Meta Platforms, Inc., Meta Platforms Technologies, LLC v Federico Olivares

WIPO Case No. D2023-2235

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION
Meta Platforms, Inc., Meta Platforms Technologies, LLC v. Federico Olivares
Velasco

Case No. D2023-2235

1. The Parties

Complainants are Meta Platforms, Inc., Meta Platforms Technologies, LLC, United States of America

(“United States”), represented by Hogan Lovells (Paris) LLP, France.

Respondent is Federico Olivares Velasco, United States.

2. The Domain Names and Registrar

The disputed domain names <metaquestfield.com> and <metaqueststadium.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 May 23, 2023. On May 24, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 24, 2023, 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 Complainants on May 6, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting Complainants to submit an amendment to the Complaint. Complainants filed an amended Complaint on May 31, 2023.

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 5, 2023. In accordance with the Rules, paragraph 5, the due date for the Response was June 25, 2023. Respondent sent two informal emails; one on May 26, 2023 and the

other on May 31, 2023, indicating willingness to transfer the disputed domain names to Complainants. On
May 31, 2023, Complainants stated that they did not wish to settle.

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The Center appointed Ingrida Karina-Berzina as the sole panelist in this matter on June 30, 2023. 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

Complainant Meta Platforms, Inc. is a United States social technology company that operates, inter alia, the online platforms Facebook, Instagram, Meta Quest (formerly Oculus), and WhatsApp. Prior to late 2021, it was known as Facebook Inc.

Complainant Meta Platforms Technologies, LLC is the intellectual property rights holder for various technologies owned by Meta Platforms, Inc. From 2014 to 2018, this Complainant operated under the name of its predecessor in interest, Oculus VR, LLC, which distributes virtual reality headsets, including under the brand names “Oculus Quest” and “Oculus Quest 2.” In early 2022, these products were re-branded as “Meta Quest” and continue to be marketed under this name.

Complainants are the proprietors of numerous trademark registrations, including the following:

- United States Trademark Registration No. 5548121 for META (word mark), registered on August 28,
2018, for services in classes 35 and 42;

- United States Trademark Registration No. 6279215 for QUEST (word mark), registered on February
23, 2021, for goods and services in classes 9, 28, 35 and 42;

- Mexican Trademark Registration No. 2388436 for META QUEST (word mark), registered on April 27,
2022, for goods in class 28.

The disputed domain names were registered on May 15, 2022. The record reflects that they resolve to
parking pages featuring pay-per-click (“PPC”) links related to computer software. The record reflects that on

April 26, 2023, Complainants attempted to contact Respondent through the registrar contact form.

5. Parties’ Contentions

A. Complainants

Complainants’ contentions may be summarized as follows:

1. Request to consolidate proceedings

Complainants request consolidation of multiple complainants for the following reasons: Meta Platforms Platforms Inc., the owner of trade mark registrations for META. As such, the two entities have a sufficient common legal interest in the META and QUEST trademarks included in the disputed domain name to file a joint Complaint. Complainants have previously also been the target of common conduct by Respondent, who has engaged in bad faith registration and use of the disputed domain names <metaquest.dev> and <metaquest.art>, which also target Complainants’ trademarks.

2. Substantive contentions

Under the first element, Complainants state that the disputed domain names reflect Complainants’ marks prevent a finding of similarity between the disputed domain names and the Complainants’ trademarks.

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Under the second element, Complainants state that Respondent is not affiliated with them in any way; Complainants have not granted any authorization for Respondent to make use of the META QUEST, META, or QUEST marks in a domain name or otherwise. The disputed domain names resolve to hosted parking pages. Respondent is not commonly known by the disputed domain names. Respondent is not currently making any substantive use of the disputed domain names, nor is Respondent making a legitimate noncommercial use thereof.

Under the third element, Complainants state that despite the relatively recent re-naming of Complainant’s company to “Meta Platforms, Inc.”, their META trademark is already well known throughout the world and closely associated with Complainants’ goods and services. Complainants’ re-naming attracted significant international media attention, while Complainants’ services are used by billions of monthly active users

across the globe. The META and QUEST marks have been significantly promoted worldwide from 2021.

The trademarks META and QUEST form a distinctive combination that is readily associated with Complainants. Complainants’ META QUEST, META, and QUEST marks are well known internationally in connection with Complainants’ virtual reality software and apparatus. The disputed domain names are being passively held in bad faith and are used for PPC pages. Respondent has previously registered domain names that are identical to third party marks, including those of Complainants, thereby demonstrating a pattern of bad faith conduct. Respondent failed to respond to Complainants’ notice letter.

Complainants request transfer of the disputed domain names.

B. Respondent

In emails to the Center, Respondent stated that he had no intention of using the disputed domain names, which were scheduled to expire. Respondent stated his willingness to cooperate with the Registrar for the transfer of the disputed domain names to Complainants.

6. Discussion and Findings

6.1 Preliminary Issue – Consolidation of Proceedings

Pursuant to paragraph 10 of the Rules:

(a)	The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.
(b)	In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
[…]
(e)	A Panel shall decide a request by a Party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.

Consolidation of Multiple Complainants

The principles to assess a request to consolidate multiple complainants are set forth in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 4.11.1.

Noting the circumstances of the case, in particular the fact that Complainant Meta Platforms Technologies, the owner of trademark registrations for QUEST, is a wholly-owned subsidiary of Meta Platforms Inc., the owner of trademark registrations for META, the Panel considers that Complainants have a specific common

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grievance against Respondent and Respondent has engaged in common conduct that has affected the Complainants in a similar fashion. Under the circumstances, the Panel finds it would be equitable and procedurally efficient to permit the consolidation.

Respondent does not challenge Complainants’ assertions nor offer any alternative explanation for these circumstances. Accordingly, the Panel accepts Complainants’ request to consolidate the present proceedings pursuant to the Rules, paragraph 10(e). Complainants are hereinafter referred to as “Complainant”.

6.2 Substantive Issues

Paragraph 4(a) of the UDRP requires Complainant to make out all three of the following:

(i)        the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

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

(iii)      Respondent has registered and is using the disputed domain names in bad faith.

Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar

Complainant has provided evidence establishing that it has trademark rights in the META, QUEST, and
META QUEST marks through registrations in the United States, Mexico, and other jurisdictions.
Complainant thereby satisfies the threshold requirement of having trademark rights for purposes of standing
to file a UDRP case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
(“WIPO Overview 3.0”), section 1.2.1.

In comparing Complainant’s marks with the disputed domain names, the Panel finds that the disputed domain names are confusingly similar to the marks. The disputed domain names incorporate Complainant’s marks in their entirety with the addition of the terms “field” and “stadium.” Complainant’s marks are clearly recognizable within the disputed domain names. It is the consensus view of UDRP panels that, where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark. Moreover, where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. See WIPO Overview 3.0, sections 1.7 and 1.8.

It is the well-established view of UDRP panels that a generic Top Level Domain such as “.com” is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. See WIPO Overview 3.0, section 1.11.1.

Accordingly, the Panel finds that Complainant has established the first element under paragraph 4(a) of the

Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a domain name by demonstrating any of the following:

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(i)        before any notice to it of the dispute, respondent’s use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii)       respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii)      respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel finds that the evidence submitted by Complainant establishes a prima facie case that Respondent
has no rights or legitimate interests in the disputed domain names. Respondent is not authorized by
Complainant and has no rights in the META QUEST, META, or QUEST marks.

Pursuant to WIPO Overview 3.0, section 2.1, and cases thereunder, where Complainant makes out a prima facie case that Respondent lacks rights or legitimate interests, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name.

Respondent has not provided any rebuttal of Complainant’s prima facie case and has therefore not proved rights or legitimate interests in the disputed domain name. There is no evidence that Respondent is commonly known by the disputed domain names, or that there are any circumstances or activities that would establish Respondent’s rights therein. There is no evidence of legitimate noncommercial use or a bona fide offering of goods or services.

The Panel finds that the use of a disputed domain names (which incorporate Complainant’s marks, together
with the descriptive terms “stadium” and “field”) to resolve to PPC websites such as the ones used by
Respondent does not represent a bona fide offering as the links compete with or capitalize on the reputation
and goodwill of Complainant’s mark. See WIPO Overview 3.0, section 2.9. See also Shangri-La
International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315; Villeroy
& Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912.

Respondent has indicated readiness to transfer the disputed domain names to Complainant, thereby conceding a lack of rights or legitimate interests therein.

Accordingly, the Panel finds that Complainant has established the second element under paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that Complainant has demonstrated Respondent’s bad faith registration and use of the disputed domain names. Complainant’s rights in its META QUEST, META, and QUEST marks predate the registration of the disputed domain names, which occurred shortly after Complainant announced the launch of a product called “Meta Quest.” The disputed domain names resolve to PPC sites featuring links related to computer software. The Panel finds that this record establishes that Respondent had Complainant’s mark in mind when registering the disputed domain names. See WIPO Overview 3.0, section 3.1.4.

The Panel finds that the evidence in the record establishes that Respondent used the disputed domain names to resolve to websites featuring PPC links. Absent any evidence of mitigating factors such as efforts by Respondent to avoid links that target Complainant’s mark, such use is clearly evidence of bad faith use of the disputed domain names. See WIPO Overview 3.0, section, 3.5.

Further, the Panel finds that the evidence indicates Respondent has engaged in a pattern of registering
domain names that incorporate third-party trademarks, including those of Complainant. See WIPO Overview
3.0, section 3.1.2.

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Respondent has provided no evidence of actual or contemplated good faith use of the disputed domain name and, under the circumstances, the Panel does not find any such use plausible.

Accordingly, the Panel finds that Complainant has established the third element under paragraph 4(a) 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 names <metaquestfield.com> and <metaqueststadium.com> be transferred to Complainant.

/Ingrīda Kariņa-Bērziņa/

Ingrīda Kariņa-Bērziņa

Sole Panelist
Date: July 14, 2023