WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Oculus VR, LLC v. PrivacyGuardian.org / Vildan Erdogan

Case No. D2018-0464

1. The Parties

The Complainant is Oculus VR, LLC of Menlo Park, California, United States of America, represented by Hogan Lovells (Paris) LLP, France.

The Respondent is PrivacyGuardian.org of Phoenix, Arizona, United States / Vildan Erdogan of Ankara, Turkey.

2. The Domain Name and Registrar

The disputed domain name <oculusvenues.com> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 28, 2018. On March 1, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 2, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 6, 2018 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 on March 9, 2018.

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 of the Complaint, and the proceedings commenced on March 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 4, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 5, 2018.

The Center appointed Cherise Valles as the sole panelist in this matter on April 13, 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.

The Respondent is a privacy protection service. A third party is, in fact, behind the registration of the disputed domain name. Any reference to the Respondent shall be deemed to include the underlying registrant.

4. Factual Background

The Complainant is a virtual reality technology company founded in 2012 that developed Oculus Rift, a virtual reality head-mounted display using advanced technology that enables the sensation of presence and immersion. The Complainant was acquired by Facebook in 2014. The Complainant has developed goodwill and renown worldwide in connection with its trademarks for its virtual reality software and apparatus, as a result of their continuous and extensive use since at least April 2012.

The Complainant owns a number of trademarks worldwide for the term OCULUS, including the following:

- United States trademark No. 4891157 for OCULUS, registered on January 26, 2016, in class 28;

- European Union trademark No. 014185441 for OCULUS, registered on December 17, 2015, in classes 25, 35, 38, 41, 42 and 45; and

- International trademark No. 1219324 for OCULUS, registered on June 12, 2014, in class 28.

The Complainant also owns numerous domain names consisting of or including the term OCULUS under generic extensions such as <oculus.com> as well as under many country code extensions, such as <oculus.org.cn>, <oculus.co>, <oculus.co.in>, <oculus.co.ke>, <oculus.com.pe>, <oculus.com.es>, and <oculus.com.tw>.

In August 2012, the Complainant launched a campaign on Kickstarter, a crowdfunding platform online, to fund the development of its Oculus Rift product. This campaign raised USD 2.4 million from 9,522 online contributors. The success of the Kickstarter campaign was publicized online by both specialized and mainstream media publications. In 2016, the Complainant began shipping the first consumer version of the Oculus Rift virtual reality headset to customers in more than 20 countries and regions.

The Complainant has announced its intention to launch Oculus Venues in 2018 – this is a new virtual reality feature that will allow a large number of users to experience entertainment content at the same time. The term OCULUS VENUES is strongly associated with the Complainant, particularly in connection with virtual reality headsets. All search results obtained by typing the term “oculus venues” in Google’s search engine refer to the Complainant.

The disputed domain name was registered by the Respondent on October 11, 2017, the day the Complainant announced the launch of Oculus Venues and when the Complainant filed a European Union trademark application for the same term. The disputed domain name resolves to a website offering the disputed domain name for sale.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that each of the elements enumerated in paragraph 4(a) of the Policy and the corresponding provisions in the Rules have been satisfied. In particular, the Complainant asserts that:

The disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.

- The disputed domain name is identical to the Complainant’s registered trademark, OCULUS, in light of the fact that it wholly incorporates the Complainant’s mark.

The Respondent lacks rights or legitimate interests in the disputed domain name.

- The Complainant states that the Respondent should be considered as having no rights or legitimate interests in the disputed domain name. The Complainant has never licensed or otherwise permitted the Respondent to use its trademarks or to register any domain name that included its trademarks.

The disputed domain name has been registered and is being used in bad faith.

- The Complainant asserts that the disputed domain name was registered and is being used in bad faith. The mere fact of registration of a domain name that is confusingly similar or identical to a famous trademark by an entity that has no relationship to that mark is itself evidence of bad faith registration and use.

The Complainant requests the Panel to issue a decision finding that the disputed domain name be transferred to the Complainant, in accordance with paragraph 4(i) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy provides specific remedies to trademark owners against registrants of domain names where the owner of the mark (a complainant) establishes each of the following elements:

(i) the domain name is identical or confusingly similar to a trademark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name was registered and is being used in bad faith.

The Complainant has the burden of proof in establishing each of these elements.

The Respondent has failed to file a Response in this proceeding and is therefore in default and the Panel may draw appropriate inferences from the available evidence submitted by the Complainant.

A. Identical or Confusingly Similar

To prove this element, the Complainant must have trademark rights and the disputed domain name must be identical or confusingly similar to the Complainant’s trademark.

The Complainant is the sole and exclusive owner of multiple registrations worldwide for the trademark OCULUS, as indicated in Section 4 above.

The disputed domain name wholly incorporates the Complainant’s OCULUS registered mark. Earlier UDRP decisions have held that when a domain name wholly incorporates a complainant’s registered trademark, it is sufficient to establish identity or confusing similarity for the purpose of the Policy. See, e.g., Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525.

The addition of the term “venues” to the Complainant’s OCULUS trademark does nothing to lessen the confusing similarity with the Complainant’s mark, given the Complainant’s public announcement of the launch of a new service called Oculus Venues. The disputed domain name is therefore likely to cause confusion amongst Internet users. Previous UDRP panels have held that when the Complainant’s OCULUS mark is combined with another word and the two words together form the name of one of the Complainant’s products, Internet users are likely to have the impression that a disputed domain name composed of those two words is related to the Complainant and is dedicated to the product in question. See Oculus VR, LLC v. Levickii Vitalii Jurevich, Levickaja Valentina Vasilevna / Privacy protection service - r01.whoisproxy.ru, WIPO Case No. D2016-2284.

Previous UDRP panels have held that the top-level suffix “.com” is generally irrelevant when assessing whether a domain name is identical or confusingly similar to a trademark as it is a functional element.

In the light of the foregoing, the Panel finds that the disputed domain name <oculusvenues.com> is confusingly similar to the Complainant’s registered mark and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

The burden of proof is on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. Under the UDRP, if a prima facie case is established by the Complainant, then the burden of production of evidence shifts to the Respondent to demonstrate that it has rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy enumerates three non-exclusive ways in which a respondent may demonstrate rights or legitimate interests in a domain name (with “you” referring to the respondent):

“[a]ny of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Respondent did not submit a response or attempt to demonstrate any rights or legitimate interests in the disputed domain name, and the Panel draws adverse inferences from this failure, where appropriate, in accordance with the Rules, paragraph 14(b).

Previous UDRP panels have established that in order to shift the burden of production to the Respondent, it is sufficient for the Complainant to make a prima facie showing that the Respondent has no right or legitimate interest in the disputed domain name. See, e.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064.

The Respondent is not a licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make any use of the OCULUS trademark, in a domain name or otherwise. There is no commercial relationship between the Complainant and the Respondent that would entitle the Respondent to use or register the disputed domain name.

The disputed domain name has not been used in connection with bona fide offerings of goods or services. As at the filing date of the Complaint, the dispute domain name redirected to a webpage advising that the disputed domain name was for sale at a price of USD 9,550. Previous UDRP decisions have held that when the parking website itself offers a disputed domain name for sale, this indicates that a respondent may not intend to operate, or begin to operate, a legitimate bona fide business using the disputed domain name. See, for example, Merck Sharp & Dohme Corp., MSD Consumer Care, Inc. v. Michael Johnson, THIS DOMAIN NAME IS FOR SALE, WIPO Case No. D2014-0172. Furthermore, there is no evidence that the Respondent has made any preparations to use the disputed domain name in connection with a bona fide offering of goods or services.

The Respondent cannot claim to have been using the OCULUS trademark without having been aware of the Complainant’s rights to it, given the notoriety surrounding the OCULUS trademark and the fact that the term Oculus Venues is exclusively associated with the Complainant. Moreover, the Respondent’s registration of the disputed domain name on the same day as the Complainant’s announcement of its forthcoming Oculus Venues service is unlikely to have been coincidental. This suggests that the Respondent’s interests cannot be legitimate.

The Respondent’s use of the disputed domain name, which identically reproduces the Complainant’s OCULUS trademark with the addition of the term “venues”, to redirect to a webpage advising that it is for sale for a fixed price, is intended to misleadingly divert consumers for commercial gain, rather than for use in a fair or legitimate manner.

Finally, given the renown of the Complainant’s OCULUS mark worldwide, it is difficult to conceive of any plausible actual or contemplated active use of the disputed domain name by the Respondent (or a third party) that would not be illegitimate, as any such use would likely result in misleading diversion of Internet users away from the Complainant’s legitimate websites.

In the light of the foregoing, the Panel finds that the Complainant has established an unrebutted prima facie case and concludes that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct;

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line 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 its website or location.

Given the Complainant’s renown worldwide, it would be difficult for the Respondent to argue that it did not have knowledge of the Complainant’s OCULUS trademark at the time of registration of the disputed domain name. The timing of the registration of the disputed domain name clearly indicates that the Respondent was intending to capitalize on the announcement of the Oculus Venues feature and the increased commercial value of the disputed domain name. Previous UDRP panels have found in similar circumstances that a respondent of a disputed domain name had actual knowledge of the complainant’s mark and rights and therefore that the respondent had registered the disputed domain name in bad faith. See Bayer AG v. Whois Agent, Whois Privacy Protection Service, Inc. / Syed Hussain, IBN7 Media Group,D2016-2354.

The Respondent appears to have registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant or to a competitor, for valuable consideration. Previous UDRP panels have drawn such a conclusion when examining a disputed domain name advertising that it is for sale. See, e.g., Sanofi v. Contact Privacy Inc. Customer 0132380420 / ICS inc., WIPO Case No. D2013-0367. The fact that the disputed domain name resolves to a website offering the disputed domain name for sale indicates that the Respondent is attempting to obtain commercial gain derived from the confusion caused to Internet users by the similarity between the Complainant’s OCULUS trademark and the disputed domain name.

The Respondent’s failure to respond to letters from the Complainant can be considered as evidence of the Respondent’s bad faith, in accordance with previous UDRP panel decisions. See, e.g. E. Remy Martin & C° v. Zhang Xiao, WIPO Case No. D2017-2102.

The use of a privacy protection service when registering the disputed domain name is further evidence of the Respondent’s bad faith. In the absence of any explanation from the Respondent, the Panel finds that the use of such a service by the Respondent was intended to make it difficult for a brand owner to protect its trademarks against infringement, dilution and cybersquatting.

Accordingly, the Panel concludes that the Complainant has satisfied its burden of showing bad faith registration and use of the disputed domain name under 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 disputed domain name <oculusvenues.com> be transferred to the Complainant.

Cherise Valles
Sole Panelist
Date: April 25, 2018