ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Meta Platforms, Inc., Instagram, LLC v. John Corona, Patriots Act LLC Case No. D2022-3559 1. The Parties The Complainants are Meta Platforms, Inc. and Instagram, LLC, United States of America ("United States"), represented by Hogan Lovells (Paris) LLP, France. The Respondent is John Corona, Patriots Act LLC, United States. 2. The Domain Names and Registrars 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 September 26, 2022. On September 27, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. Also on September 27, 2022, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on October 3, 2022. In accordance with the Rules, page 2 paragraph 5, the due date for Response was October 23, 2022. The Respondent did not submit any formal response. Accordingly, the Center notified the Respondent's default on October 24, 2022. On October 31, 2022, the Respondent wrote email communications to the Center which stated inter alia (apparently to the Complainants) that "[i]f you want to buy them all the domains are Auto calculated with a godaddy price ranging from $1700 to $3000 per domain based on godaddys IP domain name worth algorithm" (sic). The Center appointed Evan D. Brown as the sole panelist in this matter on October 31, 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 Complainants provide social media platforms and other technology services. The Complainant Meta Platforms, Inc. owns the marks META and FACEBOOK, for which it enjoys the benefits of registrations in many jurisdictions around the world (for example, United States Reg. Nos. 6,253,957 (META) and 3,814,888 (FACEBOOK), issued January 26, 2021 and July 6, 2010, respectively). The Complainant Instagram, LLC owns the mark INSTAGRAM and likewise enjoys the benefits of registrations in many jurisdictions around the world (for example, United States Reg. No. 4,146,057, issued May 22, 2012). The disputed domain names were registered in an approximately nine-month span in 2021: February 2, 2021 February 6, 2021 February 6, 2021 February 6, 2021 March 14, 2021 March 14, 2021 March 14, 2021 March 14, 2021 March 14, 2021 March 14, 2021 March 14, 2021 March 14, 2021 April 24, 2021 April 24, 2021 April 28, 2021 June 12, 2021 June 12, 2021 June 12, 2021 June 18, 2021 October 21, 2021 October 21, 2021 page 3 October 21, 2021 November 3, 2021 November 3, 2021 November 3, 2021 November 3, 2021 According to the evidence submitted with the Complaint, certain of the disputed domain names pointed to a registrar-provided page that mentioned that such domain names may be for sale, certain of the disputed domain name resolved to pay-per-click sites ("PPC"), and other disputed domain names did not resolve to any active page. Counsel for the Complainants sent a cease and desist letter concerning the disputed domain names, to which (apparently) the Respondent replied that, among other things, he would sell the disputed domain names but that the transactions would be "not cheap". A person identifying himself as counsel for the Respondent also wrote in response to the cease and desist letter but did not follow through on his assurances of further follow up. 5. Parties' Contentions A. Complainant The Complainants contend that the disputed domain names are identical or confusingly similar to the Complainants' trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings To succeed, the Complainants must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights, (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names, and (iii) the disputed domain names have been registered and are being used in bad faith. The Panel finds that all three of these elements have been met in this case. A. Procedural Issue - Consolidation of Multiple Complainants In assessing whether a complaint filed by multiple complainants may be brought against a single respondent, panels look at 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 ("WIPO Overview 3.0"), section 4.11.1. Both the Complainants in this matter have a sufficient common legal interest in the FACEBOOK, META, and INSTAGRAM trademarks included in the disputed domain names to file a joint Complaint. See Facebook, Inc. and Instagram, LLC v. Domain Administrator, Fundacion Privacy Services Ltd., WIPO Case No. D2019-2518. In addition, the Complainants have been the target of common conduct by the page 4 Respondent who has, according to the Complainants, engaged in bad faith registration and use of the disputed domain names comprising the Complainant's trademarks, as discussed in more detail below. The Panel finds that there is no apparent reason why it would not be equitable and procedurally efficient to permit consolidation, and that the substantive arguments under each of the three elements of the Policy are common to the disputed domain names. Accordingly, consolidation of the two Complainants is proper. B. Identical or Confusingly Similar This element requires the Panel to consider two issues: first, whether the Complainants have rights in a relevant mark; and second, whether the disputed domain names are identical or confusingly similar to that mark. This element under the Policy functions primarily as a standing requirement. WIPO Overview 3.0, section 1.7. A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainants have demonstrated their rights in the FACEBOOK, META, and INSTAGRAM marks by providing evidence of their trademark registrations. Each of the disputed domain names incorporates either one or more of the Complainant's marks in its entirety or a close misspelling thereof (as in the case of "fac3book" which, the Panel finds is a use of the number "3" to resemble the upper-case letter "E"). The disputed domain names contain various other words that are either descriptive or geographic, such as "bitcoin", "bank", "america", "hub", "solutions", and "mart". The presence of these other words does not prevent a finding of confusing similarity between the disputed domain names and the Complainant's FACEBOOK, META, and INSTAGRAM marks. See WIPO Overview 3.0, section 1.8. These marks remain sufficiently recognizable for a showing of confusing similarity under the Policy. The Panel finds that the Complainant has established this first element under the Policy. C. Rights or Legitimate Interests The Panel evaluates this element of the Policy by first looking to see whether the Complainants have made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. If the Complainants make that showing, the burden of production of demonstrating rights or legitimate interests shifts to the Respondent (with the burden of proof always remaining with the Complainant). On this point, the Complainants assert, among other things, that: (1) they have not authorized the Respondent to use the FACEBOOK, META, and INSTAGRAM marks in the disputed domain names, (2) use of the FACEBOOK, META, and INSTAGRAM marks in the disputed domain names is not a noncommercial or fair use, and (3) the Respondent has not been known by the Complainants' FACEBOOK, META, or INSTAGRAM marks. Further, the Complainants note that the disputed domain names either resolve to registrar parking pages, some of which mention that the disputed domain names may be available for sale, to PPC sites, or to inactive webpages. The Respondent does not appear to have used any of the disputed domain names to resolve to websites with any substantive content or for any other substantive purpose. There is no evidence of the Respondent having made any demonstrable preparations to use the disputed domain names, such as evidence of business formation-related due diligence/legal advice/correspondence, evidence of credible investment in website development or promotional materials such as advertising, letterhead, or business cards, proof of a genuine (i.e., not pretextual) business plan utilizing the disputed domain names, or any credible signs of pursuit of such a business plan; see WIPO Overview 3.0, section 2.2. Prior UDRP panels have held that the redirection of domain names to generic registrar parking pages is similar to passive holding; see William Grant & Sons Limited v. Tobias Schopf, WIPO Case No. D2017-2096. page 5 The Panel finds that the Complainants have made the required prima facie showing. The Respondent has not presented evidence to overcome this prima facie showing. And nothing in the record otherwise tilts the balance in the Respondent's favor. In its communications of October 31, 2022, the Respondent claimed to be the registrant of over 25,000 domain names; that the disputed domain names incorporating terms such as "bitcoin", "bank", and "america" relate to Respondent's alleged rights in "bitcoin bank America"; and the "website with names 'fa3ebook' is literally 'FA 3 EBOOK.. First airborne 3 ebook is a navy seal halo jump ebook" (sic). The Panel does not find these assertions to be credible or resulting in rights or legitimate interests in the disputed domain names. The Respondent does not provide evidence of or clearly explain how it has rights in "bitcoin bank America"; the claims regarding "fa3ebook" appear entirely misplaced, there are no disputed domain names incorporating such term but rather there are disputed domain names incorporating "fac3book", which incorporating a "c" and omitting an "e" would not logically be explained by the Respondent's contention; and, importantly, the Respondent provides no explanation for the numerous domain name registrations directly incorporating the Complainants' well-known trademarks that do not fall into the first two alleged categories. Accordingly, the Panel finds that the Complainants have established this second element under the Policy. D. Registered and Used in Bad Faith The Policy requires the Complainants to establish that the disputed domain names were registered and are being used in bad faith. The Policy describes several non-exhaustive circumstances demonstrating a respondent's bad faith registration and use. Paragraph 4(b)(i) of the Policy provides that evidence of bad faith registration and use is shown in "circumstances indicating that [the Respondent has] registered or [has] 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 [the Respondent's] documented out-of-pocket costs directly related to the domain name." Under paragraph 4(b)(iv) of the Policy, a panel may find bad faith when a respondent "[uses] the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent's] website or other online location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of [respondent's] website or location or a product or service on [the respondent's] website or location". The Respondent's communication quoting a "price ranging from $1700 to $3000 per domain" shows bad faith registration and use under Paragraph 4(b)(i). This was an offer to sell the disputed domain names to the Complainants, in which it has no rights or legitimate interests, for amounts presumably well in excess of the out-of-pocket costs directly related to their acquisitions. Even if such prices were automatically determined by the Registrar, this would not by itself prevent a finding of bad faith. In these circumstances, the choice of registration and valuation appear linked to the confusing similarity between the disputed domain names and the Complainants' well-known trademarks. Because the Complainants' marks are well-known, and are registered in jurisdictions around the world, the Panel finds it likely - indeed certain - that the Respondent was aware of the marks when it registered the disputed domain names. In the circumstances of this case, without the benefit of any credible explanation or relevant evidence from the Respondent as to a possible good faith use of the disputed domain names, such a showing is sufficient to establish bad faith registration of the disputed domain names. The circumstances also demonstrate bad faith use of the disputed domain name in terms of the Policy. Where a disputed domain name is "so obviously connected with such a well-known name and products [.] its very use by someone with no connection with the products suggests opportunistic bad faith". See Parfums Christian Dior v. Javier Garcia Quintas, WIPO Case No. D2000-0226. Furthermore, from the inception of the UDRP, panelists have found that the non-use of a domain name (including a blank page) would not prevent a finding of bad faith under the doctrine of passive holding WIPO Overview 3.0, section 3.3. page 6 The Panel finds that the Complainants have satisfied this third UDRP element. 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 the Complainants. /Evan D. Brown/ Evan D. Brown Sole Panelist Date: November 14, 2022
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