Meta Platforms, Inc., Instagram, LLC v Quincy Dwayne Stone

WIPO Case No. D2024-0315

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Meta Platforms, Inc., Instagram, LLC v. Quincy Dwayne Stone

Case No. D2024-0315

1. The Parties

The Complainant is Meta Platforms, Inc., Instagram, LLC, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.

The Respondent is Quincy Dwayne Stone, United Kingdom.

2. The Domain Names and Registrar

The disputed domain names <metafacebookverified.com> and <metainstagramverified.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 January 25, 2024.
On January 25, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain names. On January 25, 2024, 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 (Registration Private, Domains By Proxy, LLC) and contact
information in the Complaint. The Center sent an email communication to the Complainant on January 26,
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 30, 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 31, 2024. In accordance with the Rules, paragraph
5, the due date for Response was February 20, 2024. The Respondent sent email communications to the
Center on February 13, 16, 21, 26, and 29, 2024.

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The Center appointed Ganna Prokhorova as the sole panelist in this matter on March 6, 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 Complainants are Meta Platforms, Inc. together with its subsidiary Instagram, LLC, collectively referred to as the Complainant.

The Complainant, Meta Platforms, Inc. (Meta), is a United States social technology company, and operates, inter alia, Facebook, Instagram, Meta Quest (formerly Oculus) and WhatsApp. The Complainant, formerly known as Facebook Inc., announced its change of name to Meta Platforms Inc. on October 28, 2021, and this was publicised worldwide.

Founded in 2004, the Complainant’s Facebook platform (“Facebook”) is a leading provider of online social- media and social-networking services. Since its launch in 2004, Facebook rapidly developed considerable renown and goodwill worldwide, with 1 million active users by the end of 2004. Today, Facebook has

approximately 3.03 billion monthly active users, and 2.06 billion daily active users on average worldwide (as
of June 30, 2023). With approximately 85 percent of its daily active users outside the United States and
Canada, 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.

Instagram is a world-renowned online photo- and video-sharing social-networking application. Since its launch in 2010, Instagram has rapidly acquired and developed considerable goodwill and renown worldwide. Acquired by the Complainant in 2012, Instagram today is the world’s fastest growing photo- and video- sharing and editing software and online social network, with more than 2 billion monthly active accounts worldwide. Instagram has consistently ranked amongst the top “apps” for mobile devices, including for iOS and Android operating systems.

On February 19, 2023, Meta launched a new subscription service known as “Meta Verified”, which allows verified users to add a blue check mark to their Instagram and Facebook accounts for a monthly fee, and offers benefits such as increased visibility, improved protection against impersonation attacks and direct access to customer support. This new offering is now available in many countries worldwide.

The Complainant owns numerous trademark registrations for META, FACEBOOK and INSTAGRAM in various jurisdictions, including the following:

- United States trademark registration No. 5548121 for META, registered on August 28, 2018, and
assigned to the Complainant on October 26, 2021;

- United Kingdom trademark registration No. UK00003329154, FACEBOOK, registered on October 26,
2018;

- International Registration No. 1075807, FACEBOOK, registered on July 16, 2010;

- United Kingdom trademark registration No. UK00003123325, INSTAGRAM, registered on January 15,
2016; and

- International Registration No. 1129314, INSTAGRAM, registered on March 15, 2012.

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The Complainant maintains a strong online presence on the various social media platforms, such as names comprising the Complainant’s META, FACEBOOK and/or INSTAGRAM, such as <meta.com>.

The disputed domain names were registered on February 27, 2023, and currently do not resolve to active websites.

On September 1, 2023, the Complainant sent an infringement notice to the Respondent via the Registrar’s registrant contact forms for the disputed domain names. No response was received.

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 names.

Notably, the Complainant contends that:

(1) The disputed domain names are confusingly similar to the Complainant’s trademarks. The Complainant owns numerous trademark registrations for META, FACEBOOK and INSTAGRAM in jurisdictions throughout the world. The disputed domain names combine the Complainant’s META trademark with its FACEBOOK or INSTAGRAM trademarks, with the addition of the term “verified”, under the

generic Top-Level domain (“gTLD”) “.com”. Inclusion of the Complainant’s trademarks in their entirety in the
disputed domain names is sufficient to establish confusing similarity between the disputed domain names
and the Complainant’s trademarks. The gTLD “.com” may be disregarded for the purposes of comparison
under the first element, as it is viewed as a standard requirement of registration.

(2) The Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is not using the disputed domain names in connection with any bona fide offering of goods or services. 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, FACEBOOK and INSTAGRAM trademarks in the disputed domain names or otherwise. The Respondent is not commonly known by the disputed domain names. There is no evidence of the Respondent having made any substantive use of the disputed domain names. The Respondent is not making use of the disputed

domain names in connection with a bona fide offering of goods or services.

(3) The disputed domain names were registered and are being used in bad faith. The Complainant’s

FACEBOOK and INSTAGRAM trademarks are highly distinctive and exclusively associated with its services around the world. The Complainant’s widely reported subscription service “Meta Verified” was introduced on February 19, 2023 (i.e., seven days before the disputed domain names were registered). The Respondent is not making any apparent substantive use of the disputed domain names. Despite the Complainant’s efforts

to contact the Respondent, the Respondent has not come forward with any response or evidence of any
bona fide intent in relation to the disputed domain names. There is no apparent good faith use to which the
disputed domain names could be put that would not have the effect of misleading consumers as to the
source or affiliation of the disputed domain names.

The Complainant requests transfer of the disputed domain names in order to protect its rights and legitimate business interests.

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B. Respondent

The Respondent did not reply to the Complainant’s substantive contentions. The Respondent sent several informal communications to the Center regarding a possible settlement in the matter. The Parties did not reach a settlement.

6. Discussion and Findings

6.1 Procedural Issue

A. Consolidation of Multiple Complainants

The Complaint was filed by two Complainants against a single Respondent.

Neither the Policy nor the Rules expressly provides for or prohibits the consolidation of multiple
complainants. In this regard, section 4.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP
Questions, Third Edition (“WIPO Overview 3.0”) states: “In assessing whether a complaint filed by multiple
complainants may be brought against a single respondent, panels look at whether (i) the complainants have
a specific common grievance against the respondent, or the respondent has engaged in common conduct
that has affected the complainants in a similar fashion, and (ii) it would be equitable and procedurally efficient
to permit the consolidation.”

Both Complainants form part of the same corporate group. Instagram, the owner of trademark registrations for INSTAGRAM, is a wholly-owned subsidiary of Meta, the owner of trade mark registrations for META and FACEBOOK. As such, the two entities have a sufficient common legal interest in the trademarks reflected in the disputed domain names to file a joint Complaint. See Facebook, Inc., Instagram, LLC, WhatsApp Inc. v. Linyanxiao, WIPO Case No. D2018-1089.

6.2 Substantive issues

The burden for the Complainant under paragraph 4(a) of the Policy is to prove:

(i)      that the disputed domain names registered by the Respondent are identical or confusingly similar to a trademark in which the Complainant has rights;

(ii)     that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii)    that the disputed domain names have been registered and are being used in bad faith.

The Complainant must prove in this administrative proceeding that each of the aforementioned three elements is present in order to obtain the transfer of the disputed domain names.

In accordance with paragraph 14(a) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint.

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 3.0, section 1.7.

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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. With the Complainant’s rights in META, FACEBOOK and INSTAGRAM trademarks established, the remaining question under the first element of the Policy is whether the disputed domain names are identical or confusingly similar to the Complainant’s trademarks.

The disputed domain names combine the Complainant’s META trademark with its FACEBOOK or INSTAGRAM trademarks, with the addition of the term “verified”, under the gTLD “.com”. Accordingly, the disputed domain names are confusingly similar to the Complainant’s trademarks for the purposes of the Policy. WIPO Overview 3.0, section 1.7. The addition of the term “verified” does not prevent a finding of similarity between the disputed domain names and the Complainant’s trademarks; see WIPO Overview 3.0, section 1.8.

In addition, the combination of the trademark META with the FACEBOOK or INSTAGRAM trademarks does not prevent a finding of confusing similarity. Prior UDRP panels have found domain names containing multiple trademarks to be confusingly similar to the trademarks at issue. See Meta Platforms, Inc. and Meta Platforms Technologies, LLC v. 昭龙 叶, WIPO Case No. D2022-4696.

The gTLD “.com” may be disregarded for purposes of comparison under the first element, as they are viewed as a standard registration requirement. See WIPO Overview 3.0, section 1.11.1.

Therefore, the Panel finds that the disputed domain names are confusingly similar to the Complainant’s trademark and that the requirement of paragraph 4(a)(i) of the Policy is met in this case.

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 names. 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 names such as those enumerated in the Policy or otherwise.

Being specific, according to the case file, the Respondent is not using the disputed domain names in connection with any bona fide offering of goods or services.

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, FACEBOOK and INSTAGRAM trademarks, in a domain name or otherwise. There is no evidence to suggest that the Respondent is commonly known by the disputed domain names.

The disputed domain names currently do not resolve to active websites. There is no evidence of the passive holding of the disputed domain names does not support any reasonable claim of being commonly

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known by the disputed domain names, nor does it give rise to any reputation in the disputed domain names
per se, independent of the Complainant’s trademark rights.

Nor is the Respondent currently making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers. The disputed domain names, which comprise the Complainant’s META, FACEBOOK and/or INSTAGRAM trademarks together with the term “verified”, carry with them a high risk of implied affiliation with the Complainant, notably taking into account the Complainant’s “Meta Verified” service provided to its Facebook and Instagram users.

As such, the Panel finds that the Complainant has established that the Respondent does not have rights or a legitimate interest in the disputed domain names, and that the element under paragraph 4(a)(ii) 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.

The Panel finds that despite the relatively recent re-naming of the Complainant’s company as “Meta Platforms, Inc.“, the Complainant’s META trademark is already well known throughout the world and closely associated with the Complainant’s goods and services, the Complainant’s re-naming having attracted significant international media attention, while the Complainant’s services are used by billions of monthly active users across the globe. Moreover, the Complainant’s FACEBOOK and INSTAGRAM trademarks are highly distinctive and exclusively associated with its services around the world. Therefore, the Panel notes that the Respondent’s choice of the disputed domain names cannot have been accidental and must have been influenced by the fame of the Complainant and its earlier trademarks. Prior panels have consistently found that the mere registration of a domain name that is identical or confusingly similar to a famous or well- known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See Carrefour SA v. Registration Private, Domains By Proxy, LLC / 3232 33232, WIPO Case No. D2022-1952.

Prior 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 names does not prevent a finding of bad faith in the circumstances of this proceeding.

Although panels 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 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 distinctiveness and reputation of the Complainant’s trademarks, and the composition of the disputed domain names, and finds that in the circumstances of this case the passive holding of the disputed domain names does not prevent a finding of bad faith under the Policy.

In light of the high risk of implied affiliation between the disputed domain names and the Complainant, the
Panel finds that the presence of the disputed domain names in the hands of the Respondent represents an
abusive threat hanging over the head of the Complainant (i.e., an abuse capable of being triggered by the
Respondent at any time) and therefore a continuing abusive use. See Conair Corp. v. Pan Pin, Hong Kong
Shunda International Co. Limited, WIPO Case No. D2014-1564.

Consequently, the Panel considers that the disputed domain names were registered and are being used in bad faith. In light of the above, the third element under paragraph 4(a)(iii) of the Policy has been established.

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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 <metafacebookverified.com> and <metainstagramverified.com> be transferred to the Complainant.

/Ganna Prokhorova/
Ganna Prokhorova
Sole Panelist
Date: March 20, 2024