The Complainant is Facebook Technologies, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondents are Super Privacy Service LTD c/o Dynadot, United States / wills eldren, Theda Folkerts, Eric Hale, lucky017 lucky017, Timothy McGraw, k m, azu seedorf, Elizabeth J Broadwell, ab Wu, Troyovsky Gary, TheIs Thdss, Paul Morefield, Steven Holmes, Glova Karl, and Susan Roberts, United States, and Wu Yu, China.
2. The Domain Names and RegistrarsThe domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 28, 2021. On September 30, 2021, the Center transmitted by email to each of the Registrars a request for registrar verification in connection with the Disputed Domain Names. On September 30, 2021, the Registrars each transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainant on October 4, 2021, providing the registrant and contact information disclosed by the Registrars, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on October 7, 2021, along with a consolidation request.
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 Respondents of the Complaint, and the proceedings commenced on October 13, 2021. In accordance with the Rules, paragraph 5, the due date for Response was November 2, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on November 8, 2021.
The Center appointed Lynda M. Braun as the sole panelist in this matter on November 25, 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 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 2018, the Complainant operated under the corporate name of its predecessor in interest, Oculus VR LLC (“Oculus”). Acquired by Facebook in March 2014, Oculus rapidly acquired and developed considerable goodwill and renown worldwide in connection with its virtual reality (“VR”) software and apparatus. The Complainant distributes or previously distributed various VR headsets, including “Oculus Quest”, which was released on May 21, 2019, and is considered one of Oculus’ most popular headsets, with 317,000 units sold over the 4th quarter of 2019. The Complainant markets and offers its Oculus products via its official website at “www.oculus.com”.
The Complainant owns numerous trademark registrations that contain the terms “Oculus” and “Quest” in many jurisdictions worldwide. These include, but are not limited to, the following: OCULUS, United States Trademark Reg. No. 4,891,157, registered on January 26, 2016; OCULUS, European Union Trademark Reg. No. 014185441, registered on December 17, 2015; OCULUS, International Trademark Reg. No. 1219324, registered on June 12, 2014; QUEST, United States Trademark Reg. No. 6,279,215, registered on February 23, 2021; and QUEST, European Union Trademark Reg. No. 017961685, registered on June 16, 2020. The Complainant is also the owner of a number of figurative trademarks, including a stylized image of the letter “O”, United States Trademark Reg. No. 5,633,258, registered on December 18, 2018.
The aforementioned trademarks will hereinafter be collectively referred to as the “OCULUS and QUEST trademarks”.
Reflecting its international scope, the Complainant is the owner of numerous domain names consisting of the term OCULUS, such as
This proceeding concerns the following 35 Disputed Domain Names and registration dates:
The Disputed Domain Names initially resolved to websites that impersonated the Complainant’s official website, had a similar “look and feel” to the Complainant’s official Oculus website, and prominently displayed the Complainant’s distinctive “O” logo on each of the websites. The websites purportedly offered the Complainant’s products for sale at extremely discounted prices and allowed Internet users to place orders and make payments directly via these websites.
Soon thereafter, the Disputed Domain Names ceased to resolve to the Oculus-related websites as described above. Some of the Disputed Domain Names resolved to a parking page displaying pay-per-click links, others resolved to a landing page stating that the site could not be reached, and yet others resolved to a landing page warning Internet users arriving at the webpage of the deceptive, dangerous nature of the websites.
5. Parties’ Contentions A. ComplainantThe Complainant contends that the Disputed Domain Names are identical or confusingly similar to the Complainant’s trademarks, that the Respondents have no rights or legitimate interests in respect of the Disputed Domain Names, and that the Disputed Domain Names were registered and are being used in bad faith.
B. RespondentsThe Respondents did not reply to the Complainant’s contentions.
6. Discussion and Findings 6.1 Preliminary Issue: ConsolidationThe Complainant requests that the Panel hear the present dispute – brought by one Complainant against multiple Respondents – as a consolidated complaint. The Panel grants the request as set forth below.
As stated in section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), “[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 approves such request considering that it would be more procedurally efficient to deal with the 35 Disputed Domain Names in the same proceeding, given that:
(i) The Disputed Domain Names initially resolved to extremely similar websites purportedly offering the Complainant’s products for sale at discounted prices, and having a similar “look and feel” to the Complainant’s official website;
(ii) The Disputed Domain Names were registered within 29 days of each other (i.e., between July 21 and August 19, 2021) and many of the Disputed Domain Names were registered on the same date. For instance, 12 of the Disputed Domain Names were registered on August 5, 2021; and 11 of the Disputed Domain Names were registered on August 6, 2021;
(iii) Except for
(iv) The Disputed Domain Names target the Complainant’s OCULUS and/or QUEST trademarks;
(v) The Disputed Domain Names were registered in a similar naming pattern, i.e., the Complainant’s trademark followed and / or preceded by dictionary terms, such as “buy”, “clearance”, “company”, “us”, “usa”, “sale”, “deals”, “online”, “overstock”, “outlet”, “equipment”, “products”, “vr”, “vrglasses”, and “rifts”, with or without hyphens.
In sum, the Panel concludes that consolidation would be fair and equitable to all parties because many of the Complainant’s substantive arguments in relation to the Disputed Domain Names are the same or similar, the Disputed Domain Names are under common control, and to require the Complainant to submit numerous separate Complaints would lead to the Complainant incurring substantial additional costs in enforcing its rights. Moreover, the Respondents did not submit any objection to consolidation, nor any reply to the Complaint.
This Panel is satisfied, in view of the evidence submitted and on balance, that consolidation of the Respondents would be fair and equitable and thus, accepts consolidation in the present case.
6.2 Substantive IssuesParagraph 4(a) of the Policy states that the Complainant must prove each of the following three elements to obtain an order for the Disputed Domain Names to be transferred from the Respondents to the Complainant:
(i) the Disputed Domain Names are identical or confusingly similar to a trademark in which the Complainant has rights;
(ii) the Respondents have 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.
On the basis of the arguments and evidence introduced by the Complainant, the Panel concludes as follows:
A. Identical or Confusingly SimilarThis element consists of two parts: first, does the Complainant have rights in a relevant trademark or trademarks and, second, are the Disputed Domain Names identical or confusingly similar to that trademark or trademarks. The Panel concludes that the Disputed Domain Names are confusingly similar to the OCULUS and QUEST trademarks as set forth below.
First, the Complainant has established rights in the OCULUS and QUEST trademarks based on its years of use as well as its registered trademarks for the OCULUS and QUEST trademarks in the United States and in numerous jurisdictions worldwide. The general consensus is that registration of a mark satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. See WIPO Overview 3.0, section 1.2.1. Here, the Panel finds that the Complainant has rights in the OCULUS and QUEST trademarks.
The Disputed Domain Names consist of the OCULUS and / or QUEST trademarks followed and / or preceded by various dictionary terms, such as those listed in section 6.1 supra. with or without hyphens, and then followed by a generic Top-Level Domain (“gTLD”), such as “.com”, “.shop”, “.sale”, “.store”, “.one”, “.online”, or “.club”. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of other terms or abbreviations. See Allianz Global Investors of America, L.P. and Pacific Investment Management Company (PIMCO) v. Bingo-Bongo,WIPO Case No. D2011-0795; see also Hoffmann-La Roche, Inc. v. Wei-Chun Hsia,WIPO Case No. D2008-0923. As stated in section 1.8 of WIPO Overview 3.0, “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”. Moreover, it is well established that a disputed domain name that wholly incorporates a trademark may be confusingly similar to that trademark for purposes of the Policy despite the addition of a hyphen. The presence or absence of punctuation marks such as hyphens cannot on their own avoid a finding of confusing similarity. See Six Continents Hotels, Inc. v. Helen Siew,WIPO Case No. D2004-0656.
Finally, the addition of a gTLD in a domain name is technically required. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva,WIPO Case No. D2012-0182, and WIPO Overview 3.0, section 1.11. Thus, the Panel concludes that the Disputed Domain Names are confusingly similar to the Complainant’s OCULUS and QUEST trademarks.
Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainant.
B. Rights or Legitimate InterestsUnder the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1.
There is no evidence in the record suggesting that the Respondents have rights or legitimate interests in the Disputed Domain Names. The Complainant has not authorized, licensed, or otherwise permitted the Respondents to use the Complainant’s OCULUS and / or QUEST trademarks. The Complainants do not have any business relationship with the Respondents, nor are the Respondents making a legitimate noncommercial or fair use of the Disputed Domain Names. There is also no evidence that the Respondents are commonly known by the Disputed Domain Names or by any name similar to them or has made any demonstrable preparations to use the Disputed Domain Names in connection with a bona fide offering of goods or services. Moreover, the Respondents are not authorized dealers, distributors, or licensees of the Complainant.
Further, the Respondents, by attempting to pass off as the Complainant by offering the Complainant’s products disproportionately below market value on the Respondents’ resolving websites strongly suggests that the Disputed Domain Names were used in connection with a fraudulent scheme whereby unsuspecting Internet users were deceived into paying for the Complainant’s products, although the goods were never intended to be supplied to those purchasers. Such conduct does not confer rights or legitimate interests on the Respondents. See WIPO Overview 3.0, section 2.13.1 (“Panels have categorically held that the use of a domain name for illegal activity (e.g., the sale of counterfeit goods or illegal pharmaceuticals, phishing, distributing malware, unauthorized account access/hacking, impersonation/passing off, or other types of fraud) can never confer rights or legitimate interests on a respondent.”). Thus, the Panel concludes that nothing on the record before it would support a finding that the Respondents are making a legitimate noncommercial or fair use of the Disputed Domain Names.
Finally, the composition of the Disputed Domain Names, comprising the entirety of the OCULUS and/or QUEST trademarks, carries a risk of implied affiliation and cannot constitute fair use here, as it suggests sponsorship or endorsement by the Complainant. See WIPO Overview 3.0, section 2.5.1.
Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainant.
C. Registered and Used in Bad FaithThe Panel finds that based on the record, the Complainant has demonstrated the existence of the Respondents’ bad faith pursuant to paragraph 4(b) of the Policy.
First, the registration of a domain name that is confusingly similar to a trademark by an entity that has no relationship to that mark may be sufficient evidence of opportunistic bad faith. See Ebay Inc. v. Wangming,WIPO Case No. D2006-1107; Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163. Based on the circumstances here, the Respondents registered and used the Disputed Domain Names in bad faith to target the Complainant’s OCULUS and QUEST trademarks for commercial gain. This finding is reinforced given the descriptive or affiliated nature of the added terms to the Complainant’s trademarks in the construction of the Disputed Domain Names, namely the addition of the geographic abbreviation for the Complainant’s location (“usa” or “us” for “United States”) and “vr” or “vrglasses” in relation to the Complainant’s services in “virtual reality”, to illustrate only a few of the clear instances of the descriptiveness and thus targeting of the added terms.
Second, the Panel concludes that the Respondents registered and used the Disputed Domain Names in bad faith in an attempt to attract Internet users to the Respondents’ websites by creating a likelihood of confusion with the Complainant’s OCULUS and / or QUEST trademarks as to the source, sponsorship, affiliation or endorsement of the Disputed Domain Names’ resolving webpages. The Respondents’ registration and use of the Disputed Domain Names indicate that such registration and use had been done for the specific purpose of trading on the name and reputation of the Complainant and its OCULUS and QUEST trademarks. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”,WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain”).
Third, the Complainant has promoted and sold its goods using the OCULUS and QUEST trademarks since 2013, approximately eight years before the Respondents’ registration of the Disputed Domain Names. In addition, the Complainant’s OCULUS and QUEST trademarks are extremely well known worldwide and have been continuously and extensively used in connection with virtual reality headsets, having acquired considerable goodwill and renown worldwide. Based on the widespread use of the OCULUS and QUEST trademarks, it strains credulity to believe that the Respondents had not known of the Complainant or its OCULUS and QUEST trademarks when registering the Disputed Domain Names. Thus, the Panel finds that the Respondents had actual knowledge of the Complainant’s trademarks and targeted the Complainant when they registered the Disputed Domain Names, demonstrating the Respondents’ bad faith.
Finally, the Respondents initially used the Disputed Domain Names to impersonate the Complainant and perpetrate a fraudulent scheme directed against the Complainant, a strong indication of bad faith. The Respondents’ initial scheme to offer the Complainant’s products at steep discounts evidences a clear intent to deceive individuals, pass itself off as the Complainant, and receive payments for advertised products on their websites without any intention of supplying those products to the individuals who ordered and paid for them. Such conduct is emblematic of the Respondents’ bad faith registration and use of the Disputed Domain Names.
After shutting down the websites allegedly offering the Complainant’s products, the Respondents redirected the Disputed Domain Names to several locations on the Internet: parking pages displaying pay-per-click links, landing pages stating that the site could not be reached, and landing pages warning Internet users arriving at the webpage of the deceptive, dangerous nature of the websites, which further reinforces the lack of good faith intention behind the original use of the Disputed Domain Names. As regards the current varied use, the inactive nature of some of the Disputed Domain Names does not prevent a finding of bad faith under the circumstances of this proceeding and the use of pay-per-click links capitalizing on the misdirection of Internet users caused by the confusingly similar Disputed Domain Names also establishes bad faith use. Lastly, the preemptive security messages warning Internet users of the potential deceptive nature behind the Disputed Domain Names gives the Panel enough information to determine that any use of the Disputed Domain Names would not be in good faith. All of the above establish the Respondents’ bad faith.
Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainant.
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
Lynda M. Braun
Sole Panelist
Date: December 6, 2021