ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Meta Platforms, Inc., and Meta Platforms Technologies, LLC v. DeJuan Thompson Case No. D2023-1194 1. The Parties The Complainants are Meta Platforms, Inc., and Meta Platforms Technologies, LLC, United States of America ("United States"), represented by Hogan Lovells (Paris) LLP, France. The Respondent is DeJuan Thompson, United States. 2. The Domain Name and Registrar The disputed domain name is registered with Google LLC (the "Registrar"). 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 16, 2023. On March 17, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On March 17, 2023, 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 (Contact Privacy Inc. Customer, 7151571251) and contact information in the Complaint. The Center sent an email communication to the Complainant on March 20, 2023 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 March 22, 2023. 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 April 3, 2023. In accordance with the Rules, paragraph 5, the due date for Response was April 23, 2023. The Respondent did not submit any formal Response, but instead sent brief emails to the Center on March 23, April 3 and 6, 2023. Accordingly, the Center notified the Commencement of Panel Appointment Process to the parties on April 26, 2023. page 2 The Center appointed Dennis A. Foster as the sole panelist in this matter on May 5, 2023. 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. The Panel is satisfied that the Registrar correctly identified the Respondent as DeJuan Thompson within two days of being contacted by the Center. The Panel also notes that Mr. Thompson used this name to correspond with the Complainant and the Center. 4. Factual Background The Complainant is Meta Platforms, Inc. (formerly Facebook, Inc.) ("Meta"), a United States corporation, together with its subsidiary Meta Platforms Technologies, LLC (formerly Facebook Technologies, LLC) ("Meta Platforms Technologies"), collectively referred to as the "Complainant". The Complainant, Meta Platforms, Inc., ("Meta") is a United States social technology company, and operates, inter alia, Facebook, Instagram, Meta Quest (formerly Oculus) and WhatsApp. The Complainant, formerly known as Facebook Inc., announced its change of name to Meta Platforms Inc. on October 28, 2021, and this was publicized worldwide. The Complainant, Meta Platforms Technologies, LLC ("Meta Platforms Technologies"), is the intellectual property rights holder for various technologies owned by Meta. The Complainant owns numerous trademark registrations for META, META QUEST and QUEST in many jurisdictions throughout the world, including: - United States Trademark Registration No. 5548121, META, registered on August 28, 2018, assigned to the Complainant on October 26, 2021; - Chinese Trademark Registration No. 33818197, QUEST, registered on June 14, 2019; - European Union Trade Mark No. 017961685, QUEST, registered on June 16, 2020; - United States Trademark Registration No. 6279215, QUEST, registered on February 23, 2021; and - Mexico Trademark Registration No. 2388436, META QUEST, registered on April 27, 2022. The Respondent is an individual who registered the disputed domain name on May 15, 2022. The disputed domain name does not resolve to a website. The Complainant sent a cease-and-desist email to the Respondent on January 13, 2023, but the Respondent was unwilling to transfer the disputed domain name to the Complainant. Thereafter, the Complainant filed this Complaint under the Policy. Consolidation of Multiple Complainants WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.11.1 states: "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." Meta Platforms Technologies, the owner of trademark registrations for QUEST, is a wholly-owned subsidiary page 3 of Meta, the owner of trademark registrations for META. The Panel finds this structure allows these two companies to join in this action against the Respondent who registered the disputed domain name. In addition, Meta and Meta Platforms Technologies have been the target of the same conduct by the Respondent. The Panel finds it fair and efficient to permit consolidation. See Meta Platforms, Inc. and Meta Platforms Technologies, LLC v caocan, WIPO Case No. D2022-3014 (). See also Facebook, Inc., Instagram, LLC, WhatsApp Inc., Facebook Technologies, LLC v. Jurgen Neeme, hello@thedomain.io and Jay Neeme, WIPO Case No. D2019-1582 ( et al.). 5. Parties' Contentions A. Complainant - The Complainant was recently alerted to the fact that its META, META QUEST, and QUEST trademarks, together with the descriptive term "arena", had been reproduced in the disputed domain name under thegeneric Top-Level Domain ("gTLD") ".com": . - The Respondent acquired the disputed domain name on May 15, 2022. At the time of filing of the Complaint, the disputed domain name did not resolve to an active web page. - The Complainant has trademark rights in the disputed domain name because it owns numerous trademark registrations for META, QUEST, and META QUEST in jurisdictions throughout the world. The Complainant has therefore established trademark rights in META, QUEST, and META QUEST for the purposes of paragraph 4(a)(i) of the Policy. - The disputed domain name incorporates the Complainant's META and QUEST trademarks, followed by the descriptive term "arena". The Complainant submits that the combination of the META and QUEST trademarks in the disputed domain name do not prevent a finding of confusing similarity. - The Complainant submits that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant asserts that the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy that would demonstrate rights or legitimate interests in the disputed domain name. - The Complainant asserts that the disputed domain name was registered and is being used in bad faith for reasons that go beyond the non-exhaustive list of circumstances set out in paragraph 4(b) of the Policy. Prior UDRP panels have recognized the strength and renown of the Complainant's META and QUEST trademarks and have ordered the transfer of disputed domain names containing such trademarks to the Complainant. - The disputed domain name should be transferred to the Complainant. B. Respondent The Respondent did not formally reply to the Complainant's contentions. The Respondent sent the informal communications to the Center on March 23, April 3 and 6, 2023. In his first email, the Respondent highlighted that he bought the disputed domain name lawfully. In the second email, the Respondent mentioned that the pursuing of the disputed domain name is no longer in his best interest and he would like to suspend any further proceedings. In the third communication, the Respondent emphasized for the record that he no longer would like to pursue this matter; therefore, he will not be responsible for any further actions. page 4 6. Discussion and Findings The Policy, paragraphs 4(a) (i), (ii), and (iii), provides that the Complainant may obtain transfer of the disputed domain name if it can prove that: (i) The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) The Respondent has no rights or legitimate interests in respect of the domain name; and (iii) The domain name was registered and is being used in bad faith. A. Identical or Confusingly Similar The first element of paragraph 4(a) of the Policy requires the Complainant to prove that it has rights in a trademark or service mark and that the disputed domain name is identical or confusingly similar to that trademark or service mark. As noted in WIPO Overview 3.0 section 1.2.1: "Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case." The Complainant owns numerous trademark registrations for META, META QUEST, and QUEST in jurisdictions throughout the world, examples of which were set out above. The Complainant has therefore proved trademark rights in META, META QUEST, and QUEST for the purposes of paragraph 4(a)(i) of the Policy. The disputed domain name incorporates the Complainant's META, META QUEST, and QUEST trademarks, followed by the term "arena" under the gTLD ".com". The disputed domain name is thus confusingly similar to the Complainant's META,QUEST and META QUEST trademarks. See in this regard Meta Platforms, Inc. and Meta Platforms Technologies, LLC v. 昭 龙 叶 , WIPO Case No. D2022-4696: "In addition, the combination of the META and QUEST trademarks does not prevent a finding of confusing similarity. Prior UDRP panels have found domain names containing multiple trademarks to be confusingly similar to the trademarks at issue." The Complainant submits that the presence of its META, META QUEST, and QUEST trademarks in the disputed domain name is sufficient to establish confusing similarity between the disputed domain name and the Complainant's trademarks; see WIPO Overview 3.0, section 1.7: "[.] in cases where a domain name incorporates the entirety of a trademark, or where at least a dominant feature of the relevant mark is recognizable in the domain name, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing." The addition of the term "arena" does not prevent a finding of confusing similarity. The addition of the gTLD ".com" is disregarded for the purposes of assessing confusing similarity, as it is a standard registration requirement. The Panel thus finds that the Complainant has carried its burden of proof under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name. As noted in WIPO Overview 3.0, section 2.1: "While the overall burden of proof in UDRP proceedings is on the complainant, 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 page 5 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." The Complainant contends that the Respondent is not affiliated with the Complainant in any way. The Complainant further contends that it has not granted any authorization for the Respondent to make use of its META, META QUEST, or QUEST trademarks in a disputed domain name or any other way. The Panel finds the Complainant has put forth a prima facie case and that it is up to the Respondent to rebut it. As noted above, the disputed domain name does not resolve to an active website. The non-use of the disputed domain name does not constitute use of a domain name in connection with a bona fide offering of goods or services per paragraph 4(c)(i). See Instagram, LLC v. Wu Hai Tao ( 吴 海涛 ), WIPO Case No. D2020-2040: "[.] the disputed domain name resolves to an error page. Accordingly, the Panel does not consider the Respondent's use of the disputed domain name to be in connection with a bona fide offering of goods or services within the circumstances of paragraph 4(c)(i) of the Policy [.]." See also Instagram, LLC v. Registration Private, Domains By Proxy LLC/ sezer suat, WIPO Case No. D2022-0157 : "Non-use of a domain name does not amount to a use in connection with a bona fide offering of goods or services or to a legitimate noncommercial or fair use of the domain name, especially when the domain name is confusingly similar to a well-known third party's trademark and has been registered without authorization of the trademark owner." Furthermore, there is no evidence to suggest that the Respondent is commonly known by the disputed domain name, as contemplated by paragraph 4(c)(ii) of the Policy. The identity of the underlying Respondent has been disclosed by the Registrar, as DeJuan K. Thompson, which is consistent with the name and email address used by the Respondent when replying to the Complainant's lawyers' cease-anddesist letter and with the emails sent to the Center. This name is not at all similar to the disputed domain name. Nor is the Respondent currently making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers within the meaning of paragraph 4(c)(iii) of the Policy. The Respondent claims that by not using the disputed domain name, it is "therefore not using it for monetary gain (offering similar goods or services) and therefore not confusing the Meta Platforms customer base". However, the Respondent has not provided any evidence to support these allegations and thus, the Panel finds that in the circumstances of the case, the non-use of the disputed domain name is not the same as a noncommercial or fair use. See Teachers Insurance and Annuity Association of America v. Wreaks Communications Group, WIPO Case No. D2006-0483, where the Panel found that "[a]bsent some contrary evidence from Respondent, passive holding of a Domain Name does not constitute legitimate noncommercial or fair use'." For the foregoing reasons, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy to show that the Respondent has no rights or legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith The Complainant contends that "despite the relatively recent re-naming of the Complainant's company as 'Meta Platforms, Inc.', the Complainant's META trademark is already well-known throughout the world and closely associated with the Complainant's goods and services, the Complainant's re-naming having attracted significant international media attention, while the Complainant's services are used by billions of monthly users around the globe". The Complainant has provided ample proof of the notoriety of its trademarks. Moreover, the Panel is independently well aware of these developments. page 6 The Complainant further contends that "prior UDRP panels have recognized the strength and renown of the Complainant's META and QUEST trademarks and have ordered the transfer of disputed domain names containing such trademarks to the Complainant". See in this regard Meta Platforms, Inc. and Meta Platforms Technologies, LLC v. Libin, WIPO Case No. D2022-4996 (et al.): "[I]t is not contested that the Marks are well-known internationally and that 'metaquest' is well-known, for example, because of its use in conjunction with the sale of headsets". See also Meta Platforms, Inc. and Meta Platforms Technologies, LLC v. caocan, WIPO Case No. D2022-3014, Meta Platforms, Inc. and Meta Platforms Technologies, LLC v. hao su, WIPO Case No. D2022-4574 (et al.) and Meta Platforms, Inc. and Meta Platforms Technologies, LLC v. 昭 龙 叶 , (et al.), supra. As such, the Panel agrees with the Complainant that the Respondent surely had in mind the Complainant's META, META QUEST, and QUEST trademarks when he registered the disputed domain name, but nonetheless did so in bad faith. As noted above, the disputed domain name resolves to an inactive web page. It is well established that the non-use of a domain name may where appropriate support a finding of bad faith use. See WIPO Overview 3.0, section 3.3: "While panelists will look at the totality of the circumstances in each case, factors that have been considered relevant in applying the passive holding doctrine include: the degree of distinctiveness or reputation of the complainant's mark, and the implausibility of any good faith use to which the domain name may be put." Here, the Respondent has been passively holding a domain name containing a renowned set of trademarks for roughly a year, even hinting to the Complainant on January 31, 2023 in an email that he might be willing to sell it to the Complainant: "However, I am open to any offers your company would like to make regarding this domain." The Panel thus finds it is clear that the disputed domain name was registered and is being used in bad faith and that the Complainant has carried its burden of proof under 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 name, , be transferred to the Complainant. /Dennis A. Foster/ Dennis A. Foster Sole Panelist Date: May 19, 2023
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