Oculus VR, LLC v. Ivan Smirnov
Claim Number: FA1506001625898
Complainant is Oculus VR, LLC (“Complainant”), represented by Dennis Wilson of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Ivan Smirnov (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <oculusrift.com>, registered with Name.com, Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 24, 2015; the Forum received payment on June 24, 2015.
On June 25, 2015, Name.com, Inc. confirmed by e-mail to the Forum that the <oculusrift.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 1, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 21, 2015 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@oculusrift.com. Also on July 1, 2015, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 24, 2015 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has rights in the OCULUS RIFT mark through multiple trademark registrations and applications including OCULUS VR, OCULUS, and OCULUS RIFT. Respondent’s disputed <oculusrift.com> domain name is identical to Complainant’s OCULUS RIFT mark. Merely adding the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain from Complainant’s mark and removing spaces between the words of a mark is irrelevant according to a Policy ¶ 4(a)(i) analysis.
Respondent has no rights or legitimate interests in the disputed domain name. Neither WHOIS information nor any other information serves to indicate that Respondent is commonly known by the disputed domain name. Further, Respondent’s attempt to pass itself off as Complainant using the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has also demonstrated bad faith use and registration of the disputed domain name. Respondent’s bad faith is evident from Respondent’s efforts to sell the disputed domain for $58,000. Respondent is using a confusingly similar domain name and website to pass itself off as Complainant. Finally, Respondent had actual knowledge of Complainant’s rights in the OCULUS RIFT mark at the time of registration, which is additional evidence under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of developing head-mounted displays to create virtual reality and related goods and services.
2. Complainant has common law trademark rights to OCULUS RIFT for its virtual reality headsets and helmets adapted for use in playing video games and those rights have existed since April 12, 2012.
3. Respondent registered the disputed domain name on June 7, 2012.
4. Respondent has used the domain name to impersonate Complainant and its website and disrupt Complainant’s business and has tried to sell the domain name to Complainant for $58,000.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant contends that it has rights in the OCULUS, OCULUS VR, and OCULUS RIFT marks through registrations and application of the marks with the United States Patent and Trademark Office (“USPTO”). Although Complainant has registered the OCULUS VR mark with the USPTO twice, the registrations of OCULUS RIFT and OCULUS have not been finalized. Panels have regularly held that an application to register a mark is not sufficient to establish a Complainant’s rights in a mark. See Razorbox, Inc. v. Skjodt, FA 150795 (Nat. Arb. Forum May 9, 2003) (“Complainant’s pending trademark application does not in and of itself demonstrate trademark rights in the mark applied for.”).
It has already been noted that Complainant has two registered trademarks for OCULUS VR, but those two trademarks were registered on October 29, 2013 and December 2, 2014, which are dates after the domain name was registered on June 7, 2012. Accordingly, it is useful to inquire whether, as well as its registered trademark rights, Complainant also has common law or unregistered trademark rights.
A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Panels have found that extensive use and fame can establish a complainant’s common law rights in a mark. The Panel has considered the evidence adduced by Complainant of the history of developing the Oculus Rift device and the media coverage that this has engendered and finds that Complainant has established common law rights in the OCULUS RIFT mark through extensive, continuous, and well published use of the mark in connection with its business as a provider of virtual reality headsets and peripherals. Complainant has provided numerous published articles, website screenshots, and forum discussions that demonstrate the fame associated with Complainant’s use of the OCULUS RIFT mark. See Compl., at Attached Ex. E-O. As the Panel agrees with Complainant’s contentions, the Panel finds that Complainant has common law rights in the OCULUS RIFT mark under Policy ¶ 4(a)(i). See Bibbero Sys., Inc. v. Tseu & Assoc., FA 94416 (Nat. Arb. Forum May 9, 2000) (finding, while the complainant had registered the BIBBERO SYSTEMS, INC. mark, it also had common law rights in the BIBBERO mark because it had developed brand name recognition with the word “bibbero”); see also Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established).
The Panel also finds that Complainant’s trademark rights date from at least April 12, 2012 and probably prior to that date, which is of course prior to the registration of the domain name.
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s OCULUS RIFT mark. Complainant asserts that Respondent’s disputed <oculusrift.com> domain name is identical or confusingly similar to the OCULUS RIFT mark. The domain name adds only the gTLD “.com” to the OCULUS RIFT mark, while also removing the space between the words of the mark. Panels have consistently held that the addition of a gTLD does not distinguish a domain name from a mark, and that the removal of spaces between words of a mark is irrelevant. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to the complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel therefore finds that Respondent’s <oculusrift.com> domain name is identical to the OCULUS RIFT mark pursuant to Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s OCULUS RIFT mark and to use it in its domain name which is identical to the mark;
(b) Respondent registered the disputed domain name on June 7, 2012;
(c) Respondent has used the domain name to impersonate Complainant and its website and disrupt Complainant’s business and has tried to sell the domain name to Complainant for $58,000;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant claims that neither the WHOIS information nor any other information serves to indicate that Respondent is commonly known by the disputed domain name. Indeed, it appears that the Respondent registered the <oculusrift.com> domain name using the name “Ivan Smirnov,” which does not resemble the disputed domain name. Panels have held that a respondent is not commonly known by a disputed domain name based on WHOIS and other information. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name). The Panel therefore finds that Respondent is not commonly known by the <oculusrift.com> domain name according to Policy ¶ 4(c)(ii);
(f) Further, Complainant claims that Respondent’s attempt to pass itself off as Complainant using the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel notes from Complainant’s Attached Ex. T & U the various incarnations of Respondent’s website displaying the OCULUS RIFT mark and posts by a site administrator stating “We actually started shipping on Wednesday, but we haven’t shared tracking information yet because the team is still tied up at GDC in San Francisco.” These posts by Respondent demonstrate that Respondent sought to portray itself as Complainant on the website to which the disputed domain name resolves. Panels have found that the activities of a respondent using a disputed domain name to attempt to pass itself off as a complainant do not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). The Panel finds that Respondent’s use of the disputed domain name shows passing off behavior and demonstrates Respondent’s lack of rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant contends that Respondent’s bad faith is evident from Respondent’s efforts to sell the disputed domain for $58,000. See Complainant’s Attached Ex. X. Panels have held that a respondent’s offer of a domain for sale to a complainant can demonstrate a respondent’s bad faith. See Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”). The Panel therefore finds that Respondent’s offer of the disputed domain name for sale shows Respondent’s bad faith under Policy ¶ 4(b)(i).
Secondly, Complainant argues that Respondent uses the identicality and confusing similarity between the domain name and the trademark intentionally to attract confused Internet users to its own website. In this way, Complainant believes that Respondent is attempting to pass itself off as Complainant. Again, the Panel notes Complainant’s Attached Ex. T & U setting out various incarnations of Respondent’s domain name displaying the OCULUS RIFT mark and posts by a site administrator stating “We actually started shipping on Wednesday, but we haven’t shared tracking information yet because the team is still tied up at GDC in San Francisco.” These posts by Respondent demonstrate that Respondent spoke and portrayed itself as Complainant on the disputed domain name. As the Panel agrees that Respondent is attempting to pass itself off as Complainant, the Panel finds that Respondent is acting in bad faith under Policy ¶ 4(a)(iii). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith).
Thirdly, Complainant contends that Respondent had actual knowledge of Complainant’s rights in the OCULUS RIFT mark at the time of registration. Respondent’s registration of the disputed domain name was on June 7, 2012, days after the Electronic Entertainment Expo where Complainant’s product, the Oculus Rift, gained an incredible amount of notoriety and industry buzz. See Complainant’s Attached Ex. H, I, & J. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds in the present case that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed <oculusrift.com> domain name using the OCULUS RIFT mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Indeed, the true nature of Respondent conduct can be easily seen from the detailed evidence of Complainant. This shows that Complainant in effect announced its new product under the name Oculus Rift on April 14, 2012 when its founder Palmer Luckey first introduced his idea of creating an affordable virtual reality head-mounted display that he named the OCULUS RIFT on the official <oculusvr.com>website and launched the product on June 6, 2012, at the 2012 Electronic Entertainment Expo, an annual trade conference for the video game industry. The disputed domain name was registered on June 7, 2012.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oculusrift.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown, QC
Panelist
Dated: July 27, 2015
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