Meta Platforms, Inc. v don duleba, Dengo DDC LLC

WIPO Case No. D2024-0155

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Meta Platforms, Inc. v. don duleba, Dengo DDC LLC

Case No. D2024-0155

1. The Parties

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

Hogan Lovells (Paris) LLP, France.

The Respondent is don duleba, Dengo DDC LLC, Austria.

2. The Domain Name and Registrar

The disputed domain name <meta-helpcenter.support> is registered with NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 15, 2024.

On January 16, 2024, the Center transmitted by email to the Registrar a request for registrar verification in

connection with the disputed domain name. On January 16, 2024, 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 (Redacted for Privacy) and contact information in the Complaint.

The Center sent an email communication to the Complainant on January 17, 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 22, 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 24, 2024. In accordance with the Rules,

paragraph 5, the due date for Response was February 13, 2024. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on February 14, 2024.

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The Center appointed María Alejandra López as the sole panelist in this matter on February 26, 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 Complainant is a United States social technology company, and operates, inter alia, Facebook,

Instagram, Threads, 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, which was

publicized worldwide. The Complainant is considered one of the Big Five American technology companies.

The Complainant’s focus is to bring the metaverse to life and to help people connect, find communities and

grow businesses, allowing users to share immersive experiences beyond the physical world.

According to the submitted evidence, the Complainant owns the following trademarks (“Trademarks”):

− United States Trademark for META (word mark), Reg. No. 5548121, in International Classes (“ICs”) 35 and

42, registered on August 28, 2018, in force (initially) until August 28, 2024;

− Andorran Trademark for META (word mark), Reg. No. 43626, in ICs 9, 28, 35, 36, 38, 41, 42, 45,

registered on January 3, 2022, and in force until January 3, 2032;

− Monaco Trademark for META (word mark), Reg. No. 2200039, in ICs 9, 28, 35, 36, 38, 41, 42, 45,

registered on February 8, 2022, and in force until January 7, 2032.

The Complainant also owns the following domain names, which include the META Trademark:

<workplacefrommeta.com> registered on October 20, 2021; <facebookfrommeta.com> registered on

October 28, 2021; <instagramfrommeta.com> registered on October 28, 2021; <jobsatmeta.com>

registered on October 20, 2021; <meta.com> registered on January 21, 1991; <meta.day> registered on

January 17, 2022; <questfrommeta.com> registered on October 20, 2021; and <whatsappfrommeta.com>

registered on October 28, 2021.

On November 20, 2023, the Complainant’s legal authorized representatives, sent a cease-and-desist letter to

the Respondent. No response was received.

Previous UDRP panels have confirmed the well-known status of the Complainant’s Trademark META.

See, e.g., Meta Platforms, Inc., Meta Platforms Technologies, LLC v. 叶昭龙 (Ye Zhao Long), WIPO Case

No. D2022-4981; Meta Platforms, Inc., Instagram, LLC v. Autumn Grant, WIPO Case No. D2023-2062;

Meta Platforms, Inc. and Meta Platforms Technologies, LLC v. Paolo Sulis, Jada Co., Ltd, WIPO Case

No. D2023-3019; Meta Platforms, Inc., Meta Platforms Technologies, LLC v. Xue, WIPO Case

No. D2023-3332.

The disputed domain name was registered on April 23, 2023. According to the evidence submitted by the

Complainant, the disputed domain name resolved to an inactive website at the time of filing the Complaint.

By the time of this Decision, the disputed domain name resolves to a deceptive website message of

dangerous content.

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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 name.

Regarding the first element of the Policy, the Complainant contends that the disputed domain name is

confusingly similar to the Complainant’s META Trademark incorporated in its entirety in the disputed domain

name with the addition of the terms “help” and “center”, which does not prevent a finding of confusing

similarity with the Complainant’s META Trademark.

Regarding the second element of the Policy, the Complainant contends that the Respondent is not using the

disputed domain name in connection with a bona fide offering of goods or services within the meaning of

paragraph 4(c)(i) of the Policy; that the Respondent is not a licensee nor it is affiliated with the Complainant

in any way; that the Complainant has not granted any authorization for the Respondent to make use of its

META Trademark, in a domain name or otherwise; that the disputed domain name resolves to an inactive

webpage, and that such use does not amount to substantive use of the disputed domain name and is

passive holding; that there is no evidence to suggest that the Respondent is commonly known by the

disputed domain name, as contemplated by paragraph 4(c)(ii) of the Policy; that the non-use of a domain

name does not amount to legitimate noncommercial or fair use of the disputed domain name; that the

composition of the disputed domain name done by the Respondent, looks to impersonate or suggest

sponsorship or endorsement by the Complainant, carrying with it a high risk of implied affiliation with the

Complainant, as the Complainant offers technical support services on its official website.

Regarding the third element of the Policy, the Complainant contends that the Respondent registered and is

using the disputed domain name in bad faith for reasons that go beyond the scope of the factors listed at

paragraph 4(b) of the Policy. In relation to the registration, the Complainant contends that despite the

relatively recent re-naming of the Complainant’s company, which it was widely publicized, the Complainant’s

META Trademark is already well-known throughout the world and closely associated with the Complainant’s

goods and services and that the Respondent could not credibly argue that it did not register the disputed

domain name with the Complainant’s in mind; that the Respondent’s bad faith is emphasized given the false

contact information provided, specifically its physical address which does not appear to exist. In relation to

the use, the Complainant contends that the disputed domain name resolves to an inactive webpage, and that

such non-use of the disputed domain name would not prevent a finding of bad faith use under the doctrine of

passive holding.

B. Respondent

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

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, the Complainant must satisfy each of the three following

elements:

(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.

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No Response or any kind of communication has been submitted by the Respondent, despite the fair

opportunity given by the Center to present its case in accordance with paragraph 2(a) of the Rules.

Therefore, this Panel shall analyze the evidence submitted by the Complainant and decide this dispute on

the “balance of probabilities” or “preponderance of the evidence” standard. See, paragraphs 14 and 15(a) of

the Rules, and WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition,

(“WIPO Overview 3.0”), section 4.2.

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.

The Complainant has shown rights in respect of the Trademark META for the purposes of the Policy.

WIPO Overview 3.0, section 1.2.1.

The entirety of the Trademark is reproduced within the disputed domain name. Accordingly, the disputed

domain name is confusingly similar to the Trademark for the purposes of the Policy. WIPO Overview 3.0,

section 1.7.

Although the addition of other terms here, “help” and “center” may bear on assessment of the second and

third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity

between the disputed domain name and the Trademark for the purposes of the Policy. WIPO Overview 3.0,

section 1.8.

In relation to the generic Top-Level Domain (“gTLD”) “.support”, it is well established that such element may

typically be disregarded when assessing whether a domain name is identical or confusingly similar to a

trademark, as it is a technical requirement of registration. WIPO Overview 3.0, section 1.11.1.

The Panel notes that the gTLD in the present dispute is relevant to the Respondent’s intent to confuse

Internet users, therefore, this Panel will address it under the second and third element. WIPO Overview 3.0,

section 1.11.2.

The Panel finds the first element of the Policy has been established.

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 name. 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 name. There is no evidence of the

Respondent’s use of, or demonstrable preparations to use, the disputed domain name or a name

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corresponding to the disputed domain name in connection with a bona fide offering of goods or services.

Furthermore, nothing in the record can possibly suggest that the Respondent has been commonly known by

the disputed domain name, in particular when it has been identified by the Registrar as “don duleba, Dengo

DDC LLC”; nor the Respondent holds any connection with the Complainant and or its well-known

Trademark META, which it has been reproduced in the disputed domain name with the gTLD “.support”,

such composition appearing to impersonate or suggest sponsorship or endorsement by the Complainant,

carrying with it a risk of implied affiliation with the Complainant, as the Complainant offers technical support

services on its official website. WIPO Overview 3.0, section 2.5.1.

According to evidence submitted by the Complainant the disputed domain name remained inactive,

presumably until January 24, 2024. By the time of this Decision, the Panel notes that the disputed domain

name resolves to a deceptive website message of dangerous content from its browser.

In relation to it, panels have held that the use of a domain name for illegal activity here, claimed as potential

distributing malware, unauthorized account access/hacking, impersonation, or other types of fraud, can

never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain

name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a

respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

On the issue of registration, given the fact that the Complainant’s Trademark rights predate the disputed

domain name registration, the disputed domain name’s composition, where a well-known Trademark as

META is reproduced fully along with additional terms, with the gTLD “.support” which to this Panel reinforces

the Respondent’s knowledge in relation to the Complainant activities and of its Trademark META, therefore,

the Panel is ready to conclude that the Respondent “knew or should have known” about the Complainant’s

Trademark and registered the disputed domain name to target the Complainant’s Trademark.

WIPO Overview 3.0, section 3.2.2.

On the issue of bad faith use, as described along this Decision, according to the Complainant’s submissions,

the disputed domain name resolved to an inactive website. The Panel accepts the Complainant’s argument

that such non-use does not prevent the finding of bad faith given the totality of the circumstances in this

case, inter alia the composition of the disputed domain name incorporating the Trademark in its entirety with

additional terms “help” and “center” and the gTLD “.support” which are relevant to the services provided by

the Complainant, the lack of rights and legitimate interests of the Respondent, and the Respondent’s failure

of responding to the Complaint and bringing forward any plausible good faith use to which the disputed

domain name could be put. WIPO Overview 3.0, section 3.3.

By the time of this Decision, the disputed domain name appears to resolve to a deceptive website displaying

a message of dangerous content from its browser).

Panels have held that the use of a domain name for illegal activity here, claimed as potential distributing

malware, constitutes bad faith. WIPO Overview 3.0, section 3.4.

Such subsequent apparent use of the disputed domain name, in the present dispute, to this Panel, does not

cure the Respondent of having incurred in passive holding, which constitutes bad faith as well. Having

reviewed the available record, the Panel notes the distinctiveness and reputation of the Complainant’s

Trademark, and the composition of the disputed domain name, 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. WIPO Overview 3.0, section 3.3.

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Therefore, having reviewed the record, the Panel finds the Respondent’s registration and use of the disputed

domain name constitute bad faith under the Policy.

The Panel finds that the Complainant has established the third element 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 name <meta-helpcenter.support> be transferred to the Complainant.

/María Alejandra López/

María Alejandra López

Sole Panelist

Date: March 6, 2024