Meta Platforms, Inc., Instagram, LLC v Autumn Grant

WIPO Case No. D2022-2062

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Meta Platforms, Inc., Instagram, LLC v. Autumn Grant

Case No. D2022-2062

1. The Parties

Complainants are Meta Platforms, Inc. and Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.

Respondent is Autumn Grant, United States.

2. The Domain Name and Registrar

The disputed domain name <instagrammeta.com> 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 June 7, 2022. On June 8, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, 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 and contact information in the Complaint. The Center sent an email communication to Complainant on June 13, 2022, providing the registrant and contact information disclosed by the Registrar and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on June 17, 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 Respondent of the Complaint,
and the proceedings commenced on June 23, 2022. In accordance with the Rules, paragraph 5, the due
date for Response was July 13, 2022. The Center received email communications from Respondent on
June 13, 21, and 23, 2022.

The Center appointed Jeffrey M. Samuels as the sole panelist in this matter on July 25, 2022. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and

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Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

Complainant Instagram is a wholly owned subsidiary of Complainant Meta Platforms, which was formerly known as Facebook. Facebook changed its name to Meta Platforms on October 28, 2021. This change of name was heavily publicized worldwide. Meta Platforms is a United States social technology company that operates Facebook, Novi, Portal, and WhatsApp, in addition to Instagram.

Instagram, which was launched in 2010, is a world-renowned online photo and video-sharing social- networking application. Acquired by Meta in 2012, Instagram today is the world’s fastest growing photo and video-sharing and editing software and online social network, with more than one billion monthly active accounts worldwide.

Complainant Meta Platforms is the owner, via an October 26, 2021, assignment, of United States Trademark
Registration No. 5548121 for the mark META. Complainant Instagram is the owner of trademark
registrations from jurisdictions around the world, including United States Trademark Registration No.
4146057, for the mark INSTAGRAM. The INSTAGRAM trademark was registered in the United States in
May 2012, based on a first use date of October 6, 2010. Instagram’s website, which is available at

“ is ranked the fifth most visited website in the world.

The disputed domain name, <instagrammeta.com>, resolves to an inactive website. It was registered on

October 28, 2021, the same day Facebook changed its name to Meta Platforms.

Complainants attempted to reach out to Respondent on March 24, 2022, but received no response.

5. Parties’ Contentions

A. Complainant

Complainants submit that the disputed domain name is confusingly similar to the INSTAGRAM and META trademarks. They point out that the disputed domain name incorporates the marks in their entirety and allege that the addition of the “.com” Top-Level Domain “may be disregarded” in assessing confusingly similarity under the Policy.

Complainants further note that the case file establishes their ownership of either the INSTAGRAM or META marks.

Complainants argue that Respondent has no rights or legitimate interests in the domain name in dispute. Complainants indicate, as noted above, that the disputed domain name resolves to an inactive website and contend that such passive use does not amount to use of the domain name in connection with a bona fide offering of goods or services. Complainants note that Respondent is not licensed to use the INSTAGRAM and META marks and is not affiliated with Complainants in any way. Finally, Complainants add, there is no evidence to suggest that Respondent is commonly known by the disputed domain name or, given Respondent’s passive use of the domain name, that Respondent is making a legitimate noncommercial or fair use of the disputed domain name.

With respect to the issue of “bad faith” registration and use, Complainants assert that the META trademark is already well known throughout the world, given that the re-naming of Facebook to Meta Platforms attracted significant international media attention. Complainants also indicate that the INSTAGRAM mark was continuously and extensively used well before the domain name in issue was registered in 2021.

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“In light of the above, the [Complainants] submit[] that the Respondent could not credibly argue that it did not
have knowledge of the [Complainants’] trade marks when registering the Domain Name in October 2021,
given that such trade marks form a distinctive combination and that the registration took place on the day of
[Facebook’s] name change to ‘Meta Platforms, Inc.’.”

Complainants next assert that the disputed domain name is being used in bad faith. They maintain that the passive holding of the disputed domain name supports a determination of bad faith use given that the INSTAGRAM and META trademarks are well known, the lack of any evidence of Respondent’s actual or contemplated bona fide use of the disputed domain name, and that the domain name carries with it a high risk of implied affiliation with Complainants. “In conclusion, the [Complainants] cannot conceive of any good faith us to which the Domain Name could be put by the Respondent that would not carry with it an inherent risk of confusion. As such, the [Complainants] submit[] that the presence of the Domain Name in the hands of the Respondent represents an abusive threat hanging over the head of the [Complainants] (i.e., an abuse capable of being triggered by the Respondent at any time} and therefore a continuing abusive use”.

B. Respondent

Respondent did not offer a substantive response to the Amended Complaint. In an email dated June 13, 2021, Respondent indicated that it had already canceled the disputed domain name and that the disputed domain name was ordered by mistake. In an email dated June 21, 2022, Respondent offered the domain name to Complainants, noting that “we ordered it by mistake and deleted/canceled it from our account on November 8, 2021”. In an email dated June 23, 2022, Respondent asked for instructions on how to give the

disputed domain name to the Complainant.

In an email dated June 23, 2022, Complainants’ counsel noted that she had attempted to reach out to Respondent on March 24, 2022, and that, given the lack of response, Complainants did not know that Respondent attempted to delete the disputed domain name. Complainants’ counsel further indicated that, at

the time the Complaint was filed, the domain name was still active. “Noting that the Domain Name still
appears to be active, that it is locked in accordance with UDRP Rules, and that the Complainant[s] [have]

incurred the costs of filing,” Complainants requested the Center to proceed with a decision on the merits.

6. Discussion and Findings

A. Identical or Confusingly Similar

The Panel determines that Complainants have rights in both the INSTAGRAM and META trademarks, as evidenced by the fact that such marks are the subject of registrations around the world and the longstanding use and/or distinctiveness of such marks.

The Panel further finds that the disputed domain name is confusingly similar to the INSTAGRAM and META marks. The domain name incorporates in full the marks in issue, adding only the generic Top-Level Domain “.com.” As noted in WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition

(“WIPO Overview 3.0”), section 1.7, “[…] in cases where a domain name incorporates the entirety of a trademark […], the domain name will normally be considered confusingly similar for purposes of UDRP standing.”

B. Rights or Legitimate Interests

The Panel concludes that Complainants have sustained their burden of proving that Respondent has no
rights to or legitimate interests in the disputed domain name. The case file supports Complainants’ assertion
that the disputed domain name resolves to an inactive or passive website. There being no use of the
disputed domain name, Respondent cannot be found to be using the domain name in connection with a
bona fide offering of goods or services (see Instagram LLC v. Zafer Demir, Yok, WIPO Case No.
D2019-1072) or making a legitimate noncommercial or fair use of the domain name. There is also no

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evidence that Respondent is commonly known by the disputed domain name.

The nature of the disputed domain name, composed of two of Complainant’s trademarks, carries a risk of implied affiliation to Complainant that prevents any use from being considered fair. WIPO Overview 3.0, section 2.5.1.

C. Registered and Used in Bad Faith

The Panel determines that the disputed domain name was registered and is being used in bad faith.

As noted above, Complainant Instagram and use of the INSTAGRAM mark trace back to 2010, well prior to the October 28, 2021, registration of the disputed domain name, and Instagram has more than one billion monthly active accounts worldwide. As further noted above, the popular social media platform Facebook changed its name to Meta Platforms, Inc. on October 28, 2021, the same day the disputed domain name was registered, and Complainant Meta Platforms is now the owner of United States Registration No. 5548121 for the META mark. The name change of Facebook to Meta Platforms was widely publicized.

Given these facts and circumstances, it is inconceivable that Respondent did not know of Complainants and of the INSTAGRAM and META trademarks at the time the disputed domain name was registered. The fact that the disputed domain name was registered on the same day of the name change from Facebook to Meta

Platforms also weighs heavily on the Panel’s determination that the domain name was registered in bad faith.

Focusing on the issue of bad faith use, the Panel finds that the passive holding of a domain name may give rise to a finding of bad faith use where the complainants’ marks are distinctive and/or enjoy a high degree of reputation, the respondent has not provided any evidence of actual or contemplated good-faith use of the

domain name, and the implausibility of any good faith use to which the domain name may be put. See META marks are distinctive and well-known, that Respondent has not provided any evidence of use of the disputed domain name, and, given the distinctiveness and use of Complainants’ marks, it is difficult, if not impossible, to fathom how the disputed domain name could be put to good faith use.

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 <instagrammeta.com> be transferred to Complainant.

/Jeffrey M. Samuels/
Jeffrey M. Samuels
Sole Panelist
Date: August 8, 2022