WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Facebook Technologies, LLC v. Vickie Tubbs, Chen Jiajin (陈佳进)

Case No. D2020-1990

1. The Parties

The Complainant is Facebook Technologies, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.

The Respondent is Vickie Tubbs, Chen Jiajin (陈佳进), China.

2. The Domain Names and Registrars

The disputed domain names <oculusews.com>, <oculuwcs.com> and <oculweca.com> are registered with Cloud Yuqu LLC. The disputed domain name <oculusws.com> is registered with Chengdu West Dimension Digital Technology Co., Ltd. The disputed domain name <ocuwuso.com> is registered with West263 International Limited. The disputed domain names <ocuwuve.com> and <ocuwuweo.com> are registered with Jiangsu Bangning Science & Technology Co. Ltd.

Cloud Yuqu LLC, Chengdu West Dimension Digital Technology Co., Ltd., West263 International Limited and Jiangsu Bangning Science & Technology Co. Ltd are referred to below individually and collectively as the “Registrar”.

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2020. On July 30, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 31, 2020, 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.

On July 31, 2020, the Center transmitted an email communication to the Parties in English and Chinese regarding the language of the proceeding. On August 3, 2020, the Complainant confirmed its request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding.

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 in English and Chinese of the Complaint, and the proceedings commenced on August 6, 2020. In accordance with the Rules, paragraph 5, the due date for Response was August 26, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2020.

The Center appointed Matthew Kennedy as the sole panelist in this matter on September 15, 2020. 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 a subsidiary of Facebook, Inc. (“Facebook”) and owns the intellectual property rights in various Facebook technologies. Until recently, the Complainant operated under the corporate name of its predecessor-in-interest, Oculus VR LLC, which developed the Oculus Rift virtual reality (“VR”) headset. Oculus VR LLC was founded in 2012 and acquired by Facebook in March 2014. The Complainant is the registrant of multiple trademark registrations including International trademark number 1219324 for OCULUS, registered on June 12, 2014, designating multiple jurisdictions including China, and specifying virtual reality headsets and helmets adapted for use in playing video games in class 28; International trademark number 1185439 for OCULUS VR, registered on June 26, 2013 with a disclaimer of exclusive use of “VR”, designating multiple jurisdictions including China, and specifying video games apparatus comprising virtual reality headsets and helmets in class 28; and United States trademark registration number 5633258 for a stylized image of the letter O (the “Oculus logo”), registered on December 18, 2018, specifying design and development of computer game hardware and software and virtual reality hardware and software and other services in class 42. Those trademark registrations remain current. The Complainant is also the registrant of multiple domain names that begin with “oculus”, including <oculus.com> that it uses in connection with its official website where it offers for sale its Oculus VR headsets and equipment.

The Respondent is an individual resident in China.

The disputed domain names were registered on the following dates:

The evidence submitted by the Complainant shows that all the disputed domain names formerly resolved to a website in English that mimicked the homepage of the Complainant’s official website, prominently displaying the Oculus logo and reproducing text and graphics from the Complainant’s official website, and offering for sale the Complainant’s Oculus VR headsets and equipment at heavily discounted prices. A copyright notice in the footer set out the Complainant’s full corporate name. The evidence also includes reports by Internet users that they ordered goods on this website that were not delivered. At the time of this decision, the disputed domain names no longer resolve to any active website; rather, they are passively held.

5. Parties’ Contentions

A. Complainant

The disputed domain names are confusingly similar to the Complainant’s OCULUS trademark. Two disputed domain names comprise the OCULUS trademark in its entirety, with the addition of the letters “ews” and “ws”. The remaining disputed domain names closely resemble the OCULUS trademark, where the last letters of the Complainant's trademark have been substituted by various random letters. Some of these disputed domain names also aurally resemble the Complainant's OCULUS VR trademark.

The Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent is not an authorised dealer, distributor, or licensee of the Complainant, nor has she been otherwise allowed by the Complainant to make any use of the OCULUS or OCULUS VR trademarks, including in the disputed domain names. The Respondent is unable to rely on any of the circumstances set out in the paragraph 4(c) of the Policy in order to demonstrate rights and legitimate interests in the disputed domain names.

The disputed domain names were registered and are being used in bad faith. The Complainant's OCULUS and OCULUS VR trademarks are highly distinctive and renowned throughout the world, and have been continuously and extensively used since 2013 in connection with virtual reality headsets, having rapidly acquired considerable goodwill and renown worldwide, including in China where the Respondent is based. The Respondent has been using the disputed domain names in connection with a fraudulent scheme designed to obtain payment for goods and services that the Respondent has no real intention of providing.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

6.1. Language of the Proceeding

Paragraph 11(a) of the Rules provides that “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”. The Registrar confirmed that the Registration Agreements for the disputed domain names are all in Chinese.

The Complainant requests that the language of the proceeding be English. Its main arguments are that the website associated with the disputed domain names was in English; and requiring the Complainant to translate and submit the Complaint in Chinese would result in additional expense and unnecessary delay for the Complainant.

Paragraph 10(b) and (c) of the Rules require the Panel to ensure that the Parties are treated with equality, that each Party is given a fair opportunity to present its case and that the administrative proceeding take place with due expedition. Prior UDRP panels have decided that the choice of language of the proceeding should not create an undue burden for the parties. See, for example, Solvay S.A. v. Hyun-Jun Shin, WIPO Case No. D2006-0593; Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) electrical appliance co. ltd., WIPO Case No. D2008-0293.

The Panel observes that in this proceeding the Complaint was filed in English and that the Respondent previously used the disputed domain names in connection with a website in English, from which it is reasonable to infer that the Respondent is familiar with that language. The Respondent has not expressed any interest in commenting on the language of the proceeding, responding to the Complainant’s contentions, or otherwise participating in this proceeding. Therefore, the Panel considers that requiring the Complainant to translate the Complaint into Chinese would create an undue burden and delay.

Having considered all the circumstances above, the Panel determines under paragraph 11(a) of the Rules that the language of this proceeding is English. The Panel would have accepted a Response in Chinese, but none was filed.

6.2 Substantive Issues

Paragraph 4(a) of the Policy provides that a complainant must prove each of the following elements:

(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.

A. Identical or Confusingly Similar

Based on the evidence submitted, the Panel finds that the Complainant has rights in the OCULUS and OCULUS VR marks.

The disputed domain names <oculusws.com> and <oculusews.com> wholly incorporate the OCULUS mark as their respective initial elements. These disputed domain names add the letters “ws” or “ews” but neither of these elements is capable of dispelling confusing similarity between the disputed domain names and the OCULUS trademark for the purposes of the first element of the Policy. The trademark remains clearly recognizable within the disputed domain names.

The disputed domain name <oculuwcs.com> wholly incorporates the OCULUS mark but inserts the letters “wc” before the “s”. On a side-by-side comparison, this additional element is not capable of dispelling confusing similarity between these disputed domain names and the OCULUS trademark for the purposes of the first element of the Policy. This disputed domain name is also aurally similar to the OCULUS trademark.

The disputed domain name <oculweca.com> incorporates the first four letters of the OCULUS mark and adds the letters “weca”. On a side-by-side comparison, these differences are not capable of dispelling confusing similarity between this disputed domain name and the OCULUS trademark for the purposes of the first element of the Policy.

The disputed domain name <ocuwuso.com> incorporates the OCULUS mark as its initial element, but replaces the letter “l” with a “w”, and adds the letter “o”. These typographical differences are too minor to avoid a finding of confusing similarity with the OCULUS trademark. This disputed domain name is also aurally similar to the OCULUS mark.

The disputed domain names <ocuwuweo.com> and <ocuwuve.com> incorporate four letters of the OCULUS mark, but replace the letter “l” with a “w” and omit the “s”. The first three syllables of the disputed domain names are aurally similar to the OCULUS mark. The disputed domain names also add the letters “weo” and “ve” but neither of these elements is capable of dispelling confusing similarity with the OCULUS trademark for the purposes of the first element of the Policy. The Panel considers that there is a prima facie case of confusing similarity between these disputed domain names and the OCULUS mark. Further, the Panel takes note that the website to which the disputed domain names formerly resolved mimicked the Complainant’s official website and offered for sale the Complainant’s OCULUS products, which confirms that the Respondent was seeking to target the OCULUS trademark through all the disputed domain names. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.15.

The disputed domain names all include a generic Top-Level Domain (“gTLD”) “.com”, which is a technical requirement of domain name registration. A gTLD suffix is normally disregarded in the comparison between a disputed domain name and a trademark for the purposes of the first element of the Policy.

Therefore, the Panel finds that all the disputed domain names are confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:

(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] 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 [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or

(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

As regards the first circumstance set out above, the Complainant submits that the Respondent is not an authorised dealer, distributor, or licensee of the Complainant, nor has she been otherwise allowed by the Complainant to make any use of the OCULUS trademark, including in the disputed domain names. The disputed domain names formerly resolved to a website that was falsely presented as the Complainant’s own site. At the time of this decision, the disputed domain names are passively held. The Panel does not consider either of the Respondent’s uses of the disputed domain names to be in connection with a bona fide offering of goods or services within the circumstances of paragraph 4(c)(i) of the Policy.

As regards the second circumstance, the Respondent’s name is listed in the Registrar’s WhoIs database as “Vickie Tubbs, Chen Jiajin (陈佳进)”, not the disputed domain names. There is no evidence indicating that the Respondent has been commonly known by the disputed domain names as envisaged by paragraph 4(c)(ii) of the Policy.

As regards the third circumstance, the disputed domain names formerly resolved to a website offering goods for sale. They are now passively held. Neither is a legitimate noncommercial or fair use of the disputed domain names within the circumstances of paragraph 4(c)(iii) of the Policy.

In summary, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Respondent failed to rebut that prima facie case because she did not respond to the Complaint.

Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that certain circumstances shall be evidence of the registration and use of a domain name in bad faith. The fourth of these is as follows:

(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’s] 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 [the respondent’s] web site or location or of a product or service on [the respondent’s] website or location.

With respect to registration, the disputed domain names were registered in 2020, years after the registration of the Complainant’s OCULUS trademark, including in China where the Respondent is resident. The disputed domain names formerly resolved to a website that mimicked the Complainant’s official website, offered its products for sale and displayed the Complainant’s full corporate name in a copyright notice. This gives the Panel reason to infer that the Respondent was aware of the Complainant and its OCULUS trademark at the time that she registered the disputed domain names. Therefore, the Panel finds that the Respondent deliberately chose to register the Complainant’s OCULUS trademark in the disputed domain names in bad faith.

With respect to use, the Complainant has provided evidence that the Respondent formerly used the disputed domain names in connection with a website that was falsely presented as the Complainant’s official website. The Complainant has also provided evidence of actual instances in which the website was used to defraud Internet users by offering the Complainant’s products for sale and failing to deliver them. Accordingly, the Panel finds that the Respondent was using the disputed domain names intentionally to attract, for commercial gain, Internet users to its website 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 of a service on the Respondent’s website, within the terms of paragraph 4(b)(iv) of the Policy.

The Panel notes that the use of the disputed domain names has now changed and they no longer resolve to any active website. This does not alter the Panel’s conclusion; on the contrary, it may constitute further evidence of bad faith.

Therefore, the Panel finds that the disputed domain names have been registered and are being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of 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 names <oculusews.com>, <oculusws.com>, <oculuwcs.com>, <oculweca.com>, <ocuwuso.com>, <ocuwuve.com> and <ocuwuweo.com> be transferred to the Complainant.

Matthew Kennedy
Sole Panelist
Date: September 25, 2020