The Complainant is Oculus VR, LLC of Menlo Park, California, United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Sean Lin of Kitchener, Ontario, Canada, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the "Domain Name") is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 27, 2016. On September 28, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On September 28, 2016, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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, and the proceedings commenced on October 14, 2016. In accordance with the Rules, paragraph 5, the due date for Response was November 3, 2016. The Response was filed with the Center on October 15, 2016. The Center received further communications from the Respondent on October 29, 2016 and October 22, 2016.
The Center appointed Mathias Lilleengen as the sole panelist in this matter on October 31, 2016. 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 technology company founded in 2012 that developed "Oculus Rift", a virtual-reality head-mounted display specifically designed for video games.
The Complainant is renowned worldwide in connection with virtual-reality game software and apparatus.
The Complainant owns trademark registrations for OCULUS RIFT throughout the world, including in Canada. Such trademark registrations include but are not limited to Canadian Trademark No. TMA949314 registered on September 14, 2016, European Union Trade Mark No. 1186832 registered on June 26, 2013 and International Trademark Registration No. 1186832 registered on June 26, 2013.
The Respondent registered the Domain Name on April 30, 2013. According to the Complainant's allegations and the evidence provided with the Complaint, at the time of submitting the Complaint the Domain Name did not resolve to an active website, but previously resolved to a website including the Complainant's trademark and links to articles about the Complainant's products and about products of the Complainant's competitors. 5. Parties' Contentions A. Complainant
The Complainant provides trademark registrations, but also submits that it has common law or unregistered trademark rights dating from April 2012. The Complainant argues that the Domain Name is identical or confusingly similar to the OCULUS RIFT trademark in which the Complainant has rights.
The Complainant argues further that the Respondent has not been commonly known by the Domain Name, and that the Respondent has no history of using the Domain Name in connection with a bona fide offering of goods and services. While the Respondent has claimed in his correspondence that it was not his intention to cause confusion or imply any official connection with the Complainant as he was just a fan, the Complainant argues that this is not credible as there is no indication on the website associated with the Domain Name indicating that the Respondent's website was a fan site. On the contrary, the fact that the website prominently displayed the Complainant's trademark and also contained a copyright notice using the Complainant's trademark is a strong indication that the Respondent was misrepresenting himself as being the Complainant. Furthermore, the Respondent offered to sell the Domain Name to the Complainant for USD 50,000.
Finally, the Complainant points to the fact that the Complainant is known worldwide, including in Canada, where the Respondent is based. The Respondent must have known about the Complainant and its trademark at the time of registration. The Complainant adds several arguments as to the registration and use of the Domain Name in bad faith, including that the Domain Name previously pointed to a website displaying the Complainant's trademark and logo, that the Respondent registered the Domain Name for the purpose of selling it to the Complainant, that the Respondent has engaged in a pattern of registering domain names in order to prevent the Complainant from registering a domain name corresponding to its trademark, and that Respondent's registration of the Domain Name may lead to confusion amongst Internet users. B. Respondent
In the Response, the Respondent consents to the remedy requested by the Complainant and agrees to transfer the Domain Name. 6. Discussion and Findings
As noted above, the Respondent agreed in the Response to the transfer of the Domain Name to the Complainant. However, the Complainant informed the Center on October 18, 2016 that the Complainant previously tried to settle the dispute but they could not reach an agreement. In addition, the Complainant requested to obtain a full decision.
Paragraph 4.13 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") considers whether a UDRP panel can decide a case based on a respondent's consent to transfer. In relevant part, "[s]ome panels have declined to grant a remedy solely on the basis of the respondent's consent, but rather elected to proceed to a substantive determination of the merits; for example, […] because the panel finds that the complainant has not agreed to a consent decision and the complainant is entitled to the decision for which it has paid in filing its complaint".
As the case is not suspended and taking into account that the Complainant expressly requested to obtain a full decision, the Panel moves on to decide the case on the merits and consideration of the three requisite elements under paragraph 4(a) of the Policy. A. Identical or Confusingly Similar
The Complainant has established that it has rights in the trademark OCULUS RIFT.
The test for confusing similarity involves the comparison between the trademark and the Domain Name. In this case, the Domain Name consists of the Complainant's trademark.
For the purposes of assessing confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the country code Top-Level Domain ".co".
The Panel finds that the Domain Name is identical to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Respondent has no registered trademarks or trade names corresponding to the Domain Name. The Complainant has not granted any authorization to the Respondent to register a domain name containing its trademark or otherwise make use of its mark.
The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Domain Name.
Considering the Respondent's communications with the Complainant claiming that the Domain Name is being used in relation to a fan site, the Panel does not find that the Respondent is using the Domain Name to resolve to a fan site, but that it is a pretext for commercial advantage as shown by the offer to sell the Domain Name made by the Respondent to the Complainant following the cease-and-desist letter sent by the Complainant.
According to the evidence, the Respondent made use of the Complainant's trademark in the website to which the Domain Name resolved and included a copyright notice stating "[Copyright] 2016 Oculus Rift"). Taking into account that the Domain Name is identical to the Complainant's trademark, the Panel considers that on the balance of probabilities the Respondent used the Domain Name to misrepresent that the Domain Name is related to the Complainant, or connected and/or associated with the Complainant. The Panel notes that the Respondent has not sought to file any substantive response to the Complainant's contentions in this regard.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name in accordance with paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
The Panel finds that the Respondent must have been aware of the Complainant's trademark and its business when he registered the Domain Name. The Complainant has used and established common law rights in its trademark before the registration of the Domain Name. There is also further evidence in the Complaint of the Respondent's knowledge of the Complainant's trademark at the time of registration of the Domain Name; the Respondent was the registrant for another domain name including the Complainant's trademark, registered on April 30, 2013, which the Respondent allowed to lapse and was subsequently registered by the Complainant.
The Respondent has initially offered to sell the Domain Name to the Complainant for USD 50,000 an amount clearly in excess of the Respondent's out-of-pocket costs associated with the Domain Name. The Panel finds this to be indicative of the Respondent's bad faith.
The Domain Name previously pointed to a website displaying the Complainant's trademark and a copyright notice in the name of the Complainant. This is a strong indication that the Respondent was attempting to create a false impression of association with the Complainant. The Panel finds that on the balance of probabilities the Respondent registered and has used the Domain Name with the intention of confusing Internet users into believing that the Domain Name is associated with the Complainant.
In the Response, the Respondent has not objected to the Complainant's allegations, but consented to the transfer of the Domain Name.
For the reasons set out above, the Panel concludes that the Domain Name was registered and is being used in bad faith, within the meaning of the paragraph 4(a)(iii) 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 Domain Name be transferred to the Complainant.
Mathias Lilleengen
Sole Panelist
Date: November 8, 2016
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