ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Meta Platforms, Inc. v. Registration Private, Domains By Proxy, LLC. / RAMONCITO ULEP, TIRA GROUP Case No. D2022-2659 1. The Parties Complainant is Meta Platforms, Inc., United States of America (the "United States"), represented by Hogan Lovells (Paris) LLP, France. Respondent is Registration Private, Domains By Proxy, LLC., United States / RAMONCITO ULEP, TIRA GROUP, United States. 2. The Domain Names and Registrar The disputed domain names and are registered with GoDaddy.com, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 20, 2022. On July 21, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 22, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 2, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 3, 2022. The Center verified that the Complaint together with the amended 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 August 5, 2022. In accordance with the Rules, paragraph 5, the due date for Response was August 25, 2022. Respondent did not submit a response to Complainant's contentions. Accordingly, the Center notified Respondent's default on August 26, 2022. page 2 The Center appointed Lorelei Ritchie as the sole panelist in this matter on September 14, 2022. 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 Complainant, formerly known as Facebook, is a provider of online social networking services. Launched in 2004, Facebook now has over 2 billion monthly active users. Its main website, "www.facebook.com", is the third most visited in the world. Complainant is the owner of additional domain names, including . Complainant uses its domain names as well as its social media presence to provide services to its global network of consumers. In addition to its FACEBOOK mark, Complainant has provided its services under the shortened name and mark FB. Since its official change of name, which was recorded and publicly announced on October 28, 2021, Complainant has also been publicly referred to under its new name and mark META. Complainant owns trademark registrations for the marks FB and META. These include, among others, United States Registration No. 4659777 for FB (Registered December 23, 2014), and United States Registration No. 5548121 for META (Registered August 28, 2018, and assigned to Complainant on October 26, 2021). The disputed domain names were registered on October 28, 2021. The disputed domain name has been used to redirect to Complainant's official website, displaying Complainant's name and marks. The disputed domain name is not linked to an active website. Respondent has no affiliation with Complainant, nor any license to use its marks. 5. Parties' Contentions A. Complainant Complainant contends that (i) the disputed domain names are identical or confusingly similar to Complainant's trademarks, (ii) Respondent has no rights or legitimate interests in the disputed domain names; and (iii) Respondent registered and is using the disputed domain names in bad faith. Complainant contends that its globally renown services, offered since 2004 under the FACEBOOK mark, are commonly referred to as FB, including by media enterprises such as the New York Times and the Guardian. Complainant further alleges that since it issued a public announcement on October 28, 2021, Complainant received immediate global media attention regarding its corporate change of name to META. Complainant further contends that it owns and has owned rights to the marks FB and META since prior to the registration of the disputed domain names by Respondent. Complainant contends that Respondent has incorporated Complainant's well-known FB and META marks into the disputed domain names, with the addition only of non-source-identifying terms. Complainant contends that Respondent lacks rights or legitimate interest in the disputed domain names, and rather has registered and is using them in bad faith, having simply acquired the disputed domain names for Respondent's own commercial gain. page 3 B. Respondent On August 5, 2022, the date the proceeding was commenced by the Center, Complainant received an email communication from Respondent, which Complainant provided to the Center. The communication included an offer to sell the disputed domain names "for $10M each, or best offer." Respondent did not file a formal reply to Complainant's contentions in this proceeding. 6. Discussion and Findings A. Identical or Confusingly Similar The Panel must first determine whether the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainants have rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that they are. The disputed domain name incorporates in full Complainant's registered FB and META marks and merely adds the term "my". Similarly, the disputed domain name also incorporates in full Complainant's registered FB and META marks, adding the dictionary terms "my" and "verse" or "metaverse." Numerous UDRP panels have agreed that supplementing or modifying a trademark with additional terms does not prevent a finding of confusing similarity for purposes of satisfying this first prong of paragraph (4)(a)(i) of the Policy. See, for example, Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500; Wal-Mart Stores, Inc. v. Horoshiy, Inc., WIPO Case No. D2004-0620; General Electric Company v. Recruiters, WIPO Case No. D2007-0584. The Panel therefore finds that the disputed domain names are confusingly similar to trademarks in which Complainant has rights in accordance with paragraph (4)(a)(i) of the Policy. B. Rights or Legitimate Interests The Panel next considers whether Complainant has shown that Respondent has no "rights or legitimate interests," as must be proven to succeed in a UDRP dispute. Paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name "in connection with a bona fide offering of goods or services;" (ii) demonstration that respondent has been "commonly known by the domain name;" or (iii) "legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." No evidence has been presented to the Panel that might support a claim of Respondent's rights or legitimate interests in the disputed domain names, and Respondent has no license from, or other affiliation with, Complainant. Therefore, the Panel finds that Complainant has provided sufficient evidence for a prima facie case that Respondent lacks "rights or legitimate interests" in accordance with paragraph 4(a)(ii) of the Policy, which Respondent has not rebutted. C. Registered and Used in Bad Faith There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. As noted in Section 4 of this Panel's decision, the disputed domain name has been used to redirect to Complainant's official website, displaying Complainant's name and marks. Redirecting the disputed domain name to Complainant's website can establish a finding that Respondent has registered the disputed domain name to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's mark, insofar as Respondent retains control over the page 4 redirection thus creating a real or implied ongoing threat to Complainant. See section 3.1.4 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions ("WIPO Overview 3.0"). The disputed domain name is not linked to an active website. It is nevertheless well established that having a passive website does not necessarily shield a respondent from a finding of bad faith. See section 3.3 of WIPO Overview 3.0, which notes that the "non-use of a domain name" does not necessarily negate a finding of bad faith. Rather, a panel must examine "the totality of the circumstances," including, for example, whether a complainant has a well-known trademark, and whether a respondent conceals his/her identity and/or replies to the complaint. Respondent here used a privacy service to register the disputed domain names. Complainant has demonstrated a high level of consumer exposure to its marks in jurisdictions around the world. Respondent registered the disputed domain names on October 28, 2021, the same day that Complainant received significant media attention upon the announcement of its change of name. Furthermore, as noted above, the day this proceeding was commenced by the Center, Respondent contacted Complainant with an offer to sell the disputed domain names, "for $10M each, or best offer." The Panel finds sufficient evidence that Respondent "registered or [.] acquired the domain name primarily for the purpose of selling [.] for valuable consideration in excess of [.] documented out-of-pocket costs," in a showing of bad faith as contemplated by paragraph 4(b)(i) of the Policy. See Ticketmaster Corporation v. Spider Web Design, Inc., WIPO Case No. D2000-1551. Therefore, the Panel finds that Respondent registered and used the disputed domain names in bad faith for purposes of paragraph (4)(a)(iii) 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 and be transferred to Complainant. /Lorelei Ritchie/ Lorelei Ritchie Sole Panelist Date: September 28, 2022
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