Meta Platforms, Inc. v Host Master, 1337 Services LLC

WIPO Case No. D2022-4279

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Meta Platforms, Inc. v. Host Master, 1337 Services LLC

Case No. D2022-4279

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 Host Master, 1337 Services LLC, Saint Kitts and Nevis.

2. The Domain Names and Registrar

The disputed domain names <fbmetacoin.app>, <fbmetacoin.co>, <metacoin.bio>, <metacoin.cab>, and

<metacoin.gift> are registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 10,

2022. On November 10, 2022, the Center transmitted by email to the Registrar a request for registrar
verification in connection with the disputed domain names. On November 10, 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 (Data Protected) and contact
information in the Complaint. The Center sent an email communication to the Complainant on November 18,
2022, 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

November 22, 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 the Respondent of the Complaint, and the proceedings commenced on November 24, 2022. In accordance with the Rules, paragraph 5, the due date for Response was December 14, 2022. Following the disclosure of the

Respondent’s additional contact emails by the Registrar, the Center granted five additional days for the

Respondent to file the Response through January 15, 2023. The Respondent did not submit any response.

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The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on January 23, 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

The Complainant is a social technology company, based in the United States. Among other products and

services, the Complainant operates Facebook, also known as “FB”. The Complainant is also active in the

cryptocurrency field.

Formerly known as Facebook Inc., the Complainant changed its name and launched the META brand on
October 28, 2021. Numerous media articles reported the launch.

The Complainant is the owner of the United States trademark registration No. 5548121 for META, registered on August 28, 2018, in classes 35 and 42 and assigned to the Complainant on October 26, 2021.

The Complainant is also the owner of the United States trademark registration No. 4659777 for FB, registered on December 23, 2014, in class 35, and of the European trademark registration No. 008981383 for FB, registered on August 23, 2011 in class 45.

The Complainant is the owner of various domain names containing the mark META, including <meta.com>,

<meta.new>, and <meta.day>.

The disputed domain name <metacoin.bio> was registered on June 21, 2022.

The disputed domain names <metacoin.cab> and <metacoin.gift> were registered on June 30, 2022.

The disputed domain names <fbmetacoin.app> and <fbmetacoin.co> were registered on August 7, 2022.

All disputed domain names were registered with the same registrar and have the same name servers.

At the time of filing of the Complaint, the disputed domain names were not connected to active websites.

The disputed domain names <metacoin.bio>, <metacoin.gift>, and <fbmetacoin.co> previously resolved to

websites of similar design reproducing the Complainant’s trademark and logo. These websites invited

Internet users to participate in a future initial DEX offering of fictitious “Meta Coin” which was said to be

linked to the Complainant’s online platform.

5. Parties’ Contentions

A. Complainant

According to the Complainant, the disputed domain names are confusingly similar to its trademarks, as they

identically reproduce its trademarks with the mere addition of the term “coin”.

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names for the following reasons: (i) the Respondent is not affiliated nor authorized by the Complainant in any way; specifically no license nor authorization has been granted to the Respondent to make any use of

the Complainant’s trademarks, or apply for registration of the disputed domain names; (ii) the current

resolution of the Domain names to inactive web pages does not constitute a bona fide offering of goods and services; (iii) the Respondent is not commonly known by the disputed domain names; (iv) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name. Instead, the Respondent

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has used certain disputed domain names in an attempt to impersonate the Complainant in order induce
Internet users to participate to a crowdfunding of its fictitious cryptocurrency.

Finally, the Complainant contends that the Respondent has used and registered the disputed domain names in bad faith. According to the Complainant, it is clear, in view of the substantial and widespread renown of the marks FB and META, that the Respondent was aware of the existence of the Complainant and of its trademarks when it registered the disputed domain names. This is further corroborated by the fact that

certain disputed domain names used to resolve to websites displaying the Complainant’s logo and

trademarks. The Complainant further contends that the Respondent has not been making any apparent substantive use of the disputed domain names. According to the Complainant, such non-use constitutes passive holding in bad faith, because the Complainant cannot conceive any bona fide use that the

Respondent could make of the disputed domain names that would not result in creating a misleading impression of association with the Complainant. Furthermore, the Respondent previously used some of the disputed domain names with the intent to create a misleading impression of association with the Complainant in the furtherance of a proposed fraudulent cryptocurrency scheme. The Respondent has therefore intentionally attempted to attract, for commercial gain, Internet users to its websites by creating a

likelihood of confusion with the Complainant’s mark, a behavior amounting to registration and use in bad

faith.

B. Respondent

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

6. Discussion and Findings

According to paragraph 4(a) of the Policy, a complainant must assert and prove each of the following:

(i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service

mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name registered by the respondent has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The disputed domain names reproduce the Complainant’s trademarks META and FB in their entirety with no

alteration, and combine these trademarks with the term “coin”.

UDRP panels consider that where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element of paragraph 4(a) of the Policy (see

section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition

(“WIPO Overview 3.0”)).

In the present case, the trademarks FB and META are clearly recognizable in the disputed domain names.

The mere addition of the term “coin” does not prevent a finding of confusing similarity between the disputed

domain names and the Complainant’s trademark.

UDRP panels accept that a Top-Level Domain (“TLD”), such as “.co”, “app”, “bio”, “cab”, and “gift”, may be

disregarded when assessing whether a domain name is identical or confusing similar to a trademark (see

WIPO Overview 3.0, section 1.11).

The Complainant has satisfied the condition set forth in paragraph 4(a)(i) of the Policy.

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B. Rights or Legitimate Interests

The Respondent has failed to file a response.

Based on the information submitted by the Complainant, the Respondent does not appear to have rights or
legitimate interests in respect of the disputed domain names, nor has the Complainant granted to the
Respondent an authorization to use its trademarks in the disputed domain names.

No evidence suggests that the Respondent was using or was making demonstrable preparations to use the disputed domain names in connection with any type of bona fide offering of goods or services. Instead, based on the evidence provided by the Complainant, it appears that the Respondent used three of the

disputed domain names to redirect Internet users to websites displaying the Complainant’s META trademark

and logo and allegedly inviting Internet users to participate in a future initial DEX offering of a fictitious existence of a link with it, where none exists, can hardly be a legitimate or fair use.

cryptocurrency. Such use further supports the apparent lack of rights or legitimate interests of the

Accordingly, the Respondent’s use of the disputed domain names does not constitute bona fide offering of

goods and services.

Finally, the Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b). The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain names. The Panel finds that the Respondent’s silence corroborates the Complainant’s prima facie case.

Accordingly, the Panel rules that the Respondent has no rights or legitimate interests in the disputed domain names, and that the Complainant has satisfied the condition set out in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Given that the Respondent used the Complainant’s logo on three websites, the Panel accepts that the

Respondent was aware of the existence of the Complainant and of its META and FB trademarks at the time of the registration of the disputed domain names. Accordingly, the Panel finds that the disputed domain names were registered in bad faith.

Under paragraph 4(b)(iv) of the Policy, the use of a domain name to intentionally attempt to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion

with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of a website or

location or of a product or service on the website or location, amounts to evidence of registration and use in

bad faith.

The Respondent used the disputed domain names to redirect to websites displaying the Complainant’s logo

and allegedly inviting Internet users to participate in a future initial DEX offering of a fictitious cryptocurrency

which is said to be linked to the Complainant’s online platform. Such use was apt to create the false

impression that the Respondent’s websites were operated or endorsed by the Complainant. Such use of the

disputed domain names was also likely to mislead Internet users into believing that the websites at issue
were official websites of the Complainant, for the commercial gain of the Respondent. This amounts to use
in bad faith according to Paragraph 4(b)(iv) of the Policy.

In addition, the Respondent does not appear to have used two of the disputed domain names in connection with active websites.

In certain circumstances, UDRP panels have held that passive holding of a domain name could amount to use in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. Factors that have been considered relevant in applying the passive holding doctrine include: (i) the degree of distinctiveness or reputation of the

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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, (iii) the respondent’s concealing its identity or use of false contact

details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to
which the domain name may be put (section 3.3 of the WIPO Overview 3.0).

In the case at hand, the trademarks META and FB are distinctive and enjoy a widespread reputation. The Respondent failed to submit a Response or to allege any actual or contemplated use of the disputed domain names. Finally, it is difficult to imagine what legitimate use the Respondent could make of the disputed domain names, given the fact that there is no relationship between the Respondent and the Complainant. If the disputed domain names were connected to active websites, consumers would be likely to mistakenly assume that such websites are operated or endorsed by the Complainant, when such is not the case. Such a risk was manifested in the prior use of some of the disputed domain names, which sought to exacerbate the risk of implied affiliation created by the composition of the disputed domain names by impersonating the Complainant in the content found on the websites connected to said disputed domain names, too.

For the reasons set out above, the Panel finds that the Respondent has registered and is using the disputed
domain names in bad faith, and that the Complainant has satisfied the condition set forth in

paragraph 4(a)(iii) 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 <fbmetacoin.app>, <fbmetacoin.co>, <metacoin.bio>,

<metacoin.cab>, and <metacoin.gift> be transferred to the Complainant.

/Anne-Virginie La Spada/

Anne-Virginie La Spada

Sole Panelist
Date: Februrary 8, 2023