Meta Platforms, Inc. v Domain Admin, GuardPrivacy.org

WIPO Case No. D2022-1197

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Meta Platforms, Inc. v. Domain Admin, GuardPrivacy.org

Case No. D2022-1197

1. The Parties

The Complainant is Meta Platforms, Inc., United States of America (“United States”), represented by Tucker

Ellis, LLP, United States.

The Respondent is Domain Admin, GuardPrivacy.org, Hong Kong, China.

2. The Domain Names and Registrar

The disputed domain names <facebooksecurity.biz> and <facebooksecurity.mobi> are registered with

Dynadot, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 6, 2022. On connection with the disputed domain names. On April 6, 2022, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the 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 April 7, 2022. In accordance with the Rules, paragraph 5, the due date for Response was April 27, 2022. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 28, 2022.

The Center appointed Erica Aoki as the sole panelist in this matter on May 6, 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.

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4. Factual Background

On October 28, 2021, the Complainant, formerly known as “Facebook, Inc.,” changed its name to “Meta Platforms, Inc.”. The Complainant operates the world-famous Facebook social networking website and mobile application Facebook has more than one billion daily active accounts and over two billion monthly

active users from all over the world.

The Complainant owns the exclusive rights to the FACEBOOK trademarks and service marks which it has used since 2004 (over seventeen years), including, inter alia, United States trademark registration No. 3122052, registered on July 25, 2006, and International trademark registration No. 1075094, registered on July 16, 2010. The Complainant’s use of the FACEBOOK mark, in the United States and throughout the world, has been extensive, continuous, and substantially exclusive. The Complainant has made, and continues to make, a substantial investment of time, effort, and expense in the promotion of its goods and services, and the FACEBOOK mark.

As a result of the Complainant’s efforts and use, the FACEBOOK mark is inextricably linked with the products and services offered by the Complainant. The FACEBOOK mark ranked 15th in Interbrand’s current Best Global Brands report. The FACEBOOK mark is unquestionably famous and recognized around the world as signifying high quality, authentic goods and services provided by the Complainant.

This dispute domain names <facebooksecurity.biz> and <facebooksecurity.mobi.biz> were registered on

September 4, 2011 by the Respondent, and do not resolve to any active website.

5. Parties’ Contentions

A. Complainant

The Complainant owns the exclusive rights to the FACEBOOK marks and service since 2004.

The Complainant has more than one billion daily active accounts and over two billion monthly active users from all over the world. The “ website is currently ranked as the seventh most visited website in the world (according to information company Alexa), the third most downloaded app globally

(according to Forbes magazine), and the seventh most downloaded app in the United States (according to
Forbes magazine).

In addition to the <facebook.com> and <facebook-security.com> domain names, the Complainant owns and operates numerous other domain names consisting of the FACEBOOK mark in combination with various generic and country code Top-Level Domain (“TLD”) extensions, including <facebook.org> and <facebook.net>.

The FACEBOOK mark is unquestionably famous and recognized around the world as signifying high-quality, authentic goods and services provided by the Complainant. In addition to its extensive common law rights in the FACEBOOK mark, the Complainant owns numerous registrations protecting the FACEBOOK mark in the United States and around the world.

The disputed domain names, which add the descriptive term “security” to the Complainant’s FACEBOOK mark, are confusingly similar to the Complainant’s FACEBOOK mark.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

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6. Discussion and Findings

The Complainant is required to establish the requirements specified under paragraph 4(a) of the Policy:

(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in

respect of which the Complainant has rights; and

(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.

A. Identical or Confusingly Similar

Based on the facts presented by the Complainant, this Panel finds that the disputed domain names are confusingly similar to a mark in which the Complainant has rights under Policy, paragraph 4(a)(i). The Complainant has established its rights in FACEBOOK through registration and use. The Panel finds that

there is no doubt that the disputed domain names are confusingly similar to the Complainant’s registered trademark, as the disputed domain names include the Complainant’s mark in full, with only the addition of the word “security” to the FACEBOOK mark, which does not prevent a finding of confusing similarity (see section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO

Overview 3.0”)).

B. Rights or Legitimate Interests

The Panel finds the following on record in this proceeding under the Policy:

The Respondent is in default and thus has made no affirmative attempt to show any rights or legitimate interests in the disputed domain names.

Paragraph 4(c) of the Policy indicates that a registrant may have a right or legitimate interest in a domain names are passively held by Respondent. There is no evidence on record that the Respondent is or was commonly known by the disputed domain names as an individual, business, or other organization.

name if it uses the domain name in connection with a bona fide offering of goods or services prior to notice
of the dispute. In this regard, the Complainant contents that the Respondent is in no way connected with the

There is no evidence on record that the Respondent is using the disputed domain names in connection with bona fide offering goods or services, or making a legitimate noncommercial or fair use of the disputed domain names.

The Panel finds that the nature of the disputed domain names carries a risk of implied affiliation with the

Complainant (see WIPO Overview 3.0, section 2.5.1).

Thus, the Respondent has no rights or legitimate interests in respect of the disputed domain names.

The Panel therefore finds that the Complainant has established an unrebutted prima facie case that the
Respondent has no rights or legitimate interests in the disputed domain names, under the Policy, paragraph

4(a)(ii).

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent has registered and is using the disputed domain names in bad faith.

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Previous panels have found that registration of a domain name that is identical or confusingly similar (particularly domain names incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith (see WIPO Overview 3.0, section 3.1.4). The Complainant’s FACEBOOK trademark was registered long before the registration of the disputed domain names. The Complainant has extensively promoted its products and services under the FACEBOOK trademark. Also, considering the fame and distinctiveness of the Complainant’s FACEBOOK trademark and the Complainant’s prior registration of the domain name <facebook-security.com>, the Panel finds that it is most likely that the Respondent was aware of the Complainant’s rights to FACEBOOK trademark at the time the disputed domain names were registered, indicating that such registration was made in bad faith.

WIPO Overview 3.0, section 3.3).

The disputed domain names do not resolve to any active website. It is noted by the Panel that: (i) the Response; and (iii) there is not any plausibe good faith use to which the disputed domain names may be put.The non-use of a domain name that is confusingly similar to a Complainant’s trademark does not prevent a finding of bad faith (see

Accordingly, and as also supported by the Panel’s findings above under the second element of the Policy, the Panel finds that there is no conceivable use of the disputed domain names by the Respondent that could be legitimate. The Panel finds that the disputed domain names were registered and used in bad faith under the Policy, paragraph 4(a)(iii).

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 <facebooksecurity.biz> and <facebooksecurity.mobi> be transferred to the Complainant.

/Erica Aoki/
Erica Aoki
Sole Panelist
Date: May 19, 2022