ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Meta Platforms, Inc. and Meta Platforms Technologies, LLC v. George Lamoureux Case No. D2023-4409 1. The Parties Complainant is Meta Platforms, Inc. and Meta Platforms Technologies, LLC, United States of America ("U.S".), represented by Hogan Lovells (Paris) LLP, France. Respondent is George Lamoureux, U.S. 2. The Domain Name and Registrar The disputed domain name (the "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 October 24, 2023. On October 25, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 26, 2023, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the 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 Complainant on October 26, 2023 providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on October 28, 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 Respondent of the Complaint, and the proceedings commenced on November 1, 2023. In accordance with the Rules, paragraph 5, the due date for Response was November 21, 2023. Respondent sent email communications to the Center on November 2, 2023. The Center notified the Commencement of Panel Appointment Process on November 22, 2023. page 2 The Center appointed Harrie R. Samaras as the sole panelist in this matter on November 27, 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 Complainant, Meta Platforms, Inc., (Meta) is a U.S. social technology company operating, among other things, as Facebook, Instagram, Meta Quest (formerly Oculus) and WhatsApp. Complainant, formerly known as Facebook Inc., internationally announced its change of name to Meta Platforms Inc. on October 28, 2021. Complainant, Meta Platforms Technologies, LLC (MPT) is the intellectual property rights holder for various technologies owned by Meta. MPT 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. Meta acquired MPT in March 2014. It became well known worldwide for its virtual reality ("VR") software and apparatus, including the "Oculus Quest" headsets which was released on May 21, 2019. Complainants Meta and MPT will be referred to individually and collectively as "Complainant." On October 28, 2021, Andrew Bosworth, Meta's Chief Technology Officer, announced that: "Starting in early 2022, Oculus Quest product line will be known as the Meta Quest, while the Oculus App will become the Meta Quest App." See also Wikipedia (Oculus Quest 2) dated 8/5/22 ("Oculus Quest 2 (rebranded as Meta Quest 2 in November 2021) is a virtual reality (VR) headset developed by Facebook Reality Labs (formerly Oculus)."; and Harry Baker Blog dated October 28, 2021 ("Oculus Brand Dead, Oculus Quest to Become Meta Quest"). Complainant owns numerous trade mark registrations for META, META QUEST and QUEST worldwide, including but not limited to the following: Hong Kong Trade Mark No. 305847175, META QUEST, registered on August 11, 2022; and Mexican Trade Mark No. 2388436, META QUEST, registered on April 27, 2022 (the "META QUEST" Mark or the "Mark"). Complainant is the registrant of numerous domain names consisting of or including the META trade mark under a wide range of generic Top-Level Domains (gTLDs) as well as under numerous country code Top-Level Domains (ccTLDs). And Complainant has also made substantial investments to develop a strong presence online by being active on various social-media platforms, including Facebook, Twitter and LinkedIn. The Domain Name was registered on October 13, 2022. It currently does not resolve to an active website. The Domain Name previously pointed to a GoDaddy parking page. On September 15, 2023, Complainant's lawyers sent an infringement notice to Respondent via the Registrar's registrant contact form for the Domain Name. No response was received. 5. Parties' Contentions A. Complainant Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Domain Name. Notably, Complainant contends that it has rights in the META QUEST Mark by virtue of the trademark registrations set forth above. The Domain Name wholly incorporates the META QUEST Mark. Adding the descriptive term "help" does not prevent a finding of confusing similarity. page 3 Respondent is not a licensee of Complainant, and he is not affiliated with Complainant in any way. Complainant has not granted any authorization for Respondent to use the META QUEST Mark for any purpose. Respondent's passive holding of the Domain Name is not a use in connection with a bona fide offering of goods or services within the meaning of the Policy. There is no evidence to suggest that Respondent is commonly known by the Domain Name. Respondent's name, George Lamoureux, bears no resemblance to the Domain Name and it does not appear Respondent has secured or attempted to secure any trade mark rights for the META QUEST Mark. Respondent's passive holding of the Domain Name does not support any reasonable claim of being commonly known by the Domain Name, nor does it give rise to any reputation in the Domain Name per se, independent of Complainant's trade mark rights. Respondent's non-use of the Domain Name does not amount to legitimate noncommercial or fair use. The Domain Name itself, comprising the META QUEST Mark together with the descriptive term "help", carries with it a high risk of implied affiliation with Complainant, notably taking into account Complainant's "Meta Quest Help Center" page available at "https://www.meta.com/engb/help/quest/". Despite the relatively recent re-naming of Complainant's company as "Meta Platforms, Inc.", Complainant's META Mark is already well known throughout the world and closely associated with Complainant's goods and services. Complainant has received substantial media attention in relation to the success and popularity of its VR products as well as the change of Complainant's product name from "Oculus Quest" to "Meta Quest." Respondent could not credibly argue that it did not have the Mark in mind at the time he registered the Domain Name. The non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. All leading results obtained by typing META QUEST in the Google search engine refer to Complainant. Respondent, having no authorization to use the Mark in a domain name or otherwise, knowingly proceeded to register it carrying with it a high risk of implied affiliation with Complainant, which is clearly in bad faith. Respondent's non-use of the Domain Name does not prevent a finding of bad faith under the doctrine of passive holding. For example: (1) Complainant's META QUEST / META / QUEST marks are well known internationally in connection with Complainant's VR software and apparatus. When confronted with the combination of those marks with a dictionary term (such as "help"), many Internet users would be confused and wrongly assume that the Domain Name is owned by or otherwise endorsed by Complainant to provide Meta Quest help; (2) Respondent has not responded to Complainant's cease and desist letter or provided evidence of any bona fide intent to use the Domain Name; (3) Respondent attempted to conceal his identity by registering the Domain Name through privacy registration services and used the privacy shield to "frustrate the purposes of the Policy or make it difficult for a brand owner to protect its trademarks against infringement, dilution and cybersquatting"; and (4) incorporating the distinctive META QUEST Mark and simply adding the dictionary term "help", which infers help / support services for the Complainant's Meta Quest products, there is no apparent good-faith use to which the Domain Name could be put that would not have the effect of misleading consumers as to the source or affiliation of the Domain Name. B. Respondent While Respondent did not formally address all of Complainant's contentions, in Respondent's first email communication to the Center on November 2, 2023, Respondent stated that: "I'm just now seeing this email/complaint. I had completely forgotten about the domains which Ive Purchased leases for last year. I just realized now that I have had auto renewals turned on. I never had any malicious, or ill intentions by purchasing this domain. I obviously never researched the legality of my Purchase. I didn't realize the words were trademarked when I had leased it, or i wouldn't have proceeded with the purchase. I had bought this domain with the sole intention and purpose of creating a forum/blog type site, for the many users, and gaming community of the device meta quest. I wanted to create a space where users or pp/game developers could share Ideas, third party app/game creation or problems that they experience with other users alike. I never got around to completing this site project, and it has just been sitting under my domain portfolio on godaddy. I never intended to Profit or Gain financially from this domain. I do not want any sort of page 4 problems with anyone at all, Especially a company like facebook. I had no knowledge or realization up until now, that I was crossing any lines, or infringing Upon a trademark. I would like to resolve this issue as soon as possible please. I dont want further complications." That same day, Respondent sent a similar email communication to the one described above, adding that: "i only wanted to support the platform of which I use, by supporting its fan base, just like how other gaming devices or platforms have third-party sites with the name in the domain. I would like to delete or transfer it immediately." 6. Discussion and Findings A. Procedural Issue - Multiple Complainants Complainants request an order to consolidate their respective complaints against Respondent on the bases that they have a sufficient common legal interest in the Mark reflected in the Domain Name and because they allege that they have been the target of common conduct by Respondent who has engaged in bad faith registration and use of the Domain Name. Complainants argue that consolidation would be appropriate here and would not have any unfairly prejudicial effect on Respondent. Paragraph 4(f) of the Policy provides that where there are multiple disputes between a complainant and respondent, either party may petition to consolidate the disputes before a single administrative panel. Under paragraph 10(e) of the Rules, it is for the panel to decide a request by a party to consolidate multiple domain name disputes in accordance with the Policy and Rules. To file a single complaint by multiple complainants or against multiple respondents, the complaint must meet the following criteria: (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. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 4.11.1. The Panel is satisfied that each Complainant has fulfilled the above-referenced standard. MPT owns the trade mark registrations for QUEST, is a wholly-owned subsidiary of Meta, the owner of trade mark registrations for META and META QUEST. This constitutes a specific common grievance against Respondent. Likewise, the Panel finds that Respondent has engaged in common conduct that has affected Complainant in a similar fashion. Furthermore, Complainant's respective claims against Respondent are essentially identical, thus it will be equitable and procedurally efficient to consolidate their claims in this proceeding. Accordingly, the Panel grants Complainant's request to consolidate. B. Identical or Confusingly Similar It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant's trademark and the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, ("WIPO Overview 3.0"), section 1.7. Based on the available record, the Panel finds Complainant has shown rights in respect of a trademark or service mark for the purposes of the Policy. WIPO Overview 3.0, section 1.2.1. The Panel finds the entirety of the mark is reproduced within the Domain Name. Accordingly, the Domain Name is confusingly similar to the Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. page 5 Although the addition of other term here, "help", may bear on assessment of the second and third elements, the Panel finds the addition of such term does not prevent a finding of confusing similarity between the Domain Name and the Mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8. Based on the available record, the Panel finds the first element of the Policy has been established. C. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which Respondent may demonstrate rights or legitimate interests in a disputed domain name. Although 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 difficult 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 (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Having reviewed the available record, the Panel finds Complainant has established a prima facie case that Respondent lacks rights or legitimate interests in the Domain Name. Respondent has not rebutted Complainant's prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Domain Name such as those enumerated in the Policy or otherwise. Respondent has not granted any authorization for Respondent to use the META QUEST Mark for any purpose. Moreover, the Domain Name currently does not resolve to a website and it was previously used to point to a GoDaddy parking page. Thus, Respondent is not making use of the Domain Name in connection with a bona fide offering of goods or services within the meaning of the Policy and Respondent's non-use of the Domain Name does not constitute a legitimate noncommercial or fair use of it. With regard to the latter, the Domain Name, comprising the META QUEST Mark together with the descriptive term "help", carries with it a risk of implied affiliation with Complainant, notably taking into account Complainant's "Meta Quest Help Center" page available at "https://www.meta.com/engb/help/quest/". Furthermore, there is no evidence that Respondent is commonly known by the Domain Name. Respondent's name, George Lamoureux, bears no resemblance to the Domain Name and it does not appear Respondent has secured or attempted to secure any trade mark rights for META QUEST. Respondent's passive holding of the Domain Name does not constitute being commonly known by the Domain Name. While Respondent has provided a variety of conciliatory statements, for example, that he "didn't realize the words were trademarked, that his sole intention and purpose was that of "creating a forum/blog type site, for the many users, and gaming community of the device meta quest", and that he "wanted to support the platform of which I use, by supporting its fan base, just like how other gaming devices or platforms have third-party sites with the name in the domain", these statements do not support Respondent's rights or legitimate interests in the Domain Name, nor did Respondent provide any evidence to support them. Furthermore, Respondent's communication recognizes (at least implicitly) his awareness of Complainant's META QUEST product and likely Complainant's rights in the Mark however Respondent did not offer to transfer the Domain Name voluntarily. Based on the available record, the Panel finds that Complainant has established the second element of the Policy. page 6 D. Registered and Used in Bad Faith The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes circumstances, in particular, but without limitation, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a respondent's registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1. In the present case, it is undisputed that Complainant was using and announced use of the META QUEST Mark before Respondent registered the Domain Name on October 13, 2022. Meta acquired MPT in March 2014. MPT became well known worldwide for its virtual reality ("VR") software and apparatus, including the "Oculus Quest" headset which was released on May 21, 2019. A rebranding from Oculus Quest to Meta Quest was widely publicized in late October 2021, about a year before Respondent's registration of the Domain Name. Furthermore, Respondent not only incorporated the entirety of the META QUEST Mark in the Domain Name, it also added the dictionary term "help" to it which appears less than coincidental considering the fact that Complainant has "Meta Quest Help Center" available at "https://www.meta.com/help/quest/". Thus, the Panel finds that Respondent has likely targeted Complainant's META QUEST Mark when registering the Domain Name. Respondent's argument that he was not aware that "Meta Quest" was "trademarked" does not rebut Respondent's registration in bad faith under the Policy insofar as Respondent was aware of Complainant's Meta Quest product and likely Complainant's rights in the Mark (Respondent claims he "bought this domain with the sole intention and purpose of creating a forum/blog type site, for the many users, and gaming community of the device meta quest. I wanted to create a space where users or pp/game developers could share Ideas, third party app/game creation or problems that they experience with other users alike."). Respondent's bad faith registration is also evidenced by the lack of any rights or legitimate interests in the Domain Name, discussed above. Panels have found that the non-use of a domain name would not prevent a finding of bad faith under the doctrine of passive holding. Having reviewed the available record, the Panel finds the non-use of the Domain Name does not prevent a finding of bad faith in the circumstances of this proceeding. Although 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: (i) the degree of distinctiveness or reputation of the complainant's mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, and (iii) the respondent's concealing its identity or use of false contact details (noted to be in breach of its registration agreement). WIPO Overview 3.0, section 3.3. Having reviewed the available record, the Panel notes the distinctiveness or reputation of Complainant's META QUEST Mark, and the composition of the Domain Name, and finds that in the circumstances of this case the passive holding of the Domain Name does not prevent a finding of bad faith under the Policy. Here, it is not contested that the META QUEST Mark is well-known internationally and that it is well-known, for example, because of its use in conjunction with the sale of Complainant's headsets. Also, Complainant did not receive a response when it reached out to Respondent through the Registrar to try to resolve this dispute and Respondent did not submit a substantive response in this proceeding. Thus, there is no evidence of record relating to Respondent's actual or contemplated good-faith use of the Domain Name. Furthermore, Respondent concealed his identify. Lastly, in view of the high risk of implied affiliation between the Domain Name and Complainant, the presence of the Domain Name in the hands of Respondent represents an abusive threat hanging over Complainant's head. Based on the available record, the Panel finds that Complainant has established the third element of the Policy. page 7 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 Domain Name be transferred to Complainant. /Harrie R. Samaras/ Harrie R. Samaras Sole Panelist Date: December 7, 2023
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