Facebook Technologies, LLC v. [John Doe as Holder of Six Domain Names] / Clark Michael / adolph hardy / Eddie Campigli
Claim Number: FA2202001985347
Complainant is Facebook Technologies, LLC (“Complainant”), represented by David Taylor of Hogan Lovells (Paris) LLP, France. Respondent is [John Doe as Holder of Six Domain Names] / Clark Michael / adolph hardy / Eddie Campigli (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <buyocluluass.us>, <ocalareshop.us>, <occlues.us>, <ocualass.us>, <oculaesshop.us>, <oculuss.us>, <oculussr.us>, <oculusss.us>, and <shopoculuss.us>, all registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 22, 2022; the Forum received payment on February 22, 2022.
On February 23, 2022, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <buyocluluass.us>, <ocalareshop.us>, <occlues.us>, <ocualass.us>, <oculaesshop.us>, <oculuss.us>, <oculussr.us>, <oculusss.us>, and <shopoculuss.us> domain names are registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On February 24, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 16, 2022, by which Respondent could file a Response to the Complaint, via e-mail message addressed to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to the attention of postmaster@buyocluluass.us, postmaster@ocalareshop.us, postmaster@occlues.us, postmaster@ocualass.us, postmaster@oculuss.us, postmaster@oculaesshop.us, postmaster@shopoculuss.us, postmaster-@oculusss.us and postmaster@oculussr.us. Also on February 24, 2022, 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 formal response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On March 21, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD 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 names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
(1) all of the domain names have been associated with highly similar websites purporting to sell Complainant’s products and having a look and feel similar to that of Complainant’s official website;
(2) all of the domain names are registered with the same registrar;
(3) with but one exception, all of the domain names are associated with the same IP ranges;
(5) all of the domain names target Complainant’s OCULUS trademark.
Because Respondent does not refute any of these assertions, and because it appears from the asserted facts that they cannot be explained by reference to mere coincidence, the Panel determines that Complainant’s request must be granted. Accordingly, this Decision will refer to the collective of identified respondents throughout as a single Respondent. See, for example, Caterpillar v. Arendt, FA1789701 (Forum July 2, 2018):
The Panel finds that the domain names are under common control because the three domain names are constructed in the same manner, were registered on the same date with the same registrar, have been used in the same way, and use … [the same]… servers…. These elements are sufficient to find that the domain names were registered by the same domain name holder.
relATED Issue: Identity Theft
One of the four individual respondents identified in the Complaint, while not responding to the substantive allegations of the Complaint as provided in the Rules, has communicated with the Forum via an e-mail message in which he asserts that someone has used his name and address to obtain the six domain names attributed to him, and that he does not own any domain name or related website. Complainant, in light of these assertions, has also communicated with the Forum, via e-mail message, acknowledging that there is a “strong possibility of identity theft” with respect to that individual respondent, and that the Panel may wish to redact that individual’s identity in this Decision.
In weighing this unopposed proposal, we take cognizance of Policy¶4(j), which provides that: “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.” In Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Forum December 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Forum May 19, 2005), panels, acting under the authority of Policy¶4(j), omitted from their decisions named respondents’ identifying information, in order to protect those named respondents from the consequences of identity theft. In consideration of the reasoning in those decisions, which we adopt, the name of the domain name registrant recited in the pertinent WHOIS information is not included in either the caption or the body of this Decision. Instead, we have substituted “[John Doe as Holder of Six Domain Names]” throughout.
A. Complainant
Complainant is a global technology company which, among other things, markets virtual reality (“VR”) products and services under the OCULUS mark.
Complainant holds a registration for the OCULUS trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,891,157, registered January 26, 2016.
Respondent registered the domain names <occlues.us>, <ocualass.us>, <buyocluluass.us>, <ocalareshop.us>, <oculaesshop.us>, <oculuss.us>, <oculussr.us>, <oculusss.us> and <shopoculuss.us> within the period from September 26, 2021, to November 8, 2021.
All of the domain names are confusingly similar to Complainant’s OCULUS mark.
Respondent has not been commonly known by any of the domain names,
Complainant has not licensed or otherwise authorized Respondent to use its OCULUS mark.
Respondent does not and has not used the domain names for either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent now makes no active use of the domain names.
Respondent lacks both rights to and legitimate interests in any of the domain names.
Respondent knew of Complainant’s rights in the OCULUS mark when it registered the domain names.
Respondent registered the domain names under cover of false WHOIS Information.
Respondent both registered and now uses the domain names in bad faith.
B. Respondent
Respondent failed to submit a formal Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of any of the domain names; and
(3) the domain names were registered and are being used by Respondent in bad faith.
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:
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant has rights in the OCULUS trademark sufficient to satisfy the requirements for standing to pursue a claim in this proceeding, as set out in Policy¶4(a)(i), by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy¶4(a)(i)] rights ….
Turning to the central question posed by Policy¶4(a)(i), we conclude from a review of the record that each of the domain names <buyocluluass.us>, <ocalareshop.us>, <occlues.us>, <ocualass.us>, <oculaesshop.us>, <oculuss.us>, <oculussr.us>, <oculusss.us> and <shopoculuss.us>, is confusingly similar to Complainant’s OCULUS trademark. Three of the domain names incorporate the mark in its entirety, with only the addition of one or two letters that do not significantly alter the phonetic character of the result, plus the United States Top Level Domain (“usTLD”) “.us.” The other domain names are randomly misspelled versions of the mark, plus the “.us” TLD, with, in some instances, an appended generic term such as “shop” or “buy,” which serve to underscore Respondent’s commercial aims in creating those domain names. These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See, for example, MTD Products Inc v. J Randall Shank, FA 1783050 (Forum June 27, 2018):
The … domain name is confusingly similar to Complainant’s mark as it wholly incorporates the … mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.
See also Vanguard Trademark Holdings USA LLC v. Shuai Wei Xu / Xu Shuai Wei, FA 1784238 (Forum June 1, 2018):
Respondent arrives at each of the disputed domain names by merely misspelling [Complainant’s mark in] each of …[them]… and adding the gTLD ‘.com.’ This is insufficient to distinguish the disputed domain names from Complainant’s trademark.
Further see Allied Bldg. Prods. Corp. v. Henkel, FA 827652 (Forum December 11, 2006):
[I]t is well established that the top-level domain, here “.us,” is insignificant with regard to UDRP analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the <buyocluluass.us>, <ocalareshop.us>, <occlues.us>, <ocualass.us>, <oculaesshop.us>, <oculuss.us>, <oculussr.us>, <oculusss.us> and <shopoculuss.us> domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy¶4(c)(i)-(iv), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain names that are cognizable under the Policy.
We begin by noting that there is nothing in the record before us suggesting that Respondent is the owner or beneficiary of a trademark or service mark that is identical to any of the <buyocluluass.us>, <ocalareshop.us>, <occlues.us>, <ocualass.us>, <oculaesshop.us>, <oculuss.us>, <oculussr.us>, <oculusss.us> and <shopoculuss.us> domain names. We conclude, therefore, that Respondent has no claim of rights to or legitimate interests in the domain names under Policy¶4(c)(i). See, for example, Pepsico, Inc. v. Becky, FA 117014 (Forum September 3, 2002), finding that, because there was no evidence showing that a respondent owned a trademark or service mark reflecting a specific domain name, it could not lay claim to rights to or legitimate interests in that domain name under Policy ¶4(c)(i).
We also note Complainant’s assertion, to which Respondent does not object, that Respondent has used the <buyocluluass.us>, <ocalareshop.us>, <occlues.us>, <ocualass.us>, <oculaesshop.us>, <oculuss.us>, <oculussr.us>, <oculusss.us> and <shopoculuss.us> domain names to pass itself off as Complainant online in order to profit from the sale of goods purporting to be those of Complainant but at steeply discounted prices. Because such a use of the domain names was inherently illegitimate, it cannot be said that this use satisfied the express requirement of Policy¶4(c)(ii) that Respondent’s use of the domain names be “in connection with a bona fide offering of goods or services.” See, for example, eLuxury.com Inc. v. WangJunJie, FA 1075554 (Forum November 30, 2007) (concluding that the sale of counterfeit products of a complainant on a resolving website was evidence that a respondent did not make either a bona fide offering of goods or services by means of a disputed domain name or a legitimate noncommercial or fair use of it).
We turn then to Complainant’s contention, which Respondent does not deny, that Respondent has not been commonly known by any of the challenged domain names. In this connection, we note that the pertinent WHOIS information identifies the registrants of the domain names either as “[John Doe as Holder of Six Domain Names] or Clark Michael or adolph hardy or Eddie Campigli,” none of which resembles any of the domain names. On this record, we conclude that Respondent has not been commonly known by any of the contested domain names so as to have demonstrated rights to or legitimate interests in any of them within the ambit of Policy¶4(c)(iii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018), finding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent only as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner.
Finally, under this head of the Policy, because Respondent evidently does not currently make active use of any of the contested domain names, we cannot conclude that Respondent is now making a legitimate noncommercial or fair use of any of them within the meaning of Policy¶4(c)(iv). See, for example, Morgan Stanley v. Francis Mccarthy / Baltec Marine LLC, FA 1785347 (Forum June 8, 2018):
Inactive holding of a domain name does not qualify as a bona fide offering of goods or services ….
And, it should go without saying that Respondent’s prior use of the domain names, as detailed in the Complaint, was not in any sense legitimate or noncommercial or fair.
The Panel therefore finds that Complainant has amply satisfied the proof requirements of Policy¶4(a)(ii).
We are persuaded by the evidence that Respondent has shown a pattern of bad faith registration and use of the domain names here at issue by registering and deploying nine of them in rapid succession with the apparent intent to profit illicitly from the confusion thus caused among Internet users wishing to do business with Complainant. See, for example, United States Postal Service v. Yongkun Wang, FA 1788170 (Forum July 11, 2018):
Complainant contends that Respondent is a serial cyber[-] squatter as evidenced by its registering four separate domain names all incorporating Complainant’s … mark. Therefore, the Panel finds that the Respondent registered and is using the disputed domain names in bad faith ….
It is also plain that Respondent registered the domain names while knowing of Complainant and its rights in the OCULUS mark. From this it follows that Respondent registered each of them in bad faith. See, for example, University of Rochester v. Park HyungJin, FA1587458 (Forum December 9, 2014):
[T]he Panel infers Respondent’s actual knowledge here[, and therefore Respondent’s bad faith in registering the disputed domain name,] based on Respondent’s complete use of the … mark in the … domain name to promote links related to the field of …[business]… where Complainant’s mark is used.
Our conclusion with regard to Respondent’s bad faith use of the domain names extends to its current passive holding of them, both because we can conceive of no legitimate use to which Respondent might put them, and because Respondent has exhibited untrustworthiness in using a multiplicity of identities with the evident purpose of avoiding detection. See, for example, Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000): “[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain names <buyocluluass.us>, <ocalareshop.us>, <occlues.us>, <ocualass.us>, <oculaesshop.us>, <oculuss.us>, <oculussr.us>, <oculusss.us>, and <shopoculuss.us> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 4, 2022
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