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 Alexey Slobodchicov of Novosibirsk, Russian Federation / Michail Molovzorov of Moscow, Russian Federation.
The disputed domain name <oculusgo.biz> is registered with Network Solutions, LLC (the “Registrar”). The disputed domain name <oculusgo.me> is registered with GoDaddy.com, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2018. On September 25, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On September 25, 2018, the Registrar GoDaddy.com, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On September 26, 2018, the Registrar Network Solutions, LLC transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 27, 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 September 28, 2018. On September 28, 2018, the Center received an informal email communication from the Respondent.
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 October 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was October 22, 2018. On October 2, 2018, and October 23, 2018, the Center received informal email communications from the Respondent.
The Center appointed William A. Van Caenegem as the sole panelist in this matter on October 31, 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 Complainant has rights to numerous trademark registrations for the marks OCULUS and OCULUS GO in many jurisdictions, including United States Trademark No. 4891157, OCULUS, registered on January 26, 2016 (first use in commerce March 27, 2013); European Union Trademark No. 014185441, OCULUS, registered on December 17, 2015; International Trademark No. 1219324, OCULUS, designating among others the Russian Federation and registered on June 12, 2014; European Union Trademark No. 017314139, OCULUS GO, application filed on October 11, 2017 and registered on August 11, 2018; and United States Trade mark No. 5443890 (consisting of a stylized image of the letter “O”), application filed on March 1, 2016 and registered on April 10, 2018. The Complainant’s trademarks are used in connection with virtual reality software and apparatus.
The Complainant submits that the proceedings concerning the disputed domain names <oculusgo.me> and <oculusgo.biz> should be consolidated as the respondents are either one and the same person or acting in concert. The Complainant submits that in accordance with prior panel decisions and WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2, the disputed domain names are subject to common control and it would be fair and equitable to all parties to consolidate the proceedings. The Complainant points to a number of factors in support of this submission. First, in relation to common control, that both Respondents are based in the Russian Federation; both disputed domain names are hosted on the same Domain Name Servers; both disputed domain names have the same pattern of the Complainant’s mark and the generic term “go”; both disputed domain names were registered within five days of one another; on May 10, 2018, the contact details of the both Respondents were very similar, the first Respondent being Alexey Slobodchicov and the second Aleksei Slobodchikov, their addresses being in the same city and country with slightly different numbers and zipcodes; and the registrant information transferred by WIPO Center further to the Complainant’s filing of the Complaint revealed that the Second Respondent appears to be attempting to hide his true identity. On May 10, 2018, the registrant of <oculusgo.biz> was Aleksei Slobodchikov whose address was in Novosibirsk, the Russian Federation. On September 27, 2018, according to the registrant information transferred by WIPO Center further to the Complainant’s filing of the Complaint, the registrant of the Domain Name <oculusgo.biz> is henceforth Michail Molovzorov whose address was a location in Moscow, the Russian Federation. However, the Complainant points out that both the historical and the current WhoIs records provide the same telephone number and the same email address and thus it is likely that the registrant has in reality not changed. Further, the disputed domain name <oculusgo.me> is currently redirecting to the website associated with <oculusgo.biz>, and <oculusgo.biz> is used to point to a website which contained a reference to the email address […]@oculusgo.me. The Complainant also points out that the Respondent expressly offered the disputed domain name <oculusgo.biz> for sale using the email address [...]@oculusgo.me.
Further the Complainant contends that there is no apparent reason why it would not be equitable to allow the Complainant to file a single Complaint against the two Respondents, as the Complainant’s substantive arguments against both Respondents are the same, and the relevant filings, including annexes, are not unreasonably voluminous.
The Complainant, Oculus VR, LLC, was founded in 2012 and developed Oculus Rift, a virtual reality head‑mounted display. It was acquired by Facebook in March 2014, and according to the Complainant, has acquired considerable goodwill worldwide, in connection with virtual reality software and apparatus, including Oculus Rift and the Oculus Go stand-alone helmets. The Complainant asserts that its OCULUS trademarks have acquired considerable goodwill and reputation worldwide as a result of their continuous and extensive use since at least April 2012. The Complainant’s products were introduced at various industry events and generated, according to the Complainant, considerable industry buzz and recognition. It introduced its Oculus Rift and Oculus Touch products to the market in 2016, shipping around the world, and its Oculus Go product was released in 2018. The Complainant points out that domain names consisting of its OCULUS trademarks are the heart of its entire business and the main way for millions of users to avail themselves of its services. It owns numerous domain names consisting of or including the term “OCULUS” under generic extensions, such as <oculus.com> and <oculusgo.com> as well as under many country-code extensions, which the Complainant lists. The Complainant also asserts that it is active on social media in various guises. The fame of its trademarks is said also to be evinced by the number of cyber squatters who have sought to exploit its very significant consumer recognition and goodwill. The Complainant lists ten UDRP panel decisions in this regard.
The Complainant points out that it also owns numerous trademark registrations for the terms “OCULUS” and “OCULUS GO” in different jurisdictions, and that it devotes significant resources to protecting its trade mark rights and goodwill in forums such as the present administrative proceeding. According to the Complainant the disputed domain name <oculusgo.biz> currently points to a website in Russian purporting to offer the Complainant’s Oculus Go headsets for sale. It prominently displays the Complainant’s distinctive logo at the top of the screen and contains the mention in Russian “official website” in the tab at the top. It has the same “look and feel” as the Complainant’s official websites, as it uses videos simulating the genuine virtual reality experience and unauthorised reproductions of text and images from the Complainant’s official website. The Complainant also points out that the disputed domain name <oculusgo.me> is redirecting to the website at “www.oculusgo.biz”.
The Complainant asserts that on May 25, 2018, it sent two notices to the Respondent asserting its Oculus trade mark rights and requesting that the Respondent stop using its trademarks and disable the relevant websites before June 1, 2018. On the same day the Respondent replied that he would not comply unless the Complainant offered a “reward”, to which the Complainant responded on May 31, 2018 by refusing to offer rewards or reimburse expenses. The Respondent then replied that he was actually suggesting that the Complainant buy the disputed domain name <oculusgo.biz> and that he would not stop using it. No answer was received concerning the Domain Name <oculusgo.me>.
The Complainant asserts that it has rights in the terms “OCULUS” and “OCULUS GO”, as demonstrated by its registered trademarks referred to above. The Complainant contends that the disputed domain names are identical or confusingly similar to its registered trademarks. Its trademarks are incorporated in their entirety and the suffixes .me and .biz are of no consequence in the comparative exercise.
The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names. It is not an authorised dealer, distributor, or licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make any use of the OCULUS or OCULUS GO trademarks, including in the disputed domain names. Further, the Respondent cannot, according to the Complainant, assert that it is using the disputed domain names in connection with a bona fide offering of goods and services in accordance with paragraph 4(c)(i) of the Policy. Use of a domain name to point Internet users to an unauthorized look-alike website cannot be considered bona fide offering of goods or services as the website gives the false impression that it is an official site of the Complainant. For the same reasons the Respondent cannot, according to the Complainant, assert that it is making a legitimate noncommercial use of the disputed domain names. Additionally, the disputed domain names point to a website that is clearly commercial in nature.
As the terms “OCULUS” and “OCULUS GO” are said to be exclusively associated with the Complainant, the latter maintains that the Respondent cannot conceivably claim that he is commonly known by the disputed domain names, nor has it secured any trademark rights in those terms. The website to which the disputed domain names resolve refers to “Oculus Inc.”, but the Complainant asserts that the Respondent does not own or control a company by this name. This is simply another ploy of the Respondent to confuse Internet users and pass itself off as the Complainant.
The Complainant points out that its relevant trademark registrations predate the registration of the disputed domain names by a number of years. Further, given the fact that the Respondent has established a look-alike website which includes representations of the Complainant’s marks, it can hardly have been ignorant of the Complainant’s rights. The registration of the disputed domain names also coincided with the launch of the Complainant’s OCULUS GO headset. According to the Complainant the Respondent has also engaged in a pattern of conduct within the meaning of paragraph 4(b)(ii) of the Policy by registering the presently considered domain names and the domain <snapchatrussia.com>.
Further, the Complainant submits that, given the factual circumstances described above, there is no reason why the Respondent is using the disputed domain names except to seek to cause confusion amongst Internet users as to the source of the relevant website. The confusion caused by the nature of the domain names themselves is said to be exacerbated by the characteristics of the website to which they resolve, as it prominently displays the Complainant’s trademark and logo and has the same “look and feel” as the Complainant’s official website, and there are no disclaimers or distinguishing elements present.
Furthermore, according to the Complainant, the fact that the Respondent first offered to transfer <oculusgo.biz> in exchange for a “reward”, then stated that he would not stop using it and suggested that the Complainant buy it constitutes a strong indication of bad faith under the Policy. The Complainant also says that the fact that the Respondent has deliberately chosen to conceal his identity by means of a privacy protection service is another strong indication of bad faith.
In two emails to the Center the Respondent makes various points that can be construed as a Response. The Respondent says he intended to start selling Oculus products himself, wanting to make them more popular in the Russian Federation. He also says he was not in fact able to sell any items himself in the Russian Federation but redirected all users to the Complainant’s site. He also says he gave purchasers instructions on how to buy or obtain the Oculus helmets as they were not in fact obtainable in the Russian Federation from the Complainant’s website.
He also maintains that he turned off the relevant website.
The Panel considers that consolidation of the proceedings in relation to the disputed domain names <oculusgo.biz> and <oculusgo.me> is warranted in the interests of procedural efficiency. There are strong indications that the two disputed domain names are under common control, or are in reality held by one and the same Respondent. In particular, both domain names follow the same pattern of affixing the word “go” to the trademark OCULUS of the Complainant; they are hosted on the same domain name server; the contact details for both Respondents are very similar; the disputed domain name <oculusgo.me> is currently redirecting to the website associated with <oculusgo.biz>; and <oculusgo.biz> is used to point to a website which contained a reference to the email address […]@oculusgo.me. Most tellingly the Respondent offered the disputed domain name <oculusgo.biz> for sale using the email address […]@oculusgo.me.
There is no reason in fairness or equity not to consolidate the proceedings.
The disputed domain names are not identical to the Complainant’s various OCULUS trademarks. However, the distinctive mark OCULUS is contained in its entirety in each of the domain names, with the mere addition of the term “GO”. The Complainant’s trademark is clearly recognizable in both the disputed domain names. The additions of the term “GO” neither alters the meaning nor affect the recognition of the OCULUS trademark as combined with that term.
Therefore, the Panel holds that the disputed domain name is confusingly similar to the Complainant’s trademark OCULUS.
The Respondent was not licensed or authorized to use the OCULUS trademark of the Complainant in any form, or to include it in any registered domain names. According to the material before the Panel, the Respondent has used the disputed domain names to establish a website that deceptively mimics the appearance of the Complainant’s genuine web presence, and includes representations of its registered trademarks, and that without any authority to do so. It displays a deliberate misrepresentation that it is the Complainant’s official website. The disputed domain names and the relevant websites therefore amount rather to tools of deception than to legitimate reseller websites. In any case the Respondent admits that he has not in fact supplied any genuine products of the Complainant by way of his website.
The Respondent is also not known by the disputed domain names or by the term “OCULUS” or “OCULUSGO”, nor disposes of any rights resulting from commercial use or registration of the term “OCULUS”. The Respondent does not conduct any legitimate business by reference to the terms “OCULUS” or “OCULUSGO”. There is no evidence at all before the Panel of the Respondent making any noncommercial or fair use of the disputed domain names.
Therefore, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain names.
The Respondent registered the disputed domain names at a time when the Complainant’s goodwill in the mark OCULUS was already well established, in particular on the Internet. It is apparent from the composition of the disputed domain name, and the multiplicity of similar registrations, that the Respondent was perfectly aware of what he was doing, and deliberately disregarded the prior rights of the Complainant in the OCULUS marks. That conclusion is only reinforced by the fact that the Respondent mimics the Complainant’s web presence on the website to which the disputed domain names resolve, and includes the Complainant’s registered trademark OCULUS without any permission whatsoever to do so, going so far as to falsely claim in express terms that the website is “official”. The tendency of the relevant website is to deceive Internet users into thinking that it is connected with or is a genuine website of the Complainant.
Furthermore, the Respondent has offered to sell the disputed domain names or at least one of them, back to the Complainant for a considerable sum. This further indicates the bad faith of the Respondent, and that this is a typical example of cybersquatting, that is, deliberate misappropriation of another party’s registered trademark and its attendant goodwill for monetary gain.
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 names <oculusgo.biz> and <oculusgo.me> be transferred to the Complainant.
William A. Van Caenegem
Date: November 13, 2018
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