The Complainant is Oculus VR, LLC of Menlo Park, California, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Oculus Rift SRL-D of Suceava, Romania. 2. The Domain Name and Registrar
The disputed domain name is registered with ROTLD (the “Registrar”). 3. Procedural History
The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 22, 2018. On October 23, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 24, 2018, 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.
Pursuant to the Complaint submitted in English and the registrar verification dated October 24, 2018 stating that Romanian is the language of the registration agreement of the disputed domain name, on October 24, 2018, the Center sent a request in English and Romanian that the Parties submit their comments on the language of the proceeding. On October 24, 2018, the Complainant submitted its request for English to be the language of the proceeding. The Respondent did not submit any request regarding the language of the proceeding.
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 in English and Romanian of the Complaint, and the proceedings commenced on November 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 27, 2018.
The Center appointed Mihaela Maravela as the sole panelist in this matter on December 7, 2018. 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 Oculus VR, LLC, a virtual reality technology company founded in 2012, that developed Oculus Rift, a groundbreaking virtual head-mounted display that uses advanced display technology enabling the sensation of presence and immersion. Acquired by Facebook in March 2014, the Complainant rapidly acquired and developed considerable goodwill and renown worldwide, in connection with virtual reality software and apparatus, notably including the headsets Oculus Rift.
The Complainant has made substantial investments to develop a strong presence online by being active on the different social media forums, such as Facebook, Instagram, Twitter, YouTube, Twitch and LinkedIn. The Complainant is the owner of numerous domain names consisting of the term OCULUS RIFT or OCULUS VR under various generic extensions as well under many country code extensions.
The Complainant is the exclusive owner of a number of registered trademarks consisting of the word OCULUS RIFT and OCULUS VR in various jurisdictions throughout the world, including the following:
- the European Union Trademark for the word OCULUS RIFT with registration number 1186832 registered as of June 26, 2013,
- the European Union Trademark for the word OCULUS VR with registration number 011936961 registered as of December 13, 2015.
The disputed domain name was registered on February 29, 2016 and does not resolve to an active page at the date of the decision. The website used to point to a website promoting the Respondent’s virtual reality arcades featuring the Complainant’s Oculus Rift headset, but the content was taken down after the Complainant delivered a cease-and-desist letter to the Respondent in the summer of 2018. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its OCULUS RIFT and OCULUS VR trademarks in which the Complainant has rights since the disputed domain name incorporates the Complainant’s OCULUS RIFT and OCULUS VR trademarks in their entirety.
With regard to the second element, the Complainant argues that the Respondent has no rights or legitimate interest in the disputed domain name. The Respondent is not a licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make any use of its OCULUS-related trademarks in a domain name or otherwise. The Respondent cannot invoke that it used the disputed domain name in connection with a bona fide offering of goods or services since the disputed domain name was used by the Respondent to point to a website prominently displaying, at the top of the screen, a logo which had the same “look and feel” as the Complainant’s previous logo and falsely indicating on the “contact” page of the website that the Complainant was one of the Respondent’s partners. The Complainant argues that such use of the disputed domain name to resolve to a website deliberately giving the false impression to Internet users that it was affiliated, authorized or sponsored by the Complainant cannot constitute a bona fide offering of goods and services under the Policy. Moreover, according to the Complainant, the Respondent cannot claim that it is commonly known by the disputed domain name given the notoriety surrounding the OCULUS RIFT and OCULUS VR trademarks; the Respondent cannot rely on its company name to claim that it is commonly known by the disputed domain name since the name was chosen further to the Complainant’s registration of its European Union OCULUS RIFT and OCULUS VR trademarks. The Respondent’s use of the disputed domain name to point to a website referring to VR apparatus unrelated to the Complainant cannot be considered as legitimate use under the Policy, as Internet users visiting the website may be redirected to other competing brands.
On the third element, the Complainant argues that the OCULUS RIFT and OCULUS VR trademarks are highly distinctive and renowned throughout the world, and have been continuously and extensively used since 2013 in connection with virtual reality headsets, having rapidly acquired considerable goodwill and renown worldwide, hence the Respondent must have had knowledge of the Complainant’s trademarks at the time of the registration of the disputed domain name in 2016. The Respondent’s incorporation in Romania under the name “Oculus Rift”, which is exclusively associated with the Complainant one month before the registration of the disputed domain name and the subsequent use of the disputed domain name to point to a website referring to the Complainant’s Oculus Rift headsets leave no doubt as to its awareness of the Complainant’s rights at the time of the registration of the disputed domain name.
The Complainant further submits that the disputed domain name was used to intentionally attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark. As regards the fact that the Respondent took action to take down the website associated with the disputed domain name further to the Complainant’s cease-and-desist letters and the disputed domain name is currently passively held does not cure the Respondent’s bad faith, notably given the Complainant’s reputation and its exclusive association with the terms OCULUS RIFT and OCULUS VR. The Respondent’s failure to reply to the Complainant’s cease-and-desist letters should be considered as additional evidence of the Respondent’s bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Noting the fact that the Respondent has not filed a Response, the Panel shall consider the issues present in the case based on the statements and documents submitted by the Complainant.
“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”, paragraph 15(a) of the Rules.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following elements:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name was registered and is being used in bad faith. 6.1. Language of the Proceeding
As regards the question of the language applicable to this dispute, paragraph 11(a) of the Rules provides:
“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 Panel has the discretion to decide otherwise having regard to the circumstances of the case.
The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” See, Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004.
In the present case, the Panel notes the following:
- the Registrar of the disputed domain name has informed the Center that the language of the Registration Agreement is Romanian,
- the Complainant has filed the Complaint in English, and following the Language of Proceedings Notification of the Center dated October 24, 2018, the Complainant confirmed on the same date its request for English to be the language of the proceedings, arguing, inter alia, that the disputed domain name incorporates the Complainant’s OCULUS RIFT trademark with the addition of the letters “vr”, which stand for the English term “virtual reality”, that the disputed domain name used to point to a website displaying the Respondent’s logo which contains the English term “virtual reality”, and it would be disproportionate to require the Complainant not to submit the Complaint in English as this would result in additional expense and unnecessary delay for the Complainant;
- the Respondent did not file a Response and did not oppose to the request of the Complainant that English be the language of the proceedings.
According to the Rules, paragraph 11(a), based on the circumstances of this case and as previously decided by other UDRP panels (see, e.g., Nilfisk-Advance A/S v. SC Getic Decor SRL,WIPO Case No. DRO2009-0007), the Panel finds that the language of the present proceeding should be English, for the following reasons:
- The Complainant requested for English to be the language of the administrative proceedings;
- terms in English language were included on the website to which the disputed domain name used to resolve according to the evidence put forward by the Complainant;
- the Respondent has failed to raise any objection or even to respond to the Complaint or the Center’s communication with regard to the language of the proceedings even though communicated in Romanian and in English (see LEGO Juris A/S v. Ilie Cezar,WIPO Case No. DRO2011-0010); 6.2. Substantive Issues A. Identical or Confusingly Similar
The Complainant must establish that it has a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark for the Complainant to succeed.
Given the evidence put forward by the Complainant, the Panel is satisfied that it proved it has rights over the OCULUS RIFT and OCULUS VR trademarks.
As regards the question of identity or confusing similarity for the purpose of the Policy, it requires a comparison of the disputed domain name to the trademarks in which the Complainant holds rights.
Numerous prior UDRP decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trademark. See, Aldermore Bank Plc v. Hildegard Gruener,WIPO Case No. D2016-1617.
Here the disputed domain name incorporates in its entirety the Complainant’s OCULUS RIFT and OCULUS VR trademarks.
It is well accepted by UDRP panels that a country-code Top-Level Domain (“ccTLD”), such as “.ro”, is typically ignored when assessing whether a domain name is identical or confusing similar to a trademark.
This Panel concludes that the disputed domain name is confusingly similar to the trademarks of the Complainant and therefore finds that the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests
Under paragraph 4(c) of the Policy, any of the following circumstances, if found by the Panel, may demonstrate the respondent’s rights or legitimate interests in the disputed domain name:
(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 trademark 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 trademark or service mark at issue.
The consensus view of UDRP panels on the burden of proof under paragraph 4(a)(ii) of the Policy is summarized in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), which states: “[…] where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element.”
In the present case the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has established that it holds rights over the trademarks OCULUS RIFT and OCULUS VR and claims that the Complainant has not licensed or authorized the Respondent to use the OCULUS RIFT or OCULUS VR trademarks.
There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. Rather, according to the unrebutted evidence put forward by the Complainant, the Respondent used the disputed domain name for a website displaying, at the top of the screen, a logo which had the same “look and feel” as the Complainant previous logo, and falsely indicating on the “contact page” of the website that the Complainant was one of the Respondent’s partners; the website was used to attract internet users to the Respondent’s own website promoting its virtual reality (“vr”) arcades in Romania and offering VR-related products for sale.
In the Panel’s view the Respondent used the disputed domain name to impersonate the Complainant, and misleadingly attracted consumers to its website by creating the false impression that it was affiliated with, authorized by, or sponsored by the Complainant. For a similar finding see Oculus VR, LLC v. Jesica Pecellin and Adan Casado Noguero,WIPO Case No. D2018-0456.
Also, according to the evidence put forward by the Complainant, the Respondent used the disputed domain name to point to a website referring to “vr” apparatus (such as “vr box”) unrelated to the Complainant and the Internet users visiting the website might have been redirected to other competing brands. In the Panel’s view, and given that the Respondent has failed to put forward any explanation, such use cannot amount to bona fide offering of goods or services in the meaning of the Policy.
By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate any rights or legitimate interests in the disputed domain name. See for a similar finding Virgin Enterprises Limited v. Name Redacted,WIPO Case No. D2018-0970.
In the absence of a response or defense by the Respondent, the Panel gives prevalence to the Complainant’s affirmation that no license or authorization was ever given to the Respondent to use the trademarks OCULUS RIFT or OCULUS VR.
An issue to be addressed here is the rights which the Respondent might be said to be holding in any trade name similar to the disputed domain name. As such, it appears that the Respondent was incorporated under the trade name Oculus Rift SRL (SRL standing for limited liability company in the Romanian language). Such incorporation name comprises the OCULUS RIFT trademark of the Complainant and was done shortly before the registration of the disputed domain name.
Paragraph 4(c)(ii) of the Policy indicates that a party may demonstrate rights or legitimate interests in a domain name as a consequence of having been commonly known by the domain name. It is reasonable to presume that a party owning rights in a trademark has been known by the trademark, and thus by an identical domain name. However, that presumption is not conclusive. It is sometimes the case that a domain name registrant has registered a trademark in circumstances indicating that the registrant was seeking to take unfair advantage of the owner of previously existing trademark rights. See, e.g., Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847. The Panel considers that this conclusion is also applicable in case respondents might invoke rights in trade names.
The Panel finds that the facts in this case indicate that the Respondent registered its trade name to facilitate taking unfair advantage of the Complainant’s previously existing trademark rights in OCULUS RIFT:
- the Respondent is acting in the field of selling virtual reality products which is the activity of the Complainant;
- the Respondent used the disputed domain name to promote its products and services – using the OCULUS RIFT and OCULUS VR trademarks on the website corresponding to the disputed domain name,
- the Respondent appears to acknowledge trademark infringement since it has taken down the website to which the disputed domain name resolved further to receiving a cease-and-desist letter from the Complainant.
The Panel agrees with the conclusions of well-learned panelists in Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “M”,WIPO Case No. D2000-0847 that “these circumstances do not demonstrate a legitimate interest or right in the domain names, and instead suggest that Respondent lacks any real interest in the domain names apart from its association with Complainant. Further, we do not believe these circumstances satisfy the provisions of Paragraph 4(c)(iii), which applies to situations where the Respondent is actually making noncommercial or fair use of the domain name.”
In the circumstances of this particular case, the Panel finds that the Respondent registered the disputed domain name to profit from the Complainant’s trademark goodwill and reputation, which is incompatible with making a legitimate, noncommercial or fair use of the disputed domain name. For a similar finding see LEGO Juris A/S v. FUNDATIA LEGO SCHOOL, Pre-School Educational Center Foundation and CENTRUL EDUCATIONAL LEGO DACTA, Lego Dacta Educational Center,WIPO Case No. DRO2012-0008.
With the evidence on file, the Panel finds that the requirement of paragraph 4(a)(ii) of the Policy is satisfied. C. Registered and Used in Bad Faith
To fulfill the third requirement of the Policy, the Complainant must prove that the disputed domain name was registered and is being used in bad faith.
After reviewing the website to which the disputed domain name used to resolve, according to the evidence submitted by the Complainant, it appears that the website was used to promote virtual reality products by the Respondent by using the OCULUS RIFT and OCULUS VR trademarks and logo. These facts have been considered by this Panel to be proof of registration in bad faith, with the intention of creating confusion with the Complainant’s services for commercial gain.
The trademarks OCULUS RIFT and OCULUS VR are well-known (Oculus VR, LLC v. Jesica Pecellin and Adan Casado Noguero, supra and the decisions cited therein). Therefore, the Respondent is most likely to have known of the Complainant, its products and trademarks prior to registering the disputed domain name.
Additional factors retained by the Panel as indicative of bad faith registration and use of the disputed domain name include:
- the Respondent’s failure to respond to the Complaint and provide any evidence of bona fide registration and use (see Awesome Kids LLC and/or Awesome Kids L.L.C. v. Selavy Communications,WIPO Case No. D2001-0210);
- the Respondent’s failure to act upon the Complainant’s cease-and-desist letter, requesting voluntary transfer;
- the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain name; rather, as it appears from evidence on the file, the use of the disputed domain name was made for commercial purpose by trading off on the fame of the trademarks of the Complainant,
- also, as noted above, the Panel has concluded that the Respondent had knowledge of the Complainant’s trademarks at the time of registration of the disputed domain name. The Respondent provided no explanations for which it registered the disputed domain name other than it results from the evidence on the file.
The disputed domain name is currently inactive. This does not prevent a finding of bad faith under the doctrine of passive holding (see WIPO Overview 3.0, section 3.3), especially in the circumstances of the case where the disputed domain was used in bad faith clearly targeting the Complainant. For a similar finding see Oculus VR, LLC v. Jesica Pecellin and Adan Casado Noguero, supra.
Therefore, the Panel finds that the Respondent registered and is using the disputed domain name 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 name be transferred to the Complainant.
Mihaela Maravela
Sole Panelist
Date: December 21, 2018
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