WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Oculus VR, LLC v. Javier Díaz Calvo, Active Thinking
Case No. D2018-0850
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 Respondent is Javier Díaz Calvo, Active Thinking of Madrid, Spain, self-represented.
2. The Domain Name and Registrar
The disputed domain name <compraroculus.com> is registered with Soluciones Corporativas IP, SL (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on April 16, 2018. On April 17, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 17, 2018, 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 sent an email communication to the Parties on April 18, 2018, regarding the language of the proceeding, as the Complaint has been submitted in English and the language of the registration agreement for the disputed domain name is Spanish. The Complainant submitted a request for English to be the language of the proceeding on April 18, 2018. The Respondent submitted a request for Spanish to be the language of the proceeding on April 23, 2018.
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 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 22, 2018.
The Center notified the parties of the commencement of the panel appointment process on May 23, 2018.
The Center appointed Daniel Peña as the sole panelist in this matter on May 29, 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. Language of the proceeding
The Complaint was submitted in English. The language of the registration agreement related to the disputed domain name is Spanish.
Consistent with paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified contrarily in the registration agreement, the language of the proceeding shall be the language of the registration agreement, subject to the authority of the appointed Administrative Panel to determine otherwise.
In this case, the Complainant has requested that the language of the proceeding be English. In its email on April 23, 2018, the Respondent has expressed its opposition to the Complainant's request to conduct this proceeding in English, claiming that the disputed domain name was registered in Spain, also claiming to not understand the English language.
Pursuant to paragraph 11, the Panel has the authority to determine the language of the proceedings, having regard to the circumstances of each case. The Panel will consider the following circumstances to determine the language of these proceedings.
- The name of the entity associated with the Respondent refers to an expression "Active Thinking" in English.
- Even though the Respondent did not submit a Response, according to the evidence provided in the Complaint, the Complainant sent several messages to the Respondent in English and the Respondent replied in English showing a good understanding not only of the English language but also of the UDRP.
Under the circumstances described above, this Panel concludes that the Respondent is capable of understanding the English language (see Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191; and MySpace Inc. v. Will Eom, WIPO Case No. D2008-0448).
Considering that the translation of the Complaint would render this proceeding more onerous and lengthy than what the spirit of the Policy intended (see, mutatis mutandi, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.5; see also Deutsche Messe AG v. Kim Hyungho, WIPO Case No. D2003-0679; and SWX Swiss Exchange v. SWX Financial LTD, WIPO Case No. D2008-0400), and given the evidence of a common language that the parties seem to share, the Panel determines that the language of the proceedings shall be English.
Given that the Panel is fluent in both English and Spanish, it will consider the Complainant's Complaint and evidence filed in English, and the Respondent's informal arguments submitted in Spanish.
5. Factual Background
The Complainant is a virtual reality technology company founded in 2012 that developed the 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 Trade Mark 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 fame of the Complainant's virtual reality software and apparatus, including headsets and helmets, has been widely reported by the press worldwide, including by major newspapers in Spain, for instance, El País, ABC, El Mundo, La Vanguardia and ElDiario.es. In 2014, the Spanish press widely reported on Facebook's acquisition of Oculus and that same year, on the Complainant and its virtual reality products. See, for instance, "Así funciona Oculus Rift, las gafas de realidad virtual", ABC (May 12, 2014) and "Las Oculus Rift materializarán la realidad virtual soñada en los 80", El Mundo (November 13, 2014).
The disputed domain name <compraroculus.com> was registered on January 20, 2015. According to evidence provided by the Complainant, the disputed domain name redirects to a website that offers news about virtual reality and an online store where users can purchase VR headsets via Amazon, including the Complainant's OCULUS RIFT brand as well as third party brands.
6. Parties' Contentions
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.
No formal Response was received. However, the Complainant has provided evidence of a communication by the Respondent on October 11, 2016, answering to the Complainant's notice of trademark infringement with the following arguments:
- The domain name registration is based on the basic rule: "first to come, first to serve".
- Even though the word "oculus" appears in the domain name, is inside a complex word "compraroculus" (that is not a trademark).
- Respondent likes virtual reality world and writes in its blog about that, and it monetizes the blog with the Amazon Afiliate Program.
- It is not using yet as a visible domain name <compraroculus.com>, and Respondent redirects to keep the hard work in SEO.
- The trademark is safe to be confused by consumers, and it is not visible for any internet user because of the redirect.
- "Even so you may demonstrate that 'compraroculus.com' (not trademark) is property of yours because of the relation with your trademark 'Oculus'. We hope you can understand the SEO work we have done last year, and our good faith writing our blog (now with domain 'mundo-virtual.com'), and lamentably, is not possible what you requested us."
7. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(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 disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has evidenced registrations for the trademark OCULUS in several jurisdictions including, among others, the United States and the European Union. The Complainant's trademarks are registered mainly in several international classes including the protection of energy drinks.
The disputed domain name contains the Complainant's distinctive trademark OCULUS in its entirety. Neither the addition of the descriptive word "comprar" ("to buy" in English) nor the inclusion of the generic Top-Level Domain ("gTLD") ".com" alters the fact that the disputed domain name is confusingly similar to the Complainants' trademark.
According to previous UDRP decisions, the "addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element" (see section 1.8 of the WIPO Overview 3.0). Furthermore, for the purposes of determining identity or confusing similarity in a UDRP proceeding, the gTLDs ".com", ".info", ".net" and ".org" do not need to be considered.
The Panel finds that the Complainant has rights in the OCULUS trademark and that the disputed domain name is confusingly similar to this trademark.
Therefore, the Panel considers that the requirement of paragraph 4(a)(i) of the Policy is met.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists several manners in which the Respondent may demonstrate rights or legitimate interests in a disputed domain name:
"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."
The consensus of previous UDRP panels under the Policy is that a complainant may establish this element by making out a prima facie case not rebutted by the respondent that the respondent has no rights or legitimate interests in the disputed domain name. In this case, the Panel is satisfied that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name based upon its submissions that: (1) the Respondent has no prior rights or legitimate interests in the disputed domain name and the registration of the OCULUS trademarks preceded the registration of the disputed domain name with years; (2) the Complainant has not licensed or otherwise authorized the Respondent to use its OCULUS trademarks or to incorporate them into a domain name; (3) that, given the extensive use of the Complainant's marks and the fact that it is uniquely linked to the Complainant, the Respondent must have been aware of this when it registered the disputed domain name; and (4) that the current use of the disputed domain name does not relate to a bona fide offering of goods or services or any legitimate noncommercial or fair purpose.
In fact, the disputed domain name <compraroculus.com>, is redirecting to a website that offers not only news about virtual reality but also an online store where users can purchase via Amazon VR headsets, including the Complainant's OCULUS RIFT brand as well as third party brands, such as PLAYSTATION VR, HTC VIVE, and STAR VR, that are in direct competition with the Complainant. Such use of the disputed domain name cannot constitute a bona fide offering of goods or services, as the Respondent is using the Complainant's trademark to "bait" Internet searching to purchase the Complainant's products and mislead them into visiting the Respondent's website, where Internet users will be exposed not only to the Complainant's products but also to the Complainant's competitors' products.
The Respondent did not submit a response and, even if the Panel considers the Respondent's email to the Complainant on October 11, 2016, there is nothing to demonstrate any rights or legitimate interests in the disputed domain name for the purpose of the Policy.
The Panel finds the Respondent has no rights or legitimate interests in respect of the disputed domain name and that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
According to paragraph 4(b) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith:
(1) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly related to the disputed domain name; or
(2) the Respondent has registered the disputed domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or
(3) the Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(4) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.
The Panel considers that the disputed domain name <compraroculus.com> was registered with the knowledge of the Complainant's rights in the OCULUS trademarks, as it seemed that the Respondent was aware of the Complainant's rights in the OCULUS trademarks. In fact, the Respondent through its website offers for sale the Complainant's products. Furthermore, the Complainant has demonstrated that its trademarks are known in several countries including Spain. Therefore, the choice of the disputed domain name <compraroculus.com>, which wholly incorporates the OCULUS trademarks, cannot be a coincidence.
Concerning the use of the disputed domain name <compraroculus.com> in this Panel's view, the Respondent has done nothing to identify itself as being independent from the Complainant. On the contrary, the Respondent has incorporated the OCULUS trademark in the disputed domain name, throughout the website connected to the disputed domain name and attempts to attract consumers for commercial gain by purporting to sell the Complainant's products, and products of the Complainant's competitors.
It is clear to this Panel that the Respondent is using the trademark OCULUS as part of the disputed domain name <compraroculus.com> to create the impression that the Respondent is linked to the Complainant's commercial activities. Therefore, the Panel also infers that the Respondent's registration and use of the disputed domain name was intended to disrupt the Complainant's business, in particular by damaging the Complainant's reputation, as a result of consumers visiting the Respondent's website thinking that it was related to the Complainant or its business.
Based on the evidence submitted by the Complainant and having regard to all the relevant circumstances, the Panel accepts the Complainant's contentions that the disputed domain name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy.
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 <compraroculus.com> be transferred to the Complainant.
Date: June 6, 2018