ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Meta Platforms, Inc. v. Muhammad Shahbaz Case No. D2024-0288 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 Muhammad Shahbaz, Pakistan. 2. The Domain Name and Registrar 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 January 23, 2024. On January 24, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 24, 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 29, 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 31, 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 February 1, 2024. In accordance with the Rules, paragraph 5, the due date for Response was February 21, 2024. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 27, 2024.
page 2 The Center appointed Fabrizio Bedarida as the sole panelist in this matter on March 5, 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. 4. Factual Background The Complainant in this proceeding is Meta Platforms, Inc. (formerly Facebook, Inc.), a United States of America corporation. The Complainant is a technology company, and operates, inter alia, Facebook, Instagram, Meta Quest (formerly Oculus) and WhatsApp. Founded in 2004, the Complainant’s Facebook platform (Facebook) is a leading provider of online social media and social networking services. Facebook’s social networking services are provided in more than 70 languages. In addition, Facebook is also available for mobile devices, and in recent years has consistently ranked amongst the top “apps” in the market. In 2023, the FACEBOOK brand ranked 21st in Interbrand's Best Global Brands report. The Complainant owns several trademarks corresponding and/or including the FACEBOOK sign. The Complainant is, inter alia, the owner of: - United States of America trademark registration number 3041791, for the FACEBOOK trademark registered on January 10, 2006; - United States of America trademark registration number 3122052, for the FACEBOOK trademark registered on July 25, 2006; - International trademark registration number 1075094 for the FACEBOOK (device) trademark registered on July 16, 2010; - European Union Trademark registration number 005585518, for the FACEBOOK trademark registered on May 25, 2011. In addition, the Complainant is the holder of numerous domain names consisting of or including its FACEBOOK trademark, registered under various generic Top-Level Domains (gTLDs) as well as under a number of country code Top-Level Domains, including facebook.com (registered on March 29, 1997), facebook.biz (registered on September 22, 2005), facebook.ca (registered on January 26, 2005), facebook.co (registered on April 23, 2010) and facebook.cn (registered on March 4, 2005). The Complainant has also established a strong social media presence online by being active on various social-media platforms. The disputed domain name was registered on May 9, 2023. The disputed domain name resolves to a website titled “Free Video Downloader” that purports to offer a tool that enables Internet users to download video content from Facebook and Instagram, as well as from third-party platforms including TikTok and Pinterest. The Respondent’s website also features the Complainant's Facebook and Instagram logos. The Complainant’s representatives, in an attempt to resolve the matter amicably, sent a notice to the Respondent via the Registrar’s contact form. On the same date, they received a short response from the Respondent asking if they wanted to buy the disputed domain name. Afterwards, the Complainant’s representatives sent a cease-and-desist letter to the Respondent, which remains unanswered.
page 3 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 contends that the addition of the term “videodownloader” does not prevent a finding of confusing similarity with the Complainant’s FACEBOOK trademark, which remains clearly recognizable in the disputed domain name. In addition, the Complainant affirms that the Respondent’s offer of a tool for the unauthorized downloading of content from Facebook and Instagram violate the Meta Terms of Service and the Meta Developer Policies, and places the security and privacy of Facebook and Instagram users at risk, as content scraped from the Facebook and Instagram platforms may be stored and later used for unauthorized purposes by third parties. The Complainant thus claims (also quoting prior UDRP panels) that such use of the disputed domain name does not constitute a bona fide offering of goods or services. The Complainant also claims that, given the fame of the FACEBOOK trademark, it may be inferred that the Respondent registered the disputed domain name with knowledge of the Complainant’s trademark and did so in bad faith. Finally, the Complainant contends that the unauthorized automated downloading of content from social networks amounts to bad faith. In this sense the Complainant quotes previous UDRP decision Instagram, LLC v. Contact Privacy Inc. Customer 1247361676 / G.JC, WIPO Case No. D2021-1675. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied: (i) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) 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. 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 entirety of the mark is reproduced within the disputed domain name. Accordingly, the disputed domain name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.
page 4 Although the addition of other terms here, “videodownloader”, 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 disputed domain name and the mark 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 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 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 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 Respondent was aware of the Complainant’s trademark registrations and rights to the FACEBOOK trademark when it registered the disputed domain name. The disputed domain name was registered many years after the Complainant’s trademark was registered. In addition, owing to the substantial presence established worldwide and on the Internet by the Complainant, and considering the composition of the disputed domain name, it is at the least very unlikely that the Respondent was not aware of the existence of the Complainant, or of the Complainant’s trademarks, when registering the disputed domain name. Prior UDRP panels have repeatedly recognized the strength and renown of the Complainant's FACEBOOK trademark. In fact, “Facebook” is not a common or descriptive term, but one of the most renowned trademarks in the world. Therefore, it is more likely than not that the Respondent, when registering the disputed domain name, had knowledge of the Complainant’s earlier rights to the FACEBOOK trademark. 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.
page 5 The content of the Respondent’s website, which makes explicit reference to the Complainant’s Facebook and Instagram platforms and features the Complainant’s Facebook and Instagram logos while offering to provide a tool for the unauthorized downloading of content from Facebook and Instagram, is a clear inference that the Respondent intended to target the Complainant when registering the disputed domain name. The tools provided on the Respondent’s website, by circumventing the requirement that Facebook and Instagram users create an account to access these platforms, as well as sidestepping the inability of users to download Facebook or Instagram content directly, may place the privacy and security of Facebook and Instagram users at risk as the downloaded content can be stored and later used for unauthorized purposes by third parties. As noted by the Complainant, prior UDRP panels have already held that the unauthorized automated downloading of content from social networks amounts to bad faith. The bad faith registration and use of the disputed domain name are also affirmed by the fact that the Respondent did not respond to the Complainant’s cease and desist letter, nor has it denied the assertions of bad faith made by the Complainant in this proceeding. The Panel finds that the Complainant has established the third element 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. /Fabrizio Bedarida/ Fabrizio Bedarida Sole Panelist Date: March 19, 2024
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