ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Meta Platforms, Inc. v. A. Knight Case No. D2023-4493 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 A. Knight, United States, represented by Reid D. Evensky, P.C., United States. 2. The Domain Names and Registrar 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 October 27, 2023. On October 30, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name . On October 30, 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 October 31, 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 November 7, 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 November 10, 2023. On December 6, 2023, the Center requested the Complainant to confirm that the Amended Complaint was also directed against the domain name . On the same date, the Complainant confirmed that it was. On December 7, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with
page 2 the disputed domain name . On the same date, the Registrar transmitted by email to the Center its verification response confirming that the underlying Registrant was the same for both disputed domain names. The Center informed the Parties of the identity of the underlying Registrant and notified the Respondent that the due date for the Response was December 21, 2023. On November 27, 2023, the Respondent requested cancellation of the disputed domain name . On November 28, 2023, the Complainant replied. The Respondent sent further email communications to the Center on December 13, 2023, and January 3, 2024. In the latter, the Respondent confirmed that it consented to surrendering both disputed domain names. The Respondent did not file a formal Response. On December 28, 2023, pursuant to paragraph 6 of the Rules, the Center informed the Parties that it would proceed with the panel appointment process. The Center appointed Ingrida Kariņa-Bērziņa as the sole panelist in this matter on January 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. 4. Factual Background The Complainant is a United States social technology company that operates, inter alia, the online platforms Facebook, Instagram, Meta Quest (formerly Oculus), and WhatsApp. Prior to late 2021, it was known as Facebook Inc. It is the proprietor of numerous registrations for its META trademark, including United States Trademark No. 5548121 for META (word mark), registered by the Complainant’s predecessor in interest on August 28, 2018, for services in classes 35 and 42. The disputed domain names were registered on February 19, 2023. Both resolve to third-party parking pages on which they are offered for sale. The disputed domain name was offered for USD 68,000. Internet visitors were invited to make an offer for the disputed domain name . The record reflects that, on August 25, 2023, the Complainant had sent the Respondent a cease-and-desist notice through the Registrar. The record does not reflect the Respondent’s reply, and the Complainant states that none was received. In response to the Respondent’s November 27, 2023 request for settlement, the Complainant forwarded a copy of the Respondent’s email to the Complainant November 4, 2023, in which the Respondent had proposed initiating settlement discussions, along with the Complainant’s November 7, 2023 reply in which the Complainant had stated that it did not intend to seek suspension of the proceeding due to the fact that the proceeding had already been initiated following the Respondent’s failure to respond to the Complainant’s cease-and-desist notice. The Respondent’s communication states that the Registrant is “WIYFJL, LLC,” but there is no further information available about this entity. The Registrar has verified that both domain names were registered by “A. Knight,” about whom there is also no further information. 5. Parties’ Contentions A. Complainant The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the disputed domain names. Notably, the Complainant contends that the disputed domain names were registered on the same date that the Complainant publicized a new subscription service known as “Meta Verified,” which allows verified users to add a blue badge to their Instagram and Facebook accounts. Both disputed domain names were offered
page 3 for sale; the disputed domain name for USD 68,000. The Complainant’s META mark is recognizable in both disputed domain names. The Respondent has no rights in the META mark and is making no use of the disputed domain names other than offering them for sale, which has been the Respondent’s objective in registering them. The Complainant requests a decision on the merits of the case and transfer of the disputed domain names. B. Respondent The Respondent did not formally reply to the Complainant’s contentions. On January 3, 2024, the Respondent forwarded correspondence stating that: “As indicated in prior correspondence, there is no objection to relinquishing all rights, title, and interest in the above-reference domain names. This information was forwarded prior to empaneling.” 6. Respondent Identity The Panel notes that, according to the Rules, the Respondent is defined as, “the holder of a domain-name registration against which a complaint is initiated”. Furthermore, as indicated above, the Registrar confirmed that both domain names were registered by “A. Knight,”; whereas, the Respondent’s communication states that the Registrant is “WIYFJL, LLC,”. No information has been provided on either of these entities identified as Respondent and, as noted below in section 8C, neither have they availed themselves of the opportunity to respond in substance to the Complainant’s cease-and-desist or to the Amended Complaint. However, the Panel notes that the Respondent’s consent to cancellation was returned by the Respondent with a signature reading, “WIYFJL, LLC by A. Knight”, illustrating a connection between these two and the disputed domain names. Accordingly, given the above and the Registrar’s disclosure and confirmation of “A. Knight”, references within this Decision to the “Respondent” are in reference to “A. Knight” unless otherwise indicated. 7. Consent to Remedy The Panel notes that, according to UDRP practice, a unilateral consent for the transfer of a disputed domain name by a respondent could provide sufficient basis for an order for transfer without the need for substantial consideration of the UDRP grounds and the further merits of the case. In view of WIPO Overview 3.0, section 4.10, a panel may “order the requested remedy solely on the basis of such consent”. As indicated above, while the Respondent’s email seemingly consented to any remedy requested, the Respondent only returned an agreement indicating the cancellation of the disputed domain names. The Complainant has not accepted such consent and has requested that the dispute proceed to a decision on the merits and also transfer of the disputed domain names. As shall be discussed below, the evidence in the record indicates that the Respondent had engaged in bad-faith conduct which it at no point disclaimed. Under the circumstances, the Panel elects to proceed to a substantive decision on the merits. 8. Discussion and Findings Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
page 4 (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) the Respondent has registered and is using the disputed domain names in bad faith. Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”. A. 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 the 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 Complainant’s META mark is recognizable within the disputed domain names. Accordingly, the disputed domain names are confusingly similar to the META mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of other terms (here, “blue,” “badge,” and “verified”) may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the disputed domain names 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. B. Rights or Legitimate Interests Paragraph 4(c) of the Policy provides a list of circumstances in which the 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 the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the disputed domain names such as those enumerated in the Policy or otherwise. In particular, the Panel finds that there is no evidence that the Respondent is using the disputed domain names in connection with a bona fide offering of goods or services, or that any of the other bases for a finding of rights or legitimate interests is present. The Panel notes that offering the disputed domain names for sale is not a use that would support a finding of rights or legitimate interests. See WIPO Overview 3.0, section 2.2.
page 5 The Panel further notes that the Respondent has indicated willingness to surrender the disputed domain names, thereby explicitly disclaiming rights therein. Based on the available record, the Panel finds the second element of the Policy has been established. C. 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. In the present case, the Panel notes that the Complainant’s rights in its META mark predate the registration of the disputed domain names by several years. The disputed domain names reflect the Complainant’s mark together with descriptive terms that unambiguously reference the Complainant’s “Meta Verified” service which had been launched on the date of their registration. The Complainant provides evidence that it has actively promoted its META mark and the “Meta Verified” service. The Panel notes that the price of USD 68,000 likely exceeds the reasonable costs related to registering the domain name. The Panel notes the identity of the Registrant was concealed by a privacy service, which in itself would not necessarily indicate bad faith. See WIPO Overview 3.0, section 3.6. However, thereafter the Respondent identified by the Respondent’s counsel differs from that verified by the Registrar. Ultimately, neither entity identified as Respondent availed itself of the opportunity to respond in substance to the Complainant’s cease-and-desist or to the Amended Complaint. The Respondent has consented to surrendering the disputed domain names without providing any credible evidence-backed rationale for having registered them. Under the circumstances, the Panel does not believe that any such rationale exists. See WIPO Overview 3.0, section 3.10. Based on the available record, the Panel finds that the Complainant has established the third element of the Policy. 9. 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 Complainant. /Ingrīda Kariņa-Bērziņa/ Ingrīda Kariņa-Bērziņa Sole Panelist Date: January 20, 2024
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