Meta Platforms, Inc. v libin, Redacted for Privacy, Super Privacy Service Ltd

WIPO Case No. D2023-4222

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Meta Platforms, Inc. v. libin, Redacted for Privacy, Super Privacy Service LTD
c/o Dynadot

Case No. D2023-4222

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 libin, United States.

2. The Domain Names and Registrar

The disputed domain names <metaverified.asia>, <metaverified.biz>, <metaverified.cc>, metaverified.club>, <metaverified.help>, <metaverified.info>, <metaverified.link>, <metaverified.pro>, <metaverified.shop>, and <metaverif ied.site> are registered with Dynadot Inc (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 10, 2023. On October 11, 2023, the Center transmitted by email to the Registrar a request for registrar verif ication in connection with the disputed domain names. On October 11, 2023, the Registrar transmitted by email to the Center its verif ication response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent (REDACTED FOR PRIVACY, Super Privacy Service LTD c/o Dynadot) and contact information in the Complaint. The Center sent an email communication to the

Complainant on October 18, 2023 providing the registrant and contact information disclosed by the amended Complaint on October 20, 2023.

The Center verif ied that the Complaint together with the amended Complaint satisf ied 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 notif ied the Respondent of the Complaint, and the proceedings commenced on October 26, 2023. In accordance with the Rules, paragraph 5, the due date for Response was November 15, 2023. On October 20, 2023, the Respondent sent an

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e- mail communication to the Complainant proposing that the Complainant purchase the disputed domain names. On the same date, the Complainant notified the Center that it did not wish to explore settlement. The Respondent did not submit a formal response. Accordingly, the Center notif ied the Parties of the Respondent’s default on November 16, 2023.

The Center appointed Ingrīda Kariņa-Bērziņa as the sole panelist in this matter on November 21, 2023. The

Panel f inds 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 that operates, inter alia, the online platforms Facebook, Instagram, Meta Quest (formerly Oculus) and WhatsApp. Prior to October 28, 2021, the Complainant was known as Facebook Inc. On February 19, 2023 (the same day that the disputed domain names were registered), the Complainant launched a new subscription service known as “Meta Verif ied,“ which allows verif ied users to add a blue check mark to their Instagram and Facebook accounts for a monthly fee.

The Complainant is the proprietor of numerous trademark registrations, including United States Trademark Registration No. 5548121 for META (word mark), registered on August 28, 2018 for services in classes 35 and 42.

The Complainant has registered several domain names reflecting its META mark, including <meta.com>,
<meta.day>, <workplacefrommeta.com>, <facebookfrommeta.com>, instagramfrommeta.com>,
<jobsatmeta.com>, <questf rommeta.com>, <novif rommeta.com> and <whatsappfrommeta.com>.

The disputed domain names were registered on February 19, 2023. The record reflects that, at the time of the Complaint, the disputed domain names <metaverified.asia>, <metaverif ied.biz>, <metaverif ied.club>, <metaverified.help>, <metaverified.info>, <metaverified.link>, <metaverified.pro> and <metaverif ied.shop> redirected to dan.com parking pages on which they were offered for sale for prices ranging f rom USD 1,633 to USD 3,049. At that time, the disputed domain name <metaverif ied.cc> resolved to a parking page featuring pay-per-click (PPC) links; <metaverif ied.site> did not resolve to an active website.

At the time of this Decision, the disputed domain names <metaverif ied.asia>, <metaverif ied.biz>, <metaverified.club>, <metaverified.pro> and <metaverif ied.site> did not resolve to active websites. The disputed domain names <metaverified.cc>, <metaverified.help>, <metaverif ied.info>, <metaverif ied.link>, and <metaverified.shop> redirect to dan.com parking pages that offer the disputed domain names for sale.

There is no information available about the Respondent.

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 its registered META mark is recognizable in the disputed domain names; the Respondent is not affiliated with the Complainant in any way; the disputed domain names are were registered on the same day as the announcement of the Complainant’s announcement of its well- publicized Meta Verified service and are being offered for sale for an amount in excess of the Respondent’s out-of -pocket costs, giving rise to the inference that the Respondent is seeking to capitalize on the

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Complainant’s reputation through resale of the disputed domain names at a profit. By registering ten domain names following the same naming pattern, the Respondent has engaged in an abusive pattern of registration. Some of the disputed domain names resolve to parking pages featuring PPC links and one (<metaverif ied.site>) does not resolve to an active web page. The Respondent has provided false or incomplete contact information. Finally, the Respondent has been named in a prior UDRP proceeding by the Complainant also in connection with the Complainant’s META mark.

B. Respondent

The Respondent did not provide a formal reply to the Complainant’s contentions. In its email communication to the Complainant, the Respondent asked whether it would not be better if he sold the domain names to the Complainant.

6. Discussion and Findings

Paragraph 4(a) of the UDRP requires the 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 the Complainant has rights; and

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

(iii)    the 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

It is well accepted that the f irst 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 of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

Based on the available record, the Panel finds 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.

The Panel f inds the Complainant’s META mark is recognizable within the disputed domain names.
Accordingly, the disputed domain names are confusingly similar to the mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.7.

Although the addition of other terms (here, “verif ied”) may bear on assessment of the second and third elements, the Panel finds the addition of such a term does not prevent a f inding of confusing similarity between the disputed domain names and the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

Based on the available record, the Panel f inds the f irst 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.

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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 of ten 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.

In particular, the Panel notes that the disputed domain names all ref lect the Complainant’s META mark together with the term “verified,” directly alluding to the Complainant’s “Meta Verif ied” service launched on the date that the disputed domain names were registered. Such a composition carries a high risk of implied af f iliation with the Complainant and cannot support a f inding that the Respondent had rights or legitimate interests in the disputed domain names. See WIPO Overview 3.0, section 2.5.1.

Consistent with UDRP Panel practice, the use of the disputed domain names to resolve to inactive websites, PPC sites or sites offering the disputed domain names for sale does not constitute use in connection with a bona fide of fering of goods or services. See WIPO Overview 3.0, section 2.2. The Panel does not f ind that the record supports a finding that the Respondent is commonly known by the disputed domain names or is making legitimate noncommercial use of them.

Based on the available record, the Panel f inds the second element 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.

In the present case, the Panel finds that the circumstances enumerated in paragraph 4(b)(i) of the Policy are present, namely, that the Respondent has registered the disputed domain names, all of which ref lect the Complainant’s META mark together with the term “verif ied”, directly alluding to the Complainant’s “Meta Verif ied” service, primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the Complainant, for valuable consideration in excess of its documented out-of -pocket costs directly related to the disputed domain names. All but one of the disputed domain names were at one point offered for sale on dan.com. In its email to the Complainant following the commencement of these proceedings, the Respondent proposed that the Complainant purchase them. The Panel also notes that the timing of the registrations, which coincided with the Complainant’s public announcement of its “Meta Verified” service, is a circumstance that, in connection with the Respondent’s efforts to sell, supports a finding of bad faith registration and use of the disputed domain names.

The Panel f inds that the evidence in the record establishes that Respondent previously used the disputed domain name <metaverif ied.cc> to resolve to a website 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 name. See WIPO Overview 3.0, section, 3.5.

The disputed domain names <metaverif ied.asia>, <metaverif ied.biz>, <metaverif ied.club>,
<metaverified.pro> and <metaverified.site> did not resolve to active websites. Panels have found that the

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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 these disputed domain names does not prevent a f inding of bad faith in the circumstances of this proceeding. Although panelists 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 or reputation of the Complainant’s META mark, and the

composition of the disputed domain names, and f inds that in the circumstances of this case the passive
holding of the disputed domain names does not prevent a f inding of bad faith under the Policy.

Finally, the Panel finds that the 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.

Based on the available record, 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 names <metaverif ied.asia>, <metaverif ied.biz>, <metaverif ied.cc>,
<metaverified.club>, <metaverified.help>, <metaverif ied.info>, <metaverif ied.link>, <metaverif ied.pro>,

<metaverif ied.shop> and <metaverif ied.site> be transferred to the Complainant.

/Ingrīda Kariņa-Bērziņa/

Ingrīda Kariņa-Bērziņa

Sole Panelist
Date: December 5, 2023