ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Meta Platforms, Inc. v. Meta Verse Case No. D2022-4690 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 Meta Verse, Morocco. 2. The Domain Name and Registrar The disputed domain name is registered with Dynadot, LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 6, 2022. On December 8, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on December 12, 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 December 16, 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 December 22, 2022. In accordance with the Rules, paragraph 5, the due date for Response was January 11, 2023. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 12, 2023. The Center appointed Christopher J. Pibus as the sole panelist in this matter on January 19, 2023. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and page 2 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 social technology company which carries on business internationally under the name Meta Platforms, Inc. The Complainant operates around the world through a number of web-known platforms including Facebook, Instagram, Meta Quest, and WhatsApp and it has developed a strong online presence as a result. The Complainant formerly used Facebook, Inc. as its principal corporate name. On October 28, 2021 the Complainant changed its name to Meta Platforms, Inc., publicizing the adoption of this new identity widely through various media. Prior to the public announcement, the Complainant had acquired registered trademark rights to the word mark META via the assignment of a pre-existing registration. Particulars of the Complainant's META trademark as registered in the United States Patent and Trademark Office are, inter alia, as follows: - Trademark: META; - Registration No. 5,548,121; - Registration date: August 25, 2018; - Assignment date: October 16, 2021. The disputed domain name was registered on October 28, 2021, the same day the Complainant announced its new name. An active website was associated with the disputed domain name soon after it was registered, promoting certain cryptocurrency under the name "MetaToken". More recently, the disputed domain name has reverted to a pay-per-click ("PPC") parking page. 5. Parties' Contentions A. Complainant The Complainant characterizes the Respondent's registration and use of the disputed domain name as an intentional misappropriation of its META trademark, for the purpose of impersonating the Complainant and deceiving Internet users. The Complainant submits that it owns registered rights to the word mark META in the United States under registration no. 5,548,121, and elsewhere. Further the Complainant submits that the disputed domain name is confusingly similar to the registered mark because the relevant mark META is recognizable within the disputed domain name, and because the additional element "token" is merely descriptive and does not prevent a finding of confusing similarity. With respect to the absence of rights or legitimate interests, the Complainant submits that it has put forward sufficient evidence to make out a prima facie case. In the absence of any response from the Respondent, the Complainant should be deemed to have satisfied the second element. The Complainant's evidence includes pages from the Respondent's website where the Respondent impersonates the Complainant by using the META mark and reproducing the distinctive META logo, in furtherance of a scheme to sell fictitious META-branded cryptocurrency. The Complainant relies on the principle that the use of a domain name for illegal activity can never confer rights or legitimate interests on a respondent. With respect to bad faith, the Complainant submits the registration of the disputed domain name must have occurred with knowledge of the Complainant's META trademark because the Complainant's re-branding had attracted such significant international attention. The Complainant's evidence also shows other evidence of deliberate targeting including the timing of the registration and the manner of use. The Complainant points page 3 to the fact that the disputed domain name was registered on the same day as the publicized launch of the Complainant's new brand (October 28, 2021). The Complaint notes that the Respondent not only used the META word mark on its website, but reproduced the distinctive META logo on various of its web pages. In terms of bad faith use, the Complainant identifies the fraudulent nature of the Respondent's promotion through its website, creating a fictitious pre-sale of META-branded cryptocurrency or ""tokens". This form of unlawful behaviour is said to constitute bad faith under the Policy. B. Respondent The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings According to paragraph 4(a) of the Policy, in order to succeed, the Complainant must establish each of the following elements: (i) the disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interest in respect of the disputed domain name; and (iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar As a threshold issue the Panel will consider the extent of the Complainant's rights in its META trademark, and in this regard the Panel notes the Complainant has provided evidence of trademark registrations for its META trademark. Accordingly, the Panel finds that the complainant holds rights to the META trademark at issue in these proceedings. The test for confusing similarity is described as a "reasoned but relatively straightforward comparison between the complainant's trademark and the disputed domain name" in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.7. The Panel finds that the disputed domain name is confusingly similar to the Complainant's registered trademark. The disputed domain name includes the entirety of the META mark with the addition of the term "token". This variation does not prevent a finding of confusing similarity under the first element. See Starbucks Corporation v. Sumol Jha, WIPO Case No. D2022-2574. The Complainant's trademark is clearly recognizable within the disputed domain name (WIPO Overview 3.0, section 1.8). The Complainant has satisfied paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Although the Policy places on the complainant the burden of proof to establish the absence of rights or legitimate interests, the practice now recognizes that it is often sufficient for a complainant to make out a prima facie case, which then shifts the burden to the Respondent to bring forward evidence to demonstrate the relevant rights or legitimate interests. Where the Respondent fails to produce such evidence, the Complainant will be deemed to have satisfied the second element (WIPO Overview 3.0, section 2.1). page 4 The Complainant has established a plausible prima facie case by bringing forward evidence on the following four points: (1) the Respondent has never been associated in any way with the Complainant, nor has it ever been authorized to use the META mark; (2) the Respondent has never been known under the META mark; (3) the disputed domain name prominently features the META mark in order to lure consumers to a site for commercial advantage; and (4) the disputed domain name actually resolved to web pages which impersonate the Complainant's business, reproduce the Complainant's distinctive logo, and set out a scheme to promote and sell fictitious advance-fee cryptocurrency. The Complainant's submission that the Respondent's purpose is unlawful and nefarious is well founded. See Meta Platforms, Inc. v. Privacy service provided by Withheld for Privacy ehf / Valdo Ross, WIPO Case No. D2022-2327. The totality of the evidence clearly establishes a prima facie case of the absence of rights or legitimate interests on the part of the Respondent. Illegal conduct of this nature is highly probative in connection with this issue. "Panels have categorically held that the use of a domain name for illegal activity (e.g. [.] impersonation/passing off or other types of fraud) can never confer rights or legitimate interests on a respondent." (WIPO Overview 3.0, section 2.13.1). Once the Complainant has established a prima facie case, the burden then shifts to the Respondent to bring forward evidence of rights or legitimate interests. The Respondent has not filed any submissions relating to this matter. In the absence of any such response, the Panel is prepared to find, for the purposes of this proceeding, that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is deemed to have satisfied the requirements under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The Panel finds that the disputed domain name has been registered and used in bad faith in light of the factors and circumstances set out below. In particular, the Panel finds that the Respondent must have known about the Complainant's launch of the META mark, as it acted opportunistically to claim rights in a confusingly similar name on the exact same day that the Complainant announced its new identity. The timing of the registration of the disputed domain name calls for an explanation, of which none has been given. Further, the Respondent's reproduction and use of the Complainant's distinctive META logo on its associated website is highly probative evidence of deliberate impersonation. Finally, the nature of the advance-fee cryptocurrency promotion set out in the Respondent's associated website - which appears to be fraudulent and non-existent - confirms the abusive character of the Respondent's overall conduct. It appears that the disputed domain name has been used in furtherance of a scheme aimed at misleading prospective users of the Complainant's services into making cryptocurrency-related payments to the Respondent. In the absence of evidence to the contrary, the Panel finds that the Respondent has intentionally attempted to attract Internet users to its website by creating confusion with the Complaint's META trademark as to the source of the Respondent's website and to create credibility for its scheme of advance-fee cryptocurrency purchases. The use of a domain name for this form of illegitimate activity is manifestly considered evidence of bad faith (see WIPO Overview 3.0, section 3.1.4. and Facebook, Inc. v. Vitalii Gerasimov WIPO Case No. D2020-1093). The fact that the disputed domain name later resolved to a PPC page, does not alter the Panel's finding that disputed domain name was registered and used in bad faith. The Complainant has satisfied the requirements under paragraph 4(a)(iii) of the Policy. page 5 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. /Christopher J. Pibus/ Christopher J. Pibus Sole Panelist Date: February 2, 2023
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