Meta Platforms, Inc. v Naeem Kahn

WIPO Case No. D2022-0295

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Meta Platforms, Inc. v. Naeem Kahn

Case No. D2022-0295

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 Naeem Kahn, Pakistan.

2. The Domain Name and Registrar

The disputed domain name <facebookverifiedaccount.com> is registered with Alibaba.com Singapore E-

Commerce Private Limited (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 28, 2022. On January 28, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 29, 2022, 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on January 31, 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 amendment to the Complaint on February 9, 2022.

The Center verified that the Complaint together with the amendment to 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 February 10, 2022. In accordance with the Rules,
paragraph 5, the due date for Response was March 2, 2022. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on March 7, 2022.

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The Center appointed Tuukka Airaksinen as the sole panelist in this matter on March 10, 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.

4. Factual Background

The Complainant is the owner of the trademark FACEBOOK, used for a social networking website and mobile application. It has used the trademark since 2004. The Complainant’s website has over one billion daily active accounts and over two billion monthly active users from all over the world.

The Complainant also offers account verification features on its website, such as a verified badge appearing next to an account’s name.

The Complainant’s trademark has been registered all over the world, for example as United States

Registration No. 3122052 for FACEBOOK, registered on July 25, 2006.

The disputed domain name was registered on June 23, 2021, and resolves to a website displaying the

Complainant’s trademark.

5. Parties’ Contentions
A. Complainant

The disputed domain name includes the Complainant’s trademark, adding the descriptive terms “verified” and “account”. The addition of a descriptive a term to a complainant’s trademark fails to distinguish a domain name from the trademark.

The Respondent has no rights or legitimate interest in the disputed domain name. The Respondent is not
authorized to use the Complainant’s trademark and is not known by the Complainant’s trademark. The
Complainant has no relationship with the Respondent. The Respondent has not made any bona fide use of
the disputed domain name but is using it to trick prospective consumers into interacting with the

Respondent’s website.

The website to which the disputed domain name resolves uses the Complainant’s famous trademark and a
variation of the Complainant’s “f” logo. The Respondent’s intention is to create confusion with the
Complainant and its trademark as to the source, sponsorship, affiliation, or endorsement of the
Respondent’s website with the Complainant. The disputed domain name is used to impersonate the
Complainant, and the website appears to provide links using the terms such as “download”, “social”, and

“features”, all of which are relevant to the Complainant’s business.

B. Respondent

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

6. Discussion and Findings

In order to obtain the transfer of a domain name, a complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the respondent files a response to the complaint or not. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. The second element a complainant must prove is that the respondent has no

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rights or legitimate interests in respect of the domain name. The third element a complainant must establish

is that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.

According to section 1.11 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third
Edition (“WIPO Overview 3.0”), “[t]he applicable Top Level Domain (‘TLD’) in a domain name (e.g., ‘.com’,
‘.club’, ‘.nyc’) is viewed as a standard registration requirement and as such is disregarded under the first
element confusing similarity test”.

Furthermore, “where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements”. See section 1.8 of the WIPO Overview 3.0.

The disputed domain name is confusingly similar to the Complainant’s trademark, which is clearly recognizable in the disputed domain name. The addition of the terms “verified” and “account” do not prevent a finding of confusing similarity with the Complainant’s trademark.

This means that the disputed domain name is confusingly similar with the Complainant’s trademark, and hence the first element of the Policy has been fulfilled.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain names.

It is widely accepted among UDRP panels that once a complainant has made a prima facie showing indicating the absence of the respondent’s rights or legitimate interests in a disputed domain name, the burden of production shifts to the respondent to come forward with evidence of such rights or legitimate interests. If the respondent fails to do so, the complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270, and section 2.1 of the WIPO Overview 3.0.

The Complainant has credibly submitted that the Respondent is neither affiliated with the Complainant in any way, nor has it been authorized by the Complainant to use and register the disputed domain name, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and is not commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy.

Moreover, the Panel finds that the nature of the disputed domain name carries a risk of implied affiliation with the Complainant’s trademark. See section 2.5.1 of the WIPO Overview 3.0.

Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Considering the Panel’s findings below, the Panel finds that there are no other circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled.

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C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain name has been registered and are being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(i) circumstances indicating that [the respondent has] registered or has acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable

consideration in excess of [the respondent’s] documented out-of-pocket costs directly related to the domain

name; or

(ii) [the respondent has] registered the domain name in order to prevent the owner of the trademark or
service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has]

engaged in a pattern of such conduct; or

(iii) [the respondent has] registered the domain name primarily for the purpose of disrupting the business or

competitor; or

(iv) by using the domain name, [the respondent has] intentionally attempted to attract, for commercial gain, the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location.”

The Panel agrees with the Complainant and previous UDRP panels that the Complainant’s trademark is a well-known trademark. Furthermore, the nature of the disputed domain name, incorporating the Complainant’s well-known trademark with terms related to the Complainants area of activity, suggests bad faith. It is therefore inconceivable that the Respondent would not have been aware of the Complainant’s trademark when registering the disputed domain name.

The disputed domain name has been used for a fraudulent website purporting to be affiliated with the Complainant, or to impersonate the Complainant as the Respondent has used the Complainant’s trademark and the “f” logo at its website. The disputed domain name has therefore been used to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s mark.

Therefore, the Panel finds that the third element of the Policy is fulfilled.

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 <facebookverifiedaccount.com> be transferred to the Complainant.

/Tuukka Airaksinen/
Tuukka Airaksinen
Sole Panelist
Date: March 28, 2022