WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Oculus VR, LLC v. Benjamin Ogden

Case No. D2018-1493

1. The Parties

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

Respondent is Benjamin Ogden of Melbourne, Florida, United States, self-represented.

2. The Domain Name and Registrar

The disputed domain name <oculuscasino.net> is registered with GoDaddy.com, LLC (the "Registrar").

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 4, 2018. On July 4, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 2018, the Registrar transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on July 16, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 5, 2018. The Response was filed with the Center on July 16, 2018. On July 22, 2018, Respondent indicated that it was willing to discuss a mutually agreeable settlement in good faith should Complainant wish. On July 24, 2018, Complainant indicated that it did not wish to further explore settlement with Respondent. Respondent submitted additional informal email communications on July 24, 2018, on July 29, 2018, and on July 31, 2018. An additional email from Complainant was received on July 30, 2018, addressing Respondent and its additional communications. On August 8, 2018, the Center notified the Parties that it would proceed to Panel appointment.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on August 16, 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

Complainant is the owner of registration for the word trademark OCULUS on the Principal Register of the United States Patent and Trademark Office (USPTO), registration number 4891157, registration dated January 26, 2016, in international class (IC) 28, covering "virtual reality headsets and helmets adapted for use in playing video games". Complainant is the owner of registration for the word trademark and service mark OCULUS on the register of the European Union Intellectual Property Office (EUIPO), registration number 014185441, registration dated December 17, 2015, in ICs 25, 35, 38, 41, 42 and 45, covering, inter alia, clothing; marketing, advertising and promotion services; providing online services; entertainment services; production of video and computer game software, and; Internet-based social networking services, as further specified. Complainant is the owner of international registration for the word trademark OCULUS under the Madrid System, registration number 1219324, registration dated June 12, 2014, in IC 28, designating 11 countries. Complainant states that it holds trademark registrations in addition to those listed above.

Complainant is the developer and marketer of virtual-reality (VR) hardware and software used principally in connection with gaming and entertainment. Complainant's VR headset device is marketed and sold under the name "Oculus Rift". Complainant also markets and sells controllers under the name "Oculus Touch". Complainant maintains commercial websites at addresses directly incorporating its OCULUS trademark, including at "www.oculus.com". Complainant was an early entrant into the VR headset market, and its headset and related hardware devices are well known among consumers of VR products and services.

According to the Registrar's verification, Respondent is registrant of the disputed domain name. According to that verification, the record of registration was created on December 30, 2016.

From at least June 30, 2017, and until at least September 28, 2017, Respondent used the disputed domain name to direct Internet users to a website headed "Oculus Casino VR", which referred to itself as "a safe and secure online casino guide to virtual-reality casinos", and prominently referred to the Oculus Rift and Oculus Touch products marketed and sold by Complainant, including a photograph of the Oculus Touch controllers. Among other statements, the website included "OCULUSCASINO.NET – 10 BEST VR CASINO GAMES FOR OCULUS RIFT AND GEAR VR" and "Compare the Oculus Rift's superior VR technology with other VR headset options available at more affordable prices." Respondent's website linked visitors to what it described as the "first Oculus casino", the "SlotsMillion Casino".

Following a notice of trademark infringement, and cease-and-desist demand, from Complainant of October 10, 2017, Respondent notified Complainant that it had removed all references to OCULUS and related products from its website identified by the disputed domain name. Complainant responded on December 12, 2017, that removal of its trademark from the website did not alleviate its legal concerns because the disputed domain name could still falsely suggest affiliation with Complainant, and offered to reimburse Respondent for its domain name registration fees in return for transfer of the disputed domain name. Respondent replied that it was willing to add a disclaimer to its website, and requested USD 5,000 for a transfer to cover its development and marketing costs with respect to its associated website. Complainant responded on December 18, 2017, that it was not prepared to pay more than normal registration fees in return for transfer of the disputed domain name.

On December 17, 2017, Respondent indicated that it had redirected the disputed domain name to its new Bitcoin gambling website at "www.bitcoincasinos.cash". Respondent stated that it would allow the registration of the disputed domain name to lapse "in 11 days". Respondent subsequently renewed registration of the disputed domain name, and indicated on February 15, 2018, that it would like to keep the redirection for one year "so the search engines can transfer the search marketing efforts over to bitcoincasinos.cash properly". Following Complainant's objection to this proposal, Respondent reiterated on March 7, 2018, its unwillingness to transfer the disputed domain name absent compensation for its work, time and efforts.

Respondent has an interest in online casinos and operates several websites. Respondent, inter alia, has registered the domain name <iphoneonlinepoker.org>.

The registration agreement between Respondent and the Registrar subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, one of which is the Center, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

5. Parties' Contentions

A. Complainant

Complainant alleges that it owns rights in the trademark OCULUS and that the disputed domain name is confusingly similar to that trademark. Complainant contends that addition of the term "casino" to its trademark in the disputed domain name does nothing to diminish confusing similarity with its trademark.

Complainant argues that Respondent lacks rights or legitimate interests in the disputed domain name because: (1) Respondent is not a licensee of Complainant and has not otherwise been authorized to make any use of its trademark whether in the disputed domain name or otherwise; (2) Respondent has not used or made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to notice of this dispute, in that Respondent was trading on Complainant's reputation and goodwill by diverting traffic to its website through use of Complainant's trademark. Moreover, redirecting Internet traffic to a Bitcoin casino website by use of the disputed domain name cannot be considered a bona fide use of the disputed domain name; (3) Respondent has not commonly been known by the disputed domain name, and has not secured trademark rights in OCULUS or OCULUS CASINO; (4) using the disputed domain name to associate Complainant's trademark with advertising links unassociated with Complainant, and redirecting Internet traffic to a totally unrelated website for commercial gain, do not constitute legitimate noncommercial or fair use, and; (5) providing comparative information between Complainant's headsets and other VR products on a website promoting VR gambling is not enough to establish rights or legitimate interests, including because this involves directing consumers to competing brands.

Complainant contends that Respondent registered and is using the disputed domain name in bad faith because: (1) Complainant's OCULUS trademark is well known, and Respondent must have been aware of Complainant's trademark when it registered the disputed domain name; (2) Respondent engaged in a pattern of conduct by registering two domain names incorporating third-party trademarks, i.e. Complainant's and "iphone"; (3) Respondent's only reason for registering the disputed domain name was to capitalize on Complainant's goodwill and reputation to increase the number of visitors to its website; (4) Respondent is using the disputed domain name to intentionally attract for commercial gain Internet users to Respondent's websites by creating a likelihood of confusion as to Complainant's source, sponsorship, affiliation or endorsement of its websites; (5) Respondent initially used the disputed domain name to refer to competing brands and products; (6) Respondent currently uses the disputed domain name to redirect Internet users to a website unrelated to Complainant's trademark thereby improperly increasing Respondent's Internet traffic; (7) Respondent offered to transfer the disputed domain name to Complainant for an amount substantially in excess of its cost of registering the disputed domain name; (8) removal of Complainant's trademark from Respondent's website does not cure bad faith given the original purpose of registration and subsequent use, and; (8) in light of the well-known character of Complainant's trademark Respondent has no plausible good faith use of the disputed domain name.

Complainant requests that the Panel direct the Registrar to transfer the disputed domain name to Complainant.

B. Respondent

Respondent argues that its use of Complainant's trademark is not infringing because Complainant's trademark rights do not extend to all possible uses of the term "oculus", and that other third-party enterprises make use of that term for purposes unconnected with virtual-reality related businesses, such as financial services or accounting.

Respondent contends that it did not register and use the disputed domain name in bad faith because: (1) the initial use of the disputed domain name to promote online casinos compatible with Complainant's VR products was in good faith; (2) when notified of Complainant's objections, all references to VR were removed from its website; (3) Complainant's offer to reimburse Respondent's fees associated with registration of the disputed domain name would not compensate it for work done on its website; (4) Respondent redirected the disputed domain name to a gambling website which is not associated with VR.

Respondent indicates that it attempted to register the trademark "Oculus Casino" but was unable to complete the application because it had stopped using the disputed domain name in good faith.

Respondent indicates that having now understood Complainant's objection to the redirection of the disputed domain name to its gambling website, it intends to remove that redirection once the disputed domain name is unlocked.

6. Discussion and Findings

It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of a proceeding that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

The Center formally notified the Complaint to Respondent at the email, telefax and physical addresses provided in its record of registration. Respondent has responded to the Complaint. The Center took those steps prescribed by the Policy and the Rules to provide notice to Respondent, and those steps satisfy notice requirements.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use and to obtain relief. These elements are that:

(i) the disputed 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 disputed domain name; and

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

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant has provided evidence of rights in the trademark OCULUS including through registration at several trademark offices, and through use in commerce. See Factual Background, supra. Respondent has not challenged Complainant's rights in the OCULUS trademark. The Panel determines that Complainant has established rights in the trademark OCULUS.

The disputed domain name directly incorporates Complainant's OCULUS trademark, which is clearly recognizable in the disputed domain name, and adds the noun "casino" to that mark. The term "casino" refers to a location, online or otherwise, where gambling activities are pursued. Complainant's OCULUS trademark is associated with VR gaming and entertainment, and Internet users are likely to associate casino gaming with Complainant's VR gaming and entertainment products. The Panel determines that the disputed domain name is confusingly similar to Complainant's OCULUS trademark.¹

The Panel determines that Complainant has established rights in the OCULUS trademark and that the disputed domain name is confusingly similar to that trademark.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration and use is that Respondent has no rights or legitimate interests in respect of the disputed domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

"Any 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." (Policy, paragraph 4(c)).

Complainant's allegations to support Respondent's lack of rights or legitimate interests in the disputed domain name are outlined above in section 5A, and the Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the disputed domain name.

Respondent has argued that its initial use of the disputed domain name was to direct Internet users to a website that provided information regarding the merits of Complainant's VR products, including in comparison to other VR products, and these could be used in association with online casinos. Although a website engaged in comparative product assessment that uses the trademarks of the relevant products may constitute legitimate noncommercial or fair use of the subject trademarks, Respondent's use of Complainant's trademark was for a substantially greater commercial purpose than comparative product assessment. Respondent's initial use of Complainant's trademark involved linking the product assessment and a website for online VR casino gambling, "SlotsMillion". It is reasonable to assume that Respondent earned revenues from directing Internet users to this online VR casino. This was accomplished through the disputed domain name directly incorporating Complainant's well-known trademark. As Complainant did not authorize Respondent to use its trademark for this commercial purpose, such use by Respondent does not constitute fair use of Complainant's trademark.

Following objection from Complainant, Respondent used (and continues using) the disputed domain name to redirect Internet users to another online casino which it owns and operates. Internet users are likely to confuse the disputed domain name with affiliation, sponsorship or endorsement by Complainant of Respondent's gambling website. Such use by Respondent of Complainant's well-known trademark for its own commercial purposes does not constitute fair use.

Respondent has not otherwise evidenced rights or legitimate interests in the disputed domain name.

The Panel determines that Complainant has established that Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of the registration and use of a domain name in bad faith. These are "(i) circumstances indicating that [the respondent has] registered or [the respondent has] 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 [the respondent's] 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 … (iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] web site 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] web site or location or of a product or service on [the respondent's] web site or location."

Respondent was manifestly aware of Complainant's rights in its trademark when it registered the disputed domain name as Respondent's website identified by the disputed domain name displayed and discussed Complainant's trademark products.

Respondent's website initially identified by the disputed domain name linked Internet visitors to VR casino gaming that was not associated with Complainant. Respondent used the disputed domain name to intentionally attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant's mark as to source, sponsorship, affiliation or endorsement of Respondent's website.

Respondent's subsequent redirection of the disputed domain name to its online casino uses the disputed domain name to intentionally attract for commercial gain Internet users to its website by creating a likelihood of confusion with Complainant's mark.

Complainant made additional arguments regarding Respondent's registration and use of the disputed domain name in bad faith. As a matter of administrative efficiency, the Panel does not address those other lines of argument.

The Panel determines that Respondent registered and is using the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) 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, <oculuscasino.net>, be transferred to Complainant.

Frederick M. Abbott
Sole Panelist
Date: August 30, 2018

¹ Under the circumstances present here, addition of the generic Top-Level Domain (gTLD) ".net" is not relevant to confusing similarity analysis.