ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Meta Platforms, Inc. v. Thibault LAURIANO Case No. D2022-2923 1. The Parties The Complainant is Meta Platforms, Inc., United States of America ("United States"), represented by Hogan Lovells (Paris) LLP, France. The Respondent is Thibault LAURIANO, France. 2. The Domain Name and Registrar The disputed domain name is registered with GoDaddy.com, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 8, 2022. On August 8, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 9, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on August 18, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on August 23, 2022. The Respondent sent three informal communications to the Center on August 18, 2022, and August 19, 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 the Respondent of the Complaint, and the proceedings commenced on September 2, 2022. In accordance with the Rules, paragraph 5, the due date for Response was September 22, 2022. The Respondent did not submit a formal Response within the due date, but sent an informal communication to the Center on October 9, 2022. page 2 The Center appointed Assen Alexiev as the sole panelist in this matter on November 2, 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 The Complainant is a United States social technology company, formerly known as Facebook, Inc. It changed its name to Meta Platforms, Inc. on October 28, 2021. The Complainant operates Facebook, Instagram, Meta Quest (formerly Oculus), Portal, and WhatsApp, and its focus is to bring the metaverse to life and to help people connect, find communities and grow businesses. The Complainant offers a social virtual reality ("VR") experience called "Horizon Worlds", where people can create and explore together. This collaborative platform was first announced in September 2019 under the name "Facebook Horizon", and renamed to "Horizon Worlds" on October 7, 2021. The Complainant is the owner of the following trademark registrations for the sign "HORIZON" (the "HORIZON trademark"): - the United Kingdom trademark HORIZON with registration No. 3499858, registered on September 18, 2020 for goods and services in International Classes 9, 42 and 45; - the European Union Trade Mark HORIZON with registration No. 018252474, registered on June 15, 2021, for goods and services in International Classes 9, 42 and 45; and - the Chinese trademark HORIZON with registration No. 47189601, registered on July 7, 2021, for services in International Class 41. The disputed domain name was registered on October 22, 2021. It resolves to a parking webpage displaying an offer for sale of the disputed domain name. 5. Parties' Contentions A. Complainant The Complainant states that the disputed domain name is confusingly similar to its HORIZON trademark, because the addition in it of the term "worlds", before the HORIZON trademark does not prevent a finding of confusing similarity with the trademark, which remains clearly recognizable in the disputed domain name. According to the Complainant, the Respondent has no rights or legitimate interests in respect of the disputed domain name, because it is not a licensee of the Complainant and has not been otherwise allowed by the Complainant to use the HORIZON trademark in a domain name or otherwise. The Complainant notes that although the Respondent claims an intention to use the disputed domain name for legitimate commercial purposes, it is not currently doing so and has not made any demonstrable preparations for it. The Respondent claims to have "invested a significant amount in the development of this AR/VR software", but there is no evidence of a business plan or any investment having been made. The Complainant submits that the Respondent's "HomePage" of its App does not amount to evidence of credible investment or proof of a genuine business plan utilizing the disputed domain name. The Complainant notes that the disputed domain name redirects to a Registrar parking webpage indicating that the disputed domain name is available for sale, and the disputed domain name is also listed for sale on the Afternic platform with a BIN price of USD 6,666. The Complainant adds that the Respondent promotes the sale of the disputed domain name on LinkedIn and Twitter. The Complainant notes that on June 24, 2022, its lawyers sent a notice to the Respondent via the contact form of the Registrar. In response, the Respondent informed the Complainant's lawyers that it would not transfer the disputed domain name for free, and proposed to sell it to the Complainant for USD 66,666. On the same date, the Respondent replied via email asking the Complainant for further details. On July 1, 2022, the Complainant's lawyers sent a cease-and-desist letter to the page 3 Respondent. On July 4, 2022 the Respondent replied, claiming that the disputed domain name had been registered for a VR project that the Respondent had been developing, and stated its willingness to sell the disputed domain name, making it clear that the intention behind offering the disputed domain name for sale via LinkedIn was to target the Complainant and other business owners who may be interested in the disputed domain name. The Complainant submits that the Respondent was aware of the Complainant's rights in the HORIZON trademark, and registered the disputed domain name for the purpose of selling it to the Complainant with a view to deriving profit from the goodwill associated with the Complainant's trademark, which is evident from the fact that the Respondent registered the disputed domain name, noting the international media speculation that the Complainant was planning a potential rebranding as "Horizon" and its announcement of the rebranding of "Facebook Horizon" to "Horizon Worlds" on October 7, 2021, just over two weeks before the Respondent registered the disputed domain name, and is also evident from the fact that the Respondent promotes the sale of the disputed domain name via its LinkedIn and Twitter accounts. The Complainant points out that as the Respondent noted in its messages to the Complainant that its intention when offering the disputed domain name for sale on LinkedIn was to target the Complainant as well as other business owners who may be interested in the disputed domain name. According to the Complainant, it is not credible for the Respondent to deny that it did not have actual knowledge of the Complainant's Horizon Worlds product when registering the disputed domain name, given that the Respondent's graphic representation of "Worlds Horizon" is very similar to the Complainant's graphic representation of its "Horizon Worlds" product. According to the Complainant, the Respondent's name bears no resemblance to the disputed domain name, and the Respondent's alleged "Worlds Horizon" AR/VR product concept is neither well defined nor well developed, and the Respondent admits that it has not been launched yet. The Complainant also notes that the Respondent's claim that it needs the disputed domain name for its project is at odds with its offer for sale of the disputed domain name. The Complainant maintains that the Respondent does not appear to have acquired any trademark rights including the term "horizon" that would confer any rights or legitimate interests in the disputed domain name on the Respondent. The Complainant states that the Respondent is likely to assert rights or legitimate interests in the disputed domain name on the basis that it is composed of a combination of dictionary terms. According to it, the word "worlds" is not commonly associated with the word "horizon" such that the disputed domain name may be said to correspond to a common phrase, and in any case the Respondent has not used the disputed domain name in connection with the term "horizon". The Complainant adds that its HORIZON trademark is used in the context of providing VR services under the name "Horizon Worlds". As a result, the addition of the dictionary term "worlds" to the Complainant's trademark carries a risk of implied affiliation with the Complainant, further evidencing the Respondent's intent to target the Complainant. The Complainant notes that the risk of implied affiliation with the Complainant is heightened by the Respondent's use of a graphic in its representation of "Worlds Horizon" brand on its Twitter and LinkedIn accounts that is very similar to the Complainant's "Horizon Worlds" graphic. The Complainant contends that the disputed domain name was registered and is being used in bad faith. It notes that it first announced its social VR experience in September 2019 under the name "Facebook Horizon", and launched it as an invitation-only beta phase on April 3, 2020. The Complainant announced that this social VR experience would be renamed to "Horizon Worlds" on October 7, 2021 - 15 days before the Respondent registered the disputed domain name. The Complainant also points out that its trademark registrations in the term HORIZON date between September 18, 2020, and October 6, 2021, and predate the registration date of the disputed domain name on October 22, 2021. The Complainant adds that at the time of registration of the disputed domain name, there was significant international media speculation as to Facebook's imminent re-branding. The Complainant maintains that not only did the Complainant already have registered trademark rights in October 2021, but the timing of the Respondent's registration of the disputed domain name supports the finding that the Respondent registered the disputed domain name opportunistically with a view to selling it to the Complainant at a substantial profit, because the registration of page 4 the disputed domain name coincides with significant media coverage regarding the Complainant's potential rebranding as "Horizon" and the Complainant's announcement of the rebranding of "Facebook Horizon" as "Horizon Worlds". The Complainant submits that the Respondent registered the disputed domain name primarily for the purpose of selling it to the Complainant for valuable consideration in excess of the Respondent's documented out-of-pocket costs incurred at the time of registration. The Complainant notes that the Respondent has offered the disputed domain name for sale to the Complainant for USD 66,666. Finally, the Complainant submits that the Respondent's use of a disclaimer on its Twitter account as to its affiliation with the Complainant cannot cure the Respondent's bad faith. B. Respondent As a summary of the main Respondent's contentions, the Panel notes that the Respondent states that initially it is not interested in selling the disputed domain name, but got interested in the sale afterwards. The Respondent states that it wanted to resell the disputed domain name it acquired before the Complainant made its new trademark registration 5 months later. The Respondent notes that it offered the disputed domain name to another company that already used the keywords "worlds" and "horizon" in their trademark. The Respondent contends that no one blamed it for trademark infringement except the Complainant. The Respondent states that it has started to design and code a User Experience ("UX") related to the thematic of "Worlds-Horizon" before the Complainant and its Horizon Worlds and alleges that it has proof of concept with all history and chronology since 2017. The Respondent states that if the Complainant wishes to acquire the disputed domain name, it can offer the Respondent a price with the Registrar. The Respondent notes that if the Complainant is not able to settle this commercially and fairly, a different solution would cost more than the Respondent's initial proposition. 6. Discussion and Findings Pursuant to the Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name was registered and is being used in bad faith. In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with the Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present its case. By the Rules, paragraph 5(c)(i), it is expected of a respondent to: "[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain- name holder) to retain registration and use of the disputed domain name [.]". A. Identical or Confusingly Similar The Complainant has provided evidence that it is the owner of the HORIZON trademark and has thus established its rights in this trademark for the purposes of the Policy. page 5 The disputed domain name incorporates the HORIZON trademark with the addition of the dictionary word "worlds". The word elements are separated by a hyphen "-", and the HORIZON trademark is easily recognizable in the disputed domain name. As discussed in section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. In view of the above, the Panel finds that the disputed domain name is confusing similar to the HORIZON trademark in which the Complainant has rights. B. Rights or Legitimate Interests While 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 often-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. See section 2.1 of the WIPO Overview 3.0. The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name, because it has not been authorized by the Complainant to use the HORIZON trademark and has not used the disputed domain name in connection with a bona fide offering of goods or services. The Complainant submits that the disputed domain name was registered shortly after the Complainant publicly announced the rebranding of its social VR services to "Horizon Worlds", and was registered with the aim to sell it to the Complainant or another interested party at a significant price. In this regard, the Complainant points out that the Respondent publicly offers the disputed domain name for sale and has offered it for sale to the Complainant for USD 66,666. The Complainant has thus established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent maintains that the disputed domain name was registered for its VR/AR product, and that at that time the Respondent was no aware of the renaming of the Complainant's service to "Horizon Worlds". The Respondent nevertheless confirms that it is ready to sell the disputed domain name. The disputed domain name is confusingly similar to the HORIZON trademark and to the Complainant's "Horizon Worlds" VR services, and as shown by the evidence submitted by the Complainant and not disputed by the Respondent, it is indeed offered for sale. There is also evidence that the Respondent has offered the sale price of USD 66,666 to the Complainant. The evidence submitted by the Complainant shows that there was significant media coverage of the Complainant's plans to rename its social VR experience to "Horizon Worlds" starting from October 7, 2021, while the Complainant's HORIZON trademark had its first registrations on September 18, 2020, and June 15, 2021. This was before the registration date of the disputed domain name on October 22, 2021. The Respondent has submitted no evidence about the launch and commercialization of its alleged VR/AR product and no business plans or details about expenditures for its development. At the same time, it is evident from the Respondent's brief description of its alleged "Worlds-Horizon" product would be in the same market segment as the Complainant's offering under the name "Horizon Worlds". One would expect the Respondent to be following the developments in the market where it alleges being active. All the above taken together does not make the Respondent's explanations convincing. Rather, it appears as more likely that the Respondent was aware of the Complainant's rebranding of its social VR experience to "Horizon Worlds", and registered the disputed domain name because of its confusing similarity to this brand with a view to selling it to the Complainant at a substantial profit. The Panel does not regard such conduct as legitimate or giving rise to rights or legitimate interests of the Respondent in the disputed domain name. page 6 Therefore, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely: "(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location." As discussed above in this decision, the disputed domain name is confusingly similar to the Complainant's HORIZON trademark and to the Complainant's "Horizon Worlds" VR offerings. It is being publicly offered for sale for UDS 6,666 and has been also offered for sale to the Complainant for USD 66,666. As discussed in the section on rights and legitimate interests, the Respondent's allegations that the disputed domain name was registered for an alleged AR/VR product are unsubstantiated and not convincing. Rather, it seems more likely that the Respondent, being aware of the recently announced rebranding of the Complainant's VR services to "Horizon Worlds", has registered the disputed domain name for its similarity to this new brand with the purpose to sell it to the Complainant at an amount likely in excess of the Respondent's out-of-pocket costs directly related to the disputed domain name. The Panel therefore finds that the disputed domain name was registered and is being used in bad faith. 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 name be transferred to the Complainant. /Assen Alexiev/ Assen Alexiev Sole Panelist Date: November 19, 2022
Full & Egal Universal Law Academy