Meta Platforms, Inc. v Muhammad Rana

WIPO Case No. D2024-3336

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Meta Platforms, Inc. v. Muhammad Rana

Case No. D2024-3336

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 Muhammad Rana, United Kingdom (“UK”).

2. The Domain Name and Registrar

The disputed domain name <facelore.com> is registered with IONOS SE (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 14, 2024.

On August 14, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the disputed domain name. On August 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 (1&1 Internet Limited, REDACTED FOR PRIVACY) and contact
information in the Complaint. The Center sent an email communication to the Complainant on August 16,
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

August 21, 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 August 23, 2024. In accordance with the Rules,
paragraph 5, the due date for Response was September 12, 2024. The Response was filed with the Center
on September 12, 2024.

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The Center appointed Warwick A. Rothnie as the sole panelist in this matter on September 19, 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 the parent company of a number of businesses or brands including Facebook,

Instagram, Meta Quest (formerly Oculus) and WhatsApp. According to the Complaint, the Complainant’s

“focus is to bring the metaverse to life and to help people connect, find communities and grow businesses.”

The Complainant’s Facebook platform was founded in 2004. The Facebook platform provides an online

forum for people and businesses to post messages, photographs, videos and the like or, as the Complainant

describes, “People use Facebook’s services to stay connected with friends and family, to discover what’s

going on in the world, and to share and express what matters to them.” Businesses also use the platform to

advertise for sale and sell their products and the Complainant derives very substantial revenues from those
activities.

While it was initially restricted to use by students at Harvard University in the United States, it grew and expanded rapidly once access was opened up to the general public in 2006. According to the Complaint, there were:

(a)	100 million users in August 2008;
(b)	500 million users in July 2010;
(c)	1 billion users worldwide by September 2012;
(d)	2.74 billion users in September 2020; and

(e) when the disputed domain name was registered, the Complainant claims its Facebook platform had

2.91 billion users including 49.35 million users in the United Kingdom (from a total population of
approximately 67 million).

In the three months to September 30, 2021, the Complainant’s published financial reports recorded revenue

from sales of advertising on its Facebook platform at over USD 28 billion. For the nine months ending on September 30, 2021, total revenues exceeded USD 84 billion (although that also included some revenue from activities other than sales of advertising).

The Complaint includes evidence of numerous Registered Trademarks held by the Complainant for FACE and FACEBOOK. These include:

(1) European Union Trademark No. 003852779, FACE, which was registered on October 3, 2006, in

respect of the services in International Class 38 of operating chat rooms, none primarily relating to motoring
or to cars;

(2) United Kingdom Registered Trademark No. UK00918075698, FACE, which was registered on May 22, 2020, in respect of a range of services in International Classes 38, 41, and 42;

(3) United States Registered Trademark No. 3,041,791, FACEBOOK, which was registered in the

Principal Register on January 10, 2006, in respect of services in International Classes 35 and 38;

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(4) European Union Trademark No. 005585518, FACEBOOK, which was registered on May 25, 2011, in

respect of a range of services in International Classes 35, 41, 42, and 45. There is also a counterpart
registration in the United Kingdom - Registered Trademark No. UK00905585518; and

(5) International Trademark Registration No. 1075807, FACEBOOK, which was registered on July 16, 2010, in respect of a wide range of goods and services in International Classes 9, 35, 36, 38, 41, 42, and 45.

According to the WhoIs record, the disputed domain name was registered on October 2, 2021.

The disputed domain name does not resolve to an active webpage currently.

Until about March 2024, however, the disputed domain name resolved to a website that appears to have

provided social media services via a social media platform under the name “Facelore”. The platform also appears to have provided very similar functionality to that provided through the Complainant’s Facebook platform including the ability to post content, “poke”, and “like” content and comment on the content. There

was also an associate Facelore Messenger application through which users appeared to be able to message
each other.

Both the Facelore platform and the Facelore Messenger application used a similar get-up to that used by the Complainant on its Facebook properties, including a blue and white colour scheme. By way of illustration an image included in the Complaint shows a comparison of the logo and favicons used on the respective

websites:

The Complainant’s Facebook webpage uses the strapline “Facebook helps you connect and share with the people in your life.” The Respondent’s landing page at “ stated “Welcome! Connect with your family and friends and share your moments.”

The Respondent also has a “Facelore” account on the Facebook platform. Over the Facelore logo and

favicon shown above, this page now has a red rondel superimposed as follows:

As the Complainant points out, this is very similar to the Complainant’s rondel although the background is red and the letter “l” has been added.

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5. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of a disputed domain name, the
Complainant must demonstrate each of the following:

(i)        the disputed domain name 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 disputed domain name; and

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

Paragraph 15(a) of the Rules directs the Panel to decide the 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

The first element that the Complainant must establish is that the disputed domain name is identical with, or

confusingly similar to, the Complainant’s trademark rights.

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 of WIPO Panel Views on

Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has proven ownership of registered trademarks for both FACE and FACEBOOK.

The next stage of this inquiry simply requires a visual and aural comparison of the disputed domain name to

the proven trademarks. This test is narrower than and thus different to the question of “likelihood of

confusion” under trademark law. Therefore, questions such as the scope of the trademark rights, the

geographical location of the respective parties, the date they were acquired and other considerations that
may be relevant to an assessment of infringement under trademark law are not relevant at this stage. Such
matters, if relevant, may fall for consideration under the other elements of the Policy. See e.g. WIPO

Overview 3.0, section 1.7.

In undertaking that comparison, it is permissible in the present circumstances to disregard the generic Top-

Level Domain (“gTLD”) component as a functional aspect of the domain name system. WIPO Overview 3.0,

section 1.11.

Disregarding the “.com” gTLD, the disputed domain name consists of the Complainant’s registered trademark FACE and the term “lore”. As this requirement under the Policy is essentially a standing

requirement, the addition of this term does not preclude a finding of confusing similarity. See e.g. WIPO

Overview 3.0, section 1.8. Apart from anything else, the Complainant’s trademark remains visually and

aurally recognisable within the disputed domain name.

The Complainant also contends the disputed domain name is confusingly similar to the Complainant’s FACEBOOK trademark largely on the prominence and significance of “Face” as the first element of a

similarly constructed two syllable trademark.

In support of this contention, the Complainant points to a number of prior decisions under the Policy in which

“face +” domain names have been found to be confusingly similar to the Complainant’s FACEBOOK

trademark. These include Meta Platforms, Inc. v. Chatri Ubonrat, Taradthai, WIPO Case No. D2022-4320 (<facethai.net>) and Facebook, Inc. v. Gheorghe Matei, WIPO Case No. D2020-2095 (<facegloob.com>).

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While the Panel is not bound by prior panel decisions, certainty and predictability are nonetheless important goals under the Policy. Therefore, the Panel is prepared to find that the disputed domain name is also

confusingly similar to FACEBOOK especially as “Facelore” does not convey a different semantic idea to

FACEBOOK and also taking into account the similarity of get-up and functionality to the Complainant’s

platform of the website to which the disputed domain name resolved. [1]

[1] Generally, such considerations are not taken into account but may be relevant when it appears prima facie that the Respondent is

Accordingly, the Panel finds that the Complainant has established that the disputed domain name is

confusingly similar to the Complainant’s trademarks and the requirement under the first limb of the Policy is

satisfied.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the
Respondent has rights or legitimate interests in a disputed domain name:

(i)        before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable

preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in
connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name,

without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service
mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

While 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 often impossible

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. 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.

The Respondent registered the disputed domain name well after the Complainant began using its trademarks and also after the Complainant had registered its trademarks.

The Respondent does not dispute the Complainant’s allegations that it has not authorised the Respondent to

use the disputed domain name and the Respondent is not affiliated with it.

The disputed domain name is not derived from the Respondent’s name. Nor is there any suggestion of

some other name by which the Respondent is commonly known from which the disputed domain name could
be derived. From the available record, the Respondent does not appear to hold any trademarks for the
disputed domain name.

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The Respondent states that access to Facebook in Pakistan has been blocked on more than one occasion

by the government. Accordingly, he says he set up “Facelore” as a social contact site to support freedom of

expression. According to the Respondent, the site never ran advertisements nor made monetary benefits.

Under the stress of pressure from “some agencies of Pakistan” and (what the Panel understands to be references to) letters of demand from the Complainant’s lawyers, the Respondent eventually decided to shutter the site. The Respondent further contends that there is no risk of confusion with the Complainant’s

trademark and service – even when the Respondent’s platform was active.

The Respondent also explains that his platform and message service was developed through the use of a

script and apps which he bought through the website “

It is not entirely clear which applications and scripts the Respondent is referring to. The Panel notes, however, there are WoWonder iOS Messenger and Wowonder Android Messenger apps (amongst others) available for downloading and licensing. These licences are stated to include access to the full source code. The branding and get-up of these applications on the CodeCanyon website is very different to that of both

the Complainant’s and the Respondent’s applications.

It does not appear from the materials before the Panel that the website to which the disputed domain name resolved was limited to users in Pakistan. Some screenshots in evidence suggest that at least some users may have been of Pakistani origins. That is not clear. In any event, the log-in page included in the evidence

for an unregistered user was in English and showed an icon of the Union Jack alongside the “Facelore” logo.

Plainly, if nothing else, the platform was accessible to people outside Pakistan.

On the other hand, the Panel has no reason to believe that the WoWonder applications and scripts are anything but legitimate products. What is in issue in the present proceeding, however, is not whether someone may set up and run a social media site, or a messaging application, in competition with the

Complainant’s Facebook platform. Rather, it is the name (and, more precisely, the disputed domain name)

adopted for use in providing those services.

It is not a good faith offering of goods or services under the Policy to adopt a domain name which is

confusingly similar to another trader’s trademark especially where the intended use lies in connection with

the same or similar goods or services. Correspondingly, it is not a legitimate noncommercial or other fair use of a confusingly similar disputed domain name to adopt it effectively for use in competition with the trademark owner.

These matters, taken together, are sufficient to establish a prima facie case under the Policy that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not been successful in rebutting that prima facie case. Accordingly, the Panel finds the Complainant has established the second requirement under the Policy also.

C. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see e.g. Group One Holdings Pte Ltd v. Steven Hafto, WIPO Case No. D2017-0183.

Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

In the present case, there can be no doubt that the Respondent was well aware of the Complainant’s

trademark FACEBOOK and, the Panel notes, in his Response the Respondent also refers to the

Complainant’s platform as “Face”.

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It appears that the Respondent claims he had no intention of causing confusion with the Complainant and its trademarks.

The Respondent’s stated intentions are relevant to consideration of the requirement of bad faith under the

Policy. In determining whether the disputed domain name has been registered and used in bad faith, however, the question is whether there is evidence from which the Panel can infer that the disputed domain

name has been registered to take advantage of the Complainant’s trademark. For example, Regency

Furniture of Laurel, Inc. v. David Lively, WIPO Case No. D2018-0919. Moreover, in considering the evidence the Panel is entitled to take into account the consequences naturally flowing from the course of

conduct. For example, Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453. That is, a Respondent’s

subjective claims must also be weighed in light of the objective facts.

In the present case, therefore, the Panel readily infers that the disputed domain name was registered in bad faith as that term is understood under the Policy. The disputed domain name is confusingly similar to the

Complainant’s FACE and FACEBOOK trademarks. The Respondent admittedly registered the disputed
domain name for use in connection with a social media platform or service – even on the Respondent’s case,
in substitution for the Complainant’s platform. Furthermore, the Respondent adopted get-up closely
modelled on the Complainant’s get-up.

Accordingly, the Panel finds that the disputed domain name was registered in bad faith under the Policy and the same considerations give rise to a finding that the disputed domain name has been used in bad faith.

As a result, the Complainant has established all three requirements under the Policy.

6. 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 <facelore.com> be transferred to the Complainant.

/Warwick A. Rothnie/

Warwick A. Rothnie

Sole Panelist
Date: October 4, 2024

seeking to target the Complainant’s trademark: WIPO Overview 3.0, section 1.15.