WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Oculus VR, LLC v. Jesica Pecellin and Adan Casado Noguero

Case No. D2018-0456

1. The Parties

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

The Respondents are Adan Casado Noguero and Jesica Pecellin of Seville, Spain, self-represented.

2. The Domain Names and Registrars

The disputed domain names <oculusglasses.com> and <oculuspain.com> are registered with Cronon AG. The disputed domain name <oculusgo.com> is registered with Nominalia Internet S.L., and the disputed domain name <socialoculus.com> is Arsys Internet, S.L. dba NICLINE.COM (the "Registrars").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 27, 2018. On February 28, 2018, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On March 2, March 5 and March 9, 2018, the Registrars transmitted by email to the Center their verification response confirming that the Respondents are listed as the registrants and providing their contact details.

The Complaint was submitted in the English language. The language of the Registration Agreement for the disputed domain names is Spanish. On March 13, 2018, the Center sent a language of proceeding communication in both Spanish and English to the Parties. On March 13, 2018, the Complainant submitted a request for English to be the language of proceeding. Respondent did not reply to the Center's notification or the Complainant's submission.

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 Respondents of the Complaint, and the proceedings commenced on March 20, 2018. In accordance with the Rules, paragraph 5, the due date for Response was April 9, 2018. The Respondents did not submit any response. Accordingly, the Center notified the Respondents' default on April 13, 2018. An email communication from one of the Respondents was received by the Center on April 14, 2018, stating that they could not file a Response because their son was in hospital.

The Center appointed Kiyoshi Tsuru as the sole panelist in this matter on April 23, 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 based in the United States.

The Complainant owns the following trademark registrations, among others:

The disputed domain names <oculusgo.com>, <oculusglasses.com>, <socialoculus.com> and <oculuspain.com> were registered on October 9, 2017. According to the evidence submitted with the Complaint, whereas disputed domain names <oculusglasses.com> and <oculuspain.com> resolved to the Registrar's parking site, the disputed domain names <oculusgo.com> and <socialoculus.com> resolved to websites offering information related to OCULUS-branded goods.

5. Parties' Contentions

A. Complainant

The Complainant argues the following:

I. Identical or Confusingly Similar

That the Complainant owns numerous registrations for the trademark OCULUS throughout the world, including the European Union, where the Respondents are based.

That the Complainant's OCULUS trademark has acquired an important goodwill and reputation worldwide.

That the disputed domain names incorporate the Complainant's OCULUS trademark in its entirety.

That the addition of the terms "go", "glasses", "social", and "spain" to the disputed domain names does not diminish their confusing similarity with the Complainant's OCULUS trademark.

That each of the disputed domain names is likely to create the impression that they are related to the Complainant.

That the generic Top-Level domain ("gTLD") ".com" is irrelevant when assessing identity or confusing similarity of a domain name to a complainant's trademark.

II. Rights or Legitimate Interests

That the Respondents are not licensees of the Complainant, nor have they been authorized to use the Complainant's trademark OCULUS.

That the website to which the disputed domain name <oculusgo.com> originally resolved, contained general information on the Complainant's software and headgear, and used the term "OculusGo", alongside a design that had the same "look and feel" as the Complainant's OCULUS logo.

That said website was designed to create a false impression to Internet users that they had reached one of the Complainant's official websites. That such use cannot be considered as a bona fide offering of goods.

That the Complainant sent an infringement notice to the Respondent regarding the website to which the disputed domain name <oculusgo.com> resolved. That after receiving this notice, the Respondent changed the content of the website to which said disputed domain name resolved, in order to claim that the term "oculusgo" was the acronym of a term in Spanish meaning "Orientation to Universal Free Creators Using Synchrony and Generating Prayers" (in Spanish language) and purportedly providing information about the laws of the universe and spirituality. Given the prior correspondence between the two parties, the moment at which the Respondents set up the said website as well as the nature of the website, such as the farfetched interpretation of the term OCULUSGO and the absence of any contact details on the "contact" section of the website, the disputed domain name was used to point to a sham website, which is not considered by panels as a bona fide offering of goods or services in previous UDRP decisions.

That the website to which the disputed domain name <socialoculus.com> used to resolve was designed to purport an Oculus Rift community website, which not only did not contain a disclaimer disclosing the lack of a relationship with the Complainant but also contained a copyright notice "© 2017 Oculus" at the bottom of the page.

That the disputed domain names <oculuspain.com> and <oculusglasses.com> resolved to the Registrar's parking site. That this does not confer the Respondents any rights to or legitimate interests in the disputed domain names.

That the Respondents have not been commonly known by the disputed domain names.

That the Respondent has applied for the registration of OCULUSGO.COM in the European Union. That said application was submitted after the Respondent was requested to cease her use of the disputed domain name <oculusgo.com>.

That the Respondents have not made a legitimate noncommercial or fair use of the disputed domain names.

That by making a prima facie showing of the Respondent's lack of rights or legitimate interests in the disputed domain names, the Respondents must provide evidence of their rights or interests in the disputed domain names.

III. Registered and Used in Bad Faith

That given the distinctiveness and renown of the Complainant's OCULUS trademark throughout the world, along with the circumstances of this case, it is inconceivable to think that the Respondents did not have knowledge of the Complainant's OCULUS trademark at the moment of registration of the disputed domain names.

That the registration of the disputed domain names in full knowledge of the Complainant's rights over a well−known trademark constitutes evidence of bad faith registration.

That the disputed domain names <oculusgo.com> and <socialoculus.com> resolved to websites displaying a logo which is confusingly similar to that of the Complainant, and did not display a clear disclaimer communicating the lack of a relationship with the Complainant. That these are indicators that the Respondents were deliberately attempting to create a false association with the Complainant.

That the Respondents tried to escape liability by setting up a sham website linked to the disputed domain name <oculusgo.com>.

That the disputed domain names are currently being passively held. That such passive holding does not prevent a finding of bad faith given the overall circumstances of this case.

B. Respondent

The Respondent did not file a formal Response to the Complaint. In their email communication sent to the Center on April 14, 2018 the Respondents did not reply to any of the Complainant's contentions.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the complainant needs to prove that each of the three following elements is satisfied:

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

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

(iii) The domain name has been registered and is being used in bad faith.

As the Respondents have failed to submit a Response to the Complainant's contentions, the Panel may choose to accept as true the Complainant's reasonable assertions (see Encyclopædia Britannica, Inc. v. null John Zuccarini, Country Walk, WIPO Case No. D2002-0487).

A. Preliminary Issue: Consolidation of the Respondents

The Complainant has requested the consolidation of the procedure in relation to two different Respondents.

According to section 4.11 of the WIPO Overview of WIPO Panel views on Selected UDRP Questions, Third edition ("WIPO Overview 3.0"), it is feasible to consolidate a complaint against multiple respondents, provided that: i) the domain names or corresponding websites are subject to common control, and ii) the consolidation would be fair and equitable to all parties.

The disputed domain names <oculusgo.com>, <oculusglasses.com> and <socialoculus.com> were registered by Jesica Pecellin, while the disputed domain name <oculuspain.com> was registered by Adan Casado Noguero. The Complainant claims that the four disputed domain names are subject to common control, based on the following facts:

a) The disputed domain names were registered on the same date;

b) Both of the Respondents provided an address in the city of Seville, Spain, in relation to the four disputed domain names;

c) Both the Respondents provided the same contact telephone number when registering the four disputed domain names;

d) Both of the Respondents provided the same contact email address when registering the disputed domain names <oculuspain.com> and <socialoculus.com>; and

e) The disputed domain names <oculuspain.com> and <oculusglasses.com> were registered with the same Registrar and share the same domain name servers.

The Panel finds that these facts constitute evidence that the disputed domain names are subject to common control (see Sharman License Holdings, Limited v. Dustin Dorrance/Dave Shullick/Euclid Investments, WIPO Case No. D2004-0659; Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281; and Virgin Enterprises Limited v. lin yanxiao, WIPO Case No. D2016-2302).

The Respondents were duly notified with the Complaint and its annexes and were granted the opportunity to challenge the Complainant's claim of a common control over the disputed domain names, and the corresponding request for consolidation. Since the Respondents have not opposed the Complainant's consolidation request, there is no evidence in the case file suggesting that such consolidation could affect the fairness or equitability of this proceeding.

Therefore, it is appropriate to consolidate these cases.

B. Preliminary Issue: Language of the proceeding

As the Complaint was not filed in the language of the Registration Agreement and the Parties did not agree on the language of the proceeding, the Panel may decide on the language of the proceeding considering the circumstances of said proceeding. Indeed, paragraph 11(a) of the Rules reads: "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."

In the present case, the Respondents only replied to one of the several communications sent by the Center, without addressing any of the Complainant's contentions, which indicates that Respondents deliberately opted for not taking part in the proceedings and chose not to use its right to defend itself. In any case, the Panel notes that the disputed domain names include terms in English such as "go", "glasses", "social" and "Spain" and resolved to websites with terms such as "connect with us", "community", or "contact us", among others. In such circumstances, and considering that the Center sent all its communications to the Parties in English and Spanish, the Panel finds that it would be a disadvantage for Complainant to be forced to translate the Complaint. The Panel, having regard to the circumstances of these proceedings, accepts the Complaint as filed in English and has issued its decision in English.

C. Identical or Confusingly Similar

The Complainant has proven to hold several trademark registrations OCULUS throughout the world, including in the European Union, where the Respondents claim to be domiciled.

The disputed domain names <oculusgo.com>, <oculusglasses.com>, <socialoculus.com> and <oculuspain.com> are confusingly similar to the Complainant's OCULUS trademark, as each of them comprises said trademark in its entirety.

The addition of the terms "go", "glasses", "social" and "spain" in the disputed domain names does not prevent a finding of confusing similarity to the Complainant's OCULUS trademark. As the disputed domain name <oculuspain.com> has removed an "s" from the OCULUS trademark, regardless of whether the added term is considered as "spain" or the added term is just "pain", this does not avoid a finding of confusing similarity.

The addition of the gTLD ".com" holds no relevance to this case, as it is a technical requirement generally disregarded in assessing the confusing similarity between the trademark OCULUS and the disputed domain names (see G4S Plc v. Noman Burki, WIPO Case No. D2016-1383).

D. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets forth the following examples as circumstances where a respondent may have rights to, or legitimate interests in a domain name:

(i) before any notice to the respondent of the dispute, the use by the respondent 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) the respondent is 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 Complainant claims that the Respondents have not been licensed or authorized to use the OCULUS trademark or to register a domain name comprising said trademark.

The Complainant claims that the Respondents have not used, or made demonstrable preparations to use the disputed domain names in connection with a bona fide offering of goods or services.

According to the evidence provided by the Complainant, the website to which the disputed domain name <oculusgo.com> resolved, contained what appeared to be a blog with articles and advertisements directly related to the Complainant's products, prominently displaying a design that replicated the "look and feel" of the Complainant's logo.

As seen in the evidence provided with the Complaint, on October 18, 2017, the Complainant notified the Respondents of the infringement caused by the unauthorized use of its OCULUS trademark, and requested to cease using the disputed domain name <oculusgo.com>. On the same day, the Respondents sent a reply to the Complainant, claiming that their website specifically stated that it was not an official website related to the Complainant, and that it was a fan page featuring OCULUS products.

The website to which the disputed domain name <oculusgo.com> resolved, did display a disclaimer stating the following: "Web NO OFICIAL y de libre publicación sobre la tecnología Oculus" ("Non-official and free publishing web about Oculus technology").

Nonetheless, the disclaimer was displayed in the far bottom of the website, which does not render the use of the disputed domain name as a bona fide offering of goods or services, especially considering the nature of the disputed domain names. By the time Internet users get to read the disclaimer, the disputed domain name has probably already diverted them away from the site of the Complainant, and the objective of attracting visitors to the Respondents' website would have already been achieved (see Arthur Guinness Son & Co. (Dublin) Limited v. Dejan Macesic, WIPO Case No. D2000-1698; and LEGO Juris A/S v. Andrew Orr, WIPO Case No. D2015-1311).

As shown in the evidence submitted by the Complainant, on January 11, 2018, almost three months after the abovementioned Cease and Desist letter was sent to the Respondents, the content of the website to which the disputed domain name <oculusgo.com> resolved was substituted with content related to the purported acronym OCULUSGO, stating for "meaning "Orientation to Universal Free Creators Using Synchrony and Generating Prayers" (in Spanish language).

This argument is simply not credible. Even if it were, the insertion of this purported acronym would not constitute a legitimate intent in the use of these disputed domains name that does not capitalize on the reputation and goodwill inherent in the Complainant's trademark (see WIPO Overview 3.0, section 2.10.2), especially considering that the previous website at the disputed domain name <oculusgo.com> made direct references to the Complainant's trademarks and products (see The Procter & Gamble Company v. OHMY! Consult Ltd, Pezhman Ahmadi, WIPO Case No. D2015-1143). The Panel finds such change of use, in the circumstances of the case, as pretextual.

The evidence filed by the Complainant also shows that the disputed domain name <socialoculus.com> resolved to a website that prominently displayed a stylized design comprised of the term "SocialOculus", alongside the phrase "La mayor comunidad social de Oculus Rift" ("The biggest Oculus Rift social community") and an image of a person wearing one of the Complainant's OCULUS headgears. The website emulated the general layout and the look and feel of the Complainant's official website, and displayed the following text: "© 2017 Oculus".

The foregoing facts show that the Respondents intended to use the disputed domain name <socialoculus.com> to impersonate the Complainant, and misleadingly attract consumers to their website by creating the false impression that it was affiliated with, authorized by, or sponsored by the Complainant. This does not confer them any rights to or legitimate interests in the disputed domain name <socialoculus.com> (see MSC Mediterranean Shipping Company Holding S.A. v. Whoisguard Protected, Whoisguard, Inc. / HOSTER NODE, WIPO Case No. D2016-2105).

The Complainant has argued that the Respondents have filed a trademark application for OCULUSGO.COM in the European Union. The Complainant has also pointed out that such application was filed on October 19, 2017, a day after the Complainant's Cease and Desist letter had been sent to the Respondents. This application does not in itself grant any rights to the Respondent. (See WIPO Overview 3.0, section 2.12.2).

The Respondents have provided no arguments or evidence that could demonstrate their rights to or legitimate interests in the disputed domain names.

The second element of the Policy is fulfilled.

E. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, shall be evidence of registration and use in bad faith:

(i) circumstances indicating that the respondent has registered or 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 the complainant, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or

(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; or

(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 their 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.

This Panel agrees with the findings of other UDRP panels in the sense that the Complainant's trademark OCULUS has attained renown and notoriousness since the release of the OCULUS headgear and software (see Oculus VR, LLC v. Sean Lin, WIPO Case No. DCO2016-0034; and Oculus VR, LLC v. PrivacyGuardian.org / Vildan Erdogan, WIPO Case No. D2018-0464).

The Panel finds that, since one of the Complainant's virtual reality headsets is named "Oculus Go", and the Complainant's headsets are worn in way similar to the way that glasses are worn, the terms "go" and "glasses" in the disputed domain names <oculusgo.com> and <oculusglasses.com> increase the likelihood of confusion between these disputed domain names and the Complainant's Trademarks (see LinkedIn Corporation v. Daphne Reynolds, WIPO Case No. D2015-1679).

The addition of the term "social" in the disputed domain name <socialoculus.com>, increases its likelihood of confusion with the Complainant's OCULUS trademark, as the term may lead Internet users to believe that said disputed domain name resolves to the Complainant's official website focused on the social aspects of Complainant's online games (see Advance Magazine Publishers Inc. v. Arena International Inc., WIPO Case No. D2011-0203).

Likewise, the addition of the geographical term "spain" to the disputed domain name <oculuspain.com> may suggest that the disputed domain name resolves to the official website of the Complainant in Spain (see Six Continents Hotels, Inc. v. CredoNIC.com / Domain For Sale, WIPO Case No. D2005-0755).

The content of the websites to which the disputed domain names <oculusgo.com> and <socialoculus.com> originally resolved was directly related to the Complainant's OCULUS trademark, as well as the headgear and software products covered by it.

These circumstances lead the Panel to conclude that the Respondents were aware of the Complainant and had its OCULUS trademark in mind at the moment of registering the disputed domain names, leading to a finding of registration in bad faith (see AB Gustaf Kähr v. Prasanth sp, inet, WIPO Case No. D2011-1455; Real Madrid Club De Futbol v. Michele Dinoia, WIPO Case No. D2010-0261; and Advance Magazine Publishers Inc. v. Pablo Palermao, WIPO Case No. D2008-0026).

Previous UDRP panels have stated that bad faith can be found whenever a respondent has created a website that is nearly identical to the website of the complainant (see, inter alia, The Dow Chemical Company v. dowaychemical eva_hwang@21cn.com +86.7508126859, WIPO Case No. D2008-1078; and Ctrader Limited v. Niko Wibisono, WIPO Case No. D2013-1906), and where a respondent has attempted to trade on the renown enjoyed by a trademark in which the complainant has rights (see, mutatis mutandi, Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; and Legacy Health System v. Nijat Hassanov, WIPO Case No. D2008-1708). This is the case of the websites to which the disputed domain names <oculusgo.com> and <socialoculus.com> resolved.

This conduct constitutes an impersonation of the Complainant through the registration and use of the disputed domain name <socialoculus.com> (see Jupiter Investment Management Group Limited v. N/A, Robert Johnson, WIPO Case No. D2010-0260), and creates the impression among Internet users that the website to which the disputed domain name <oculusgo.com> resolved was related to the Complainant and its trademark OCULUS, presumably with the purpose of generating a commercial gain for the Respondents (see LeSportsac, Inc. v. Yang Zhi, WIPO Case No. D2013-0482; trivago GmbH v. Whois Agent, Whois Privacy Protection Service, Inc. / Alberto Lopez Fernandez, Alberto Lopez, WIPO Case No. D2014−0365).

The disputed domain names <oculusglasses.com> and <oculuspain.com> are inactive. This does not prevent a finding of bad faith under the doctrine of passive holding (see WIPO Overview 3.0, paragraph 3.3), especially in the circumstances of the case where the disputed domain names are subject to a common control and two of the disputed domain names where used in bad faith clearly targeting the Complainant.

The third element of the Policy has been fulfilled.

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 names, <oculusglasses.com>, <oculusgo.com>, <oculuspain.com> and <socialoculus.com> be transferred to the Complainant.

Kiyoshi Tsuru
Sole Panelist
Date: May 15, 2018