The Complainant is Facebook Technologies, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is 谢飞 (Xie Fei), China.
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2021. On June 15, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 17, 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 June 18, 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 an amended Complaint in English on June 21, 2021.
On June 18, 2021, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On June 18, 2021, the Complainant submitted a request that English be the language of the proceeding. 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 in English and Chinese of the Complaint, and the proceedings commenced on June 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 14, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 29, 2021.
The Center appointed Sok Ling MOI as the sole panelist in this matter on September 3, 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 BackgroundThe Complainant, Facebook Technologies, LLC, is a subsidiary of Facebook, Inc. (“Facebook”), and holds the intellectual property rights for various technologies owned by Facebook. The Complainant was acquired by Facebook in March 2014, and until 2018 operated under the corporate name of its predecessor in interest, Oculus VR LLC (“Oculus”). The Complainant markets and offers its virtual reality ("VR") software and apparatus products under the OCULUS brand via its website at “www.oculus.com”.
The Complainant is the proprietor of numerous trade mark registrations worldwide for OCULUS, including the following:
Jurisdiction
Mark
Class No.
Registration No.
Registration Date
China
OCULUS
45
17096437
August 21, 2016
International Registration designating, inter alia, China
OCULUS
28
1219324
June 12, 2014
United States
OCULUS
28
4891157
January 26, 2016
European Union
OCULUS
25, 35, 38, 41, 42, 45
014185441
December 17, 2015
The Complainant (or its affiliated companies) is also the proprietor of numerous domain name registrations consisting of OCULUS, including the following:
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The disputed domain names
The Complainant claims that the disputed domain names are confusingly similar to its trade mark.
The Complainant contends that as the Complainant has not licensed or otherwise authorized the Respondent to use its trade mark, the Respondent’s use of the disputed domain names to publish websites purportedly offering for sale the Complainant’s OCULUS products was for the purpose of trading on the Complainant’s goodwill for financial gain. The Complainant claims that the Respondent lacks rights or legitimate interests in the disputed domain names.
The Complainant contends that the disputed domain names are used to create confusion and mislead Internet users into believing that the Respondent’s websites are authorised by the Complainant. The Complainant alleges that the OCULUS products offered for sale by the Respondent on its websites are counterfeits. The Complainant claims that the Respondent has registered and is using the disputed domain names in bad faith.
For all of the above reasons, the Complainant requests for the transfer of the disputed domain names to the Complainant.
B. RespondentThe Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1 Language of the ProceedingPursuant to paragraph 11(a) 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.
Paragraph 10(b) and (c) of the Rules requires the Panel to ensure that the proceeding takes place with due expedition and that the Parties are treated equitably and given a fair opportunity to present their respective cases.
The language of the Registration Agreement for the disputed domain names is Chinese. From the evidence on record, no agreement appears to have been entered into between the Complainant and the Respondent regarding the language issue. The Complainant filed its Complaint in English and has requested that English be the language of the proceeding. The Respondent did not comment on the issue of the language of the proceeding.
The Panel finds persuasive evidence in the present proceeding to suggest that the Respondent has sufficient knowledge of English. In particular, the Panel notes that:
(a) the disputed domain names are registered in Latin characters, rather than Chinese script; and
(b) according to the evidence submitted by the Complainant, the contents of the websites to which the disputed domain names resolve are entirely in English.
Additionally, the Panel notes that:
(a) the Center has notified the Respondent of the proceeding in both Chinese and English;
(b) the Respondent has been given the opportunity to present its case in this proceeding and to respond to the issue of the language of the proceeding but has chosen not to do so; and
(c) the Center has informed the Respondent that it would accept a Response in either English or Chinese.
Considering the above circumstances, the Panel finds that the choice of English as the language of the present proceeding is fair to all Parties and is not prejudicial to any of the Parties in their ability to articulate the arguments for this case. The Panel has taken into consideration the fact that to require the Complaint and all supporting documents to be translated into Chinese would, in the circumstances of this case, cause an unnecessary cost burden to the Complainant and would unnecessarily delay the proceeding.
In view of all the above, the Panel determines under paragraph 11(a) of the Rules that it shall accept the Complaint and all supporting materials as filed in English, that English shall be the language of the proceeding, and that the decision will be rendered in English.
6.2 Substantive FindingsParagraph 4(a) of the Policy directs that a complainant must prove each of the following three elements to obtain an order for the disputed domain name to be cancelled or transferred:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows:
A. Identical or Confusingly SimilarThe Panel accepts that the Complainant has rights in OCULUS by virtue of its use and registration of the same as a trade mark.
Each of the disputed domain names effectively incorporates the Complainant’s OCULUS trade mark, with the only difference being the addition of the letters “us”, “u” and “r” as a suffix, which is an obvious misspelling of the Complainant’s trade mark. The disputed domain names are all foreseeable typographical variants of the Complainant’s domain name registration
The Complainant’s trade mark is recognizable in the disputed domain names. The consensus view of previous UDRP panels is that a domain name which contains a common or obvious misspelling of a trade mark will normally be found to be confusingly similar to such trade mark, where the misspelled trade mark remains the dominant or principal component of the domain name.
Consequently, the Panel finds that all three disputed domain names are confusingly similar to the Complainant’s OCULUS trade mark.
Accordingly, the Complainant has satisfied the requirements of the first element under paragraph 4(a) of the Policy.
B. Rights or Legitimate InterestsUnder paragraph 4(a)(ii) of the Policy, a complainant bears the burden of establishing that the respondent lacks rights or legitimate interests in the disputed domain name. However, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, the burden of production shifts to the respondent to establish its rights or legitimate interests in the disputed domain name by demonstrating any of the following, without limitation, under paragraph 4(c) of the Policy:
(i) before any notice to it of the dispute, the respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the disputed 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 disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
(See Taylor Wimpey PLC, Taylor Wimpey Holdings Limited v. honghao Internet foshan co, ltd,WIPO Case No. D2013-0974.)
The Complainant has confirmed that the Respondent is not in any way affiliated with the Complainant or otherwise authorized or licensed to use the OCULUS trade mark or to seek registration of any domain name incorporating the trade mark. There is also no objective evidence suggesting that the Respondent is commonly known by the disputed domain name or that the Respondent has any rights in the term “oculus”.
According to the evidence submitted by the Complainant, the Respondent was using the disputed domain names to publish websites which reproduced the Complainant’s OCULUS trade mark, logo and copyrighted images, and purported to offer for sale the Complainant’s products under the OCULUS brand. There does not appear to be any clear statement or disclaimer on the Respondent’s websites to indicate that it is, in fact, not affiliated with the Complainant. The Respondent would not be able to avail itself of the safe harbour defense established by the Oki Data case (Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903).
Subsequently, the disputed domain name
The Panel is satisfied that the Complainant has made out a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain names. The burden of production thus shifts to the Respondent to establish its rights or legitimate interests in the disputed domain names. Since the Respondent has failed to respond, the prima facie case has not been rebutted.
Consequently, the Panel finds that the Respondent lacks rights or legitimate interests in the disputed domain names.
Accordingly, the Complainant has satisfied the requirements of the second element under paragraph 4(a) of the Policy.
C. Registered and Used in Bad FaithParagraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the disputed domain name in bad faith, namely:
(i) circumstances indicating that the respondent has registered or acquired the disputed 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 trade mark or service mark or to a competitor of the complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the disputed domain name; or
(ii) the respondent has registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
The Complainant has provided evidence to show that its trade mark OCULUS enjoys a strong presence on the Internet. The Panel acknowledges that the OCULUS trade mark is distinctive and well known around the world. There is no doubt that the Respondent was aware of the Complainant’s trade mark when it registered the disputed domain names given that it has reproduced the Complainant’s OCULUS trade mark, logo and copyrighted images, and purported to offer for sale the Complainant’s OCULUS products on its websites. Registration of a domain name that incorporates a complainant’s well-known trade mark suggests opportunistic bad faith.
In registering and using a disputed domain name that is a typographical variant of the Complainant’s trade mark and registered domain name, the Respondent is seeking to create an impression that its website is the Complainant’s official website. The Respondent is clearly engaging in typo-squatting. Irrespective of whether the goods offered on the Respondent’s websites are in fact counterfeit, the reproduction of the Complainant’s trade mark, logo and copyrighted images on the Respondent’s websites without also displaying a clear disclaimer of a lack of relationship between the Respondent and the Complainant, is indicative of bad faith.
The Panel is satisfied that the Respondent’s purpose of registering the disputed domain names was to trade on the reputation of the Complainant and its trade mark by diverting Internet users seeking the Complainant’s branded products to its own website for financial gain. The Panel therefore determines that the Respondent has intentionally attempted to attract for commercial gain Internet users to its websites by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship, affiliation, or endorsement of the Respondent’s website. As such, the Panel finds that the circumstances referred to in paragraph 4(b)(iv) of the Policy are applicable to the present case.
In addition, the current passive holding of the disputed domain names does not prevent a finding of bad faith.
The Respondent has not denied the Complainant’s allegations of bad faith. Taking into account all the circumstances, the Panel concludes that the Respondent has registered and is using the disputed domain names in bad faith.
Accordingly, the Complainant has satisfied the requirements of the third element under paragraph 4(a) of the Policy.
7. DecisionFor 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,
Sok Ling MOI
Sole Panelist
Date: October 19, 2021