The Complainant is Facebook Technologies, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Abdirashid Abdillahi, Mataano, United Kingdom, self-represented. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2020. On May 13, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 14, 2020, 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 May 22, 2020. In accordance with the Rules, paragraph 5, the due date for Response was June 11, 2020. On May 25, 2020, the Respondent notified its current address to the Center. On June 10, 2020, the Respondent requested the Center to extend the Response due date. On the same date, the Center extended the due date for the Response to June 15, 2020, pursuant to paragraph 5(b) of the Rules. The Response was filed with the Center on June 15, 2020. On June 17, 2020, the Complainant filed a supplemental filing. On June 18, 2020, the Respondent also filed a supplemental filing. Having reviewed these supplemental filings, in accordance with paragraphs 10 and 12 of the Rules, the Panel decided to accept them as they dealt with a factual issue that was first raised by the Respondent in its Response and which the Complainant had to be given a chance to address. The Center appointed Assen Alexiev as the sole panelist in this matter on June 25, 2020. 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 the intellectual property rights holder for various technologies owned by its parent company Facebook, Inc. Until recently, the Complainant operated under the corporate name of its predecessor in interest Oculus VR LLC, which is a virtual reality technology company founded in 2012 that developed Oculus Rift, a virtual reality head-mounted display that uses advanced display technology enabling the sensation of presence and immersion. The Complainant markets and offers its Oculus virtual reality software and apparatus via its website at “www.oculus.com”. The Complainant owns the following trademark registrations for the sign OCULUS VR (the “OCULUS VR trademark”): - the International trademark OCULUS VR with registration No. 1185439, registered on June 26, 2013 for goods in International Class 28; The Complainant is also the owner of the domain names The disputed domain name was registered by the Respondent on March 26, 2014. It resolves to an undeveloped website entitled “mataano get your daily dose!”. According to the evidence submitted by the Complainant, it used to resolve to a Godaddy parking page containing pay-per-click (“PPC”) links targeting the Complainant such as “The Oculus Rift”, “Oculus Rift Development Kit” or “Oculus Rift VR Headset”. 5. Parties’ Contentions A. Complainant The Complainant requests that the “without prejudice” correspondence exchanged between the Parties be fully considered by the Panel, and submits that the “without prejudice” rule generally does not apply in alternative dispute resolution proceedings for domain names, such as the Policy. The Complainant notes that the UDRP and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) do not specifically address the “without prejudice” rule, but the majority of decisions which have addressed this issue have rejected the application of privilege to “without prejudice” communications. The Complainant submits that the disputed domain name is identical to the Complainant’s OCULUS VR trademark, as it incorporates it in its entirety, and the “.tv” suffix is irrelevant when assessing whether the disputed domain name is identical or confusingly similar to the Complainant’s trademark. The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name, as it is not commonly known by the disputed domain name, is not an authorized dealer, distributor, or licensee of the Complainant, and has not been otherwise allowed by the Complainant to use the OCULUS VR trademark. According to the Complainant, the Respondent was not using the disputed domain name in connection with a bona fide offering of goods or services and has not made a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark. The Complainant submits that the disputed domain name was pointing to a GoDaddy parking website containing commercial PPC links from which the Respondent or a third party was obtaining financial gain. Further to the Complainant’s refusal to pay the Respondent in exchange for the transfer of the disputed domain name, it was redirected to an undeveloped website containing only the words “mataano get your daily dose” without any other substantive content. According to the Complainant, this use of the disputed domain name was an attempt by the Respondent to create the appearance of a legitimate interest and to mask its real intentions to sell the disputed domain name to the Complainant at a profit, as suggested by the Respondent’s assertions during its correspondence with the Complainant, in particular its expressed willingness to “accommodate an agreement for transfer of the Domain Name provided [the Complainant] provides a reasonable financial incentive to do so”. According to the Complainant, an offer to sell the disputed domain name to the Complainant or to a third party cannot constitute a bona fide offering, as the value obtained from the sale would be based on the Complainant’s goodwill and reputation. The Complainant adds that given the renown of the OCULUS VR trademark worldwide, including in the United Kingdom where the Respondent is based, it is not possible to conceive of any plausible active use of the disputed domain name by the Respondent or by a third party that would not be illegitimate, as it would result in a misleading diversion and taking of an unfair advantage of the Complainant’s rights. The Complainant asserts that the disputed domain name was registered and is being used in bad faith. It submits that the OCULUS VR trademark is highly distinctive and renowned throughout the world, and has been continuously and extensively used since 2012 in connection with virtual reality headsets and software. Given the Complainant’s renown and goodwill worldwide, including in the United Kingdom where the Respondent is based, the Respondent must have had knowledge of the Complainant’s rights at the time of registration of the disputed domain name on March 26, 2014, one day after Facebook, Inc. announced its plans of acquiring the company Oculus VR LLC, which plans were highly publicized. According to the Complainant, it is therefore unlikely that the Respondent registered the disputed domain name “for a specific project in March 2014. This was not related to Oculus VR, LLC. or Facebook Technologies, LLC or any products or services from either company”,as stated in the letter by the Respondent’s lawyer. Rather, the disputed domain name was chosen by the Respondent to capitalize on the Complainant’s goodwill and reputation. The Complainant adds that the Respondent also used to be the registrant of several other domain names infringing third-party trademarks such as The Complainant requests the transfer of the disputed domain name to the Complainant. B. Respondent The Respondent submits that the Complainant’s lawyers contacted it on January 14, 2020 and requested the transfer of the disputed domain name. The Respondent notes in this regard that the letter was sent six years after the registration of the disputed domain name. According to the Respondent, the Complainant did not provide in its letter sufficient grounds for the transfer of the disputed domain name, and asserts that there has been no infringement of the Complainant’s OCULUS VR trademark and the Respondent has not made any profit from the website at the disputed domain name for the last six years. The Respondent further maintains that there is no evidence that its website was set up for commercial gain or that it has attracted emails or messages from Internet users who have been misdirected. According to the Respondent, there has been no change in its website, as claimed by the Complainant. The Respondent also claims that the other domain names registered by it have not infringed third-party trademarks, as claimed by the Complainant, that they have lapsed four years ago and that some of them are currently available for registration. The Respondent states that it has not used the disputed domain name for offering services in relation to the products of the Complainant, and denies to have gained any profit from the disputed domain name, to have taken an unfair advantage of Internet users with the Complainant’s trademark in mind, or to have attempted to sell the disputed domain name. The Respondent refers to a letter sent on January 21, 2020 by the Respondent’s lawyer to the Complainant’s lawyer, which stated that the disputed domain name was initially registered for a specific project in March 2014, which was not related to the Complainant or to its products or services, and that after a fairly short period of time the Respondent no longer needed the disputed domain name for the specific project but had since then kept it dormant, pointing to a placeholder template website. According to the Respondent, there has been no commercial advertising on the associated website or commercial links from which the Respondent has gained any profit. In its supplementary submission, the Respondent questions the evidentiary value of the printout of its website dated December 10, 2019, submitted by the Complainant with its supplementary submission. 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 name: (i) the disputed domain name is 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 name; and (iii) the Respondent has registered and is using the disputed domain name in bad faith. In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case. By the Rules, paragraph 5(c)(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 […].” The Complainant requests that the “without prejudice” correspondence exchanged between the Parties be considered by the Panel, and submits that the “without prejudice” rule generally does not apply in the present proceeding. The Respondent has not taken a position on this issue, but has itself also submitted parts of the same correspondence with its Response and has referred to it in its pleadings. This is sufficient to satisfy the Panel that neither of the Parties objects to the inclusion of this correspondence in the case file and its consideration by the Panel. Nevertheless, the Panel is satisfied that, even if the without prejudice communication had been not considered by the Panel, it would not have affected the decision reached below. A. Identical or Confusingly Similar The Complainant has provided evidence and has thus established its rights in the OCULUS VR trademark. The Panel notes that a common practice has emerged under the Policy to disregard in appropriate circumstances the Top-Level Domain (“TLD”) section of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i). See section 1.11.1 of WIPO Overview 3.0. The Panel sees no reason not to follow the same approach here, so it will disregard the country-code Top Level Domain (ccTLD) “.tv” section of the disputed domain name. The relevant part of the disputed domain name for purposes of the first element is therefore the sequence “oculusvr”. It consists of the elements “oculus” and “vr”, and their combination can be regarded as identical to the OCULUS VR trademark, as spaces are not allowed in domain names for technical reasons. In view of the above, the Panel finds that the disputed domain name is identical to the OCULUS VR trademark in which the Complainant has rights. B. Rights or Legitimate Interests While the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the often-impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, 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. See section 2.1 of the WIPO Overview 3.0. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, stating that the Respondent is not commonly known by the disputed domain name, is not a licensee of the Complainant and has not been allowed by it to use the OCULUS VR trademark. The Complainant submits that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, but until recently has used it for a website containing PPC links referring to the Complainant’s products for commercial gain. Thus, the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent denies that the disputed domain name was registered to take advantage of the goodwill of the Complainant and of the OCULUS VR trademark and that it has obtained commercial gain from it, but has not explained why it had chosen the disputed domain name and for what purposes it was registered. The disputed domain name is identical to the OCULUS VR trademark and was registered one day after Facebook, Inc. announced its well publicized plans to acquire the company Oculus VR, LLC – the predecessor of the Complainant. The evidence submitted by the Complainant shows that it resolved to a webpage containing PPC links related to the Complainant’s products. The Respondent disputes the evidentiary value of these printouts of the website at the disputed domain name, but does not provide any evidence that its website had different content as of the dates of these printouts. In view of the above and in the lack of any contrary evidence in support of the allegations of the Respondent, the Panel is satisfied that it is more likely than not that the Respondent, being aware of the goodwill of the Complainant’s OCULUS VR trademark, has registered and used the disputed domain name in an attempt to exploit the goodwill of this trademark and the increased interest of the public immediately following the announcement of the acquisition of the Complainant’s predecessor by Facebook, Inc., in order to attract Internet users to the Respondent’s website and to expose them to PPC links related to the Complainant’s products for commercial gain, without the Complainant’s authorization or consent. To the Panel, such conduct is not legitimate and does not give rise to rights and legitimate interests of the Respondent in the disputed domain name. Therefore, the Panel finds that the Complainant has established on balance that the Respondent does not have rights or legitimate interests in the disputed domain name. 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 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 your website or location or of a product or service on your website or location.” The disputed domain name is identical to the OCULUS VR trademark, and was registered on the day after Facebook, Inc. announced its acquisition of the Complainant’s predecessor Oculus VR, LLC. As submitted by the Complainant, it was used for a website containing PPC links related to the products of the Complainant in an attempt by the Respondent to capitalize on the goodwill of the OCULUS VR trademark. The Complainant has further drawn attention to the fact that the Respondent had previously registered a number of other domain names incorporating third-party trademarks. The Respondent has alleged in its correspondence with the Complainant prior to the proceeding that the disputed domain name was registered for a project unrelated to the Complainant, but has not described what this alleged project was about and has not provided evidence. The Respondent has also disputed the evidentiary value of the printouts of its website submitted by the Complainant, but has not submitted any evidence that the website had different content at the same dates. As to the other domain names incorporating third-party trademarks referred to by the Complainant, the Respondent has not disputed that it has previously been their registrant and has not explained the purposes of the registration of such domain names by it. The Respondent has also not disputed that it has requested payment in exchange for the transfer of the disputed domain name to the Complainant. The Respondent points out that the Complaint was filed six years after the registration of the disputed domain name. However, as discussed in section 4.17 of the WIPO Overview 3.0, UDRP panels acting under the Policy have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits. In view of this and in the lack of any evidence to the contrary, the Panel finds that is more likely than not that by registering and using the disputed domain name, the Respondent has intentionally attempted to extract commercial gain from the goodwill of the Complainant’s OCULUS VR trademark and of the increased interest of Internet users in it following the announcement of the acquisition of the Complainant’s predecessor by Facebook, Inc. by attracting Internet users to the website at the disputed domain name by creating a likelihood of confusion with the Complainant’s OCULUS VR trademark as to the source of the Respondent’ website, and then exposing the attracted Internet users to PPC links related to the Complainant’s products for commercial gain. Additional support to this conclusion is given by the fact that the Respondent has registered a number of other domain names incorporating trademarks of third parties, and by the fact that the Respondent has requested payment for the transfer of the disputed domain name to the Complainant. Therefore, the Panel finds that the disputed domain name was registered and has been 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 name Assen Alexiev
- the European Union trade mark OCULUS VR with registration No. 011936961, registered on December 13, 2015 for services in International Class 42; and
- the United States trademark OCULUS VR with registration No. 4424543, registered on October 29, 2013 for goods in International Class 28.
Sole Panelist
Date: July 16, 2020
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