domain name resolves to a website entitled “Oculus Ukraine” which also displays the Complainant’s OCULUS trademark at the top of the homepage. The websites purports to sell products produced and sold by the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant points out that it was founded by P. Luckey, self-described virtual reality enthusiast and “hardware geek.” On April 14, 2012, Luckey first introduced his idea of creating an affordable virtual reality head-mounted display that he named the “Oculus Rift” on the website at “.” On April 15, 2012, Luckey also discussed the Oculus Rift on the Meant to be Seen (MTBS) 3D discussion forum post titled “Oculus ‘Rift’: An open-source HMD for Kickstarter.” On June 6, 2012, the Oculus Rift was presented at the 2012 Electronic Entertainment Expo (E3), an annual trade conference for the video game industry. On August 1, 2012, the Complainant launched a Kickstarter campaign to help fund development of the Oculus Rift, and raised over USD 2.4 million in funding from 9,522 project backers and supporters around the world. On July 21, 2014, Facebook acquired the Complainant for approximately USD 2 billion. The Oculus Rift received the 2014 Games Critic Award in the category of Best Hardware/Peripheral. On January 6, 2015, the Complainant announced that it was showing the Oculus Rift Crescent Bay prototype for the first time publicly at the Consumer Electronics Show (CES). On May 6, 2015, the Complainant announced that the Oculus Rift will be shipping to consumers in the first quarter of 2016. On June 11, 2015, the Complainant announced the Oculus Touch, a pair of tracked controllers that deliver hand presence. On March 28, 2016, the first batch of Oculus Rift headsets were shipped to consumers in more than 20 countries and regions.
The Complainant contends that the disputed domain names were registered by the Respondent well after the Complainant began using and established protectable rights in the OCULUS trademarks. The domain name was registered on the same day that the Complainant announced the Oculus Touch handheld controllers, and the domain name was registered a month after the Complainant presented the Oculus Rift Crescent Bay prototype at CES. The domain name resolves to a website called “Oculus Touch” which prominently displayed the Complainant’s OCULUS trademark at the top of the homepage. The Respondent’s website purports to allow consumers to buy Oculus Touch and other products produced and sold by the Complainant in Ukraine. The homepage of the website specifically states, “Buy Oculus Touch in Ukraine! Free Shipping, Low Price!” and has headings at the top of the page entitled, “Buy Oculus Touch” and “Buy Oculus Rift.” The statement and headings are a clear admission that the Respondent is specifically targeting the Complainant’s consumers by offering to sell the Complainant’s products.
According to the Complainant, in addition to incorporating the Complainant’s trademarks in the domain name and on the resolving website, the Respondent’s website includes a hyperlink entitled “helmets VR” that redirects to the website at “”. The domain name was registered on June 11, 2015, the same day as the domain name. The website at “” purports to sell various virtual reality helmets, including the Oculus Rift and other products produced and sold by the Complainant. Notably, “torg” in Russian translates to “bargain,” and thus the website purports to offer bargains on virtual reality products. Additionally, the contact information listed on this website is the same as that listed on the disputed domain name . Therefore, the Respondent is selling the Complainant’s products through this third party website via the link from the website at “www.”. The domain name resolves to a website entitled “Oculus Ukraine” which also displays the Complainant’s OCULUS trademark at the top of the homepage. The website purports to sell products produced and sold by the Complainant, including the Oculus Rift, Gear VR, and Oculus developer kits. After the Complainant became aware of the Respondent’s registration and use of the domain name, the Complainant’s counsel sent an email to the Respondent on March 31, 2016 expressing concern that the Respondent’s use and registration of the domain name will cause consumer confusion and inquired whether the Respondent would transfer the disputed domain name. The Complainant’s counsel then sent three follow up emails to the Respondent requesting that the Respondent cease using the OCULUS trademarks. After the Complainant’s counsel sent the letters to the Respondent, the Respondent added a disclaimer in small font to the website at the disputed domain name and to the website at the disputed domain name . The Respondent did not make any further changes to the website at the disputed domain name and never responded to the Complainant’s counsel. On May 10, 2016, the Complainant’s local counsel in Ukraine sent a letter in Ukrainian to the Respondent regarding the Respondent’s infringing use and registration of the disputed domain name , but never received a response from the Respondent.
The Complainant submits that the disputed domain names are identical or confusingly similar to the Complainant’s OCULUS trademarks, which they reproduce in its entirety with the addition of the term “touch” and the “.net” generic Top-Level Domain (“gTLD”) for the disputed domain name , and the geographical term “Ukraine” and the “.com” gTLD for the disputed domain name . According to the Complainant, the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to the trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent’s attempt to divert Internet users seeking the Complainant’s goods and services does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use. The disputed domain names divert Internet users seeking the Complainant’s services to the Respondent’s websites, which purport to allow consumers to purchase the Complainant’s Oculus Rift and other OCULUS products through the websites. This service is identical to the one offered by the Complainant through its official website, where customers can purchase the Oculus Rift and the Oculus Touch. The Respondent’s use of the OCULUS trademarks is intended to mislead and deceive unsuspecting consumers in an attempt to divert traffic intended for the Complainant’s website to the disputed domain names for the Respondent’s financial gain. Such an attempt to trade off the goodwill associated with the Complainant’s OCULUS trademarks does not constitute credible use of the disputed domain names. Capitalizing on the well-known OCULUS trademarks of the Complainant by attracting Internet users to its disputed domain names where the Respondent sells competing products of the Complainant is not a bona fide offering of goods or services or a noncommercial or fair use. The Respondent’s use of the disputed domain names is primarily a pretext for commercial advantage. The website at the domain name also contains a hyperlink to the website at “”, which is registered by the Respondent, and offers goods and services that are in direct competition with the Complainant. This website also purports to allow customers to purchase the Complainant’s products and other virtual reality helmets for a significant profit. The Complainant offers its Oculus Rift headset for sale for USD 599, while the Respondent offers the same product for UAH 23,600 or approximately USD 917. The Complainant also points out that the Respondent is not commonly known by the disputed domain names.
The Complainant contends that the Respondent has registered and used the disputed domain names in bad faith. The Respondent registered the disputed domain names with the Complainant’s OCULUS trademarks in mind and with an intent to cause confusion. The Complainant first made use of the OCULUS trademark in April 2012 and has enjoyed a significant amount of media coverage since the Oculus Rift product was presented at the E3 conference on June 6, 2012. The disputed domain names were not registered until long after the OCULUS trademarks became well known. The domain name was registered by the Respondent on June 11, 2015, the same day the Complainant announced its Oculus Touch controller for the Oculus Rift, and the domain name was registered on February 16, 2015, a little over one month after the Complainant presented the Oculus Rift Crescent Bay prototype at CES. The timing of the registration of the domain name indicates that the Respondent was intending to capitalize off of the announcement of the Oculus Touch controller and the increased commercial value of this domain name. Similarly, the timing of the Respondent’s registration of the domain name indicates that the Respondent was anticipating the commercial value of the OCULUS mark would increase after the public presentation of the Oculus Rift Crescent Bay prototype. According to the Complainant, the targeting of an imminently anticipated mark must be considered bad faith registration within the meaning of the Policy.
The Complainant points out that the Respondent’s use of the disputed domain names to offer competing services constitutes evidence of bad faith. The Respondent offers directly competing services by purporting to sell the Complainant’s products through the disputed domain names. The Respondent displayed the OCULUS trademarks with the intent to cause confusion. The domain name originally resolved to a webpage where the Respondent displayed the OCULUS trademark. The Respondent’s disclaimer of association on the resolving websites does not prevent the initial confusion of Internet users, and the Respondent continues to display the OCULUS trademark at the top of the homepage and throughout its websites. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain names:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and
(iii) the Respondent has registered and is using the disputed domain names in bad faith.
In this case, the Center has employed the required measures to achieve notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case.
By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…” In the event of a default, under Rules, paragraph 14(b): “…the Panel shall draw such inferences therefrom as it considers appropriate.”
As stated by the UDRP panel in Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy’s Antiques,WIPO Case No. D2000-0004: “Here, the potential evidence of good faith registration and use was in respondent’s control. The Respondent’s failure to present any such evidence or to deny complainant’s allegations allows an inference that the evidence would not have been favorable to respondent.” As stated by the UDRP panel in Viacom International Inc. v. Ir Suryani,WIPO Case No. D2001-1443: “Since the Respondent has not submitted any evidence and has not contested the contentions made by the Complainant, this Panel is left to render its decision on the basis of the uncontroverted contentions made, and the evidence supplied, by the Complainant […]. In the absence of any evidence to the contrary submitted by the Respondent, this Panel accepts in large measure (but not wholly) the submitted evidence and the contended for factual and legal conclusions as proven by such evidence.”
In this administrative proceeding, the Respondent’s failure to submit a response entitles the Panel to conclude that the Respondent has no arguments or evidence to rebut the reasonable assertions of the Complainant. The Panel has to take its decision on the basis of the statements and documents submitted by the Complainant and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable. A. Identical or Confusingly Similar
The Complainant has provided copies of registration certificates for the registrations of the OCULUS trademark. The Respondent has not challenged the validity of these trademark registrations.
The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the gTLD section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). The Panel sees no reason not to follow the same approach here, so it will disregard the “.net” part of the disputed domain name and the “.com” part of the disputed domain name .
Therefore, the relevant part of the disputed domain name is its “oculustouch” section, which contains two elements – “oculus” and “touch.” The “oculus” element is identical to the dominating word element of the OCULUS trademark, while the two elements together form the name of one of the Complainant’s products – the Oculus Touch controller that delivers hand presence. Taken together, these two elements are likely to create the impression in Internet users that the disputed domain name is related to the Complainant and is dedicated to its Oculus Touch product. In view of the above, the Panel finds that the disputed domain name is confusingly similar to the OCULUS trademark in which the Complainant has rights.
The relevant part of the disputed domain name is its “oculusukraine” section, which contains two elements – “oculus” and “ukraine.” The “oculus” element is identical to the dominating word element of the OCULUS trademark, while the “ukraine” element is the name of the country where the Respondent appears to reside and offer the Complainant’s and other products through the websites at the disputed domain names. Taken together, these two elements are likely to create the impression in Internet users that the disputed domain name is related to the Complainant and is focused on their marketing in the territory of Ukraine. In view of the above, the Panel finds that the disputed domain name is confusingly similar to the OCULUS trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant is required to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain names. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain names. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain names. See paragraph 2.1 of the WIPO Overview 2.0.
The Complainant has contended that the Respondent has no rights or legitimate interests in the disputed domain names, stating that the disputed domain names divert Internet users seeking the Complainant’s services to the Respondent’s websites, which purport to allow consumers to purchase the Complainant’s Oculus Rift and other OCULUS products through the websites. According to the Complainant, this conduct of the Respondent does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use. In particular, the lack of any disclaimer on the websites until after notice of the dispute combined with the prominent use of the Complainant’s trademarks will cause confusion in Internet users and does not constitute a bona fide offering of goods or services. In addition, the website at the domain name contains a hyperlink to the website at “”, which is registered by the Respondent, and offers goods and services that are in direct competition with the Complainant at a significant profit for the Respondent. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names.
There is no evidence in the available record that the Respondent is commonly known by either of the disputed domain names, and the Respondent has not denied the contentions of the Complainant or made any allegations relevant to the issue of rights and legitimate interests.
The disputed domain names incorporate the OCULUS trademark of the Complainant and were registered when the Complainant first announced its products or soon thereafter. The Respondent has linked the disputed domain names to websites that feature the Complainant’s OCULUS trademark, offer the Complainant’s products or contain links to another website that offers the Complainant’s products and competing products at a significant profit. This makes it very likely that the Respondent was well aware of the Complainant and its OCULUS products when it registered the disputed domain names, and that it chose to target the OCULUS trademark because of the likelihood that it will attract traffic to the disputed domain names. In the Panel’s view, this conduct of the Respondent does not support a finding of rights or legitimate interests of the Respondent in that disputed domain names.
Taking all the above into account, the Panel finds that the Complainant’s prima facie case has not been rebutted, and that the Respondent has no rights or legitimate interests in the disputed domain names. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.”
The provisions of paragraph 4(b) of the Policy are without limitation, and bad faith registration and use may be found on grounds otherwise satisfactory to the Panel.
As discussed above, the disputed domain names fully incorporate the OCULUS trademark and are confusingly similar to it, and the Respondent is likely to have registered them targeting the Complainant and its products in an attempt to attract traffic to the disputed domain names. In the absence of any arguments or evidence to the contrary by the Respondent, the Panel is prepared to accept that this conduct of the Respondent represents a bad faith registration of the disputed domain names.
The Respondent’s websites at the disputed domain names feature the Complainant’s OCULUS trademark without the Complainant’s authorization, offer the Complainant’s products or contain links to another website that offers the Complainant’s products and competing products at a significant profit. This makes it likely that the Respondent, by using the disputed domain names, has intentionally attempted to attract, for commercial gain, Internet users to its websites or other on-line locations, by creating a likelihood of confusion with the Complainant’s OCULUS trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s websites or of the products on its websites.
In view of the above, and in the absence of any rebuttal by the Respondent, the Panel is prepared to accept that the Respondent has registered and used the disputed domain names in bad faith.
As mentioned by the Complainant, the Respondent has put a disclaimer on its websites following the receipt of the cease-and-desist letter from the complainant’s counsel. However, as discussed in paragraph 3.5 of the WIPO Overview 2.0, the existence of a disclaimer cannot by itself cure bad faith, when bad faith has been established by other factors. In view of this, the Panel is not prepared to change its findings on the issue of bad faith on the basis of the existence of a disclaimer on the Respondent’s websites.
Therefore, the Panel finds that the disputed domain names have been registered and are 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 names and be transferred to the Complainant.
Assen Alexiev
Sole Panelist
Date: February 12, 2017
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