ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Meta Platforms, Inc. and Meta Platforms Technologies, LLC v. Ravindra Bala Case No. D2023-2509 1. The Parties The Complainants are Meta Platforms, Inc. (the "First Complainant"), United States of America ("United States") and Meta Platforms Technologies, LLC (the "Second Complainant"), United States, represented by Hogan Lovells (Paris) LLP, France. The Respondent is Ravindra Bala, United States. 2. The Domain Name and Registrar The disputed domain name (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 June 9, 2023. On June 9, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On June 12, 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 (Registration Private, Domains By Proxy, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainant on June 13, 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 June 16, 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 June 22, 2023. In accordance with the Rules, paragraph 5, the due date for Response was July 12, 2023. The Response was filed with the Center on July 12, 2023. page 2 The Center appointed Lynda M. Braun as the sole panelist in this matter on August 8, 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. 4. Factual Background The First Complainant is a United States social technology company that is the owner of the trademark registrations for the META trademark, and operates, inter alia, Facebook, Instagram, Meta Quest (formerly Oculus), and WhatsApp. Formerly known as Facebook Inc., the First Complainant announced its change of name to Meta Platforms, Inc. on October 28, 2021. Its focus is to bring the metaverse to life, to help people connect, find communities and grow businesses, allow users to share immersive experiences with other people even when they cannot be together, and do things that they could not do in the physical world. The Second Complainant is the owner of trademark registrations for the QUEST trademark and is a wholly-owned subsidiary of the First Complainant. The Second Complainant initially operated under the corporate name of its predecessor in interest, Oculus VR, LLC, and then changed its name to Facebook Technologies, LLC in 2018. Acquired by Meta in March 2014, Oculus rapidly acquired and developed considerable goodwill and renown worldwide in connection with its virtual reality ("VR") software and apparatus. Meta currently markets and offers its VR products (including the "Meta Quest" headsets) via its official website at "www.meta.com/gb/en/quest". The Complainants own numerous trademark registrations for META, QUEST, and META QUEST in the United States and numerous jurisdictions worldwide, including, but not limited to, the following: - META, United States trademark registration no. 5,548,121, registered on August 28, 2018; in international classes 35 and 42; - QUEST, United States trademark registration no. 6,279,215, registered on February 23, 2021, in international classes 9, 28, 35, and 42; - META, Andorra trademark registration no. 43626, registered on January 3, 2022, in international classes 9, 28, 35, 36, 38, 41, 42, and 45; - META QUEST, Mexico trademark registration no. 2388438, registered on April 27, 2022, in international class 38; and - QUEST, European Union trademark no. 017961685, registered on June 16, 2020, in international classes 9, 28, 35, 38, 41, 42, and 45. The aforementioned trademark registrations will hereinafter collectively be referred to as the "META, QUEST and META QUEST Marks". The Complainants are also the registrants of numerous domain names consisting of or including the META. QUEST and META QUEST trademarks under a wide range of generic Top-Level Domains ("gTLDs") as well as under numerous country code Top-Level Domains ("ccTLDs"). The Disputed Domain Name was registered on June 14, 2022 and resolved to a GoDaddy parking page, listing the Disputed Domain Name for sale with a "Buy now" price of USD 650. On April 11, 2023, the Complainants' lawyers, in an attempt to resolve the matter amicably, submitted a notice via the Registrar's registrant contact form for the Disputed Domain Name, but no response was received. page 3 5. Parties' Contentions A. Complainants The following are the Complainants' contentions: - the Disputed Domain Name is confusingly similar to the Complainant's META, QUEST and META QUEST Marks; - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; - the Disputed Domain Name was registered and is being used in bad faith; and - the Complainants seek the transfer of the Disputed Domain Name from the Respondent to the Complainants in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent filed a letter response with the Center on July 12, 2023, implying that there was nothing wrong with its registration of the Disputed Domain Name as the Complainants' domain name does not resolve to a website and is virtually dead. The Respondent further asserted that it could create hundreds of domain names that begin with the term "metaquest" with impunity. 6. Discussion and Findings 6.1 Preliminary Issue: Consolidation of the Complainants The Complainants submitted a request for consolidation in this proceeding in their Complaint. Pursuant to WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.11, the consolidation of multiple complainants filing a joint complaint against one or more respondents is subject to the discretion of the appointed panel. In assessing whether a complaint filed by multiple complainants may be brought against one or more respondents, the appointed panel should consider 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. Keeping this in mind, the Panel notes that the Complainants in the present administrative proceeding are affiliated since the Second Complainant is a wholly-owned subsidiary of the First Complainant. As such, the two entities have a sufficient common legal interest in the META, QUEST and META QUEST Marks incorporated in the Disputed Domain Name. The Panel therefore submits that consolidation of the Complainants would be appropriate in the present proceeding and would not have any unfair prejudicial effect on the Respondent. Moreover, the Complainants have been the target of common conduct by the Respondent, who has engaged in bad faith registration and use of the Disputed Domain Name. Therefore, the Panel considers that it is fair and equitable under the circumstances of the case to permit consolidation as the Complainants are not only affiliated companies as parent and subsidiary, but also have common interests. Consequently, the Panel concludes that the Complainants may be consolidated and proceed with their Complaint. page 4 6.2 Substantive Matters Paragraph 4(a) of the Policy requires that the Complainants prove the following three elements in order to prevail in this proceeding: (i) the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and (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. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires a two-fold inquiry: a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark. The Panel concludes that in the present case, the Disputed Domain Name is confusingly similar to the META, OCULUS and QUEST Marks as explained below. It is uncontroverted that the Complainants have established rights in the META, QUEST, and META QUEST Marks based on their several years of use, their fame worldwide, and their registered trademarks for the META, QUEST, and META QUEST Marks in the United States and jurisdictions worldwide. The registration of a mark satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. As stated in section 1.2.1 of the WIPO Overview 3.0, "[w]here 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". Thus, the Panel finds that the Complainants satisfied the threshold requirement of having rights in the META, QUEST and META QUEST Marks. The Disputed Domain Name wholly incorporates the Complainants' META QUEST Mark (omitting the space between the elements "META" and QUEST") as well as a combination of its META and QUEST Marks followed by the term "today", and then followed by the gTLD ".com". Where the trademark is recognizable in the Disputed Domain Name, as the META, QUEST, and META QUEST Marks are here, the addition of a term, such as "today" does not prevent a finding of confusing similarity. See WIPO Overview 3.0, section 1.8 ("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"). The presence of the META, QUEST, and META QUEST Marks in the Disputed Domain Name in their entirety is sufficient to establish confusing similarity between the Disputed Domain Name and the Complainants' Marks. Finally, the addition of a gTLD such as ".com" in a domain name is a technical requirement. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182 and WIPO Overview 3.0, section 1.11.1. Thus, the Panel concludes that the Disputed Domain Name is confusingly similar to the Complainants' META, QUEST, and META QUEST Marks. Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainants. B. Rights or Legitimate Interests Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed page 5 domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. There is no evidence in the record suggesting that the Respondent has rights or legitimate interests in the Disputed Domain Name. The Complainants have not authorized, licensed, or otherwise permitted the Respondent to use the Complainants' META, QUEST, and META QUEST Marks. There is also no evidence that the Respondent is commonly known by the Disputed Domain Name or by any similar name, nor has the Respondent made any demonstrable preparations to use the Disputed Domain Name in connection with a bona fide offering of goods or services. Moreover, by failing to use the Disputed Domain Name in connection with an active website and redirecting the Disputed Domain Name to a landing page of the Registrar, the Respondent has not used the Disputed Domain Name in connection with a bona fide offering of goods or services and, therefore, cannot establish rights or legitimate interests pursuant to paragraph 4(c)(i) of the Policy. Specifically, the Disputed Domain Name redirected to a GoDaddy parking page where the Disputed Domain Name was listed for sale for a "Buy now" price of USD 650. As such, the Respondent's registration and use of the Disputed Domain Name may be considered to be commercial in nature and does not amount to a legitimate noncommercial or fair use as contemplated by paragraph 4(c)(iii) of the Policy. Thus, the Panel concludes that nothing on the record before it would support a finding that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In sum, the Panel finds that the Complainants have established an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainants. C. Registered and Used in Bad Faith The Panel finds that based on the record, the Complainants have demonstrated the existence of the Respondent's bad faith pursuant to paragraph 4(b) of the Policy. First, based on the circumstances here, the Panel concludes that the Respondent's registration and use of the Disputed Domain Name had been done for the specific purpose of trading on the name and reputation of the Complainants and their META, QUEST, and META QUEST Marks. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No. D2000-0847 ("[t]he only plausible explanation for Respondent's actions appears to be an intentional effort to trade upon the fame of Complainant's name and mark for commercial gain"). Second, with respect to the use of the Disputed Domain Name, the evidence submitted shows that the Disputed Domain Name does not resolve to an active website of the Respondent, but rather to a landing page with the Disputed Domain Name for sale. Under the circumstances of the present case, the Panel finds that the Respondent registered and is using the Disputed Domain Name in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. "The lack of use [of a domain name] by itself does not indicate anything. Nevertheless, the lack of use of a domain name that is not backed up by any trademark and that coincides with a known, well-known or renowned trademark owned by someone else, does not indicate other than bad faith in the sense of paragraph 4(b) of the Policy." See El Bebe Productions Ltd v. Rachid Zouad, WIPO Case No. D2018-0469 (citing Itaú Unibanco Holding S.A. v. Valdery Dos Santos Decorações ME, WIPO Case No. D2009-1335). Third, the Panel finds it likely that the Respondent had actual knowledge of the Complainants' META, QUEST and META QUEST Marks and targeted the Complainants when it registered the confusingly similar Disputed Domain Name, demonstrating the Respondent's bad faith. UDRP panels have found that the registration of a domain name that is confusingly similar to a well-known trademark by an unaffiliated entity can create a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4; see also Carrefour SA v. page 6 Registration Private, Domains By Proxy, LLC / 3232 33232, WIPO Case No. D2022-1952. Moreover, the Complainants' widely-publicized rebranding from "Oculus Quest" to "Meta Quest" was announced on October 28, 2021 and the Respondent registered the Disputed Domain Name less than a year after this announcement. When combined, the trademarks META, QUEST, and META QUEST in the Disputed Domain Name form a distinctive combination that is readily associated with the Complainants. As such, the Panel concludes that the Respondent could not credibly argue that it did not have knowledge of the Complainants' trademarks when registering the Disputed Domain Name. Fourth, the Respondent's failure to reply to the Complainants' notice dated April 11, 2023 and sent via the Registrar's contact form may be deemed an additional indicator of the Respondent's bad faith in this proceeding. See International Business Machines Corporation v. Gui Cong Ren, WIPO Case No. D2021-0086. Finally, the Respondent has been a respondent in many other UDRP cases involving cybersquatting, and in which the disputed domain names were ordered transferred to the complainant in those cases. Thus, the Panel concludes that the Respondent in this case has engaged in a bad faith pattern of cybersquatting of domain names corresponding to the registered trademarks of third-party brand owners. See WIPO Overview 3.0, section 3.1.2; see, e.g., BHP Billliton Innovation Pty Ltd v. Ravindra Bala, WIPO Case No. D2008-1059. Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainants. 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 Complainants. /Lynda M. Braun/ Lynda M. Braun Sole Panelist Date: August 22, 2023
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