WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Facebook Technologies, LLC v. Jack Zhang
Case No. D2019-2160
1. The Parties
Complainant is Facebook Technologies, LLC, United States of America, represented by Hogan Lovells (Paris) LLP, France.
Respondent is Jack Zhang, United States of America.
2. The Domain Name and Registrar
The disputed domain name <oculusporn.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 September 4, 2019. On September 6, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On September 6, 2019, 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 September 18, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 8, 2019. Respondent sent an informal email on September 19, 2019, to the Center asking for a possible settlement. After an exchange of correspondence regarding Respondent’s message, Complainant asked the Center to proceed with a decision. Respondent did not submit a formal response. Accordingly, the Center notified the parties of Commencement of Panel Appointment on October 9, 2019.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on October 15, 2019. 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 Facebook, Technologies, LLC, was formerly known as Oculus VR, LLC. Complainant is a leading virtual reality technology company. Founded in 2012, Oculus was acquired by Facebook, Inc. in 2014. Complainant owns trademarks for the OCULUS mark, including in the United States, where Respondent lists his address of record. These include U.S. Registration No. 4891157 (registered January 26, 2016); European Union Registration No. 014185441 (registered December 17, 2015): and International Registration No. 1219324 (registered June 12, 2014).
Complainant owns various domain names that incorporate its OCULUS mark, including <oculus.com> (registered May 9, 1995) as well as <oculus.com.tw> (registered July 18, 2014) and <oculus.tw> (registered July 18, 2014). Complainant uses the associated URL to connect with consumers, and to inform them of its products and services.
The disputed domain name <oculusporn.com> was registered on February 4, 2019.
The disputed domain name is linked to a website that offers the disputed domain name for sale. Respondent has no affiliation with Complainant, nor any license to use its OCULUS mark.
5. Parties’ Contentions
Complainant contends that (i) the disputed domain name <oculusporn.com> is identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain name; and (iii) Respondent registered and is using the disputed domain name in bad faith.
Specifically, Complainant contends that it owns the OCULUS mark, and that the mark is “highly distinctive and renowned throughout the world.” Complainant further contends that Respondent has incorporated the OCULUS mark into the disputed domain name, and merely added the descriptive term “porn” which would be understood by consumers as a potential feature of Complainant’s virtual reality goods and services. Complainant contends that Respondent lacks rights or legitimate interest in the disputed domain name, and rather has registered and is using it in bad faith, having simply acquired the disputed domain names with an intent to sell it for profit. Complainant further alleges that Respondent has engaged in a pattern of conduct that establishes bad faith under the UDRP.
Respondent replied to Complainant’s contentions with an informal email on September 19, 2019, stating the following:
“Hi, Thank you for your email. I would like the disputed domain name to be transferred to the Complainant’s control. Please check the attached Signed Standard Settlement Form
WIPO Case No. D2019-2160.pdf. Have a nice day!
After an exchange of correspondence regarding Respondent’s message, Complainant asked the Center to proceed with a decision. Respondent did not submit a formal response.
6. Discussion and Findings
A. Preliminary Statement
The Panel notes that Respondent has expressed a desire to settle this proceeding. In this regard, the Panel turns to Section 4.10 of WIPO Overview 3.0, which states, in relevant part, that some panels have declined to grant a remedy solely on the basis of the respondent’s consent, but rather elected to proceed to a substantive determination of the merits. Reasons may include that the complainant has not agreed to a consent decision and the complainant is entitled to the decision for which it has paid in filing its complaint, or because the panel finds a broader interest in reaching and recording a substantive determination (e.g., in connection with patterns of conduct under paragraph 4(b)(iii) of the UDRP). In this regard, after receiving Respondent’s statement on September 19, 2019, the Center contacted the parties to see if they wished to suspend the proceeding to explore settlement negotiations.
On September 26, Complainant responded that it “would prefer to continue to a full decision”. The Center indicated it would proceed, and after receiving no formal response from Respondent, the Center notified the Commencement of Panel Appointment and proceeded with Panel appointment. Under these circumstances, and as discussed herein, the Panel finds it appropriate to discuss and render a full decision.
B. Identical or Confusingly Similar
The Panel must first determine whether the disputed domain name <oculusporn.com> is identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that it is.
The disputed domain name incorporates in full Complainant’s OCULUS mark, and merely adds the descriptive term “porn” (which is likely to be understood by consumers as a potential feature of Complainant’s virtual reality goods and services).
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph (4)(a)(i) of the Policy. See, for example, Microsoft Corporation v. Step Web, WIPO Case No. D2000-1500 (<microsofthome.com>); Wal-Mart Stores, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0620 (<walmartbenfits.com>); General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (<ge-recruiting.com>).
The Panel therefore finds that the disputed domain name is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Panel next considers whether Complainants have shown that Respondent has no “rights or legitimate interest” as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include:
(i) use of the domain name “in connection with a bona fide offering of goods or services”;
(ii) demonstration that respondent has been “commonly known by the domain name”; or
(iii) “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”.
No evidence has been presented to the Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain name, and Respondent has no license from, or other affiliation with, Complainant.
Therefore, the Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy which shifts the burden, which Respondent has not rebutted, and rather has expressed his wish that the disputed domain name be “transferred to Complainant’s control”.
D. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith.
As noted above, the disputed domain name resolves to a website offering the disputed domain name for sale in excess of out of pocket costs and thus the Panel finds that Respondent “registered or acquired the domain name primarily for the purpose of selling for valuable consideration in excess of documented out-of-pocket costs”, in a showing of bad faith as contemplated by paragraph 4(b)(i) of the Policy. See Ticketmaster Corp. v. Spider Web Design, Inc., WIPO Case No. D2000-1551.
A number of prior UDRP panels have found Complainant’s OCULUS mark to be well known. See, for example, Oculus VR, LLC v. Jurevich, et. al., WIPO Case No. D2016-2284 (finding rights in OCULUS); Facebook Inc., et. al. v. Domain Admin / This Domain is For Sale, HugeDomains.com, WIPO Case No. D2018-0150 (transferring, inter alia, <oculus-gaming.com>, <oculusmovies.com>, <oculussex.com>, <oculus-vr.com>, <oculusvrnetwork.com>, and <oculusx.com>). The OCULUS mark and associated products have also been the subject of media reports from, among others, Time, The Verge, and The Guardian. Due to the renown of Complainant’s OCULUS mark, the Panel finds strong evidence that Respondent was aware of Complainant’s rights when it registered the disputed domain name.
The Panel further notes that Complainant has submitted evidence that Respondent has engaged in a pattern of registering domain names, including <galaxys7.com>, <pokemonclub.com>, and <acceture.com>. This evidences also bad faith in accordance with paragraph 4(b)(ii) of the Policy.
Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith in accordance with 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 <oculusporn.com> be transferred to Complainant.
Date: October 24, 2019