Meta Platforms, Inc. and Meta Platforms Technologies, LLC v; Florian Suschetz

WIPO Case No. D2023-4489

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Meta Platforms, Inc. and Meta Platforms Technologies, LLC v.
Florian Suschetz

Case No. D2023-4489

1. The Parties

The Complainants are Meta Platforms, Inc., United States of America (“United States”) (the “First represented by Hogan Lovells (Paris) LLP, France.

The Respondent is Florian Suschetz, Austria.

2. The Domain Name and Registrar

The disputed domain name <metaquest.stream> is registered with Porkbun 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 verif ication in connection with the disputed domain name. On October 31, 2023, the Registrar transmitted by email to the Center its verif ication response, disclosing registrant and contact information for the disputed domain name which differed from the named Respondent (Whois Privacy, Private by Design, LLC) and contact information in the Complaint. The Center sent an email communication to the Complainants on November 10, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. On November 11, and November 12, 2023, the Respondent sent several informal email communications to the Center. The Complainants f iled an amended Complaint on November 14, 2023.

The Center verif ied that the Complaint together with the amended Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on November 15, 2023. In accordance with the Rules, paragraph 5, the due date for Response was December 5, 2023. The Respondent sent further email communications to the Center on November 15, 2023 and f iled a response on November 16, 2023.

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The Center appointed Kaya Köklü as the sole panelist in this matter on December 21, 2023. The Panel f inds 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 First Complainant is a social media technology company. Among others, the First Complainant operates the internationally well-known online platforms and networks Facebook, Instagram, WhatsApp, and Meta Quest (formerly Oculus). Formerly known as Facebook Inc., the First Complainant announced its change of name to Meta Platforms, Inc. on October 28, 2021.

The First Complainant owns various trademark registrations for META and META QUEST, such as the United States Trademark Registration No. 5548121, registered on August 28, 2018, for META, and the Mexican Trademark Registration No. 2388436, registered on April 27, 2022, for META QUEST (Annex 12 to the Complaint).

Its META and META QUEST trademarks are intensively used by the Complainant and its group members in the United States and internationally (Annex 8 to the Complaint).

The Second Complainant is a wholly-owned subsidiary of the First Complainant and the intellectual property right holder for various virtual reality related technologies.

The Second Complainant is the owner of the QUEST trademark, such as the European Union Trademark

Registration No. 017961685, registered on June 16, 2020, for QUEST (Annex 12 to the Complaint).

The Respondent is reportedly an individual f rom Austria.

The disputed domain name was registered on February 16, 2023.

At the time of filing of the Complaint and this Decision, the disputed domain name resolves to a parking page of the Registrar with the indication that the disputed domain name is of fered for sale (Annex 13 to the Complaint).

On August 23, 2023, the Complainants’ lawyers sent an inf ringement notice to the Respondent via the Registrar’s registrant contact form for the disputed domain name, but no response was received (Annex 14 to the Complaint).

5. Parties’ Contentions
A. Complainants

The Complainants request consolidation of the Complainants and the transfer of the disputed domain name to the First Complainant.

The Complainants contend that they have satisf ied each of the elements required under the Policy for a transfer of the disputed domain name.

B. Respondent

The Respondent sent various email communications to the Center and f iled a Response on November 16, 2023. In his email communications of November 11, 12, and 15, 2023 as well as in his Response, the Respondent did not challenge the Complainants’ contentions. Rather, the Respondent expressly conf irmed the Complainants’ trademark rights and his willingness and consent to transfer the disputed domain name to

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the Complainant. Literally, the Respondent stated that the disputed domain name “can be transferred to the

Complaining Party who has the trademark rights for this name”.

6. Discussion and Findings
6.1. Consolidation of Multiple Complainants

The Complaint contains a request for consolidation of the First and Second Complainant on the basis that they are related companies with a common grievance against the Respondent.

Taking into consideration that the Respondent has not rebutted the requested consolidation, the Panel f inds that the Complainants have established a prima facie case that the Complaint can be consolidated based on a common grievance and interest of both Complainants, in particular as the Second Complainant is a subsidiary of the First Complainant and both Complainants are affected in their respective trademark rights by the disputed domain name. The Panel is convinced that it is fair and equitable in the circumstances of the case to order the consolidation as requested (see section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”)).

Consequently, the Panel accepts the First and Second Complainant in this administrative proceeding and, for the ease of reference, will jointly refer to them as “the Complainant” in the following, whenever appropriate.

6.2. Substantive Issues

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the
Policy, the Rules and any rules and principles of law that it deems applicable.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisf ied:

(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.

For the evaluation of this case, the Panel has taken note of the WIPO Overview 3.0 and, where appropriate, will decide consistent with the consensus views stated therein.

A. Consent to Transfer

The Panel notes that even without a formal settlement between the parties, a consent for the transfer of the disputed domain name by the Respondent can 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”.

In his Response and his previous email communications to the Center, the Respondent unambiguously and repeatedly acknowledged the trademark rights of the Complainant and expressed his explicit consent to transfer the disputed domain name to the Complainant.

The Panel f inds that the Response by the Respondent to the Center undoubtedly demonstrates his consent to have the disputed domain name transferred.

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The fact that no settlement agreement has been concluded between the Parties does, in view of the Panel, not af fect the effectiveness of the Respondent’s unilateral consent to the transfer of the disputed domain name.

B. Conclusion

The Panel notes that despite the willingness of the Respondent to transfer the disputed domain name, the Complainant did not request suspension of the proceedings, and hence wished to proceed on the merits of the case, particularly as the Respondent was already given the opportunity to settle the case prior to the administrative proceeding and that meanwhile the Complainant was obliged to incur the costs of f iling the Complaint.

As a consequence, the Panel orders the transfer of the disputed domain name based on the Respondent’s consent to transfer and exceptionally renders its Decision in summary form only.

But even if the Respondent would not have provided his consent to transfer the disputed domain name, the name, and the disputed domain name was registered and is being used in bad faith.

Panel f inds that (without the need to go into details) the disputed domain name is identical to the
Complainant’s META QUEST trademark, respectively confusingly similar to the Complainant’s META and
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 <metaquest.stream> be transferred to the First Complainant.

/Kaya Köklü/
Kaya Köklü
Sole Panelist
Date: January 8, 2024