Oculus VR, LLC v. Edward Larkin / MBDC
Claim Number: FA1507001630361
Complainant is Oculus VR, LLC (“Complainant”), represented by David K. Caplan of Kilpatrick Townsend & Stockton LLP, California, USA. Respondent is Edward Larkin / MBDC (“Respondent”), Maine, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <oculusriftnmc.com>, <oculusriftcontroller.com> and <oculusriftcontrollers.com>, registered with GoDaddy.com, LLC.
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 July 23, 2015; the Forum received payment on July 23, 2015.
On July 27, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <oculusriftnmc.com>, <oculusriftcontroller.com> and <oculusriftcontrollers.com>, domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 30, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 19, 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@oculusriftnmc.com, postmaster@oculusriftcontroller.com, postmaster@oculusriftcontrollers.com. Also on July 30, 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.
A timely Response was received and determined to be complete on August 17, 2015.
Complainant submitted a timely additional submission that was received on August 21, 2015. On July 29, 2015 and August 4, 2015, Respondent made further additional submissions by email to the Forum and on August 24, 2015, the Forum received a timely further additional submission from Respondent entitled ‘Final Thoughts on this issue’. The Panel has received those additional submissions and communications and has taken them into account if reaching its decision.
On September 19, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions
B. Respondent
Respondent made the following contentions
Additional Submissions
A. Complainant
On August 21, 2015, the Forum received an additional submission from Complainant. The submission was received in a timely manner according to The Forum's Supplemental Rule #7. In that additional submission, Complainant made the following contentions.
1. Respondent admits to use and registration of the Infringing Domain Names to “promote [his] device [the Hyper Drive FPS/FPS-VR controller] to Oculus Rift owners” negates any suggestion that he has a right or legitimate interest in the domain names.
2.Respondent’s attempt to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant as to the source, sponsorship, affiliation, or endorsement of Respondent’s Hyper Drive FPS/FPS-VR controller is precisely the bad faith cybersquatting that the Policy was designed to combat.
3.In addition, Respondent fallaciously attempts to establish rights or legitimate interests in the Infringing Domain Names under Policy ¶ 4(c)(i) by stating in the Response that
Complainant’s announcement of the “Oculus Rift Controller” was made “months after [he]started building the [OCULUSRIFTCONTROLLER.COM] website and a year after [he] started designing [his] controller to include the ability to be used with the Oculus Rift device.” Indeed, a UDRP panel has found that “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.” Oculus VR, LLC v. Ivan Smirnov, FA1506001625898 (Nat. Arb. Forum July 27, 2015). It is immaterial when Complainant announced its controller for the Oculus Rift because the Infringing Domain Names were registered in 2015, over two years after Complainant established common law trademark rights in the OCULUS RIFT mark and admittedly with Respondent’s OCULUS RIFT in mind. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (bad faith found where respondent was “well-aware of the complainant's YAHOO! mark at the time of registration”).
4. Moreover, given that the Oculus Rift is a virtual reality headset targeted at the gaming industry, Respondent’s addition of the terms “controller(s)” and “nmc,” a widely used acronym for the generic term “natural motion controllers,” to the Infringing Domain Names actually heightens the likelihood of confusion with Complainant’s OCULUS RIFT trademark. See, e.g., Microsoft Corporation v. WG and Shahbaz Khan, FA0601000635281 (Nat. Arb. Forum March 15, 2006)(“Respondent’s addition of the product name ‘wireless controller’ with Complainant’s famous XBOX 360 trademark does nothing to prevent consumer confusion and, in fact, invites confusion
since ‘XBOX 360 Wireless Controller’ is a product manufactured and sold by Complainant.”).
5. Respondent has provided no evidence in the Response to contravene
Complainant’s allegation that Respondent registered the Infringing Domain Names “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant....” Policy ¶ 4(b)(i).Respondent’s offer to sell the Infringing Domain Names to Complainant falls squarely under the conduct proscribed in Policy ¶ 4(b)(i).
B. Respondent
On July 30, 2015 wrote by email to the Forum making the following additional submissions.
“December 2014 I filed for a patent on my newest gaming device called the HyperdriveNMC “Natural Motion Controller” which is a hybrid device that combines a joystick/steering wheel and keyboard. It is specifically designed for First Person Shooter games and FPS VR games when they are made.
It is this product that I legally bought those domains for as I specifically designed it with the Oculus Rift special functionality for use in Virtual Reality gaming and other programs. If you look at the website you can clearly see that.
I am currently working on the first prototype of this device and when it is done I will acquire financing to produce it like I have all my other inventions/products over the last 40 years…I refused a 1.5 million payday to sell/transfer those domains to a guy from Nevada who represented the Porn industry…
…The bullying and threatening from this California company is really because they failed to secure those domains for their client and they are trying to bully me into handing them over. They are falsely accusing me of Cybersquatting and they even lied to their client Oculus Rift in telling them that I demanded that they pay me for the domains when I never demanded anything from them. I see that the law firm submitted copies of the letters to you so you can read them and you will not see anywhere where I demanded anything from them as it was never my intention to sell the domains in the first place. That should be pretty damn obvious when I turned down a million and a half dollars for them. In the last letter I wrote to that law firm I even told them that they were not for sale to them or anyone else.’’
I have already sacrificed 1.5 million dollars to keep those domains for my gaming controller and I hope and pray that justice will be served in this case.
…I am also willing to remove the websites and just place links at those sites to re-direct anyone to my www.Hyperdrivenmc.com website if that would make a difference in the decisions outcome.”
C. Further additional submission by Respondent
Respondent also wrote to the Forum by email on August 4, 2015, making the following additional submissions.
“There are many controllers for the Oculus Rift device, A Microsoft X-Box one controller ships with the device. Then there will be the optional Oculus Rift Touch controllers available sometime next year that are sold separately.Oculus VR division has also just acquired an Israeli company Pebbles Interfaces, in a deal reported to be worth as much as $60 million.So then you add my controller which makes 4 different controllers so far for the Oculus Rift, 3 of which are not even made by Oculus Rift so my product and domain names are not hurting Oculus Rift in any way shape or form but are actually adding another FPS VR specialty controller that First Person Shooter gamers will buy. Competition is what keeps America alive and since I thought to buy those domains names and they did not they are crying foul and claiming it is hurting their client, which is nonsense.
In one of my letters to them I have already offered to sell them my FPS controller for 5 million 55 million less than what they just paid out for another controller and I also told them that the domains names would be included for free to anyone who might buy my controller but they have made no offer to buy my device and instead have been bullying me and threatening me and demanding that I transfer the domains to their client in 24 hours or else they would file this complaint with you folks. Plus I could have sold/transferred the domains to the Porn industry and not ever informed Oculus Rift of what was going on and could have had a 1.5 million payday which I turned down to protect Oculus Rift from what would have been a very potentially embarrassing situation down the road when they came out with their porn controller device. The way I have been treated by their law firm is a disgraceful and abusive as far as I am concerned.”
D. Final additional submission by Respondent
On August 24, 2015, the Forum received a further additional submission from Respondent entitled ‘Final Thoughts on this issue’. The submission was received in a timely manner according to The Forum's Supplemental Rule #7.In that additional submission, Respondent made the following contentions:
‘This case of cybersquatting that Oculus Rift’s lawyers have brought against me is an assault on my integrity and a simple case of character assassination. They have filed this complaint in order to have your organization rape me of my domains names that I bought legally for use with a gaming controller that I have designed to work with their virtual reality headset. My device will actually help them sell their device to First Person Shooter gamers around the world. Not the opposite, which they claim will hurt their client which is clearly absurd. I have very cleverly designed my device to be used while wearing the headset to play many types of games but specifically First Person Shooters.
I have been inventing/designing gaming accessories for over 35 years and for
proof of that please go to my website and click on “Products” and there you will
see the “Cyberlyte” the world’s first keyboard illuminator for playing PC games in the dark. You will also see my Mouse Bungee product line which has been sold to gamers around the world for 23 years in a row and which was bought from me in 2010 by Razer from Singapore. They are the biggest gaming accessory company in the world. They also make computers and they are also launching a Virtual Reality headset sometime next year. At my site you will see as far back as the early 80’s the Bally Home Computer console which was on sale during the Atari days. I started a company called Alternative Engineering to produce additional hardware for that console and made many devices from memory add-ons to a full blown mother board with an exclusive licensing deal to use a special graphics language from Bally called Z-Grass 32. You will also see at my site.
www.edwardlarkin.com
The Fragstick, a Hybrid Mouse and Joystick.
QVC Crystal PRO, Mouse Bungee with built in mouse pad.
Cord Blaster, a mouse Bungee with rotating head.
Twitchpadz, a mouse pad with intelligent markings that improve tracking for serious gamers.
Computer Monitor Bungee, a Mouse Bungee that requires no desk space and connects to a monitor.
Viper Systems, “Video Image Processing Equipment Research” A full QWERTY Keyboard and 16k memory Add-ons for the Bally Console.
I
paid for the domains and built an entire website to promote my new gaming controller.
I offered my controller to them to buy and said I would include the domains for
no fee as I would no longer need them if I have sold my controller. I have had
no reply so far.
The
fact that they were clearly asleep at the wheel and did not buy those domains
shows of their incompetence and I should not have to be penalized over their
inability to do something as simple as buying a domain name for their client
Oculus Rift.
Their complaint against me is both an insult and offensive to me as it implies
that I am a criminal. I have been in this business longer than the CEO of their
company has even been alive. They are using your organization to try to steel
my property. I hope you are not going to go along with them and that your
judgement returns them to the rightful and legal owner.’
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 established registered trademark rights in OCULUS VR by virtue of the following registrations:
(a) U.S. Trademark Registration No. 4,424,543 for the OCULUS VR mark covering “virtual reality headsets and helmets adapted for use in playing video games” in International Class 28 (filed February 1, 2013, issued October 29, 2013); and
(b) U.S. Trademark Registration No. 4,647,400 for the OCULUS VR mark covering “design and development of computer game hardware and software and virtual reality hardware and software” in International Class 42 (filed February 2, 2013, issued December 2, 2014).
3. Complainant has also established 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.
4. The disputed domain names <oculusriftnmc.com> and <oculusriftcontroller.com> were created on May 26, 2015 and the <oculusriftcontrollers.com> domain name was created on June 6, 2015.
5. The disputed domain names <oculusriftcontroller.com> and <oculusriftcontrollers.com> have resolved to Respondent’s website promoting Respondent’s own product and the domain name <oculusriftnmc.com> resolves to a parked website displaying generic click-through advertisements.
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.
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”). Complainant has established by evidence that the Panel accepts that it has two registered trademarks for OCULUS VR, namely:
(a) U.S. Trademark Registration No. 4,424,543 for the OCULUS VR mark covering “virtual reality headsets and helmets adapted for use in playing video games” in International Class 28 (filed February 1, 2013, issued October 29, 2013); and
(b)U.S. Trademark Registration No. 4,647,400 for the OCULUS VR mark covering “design and development of computer game hardware and software and virtual reality hardware and software” in International Class 42 (filed February 2, 2013, issued December 2, 2014).
It will be noted that, as the domain names <oculusriftnmc.com> and <oculusriftcontroller.com> were registered on May 26, 2015 and the <oculusriftcontrollers.com> domain name was registered on June 6, 2015, all three domain name were registered after the registration of the two trademarks.
Although Complainant has registered the OCULUS VR mark with the USPTO, it does not have a registered trademark for OCULUS or OCULUS RIFT. Registrations of OCULUS and OCULUS RIFT have been applied for but have not been finalized and at the present they have not been registered. Details of the applictions to register OCULUS and OCULUS RIFT are as follows:
(a) U.S. Trademark Application No. 85/951916 for the OCULUS RIFT mark covering “virtual reality headsets and helmets adapted for use in playing video games” in International Class 28 (filed June 5, 2013);
(b) U.S. Trademark Application No. 86/143204 for the OCULUS mark covering
“design and development of computer game hardware and software and virtual
reality hardware and software” in International Class 42 (filed December 13, 2013, first use April 12, 2012);
(c) U.S. Trademark Application No. 86/143192 for the OCULUS mark covering
“virtual reality game software” in International Class 9 (filed December 13, 2013,
first use April 12, 2012); and
(d) U.S. Trademark Application No. 86/143210 for the OCULUS mark covering
“virtual reality headsets and helmets adapted for use in playing video games” in
International Class 28 (filed December 13, 2013, first use April 12, 2012).
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.”).
The only trademark which is registered and on which Complainant may rely for present purposes is therefore the trademark for OCULUS VR.
However, the Panel notes that a Complainant does not need to hold registered trademark rights in order to have rights in the mark under Policy ¶ 4(a)(i). 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 of and fame of a name can establish a complainant’s common law rights in a mark. 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. F-M. The Panel therefore 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. As the Panel agrees with Complainant’s contentions here, the Panel finds that Complainant has common law rights in the mark under Policy ¶ 4(a)(i) dating back to at least as early as April 12, 2012. 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).
It should also be noted that a panel has already decided that Complainant has
the requisite common law trademark rights; see Oculus VR, LLC v. Ivan Smirnov
FA1506001625898 ( Nat. Arb Forum 27 July, 2015) where the panel found that “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.” Clearly the three disputed domain names were registered well after that date.
Complainant therefore has trademark rights to OCULUS VR and OCULUS RIFT.
The second issue that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s OCULUS VR mark or OCULUS RIFT marks.
The Panel finds that the disputed domain names are confusingly similar to Complainant’s registered trademark OCULUS VR. That is so because each of the domain names contains the dominant OCULUS part of Complainant’s OCULUS VR trademark. An internet user would naturally see the domain names as specifying the OCULUS trademark and as referring to the use of Oculus products combined with an “nmc” device, widely known in the industry as a natural motion controller and with the words ‘controller’ and ‘controllers’, again being references to a controller device to be used with Complainant’s Oculus Rift product. The internet user would also assume that the domain names are related to the goods and services covered by the OCULUS VR trademark, as ‘VR’ is widely understood as meaning ‘Virtual Reality’ and as ‘nmc’ , ‘ controller’ and ‘controllers’ cover the same concept. The domain names are therefore confusingly similar to the OCULUS VR trademark.
In addition, Complainant submits that Respondent’s disputed <oculusriftnmc.com>, <oculusriftcontroller.com>, and <oculusriftcontrollers.com> domain name are confusingly similar to Complainant’s OCULUS RIFT common law mark. The <oculusriftcontroller.com> and <oculusriftcontrollers.com> domain names add the descriptive word “controller” and “controllers” respectively to Complainant’s OCULUS RIFT mark, remove the space between two words in the mark, and adds the gTLD “.com.” Panels have held that adding a descriptive word, related to a complainant’s business, to a mark does not distinguish the domain name from the mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business). In the present case, an objective bystander when comparing the two domain names in question and the trademark would naturally assume that the domain names related to a controller device used in connection with Complainant’s trademarked and well known OCULUS RIFT virtual reality headsets and helmets adapted for use in playing video games. The domain names are for that reason confusingly similar to the OCULUS RIFT trademark. Panels have also held that adding a gTLD and removing the space from a mark does not differentiate a domain from a mark. See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ . . . [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”). Accordingly, the Panel concludes that the domain names <oculusriftcontroller.com> and <oculusriftcontrollers.com> are confusingly similar to the OCULUS RIFT mark under Policy ¶ 4(a)(i).
Complainant also submits that the <oculusriftnmc.com> domain name is also confusingly similar to the OCULUS RIFT common law mark. This domain name includes the mark in its entirety, minus the space and adds the gTLD “.com” and the abbreviation “nmc” which stands for “natural motion controller” and would be widely known to stand for that device, at least among those familiar with the video game industry. Again, Panels have held that removing of spaces in a mark and adding a gTLD does not alter the resemblance the domain has to a mark. See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant’s mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com’ . . . [is] insufficient to differentiate the disputed domain name from Complainant’s VIN DIESEL mark under Policy ¶ 4(a)(i)”). Further, Panels have held that a respondent who includes the entirety of a mark in a domain name establishes that the domain name is confusingly similar to the mark. See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it).The Panel therefore concludes that an objective bystander would assume that the domain name in question related to a natural motion controller used in connection with Complainant’s trademarked and well known OCULUS RIFT virtual reality headsets and helmets adapted for use in playing video games. The Panel holds that the disputed <oculusriftnmc.com> is confusingly similar to the OCULUS RIFT mark under 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 the dominant OCULUS part of Complainant’s OCULUS VR trademark and the whole of Complainant’s OCULUS RIFT trademark and to use them in its domain names which are confusingly similar to the marks for reasons that are given above;
(b) The disputed domain names <oculusriftnmc.com> and <oculusriftcontroller.com> were registered on May 26, 2015 and the <oculusriftcontrollers.com> domain name was registered on June 6, 2015.
(c) Respondent has used the domain names <oculusriftcontroller.com> and <oculusriftcontrollers.com> to resolve to a website which describes and actively promotes Respondent’s “natural motion controller”; the domain name <oculusriftnmc.com> does not currently resolve to an active website but to the GoDaddy site where it is offered for sale;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant submits that Respondent has no rights or legitimate interests in the disputed domain name. To support this claim Complainant points to WHOIS information which demonstrates that Respondent is not commonly known by the infringing domain names. The Panel notes that the available WHOIS information shows that Respondent registered the disputed domain names using the name “Edward Larkin.” Further, Respondent has made no effort to rebut the contention that it is not commonly known by the disputed domain names. Panels have held that WHOIS information and a lack of contrary evidence can indicate that a Respondent is not commonly known by a disputed domain name. See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). The Panel concludes that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii);
(f) Complainant further contends that Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the disputed <oculusriftcontroller.com> and <oculusriftcontrollers.com> domain names to resolve to websites promoting a product of Respondent that potentially competes with Complainant, namely Respondent’s own controller. See Compl., at Ex. S, T, and P. Panels have held that it is not a bona fide offering of goods or services or a legitimate noncommercial or fair use where a respondent is using a disputed domain name that is confusingly similar to a mark to promote a competing product. That is particularly so when, as in the present case, Respondent is using Complainant’s name and trademark to promote Respondent’s own product. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Thus, the Panel finds that Respondent’s use of the <oculusriftcontroller.com> and <oculusriftcontrollers.com> domain names is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or 4(c)(iii);
(g) Complainant also submits that Respondent’s parking of the
<oculusriftnmc.com> domain name at the GoDaddy site does not give rise
to rights or legitimate interests in the disputed domain name. Respondent appears to use the <oculusriftnmc.com> domain name to resolve to a generic parking website that displays click through advertisements, through which Respondent presumably profits. The website also offers the domain name for sale. Panels have held that using a disputed domain name to host click through advertisements is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant). The Panel holds hold that Respondent’s use of the <oculusriftnmc.com> domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶¶ 4(c)(i) and 4(c)(iii), respectively.
All of these matters go to make out the prima facie case against Respondent. It is then a matter for Respondent to rebut the prima facie case if he can.
Respondent’s case in rebuttal is essentially that he had a right to register the disputed domain names. Respondent has put its case succinctly in his additional submission entitled ‘Final thoughts on this issue’ by submitting that he ‘bought …( the domain names) legally for use with a gaming controller that I have designed to work with their virtual reality headset’. Respondent also argues that Complainant should have registered the domain names first if it wanted them, but did not do so as it was ‘asleep at the wheel’, that Complainant could have acquired the domain names from Respondent and that Respondent by rejecting a very high offer to sell the domain names to a predator in the pornography industry was really acting to ‘protect Oculus Rift from what would have been a very potentially embarrassing situation down the road when they came out with their porn controller device.’ Respondent also maintains that his intention was to have Complainant acquire the controller that he was developing and that the disputed domain names would in that event be given to Complainant free. The Panel does not accept these submissions. Respondent had no right to register domain names so clearly including Complainant’s trademark and product name, thereby giving the false impression that the domain names and any websites to which they led were official domain names and websites of Complainant and that they related to Complainant’s controller. There was also no disclaimer on the websites making it plain that they are not Oculus websites; indeed, not only do the domain names give the impression that they are Oculus’ own domain names dealing with its own controller, but the name OCULUS RIFT appears prominently on two of them. The visitor is therefore given the overall impression from the domain names that they are Oculus’ domain names, dealing with its own controller, an impression that is confirmed by the use of the words Oculus Rift on the websites. It is only at the end of the websites that it becomes plain that Respondent is in fact promoting his own controller. In substance, Respondent is therefore using Complainant’s trademark to promote his own product which he maintains is suitable for use with Complainant’s products.
As to the suggestion that Respondent rejected an offer to sell the domain names to a third party for a very high price and that he did so to ‘protect Oculus Rift’, the Panel notes that there is no evidence of that offer having been made. The Panel therefore does not accept that such an offer was made or rejected. Even if it were, that failed transaction did not give Respondent any right to register domain names using Complainant’s trademark and the name of its product or any legitimate interest in them.
Moreover, the Panel has studied the detail set out in the Complaint of the history of the development of Complainant’s products and the prominence it acquired. On the basis of the detail set out by Complainant, the Panel concludes that Respondent registered the disputed domain names because he knew Complainant was developing a control device and that his interests would be served by using the OCULUS RIFT trademark and product name to promote his own development of a similar product. None of that can give rise to a right or legitimate interest in the disputed domain names.
Respondent has therefore not rebutted the prima facie case against it and 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 claims that Respondent has registered and is using the disputed domain names in bad faith. Complainant argues that Respondent’s bad faith is evident from Respondent’s attempt to sell the disputed domain names for an amount far exceeding out of pocket costs. Respondent had offered the domain names to Complainant at a price of $1,500,000, as this is allegedly the initial price Respondent had received from a third-party businesses for the same domain names. See Compl., at Ex. Q. Panels have found that a respondent’s offering of disputed domain names for an amount in excess of out-of-pocket costs can demonstrate bad faith under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). The Panel therefore determines that Respondent has acted in bad faith under Policy ¶ 4(b)(i).
Secondly, Complainant argues that Respondent’s registration of multiple domain names featuring the OCULUS RIFT mark show a pattern of bad faith registration, bringing the case within the terms of Policy ¶ 4(b)(ii) and showing that Respondent registered the disputed domain names to prevent Complainant from doing so. Panels have held that Policy ¶ 4(b)(ii) may be satisfied when there have been multiple registrations of different domain names. See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)). In that case, the Panel was able to say:
“The registration of multiple domain names that infringe on the Complainant’s trademarks is evidence of a pattern of conduct. One instance of registration of several infringing domain names satisfies the burden imposed by the Policy 4.b.(ii). The Panel concludes that Respondent registered the domain names to prevent Complainant from reflecting the marks in corresponding domain names. Policy 4.b.(ii).” Those remarks are applicable to the present case where the conclusion is even stronger, as Respondent has registered three domain names using Complainant’s trademark and product name, linked two of them to a website selling a rival product and without any disclaimer on the site indicating that it is not an official OCULUS RIFT website, and offering the third domain name for sale. Therefore the Panel concludes that Respondent has acted in bad faith under Policy ¶ 4(b)(ii).
Thirdly, Complainant argues that Respondent uses the confusing similarity between its domain name and website to create a likelihood of confusion as to the authenticity of the site, bringing the case within bad faith under Policy ¶ 4(b)(ii). Respondent admits that he registered the <oculusriftcontroller.com> and <oculusriftcontrollers.com> domain names to promote the sale of his Hyper Drive Natural Motion Controller. See Compl., at Ex Q. It can be readily inferred from the registrations of <oculusriftcontroller.com> and <oculusriftcontrollers.com> that the registration of <oculusriftnmc.com> was for a similar promotional purpose. Panels have held that use of a confusingly similar domain name to promote a competing or related product is demonstrative of bad faith under Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name). The Panel therefore finds that Respondent has acted in bad faith under Policy ¶ 4(b)(iv).
Fourthly, the Panel concludes that Respondent had actual notice of Complainant’s rights in the OCULUS RIFT trademark at the time of registration of the domain names. The fame that Complainant’s marks and product name had already acquired, coupled with the fact that Respondent has admitted to registering some of the disputed domain names with Complainant’s OCULUS RIFT mark in mind indicate that Respondent had actual knowledge of Complainant’s rights at the time of registration. See See Compl., at Ex Q. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration). The Panel concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii).
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 <oculusriftnmc.com>, <oculusriftcontroller.com> and <oculusriftcontrollers.com>, domain names using the OCULUS RIFT mark and in view of the conduct that Respondent engaged in when using the domain names, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Before concluding, the Panel notes that in several places in his submissions, Respondent accused Complainant and its attorneys of ‘bullying and threatening’ behavior, ‘character assassination’, being ‘insult(ing) and offensive to me …and impl(ying) that I am a criminal’, and generally of abusing Respondent. The Panel has examined the evidence several times, but can find no evidence of any such conduct by or on behalf of Complainant and finds that the allegations are untrue.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <oculusriftnmc.com>, <oculusriftcontroller.com> and <oculusriftcontrollers.com>, domain names be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: August 23, 2015
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