The Complainant is Meta Platforms, Inc., Instagram, LLC, United States of America (hereinafter, “Complainant”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Matthew Yates, Matt Yates Life Coaching, United States of America (hereinafter, “Respondent.”)
2. The Domain Names and RegistrarThe disputed domain names
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 17, 2021. On November 18, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On November 19, 2021, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 25, 2021. In accordance with the Rules, paragraph 5, the due date for Response was December 15, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 16, 2021.
The Center appointed M. Scott Donahey as the sole panelist in this matter on December 22, 2021. 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. Proper (Party) (Parties) ComplainantThis action is brought by multiple parties seeking to act as Complainant. A complaint may be brought on behalf of multiple complainants. In such a case, the Panel must decide whether
“(i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient to permit the consolidation.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, Section 4.11.
Complainant No.1, Meta Platforms, Inc., formerly operated under the name “Facebook, Inc.” On October 21, 2021, it changed its name to “Meta Platforms, Inc.” Complaint, Annex 1. Accordingly, the Panel finds that Facebook and Meta Platforms are in fact one and the same, and the change is only a change in name. Therefore, Meta Platforms, Inc. is a proper complainant in this matter.
Complainant No. 2, Instagram LLC, is a wholly owned subsidiary of Meta Platforms, Inc., previously determined to be the proper Complainant No. 1 in this action. Complaint, Annex 2. The Panel determines that it is fair and equitable in the circumstances of this case where the two Complainants are alleging the same conduct or inaction by Respondent against each of the Complainants.
As the two Complainants are under the control and direction of one of the Complainants and as the allegations in the Complaint against the Respondent are identical, the Panel determines that it would be equitable and procedurally efficient to permit consolidation of the action set out in the Complaint by the two Complainants.
5. Factual BackgroundComplainant is a social technology company and operates both Facebook and Instagram. Complainant’s focus is the connection of people, the establishment of communities, and the interests of businesses. The Complainant allows users to share experiences with other people unable to get together in any physical sense. Complaint, Annex 1. The websites at “www.facebook.com” and “www.instagram.com” are ranked respectively as the sixth and seventeenth most visited web sites in the United States of America (“United States”) and the seventh and twenty-fourth most visited in the world. Complaint, Annex 6.
Complainant has registered numerous domain names using the term “facebook” or “Instagram”, as the SLD. Complaint, Annex 7.
Complainant is the owner of numerous trademark registrations for FACEBOOK and INSTAGRAM, dating back to at least as early as January 10, 2006. Complaint, Annex 8.
Respondent registered the disputed domain names on January 1, 2021. Complaint, Annex 3. Initially all of the disputed domain names resolved to a landing page indicating “This domain may be for sale. We can verify that the domain is for sale over the phone, help you with the purchase process, and answer any questions.” At the time of the filing of the Complaint, none of the Domain names resolved. Complaint, Annexes 9 and 10.
On May 4, 2021, Complainant’s representatives sent a cease and desist letter to Respondent asserting Complainant’s trademark rights, and demanding the transfer of the disputed domain names to Complainant’s agent. Receiving no response to its initial demand letter, Complainant sent a second such letter on May 18, 2021. Respondent did not respond to this letter as well. Complaint, Annex 11
On May 28, 2021, Complainant’s representatives sent an email to the Registrar, stating that the disputed domain names were not for sale and requesting that this indication be removed. On June 29, 2021, the registrar replied that such indication had been removed. Id.
6. Parties’ Contentions A. ComplainantComplainant asserted that the disputed domain names were confusingly similar to its registered trademarks. Complainant alleged that Respondent had no rights or legitimate interest in respect of the disputed domain names. Finally, Complainant contended that the disputed domain names had been registered and were being used in bad faith.
B. RespondentRespondent did not reply to the Complainant’s contentions.
7. Discussion and Findings“A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Paragraph 4(a) of the Policy directs that the complainant must prove each of the following:
(i) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and,
(ii) that the respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly SimilarThe first three disputed domain names are confusingly similar to Complainant’s FACEBOOK trademark, which through its use and recognition has become famous, in that they contain that famous mark attached to English words (“marketing” and “pro”) or another of Complainant’s trademarks (“INSTAGRAM”). The final four of the disputed domain names are confusingly similar to Complainant’s well known INSTAGRAM trademark attached to common English words: “ads”, “followers”, “marketing”, and “pro”. The Panel so finds.
B. Rights or Legitimate InterestsWhile the overall burden of proof in UDRP proceedings is on the complainant, UDRP panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the almost impossible task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 2.1.
In the present case, Complainant alleges that Respondent has no rights or legitimate interests in respect of the disputed domain name and Respondent has failed to assert any such rights. Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad FaithRespondent registered seven domain names each of which contained Complainant’s famous or well known trademarks. Respondent used the disputed domain names to resolve to a web site which contained information that they could be purchased from Respondent, such indication only being withdrawn by the Registrar on Complainant’s objection. The Panel finds that Respondent registered and is using the disputed domain names in bad faith.
8. DecisionFor 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:
be transferred to the Complainant.
M. Scott Donahey
Sole Panelist
Date: January 5, 2022