Meta Platforms, Inc. and Instagram, LLC v Susan Peterson

WIPO Case No. D2022-0765

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Meta Platforms, Inc. and Instagram, LLC v. Susan Peterson

Case No. D2022-0765

1. The Parties

The Complainants are Meta Platforms, Inc. and Instagram, LLC, United States of America (“United States”) represented by Tucker Ellis LLP, United States.

The Respondent is Susan Peterson, United States, represented by Stoel Rives LLP, United States.

2. The Domain Names and Registrar

The disputed domain names <facebook-workfromhome.com>, <instagram-workfromhome.com>,
<workfromhomefacebook.com>, <workfromhome-instagram.com>, and <workfromhomeinstagram.com> 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 March 4, 2022. connection with the disputed domain names. On March 7, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on March 9, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on March 10, 2022.

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 5, the due date for Response was April 3, 2022. On April 1, 2022, the Respondent’s Representative requested an extension of 60 days to respond to the Complaint. After confirming that the Complainants did not object to the requested extension, the Respondent’s request was granted, and the response date was

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extended to June 2, 2022. The Respondent did not file a response by the requested deadline. The Center

thereafter proceeded to Panel Appointment.

The Center appointed William F. Hamilton as the sole panelist in this matter on June 29, 2022. 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 Meta Platforms, Inc. (“Meta”) operates the world-famous Facebook social networking website and mobile applications. Facebook has over two billion monthly active users around the world. Meta owns numerous registrations around the world for the mark FACEBOOK, the earliest of which is United

States Registration No. 3,122,052, registered on July 25, 2006.

The Complainant Instagram, LLC (“Instagram”) operates the world-famous Instagram social networking website and mobile applications. Instagram is wholly owned by Meta. Instagram has over a billion monthly active users around the world. The Complainant Instagram owns numerous registrations around the world for the mark INSTAGRAM, the earliest of which is United States Registration No. 4,146,057, registered on May 22, 2012.

The FACEBOOK and INSTAGRAM marks will be collectively referred to herein as the “Marks”.

The Respondent registered the disputed domain names on September 26, 2022. Some of the disputed domain names do not resolve to active websites, and some others resolve to commercial parking pages featuring sponsored links.

5. Parties’ Contentions
A. Complainant

The Complainants assert that the disputed domain names are confusingly similar to the Complainants’ Marks because the disputed domain names wholly incorporate the Complainants’ Marks and are only distinguished from the Marks by the addition of the expression “workfromhome”. The Complainants assert that the

Respondent has not used the Marks or the disputed domain names in any bona fide business and has never obtained the permission of the Complainants to use the Marks or the disputed domain names. Finally, the Complainants assert that the Respondent registered and used the disputed domain names in bad faith with full knowledge of the Complainants’ Marks.

B. Respondent

Although the Respondent requested an extension to submit a formal response, the Respondent did not make a substantive response to the Complaint.

6. Discussion and Findings

A. Identical or Confusingly Similar

The panel finds that the disputed domain names are confusingly similar to the Marks. The disputed domain names entirely incorporate the Marks and only differentiate themselves from the Marks with the addition of the expression “workfromhome” as a prefix or suffix to the Marks. A domain name which wholly incorporates a complainants’ registered mark is sufficient to establish confusingly similarity for the purposes of the Policy

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Instagram, LLC v. Registration Private, Domains By Proxy, LLC / Adana adana, adana, WIPO Case No. D2020-3074.

when, as here, the Marks are clearly recognizable within the disputed domain names notwithstanding the within the disputed domain name, the addition of other terms (whether descriptive, geographic, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element”). See also
addition of the expression “workfromhome.” See WIPO Overview of WIPO Panel Views on Selected UDRP

The generic Top-Level Domain (“gTLD”), namely “.com”, of the disputed domain names may be disregarded for the purposes of assessment under the first element, as it is viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1; Monster Energy Company, a Delaware Corporation v. J.H.M. den Ouden, WIPO Case No. D2016-1759; and International Business Machines Corporation v. Sledge, Inc. / Frank Sledge, WIPO Case No. D2014-0581.

B. Rights or Legitimate Interests

The Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain names.

The Complainants have specifically disavowed providing the Respondent with permission to use the disputed domain names or the Marks. The Respondent is not affiliated with the Complainants in any way and does not have any business relationship with the Complainants. There is no evidence that the Respondent has conducted any bona fide business under any disputed domain names or is commonly known by the disputed domain names. Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.

on this point to the Respondent. AB Electrolux v. Ahmed Aboeldahab, WIPO Case No. D2015-0650. The	The Complainants have thus established a prima facie case in its favor, which shifts the burden of production in the disputed domain names.
Moreover, the prominent placement of the Complainants’ Marks in the disputed domain names falsely suggests that the disputed domain names will resolve to websites related to the Complainants’ products and services or are otherwise endorsed by the Complainants.
C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, bad faith may be established by any one of the following scenarios:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of
the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.

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The Panel finds that the disputed domain names were registered and used in bad faith.

Common sense compels the conclusion that the Respondent was aware of the Complainants’ famous and well-known Marks when registering the disputed domain names and intentionally created the disputed domain names to strongly suggest to unsuspecting Internet users that the disputed domain names will resolve to websites featuring services or products that are associated with the Complainants’ products and services.

Some of disputed domain names do not resolve to active websites, and some others resolve to commercial parking pages featuring sponsored links. The fact that some disputed domain names remain inactive does not prevent a finding of bad faith registration and use. Further, in the present circumstances, the fact that

some other disputed domain names resolve to commercial parking pages featuring sponsored links supports commercial benefit by unfairly capitalizing on the well-known reputation and goodwill of the Marks in order to increase click-through traffic.

a finding of bad faith. Despite the fact that the sponsored links do not appear directly related to the

Moreover, noting the composition of the disputed domain names and reputation of the Marks, it is difficult to conceive of any use that the Respondent might make of the disputed domain names without the Complainant’s consent that would not involve bad faith, and the Respondent has not come forward with any evidence of good faith use. Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000- 0003; Verner Panton Design v. Fontana di Luce Corp, WIPO Case No. D2012-1909 (where the reputation of a complainant in a given mark is significant and the mark bears strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith may be inferred). See also Facebook, Inc. v. Online Admin, DotBadger Domains, WIPO Case No. D2021-1210.

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 names, <facebook-workfromhome.com>, <instagram-workfromhome.com>, <workfromhomefacebook.com>, <workfromhome-instagram.com>, and <workfromhomeinstagram.com>, be transferred to the Complainants.

/William F. Hamilton/
William F. Hamilton
Sole Panelist
Date: July 6, 2022