ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Meta Platforms, Inc. v. Vivek Mishra Case No. D2023-5387 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 Vivek Mishra, India. 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 December 28, 2023. On December 28, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On January 2, 2024, 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 January 3, 2024, 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 January 8, 2024. 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 January 10, 2024. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2024. The Respondent did not submit any response or seek, in a timely way, any extension of time under Rules paragraph 5(b). Accordingly, the Center notified the Respondent’s default on January 31, 2024.
page 2 The Center appointed Nicholas Weston as the sole panelist in this matter on February 2, 2024. 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 Respondent sent email communications to the Center on February 5, 6, and 19, 2024. The language of the proceeding is the language of the registration agreement, English. 4. Factual Background The Complainant, Meta Platforms, Inc., (“Meta”) is a United States social technology company that operates a number of businesses including Facebook, Instagram, Meta Quest (formerly Oculus), and WhatsApp. Amongst other products and services, the Complainant provides a social virtual reality (“VR”) experience called “Horizon Worlds”, where people can create and explore together. This collaborative platform was first announced in September 2019, under the name “Facebook Horizon”, and launched as an invitation-only beta phase on April 3, 2020. The Complainant announced the rebranding of Facebook Horizon to Horizon Worlds on October 7, 2021. The Complainant holds a portfolio of registrations that includes the trademarks META and HORIZON in numerous jurisdictions. An example includes United States Registration No. 5548121 for the mark META, registered on August 28, 2018 and assigned to the Complainant on October 28, 2021. An example of the trademark HORIZON includes United Kingdom Trademark No. 3499858, registered on September 18, 2020. The Complainants owns the domain name which also hosts its Meta Horizon Worlds VR platform. The Disputed Domain Name was registered on January 17, 2022. The Disputed Domain Name resolves to an inactive webpage. 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 Name. Notably, the Complainant cites its trademark registrations including Andorran Trademark Registration No. 43626, registered on January 3, 2022, and other registrations around the world, for the mark META, as prima facie evidence of ownership. The Complainant also cites its registrations for the trademark HORIZON, including United Kingdom Trademark No. 3499858, registered on September 18, 2020, as prima facie evidence of ownership. The Complainant submit it has established rights in the marks META and HORIZON that predate the Respondent’s registration of the Disputed Domain Name. The Complainant submits that the Disputed Domain Name is confusingly similar to its trademarks, for the reason that the Disputed Domain Name incorporates in its entirety the META and the HORIZON trademarks and that the confusing similarity is not removed by the additional letter “s” and the term “world”, or the generic Top-Level Domain (“gTLD”) “.com”. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because, “The Respondent is not a licensee of the Complainant. The Respondent is not affiliated with the Complainant in any way. The Complainant has not granted any authorization for the Respondent to make use of its META and HORIZON trademarks, in a domain name or otherwise” and none
page 3 of the circumstances set out in paragraph 4(c) of the Policy apply. The Complainant also contends that the “the Domain Name does not resolve to an active webpage. Prior UDRP panels have found that the non-use of a domain name does not amount to use of the domain name in connection with any bona fide offering of goods or services”. The Complainant also submits that there is no evidence of demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services, that there is no evidence to suggest that the Respondent is commonly known by the Disputed Domain Name and that “the Respondent [is not] 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” as evidenced by the fact that “the Respondent is not making any substantive use of the [Disputed] Domain Name”. Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and currently is, in bad faith, contrary to the Policy and the Rules having regard to the prior use and fame of the Complainants’ trademarks, and, it submits, “the Respondent could not credibly argue that it did not have knowledge of the Complainant’s META and HORIZON trade marks when registering the [Disputed] Domain Name.” The Complainant also argues that the Disputed “Domain Name resolves to an inactive webpage. Such non-use of the [Disputed] Domain Name would not prevent a finding of bad faith use under the doctrine of passive holding”. B. Respondent The Respondent did not reply to the Complainant’s contentions. The Respondent subsequently sent an email to the Center on February 5, 2024, that stated “Why my domain is blocked without my permission”. On February 6, 2024, the Respondent sent another email stating, “I don't have lawyer to go through documents as they are very long and tedious to understand.” On February 19, 2024, the Respondent sent a further email communication purporting to appoint an authorized representative as well as seeking to invoke Rules paragraph 5(b), and requesting “additional time” of four calendar days to submit a Response. 6. Preliminary Issue: Request of Extension of Deadline for Response The Panel notes that the Respondent was duly notified of this Complaint on January 10, 2024. The Center’s Notification of Complaint and Commencement of Administrative Proceedings was sent to the email address provided by the Registrar for the Respondent, and which was also used by the Respondent to communicate with the Center on February 5, 6, and 19, 2024. The Panel further notes that the due date for the Response was January 30, 2024. The Panel observes that a four day extension of time would make the due date for a Response February 3, 2024. It appears that the Respondent is seeking an extension of time of four days from February 19, 2024, namely February 23, 2024, an extension of 24 days. Considering that the Respondent’s request was not timely, and advanced no plausible reason – let alone exceptional circumstances – for seeking such extension (nor any substantive arguments as to its reason for registering the Disputed Domain Name), the Panel has determined that the request is without merit and will now proceed to a decision on the merits. The Respondent’s request is denied.
page 4 7. Discussion and Findings Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following: (i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) that the Disputed Domain Name has been registered and is being used in bad faith. 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 Complainant has produced sufficient evidence to demonstrate that it has registered trademark rights in the marks META and HORIZON in numerous jurisdictions. Turning to whether the Disputed Domain Name is identical or confusingly similar to the META or HORIZON trademarks, or each of them, the Panel observes that the Disputed Domain Name is comprised of: (a) an exact reproduction of the Complainant’s trademark META; (b) followed by an exact reproduction of the Complainant’s trademark HORIZON; (c) followed by the letter “s”, (d) followed by the term “world”; (e) followed by the gTLD “.com”. It is well established that the gTLD used as part of a domain name is generally disregarded under the first element confusing similarity test. WIPO Overview 3.0, section 1.11.1. The relevant comparison to be made is with the second-level portion of the Disputed Domain Name, specifically: “metahorizonsworld”. The Panel finds the entirety of each mark is reproduced within the Disputed Domain Name. Accordingly, the Disputed Domain Name is confusingly similar to each mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7. Although the addition of the letter “s” and the term “worlds” may bear on assessment of the second and third elements, the Panel finds the addition of those elements does not prevent a finding of confusing similarity between the Disputed Domain Name and the two trademarks for the purposes of the Policy. WIPO Overview 3.0, section 1.8. 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 Disputed 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 Disputed Domain Name
page 5 (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. The Panel finds that the combined term “metahorizonsworld” has no ordinary meaning other than in connection with the Complainant. Furthermore, there is no indication that the Respondent was commonly known by the term “metahorizonsworld” prior to registration of the Disputed Domain Name and the Complainant also contends that it has not licensed, permitted, or authorized the Respondent to use the trademarks. The Panel also notes that the composition of the Disputed Domain Name carries a risk of implied affiliation with the Complainant (see WIPO Overview 3.0, section 2.5.1). 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 Name. 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 Name such as those enumerated in the Policy or otherwise. The Panel notes the evidence that the Disputed Domain Name resolves to an inactive webpage, which supports the Complainant’s submission on that point and finds that this does not represent a bona fide offering of goods or services, or a legitimate noncommercial or fair use. 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. 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, the Panel finds that the evidence in the case shows the Respondent registered and has used the Disputed Domain Name in bad faith. On the issue of registration, given the composition of the Disputed Domain Name, and the well-known nature of the Complainant’s META trademark, the Panel is satisfied that the Respondent targeted the Complainant’s trademark when it registered the Disputed Domain Name (see Meta Platforms, Inc. and Meta Platforms Technologies, LLC v. Libin, WIPO Case No. D2022-4996 (“Complainant’s META Mark quickly became well known throughout the world”). A combination of the trademarks META and HORIZON is even more distinctive and readily associated with the Complainant. The Panel is prepared to infer that the Respondent knew, or should have known, that its registration would be identical or confusingly similar to the Complainant’s trademarks (see WIPO Overview 3.0, section 3.2.2). On the issue of use, the Complainant’s evidence is that the Disputed Domain Name does not currently resolve to an active website. 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 Disputed 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
page 6 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 Complainant’s well-known trademark, and the composition of the relevant Disputed Domain Name, and finds that in the circumstances of this case the passive holding of the Disputed Domain Name does not prevent a finding of bad faith under the Policy. The Panel finds that the Complainant has established the third element of the Policy. 8. 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. /Nicholas Weston/ Nicholas Weston Sole Panelist Date: February 16, 2024
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