Meta Platforms, Inc. v Nguyen Trong Duc

WIPO Case No. D2024-4855

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Meta Platforms, Inc. v. Nguyen Trong Duc

Case No. D2024-4855

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 Nguyen Trong Duc, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <shopclonefb.com> (the “Disputed Domain Name”) is registered with P.A. Viet

Nam Company Limited (the “Registrar”).

3. Procedural History

The Complaint was filed in English with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2024. On November 25, 2024, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On November 27, 2024, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

On November 28, 2024, the Center informed the parties in Vietnamese and English, that the language of the
registration agreement for the Disputed Domain Name is Vietnamese. The Complainant requested that
English be the language of the proceeding on the same date, referring to the respective arguments
contained in the Complaint in support of its request. The Respondent did not submit any comment on the

Complainant’s submission.

The Center verified that 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 November 29, 2024. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2024. The Respondent did not submit any

response. Accordingly, the Center notified the Respondent’s default on December 24, 2024.

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The Center appointed Pham Nghiem Xuan Bac as the sole panelist in this matter on December 30, 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 social media technology company. Among others, the Complainant operates internationally well-known online platforms and networks like Facebook and Instagram.

The Complainant is the owner of the FB and FACEBOOK trademarks, which are registered in various
jurisdictions. Among others, the Complainant owns the following FB marks: United States Registration No.
4659777, registered on December 23, 2014; European Union Registration No. 008981383, registered on
August 23, 2011; and European Union Registration No. 018146501, registered on November 7, 2020. The
Complainant is also the owner of United States Registration No. 5186706, registered on April 18, 2017, for
the figurative FB trademark and United States Registration No 3041791, registered on January 10, 2006, for

FACEBOOK.

The Disputed Domain Name was registered on December 12, 2023.

The Disputed Domain Name resolves to a website in Vietnamese language (with an option to switch to disclaimer describing the (lack of) relationship between the Parties.

English) purportedly offering for sale of cloned and fake Facebook accounts in various countries featuring the

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, as follows:

(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark, in which the
Complainant has rights.

The Complainant submits that the presence of its FB trademark in the Disputed Domain Name is sufficient to establish confusing similarity between the Disputed Domain Name and the Complainant’s trademark. The addition of the terms “shop” and “clone” before the Complainant’s FB trademark does not prevent a finding of confusing similarity.

Further, the Complainant argues that the generic Top-Level Domain (“gTLD”) “.com” may be disregarded for the purpose of assessing confusing similarity under the Policy.

(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

First, the Complainant submits that the Respondent’s use of the Disputed Domain Name does not amount to a bona fide offering of goods or services. The Complainant asserts that the Respondent is not a licensee of or not affiliated with the Complainant in any way. The Complainant has not granted any authorization for the Respondent to make use of its FB trademark, in a domain name or otherwise. The Respondent also fails to fulfil Oki Data criteria as the Respondent’s website also purports to offer for sale cloned or fake Hotmail

accounts, failing to meet the criteria of selling only trademarked goods or services.

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Second, the Respondent is not commonly known by the Disputed Domain Name. There is no evidence of the Respondent having acquired or applied for any trademark registration for “fb”, “shopclonefb” or any variation thereof, as reflected in the Disputed Domain Name.

Third, the Respondent is not making a legitimate noncommercial or fair use of the Disputed Domain Name. of the Disputed Domain Name that the Respondent intends to exploit the goodwill and reputation of the Complainant’s FB trademark for commercial gain by attracting Internet users to its website and offering them unauthorized services, as well as by creating a false impression of association with the Complainant.

The Complainant contends that the Disputed Domain Name resolves to a website offering cloned or fake
(iii) The Disputed Domain Name was registered and is being used in bad faith.

First, the Complainant submits that the Respondent registered the Disputed Domain Name in bad faith. Taken into account the continuous and extensive use of the Complainant’s trademark, the nature of the Disputed Domain Name, the high repute of the Complainant throughout the world, and the content of the

Respondent’s website which features the Complainant’s logo and figurative trademark, the Respondent could not reasonably argue that it did not have the Complainant’s FB trademark in mind at the time of the registration of the Disputed Domain Name.

Second, the Complainant submits that the Disputed Domain Name is used in bad faith. The Complainant
submits that the Disputed Domain Name resolves to a website in Vietnamese that purports to offer for sale of
cloned or fake Facebook accounts, which constitutes use of a domain name in bad faith. The Complainant
contends that the Respondent is using the Disputed Domain Name for commercial gain and to profit from the
resulting consumer confusion that the Disputed Domain Name website is endorsed by or associated with the
Complainant. Furthermore, the Respondent’s unauthorized use of the Disputed Domain Name is likely to
impact the safety, accountability and authenticity of the Complainant’s Facebook platform, in breach of their
Terms of Service. Lastly, the lack of disclaimer or any other indication on the Respondent’s website
clarifying the Respondent’s relationship with the Complainant further adds to the confusion caused by the

Disputed Domain Name and constitutes additional evidence of the Respondent’s bad faith conduct.

Therefore, the Complainant considers that the Respondent registered and is using the Disputed Domain

Name in bad faith under the Policy paragraph 4(b)(iii).

With the said arguments, the Complainant requests that the Disputed Domain Name be transferred to the

Complainant.

B. Respondent

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

6. Discussion and Findings

Language of the Proceeding

The language of the Registration Agreement for the Disputed Domain Name is Vietnamese. Pursuant to the Rules, paragraph 11(a), in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement.

The Complaint was filed in English. The Complainant requested that the language of the proceeding be
English for several reasons, including the fact that:

i.         The Disputed Domain Name incorporates English language terms “shop” and “clone”.

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ii.         The Disputed Domain Name resolves to a website which offers English as a language option in the left

hand task bar.

iii. The use of Vietnamese in this case would entail significant additional costs and delay due to the need for translation of the Complaint and supporting annexes.

The Respondent did not make any specific submissions with respect to the language of the proceeding.

In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.5.1).

Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that the language of the proceeding shall be English.

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 a trademark or service mark for the purposes of the Policy.
WIPO Overview 3.0, section 1.2.1.

The Panel finds that the Complainant has evidenced that it has rights in and to the FB trademark, which was registered in several countries before the registration of the Disputed Domain Name.

The entirety of the mark is reproduced within the Disputed Domain Name. Accordingly, the Disputed Domain
Name is confusingly similar to the mark for the purposes of the Policy. WIPO Overview 3.0, section 1.7.

Although the addition of the terms “shop” and “clone” 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 mark for the purposes of the Policy. WIPO Overview 3.0, section 1.8.

In addition, the Panel finds, similarly to other UDRP panels, that the addition of the gTLD “.com” to the viewed as a standard registration requirement. WIPO Overview 3.0, section 1.11.

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

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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 such as those enumerated in the Policy or otherwise.

Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, demonstrate the Respondent’s rights or legitimate interests in the Disputed Domain Name for the purposes of paragraph 4(a)(ii) of the Policy, including:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain
name or a name corresponding to the domain name in connection with a bona fide offering of goods or

services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name,

even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial
gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Regarding paragraph 4(c)(i) of the Policy, the Panel finds, in light of the Complainant’s asserted facts, that no license, permission or authorization in any kind to use the Complainant’s FB trademark has been granted to the Respondent. There is no evidence available that the Respondent holds any registered or unregistered trademark rights in any jurisdiction related to “FB”. Thus, the Panel finds that the Respondent’s use of the Disputed Domain Name cannot be considered as a bona fide offering of goods or services and that it has no rights in the FB trademark.

A reseller or distributor may be making a bona fide offering of goods and services and thus have rights or legitimate interests in a domain name if its use meets certain requirements, which are described in the decision Oki Data Americas, Inc. v. ASD, Inc., (“Oki Data”), WIPO Case No. D2001-0903 including:

- the Respondent must actually be offering the goods or services at issue;

- the Respondent must use the site to sell only the trademarked goods or services (otherwise, there is the
possibility that the Respondent is using the trademark in a domain name to bait consumers and then switch

them to other goods or services);

- the site itself must accurately and prominently disclose the Respondent’s relationship with the trademark

owner; and

- the Respondent must not try to “corner the market” in domain names that reflect the trademark, thus
depriving the trademark owner of the ability to reflect its own mark in a domain name.

In this particular case, the Disputed Domain Name resolves to a website featuring the Complainant’s FACEBOOK mark, official logo and figurative trademark, and offering not only cloned or fake Facebook accounts, but also cloned or fake Hotmail accounts in various countries. On such website, the Panel finds that the Respondent did not place any statement or disclaimer accurately and prominently disclosing its relationship with the Complainant. These indications may mislead Internet users into believing in a connection or association between the Respondent and the Complainant, where such connection or association does not exist in reality.

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With such a view, the Panel finds that the use of the Disputed Domain Name wholly incorporating the use within paragraph 4(c)(i) of the Policy.

Regarding paragraphs 4(c)(ii) and 4(c)(iii) of the Policy, the Panel finds that there is no evidence that would suggest that the Respondent, as an individual, business, or other organization, has been commonly known by the Disputed Domain Name, or that the Respondent is making a legitimate noncommercial or fair use of the Disputed Domain Name. In fact, as it appears following the Complainant’s assertions and evidence with

regard to the Respondent’s registration of the Disputed Domain Name, the Respondent had full knowledge
of the FB trademark and had an intention to gain profit by riding on the goodwill and reputation of the

Complainant.

Based on the foregoing findings, the Panel finds 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, including:

“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such

conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a

competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet
users to your 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 your website or location or of a product or

service on your website or location.”

In the present case, the Panel finds that the Complainant has put forth evidence that the Respondent has
registered and used the Disputed Domain Name in bad faith. The Respondent did not formally reply to the
Complainant’s contentions and, therefore, did not refute the Complainant’s contentions.

The Panel has considered the Complainant’s assertions and evidence relating to the Respondent’s registration and use of the Disputed Domain Name. In this regard, the Panel finds that the Complainant’s FB trademark has been registered and put in use in numerous countries. These trademark registrations well predate the registration of the Disputed Domain Name.

The Disputed Domain Name comprises the Complainant’s FB trademark in its entirety, adding only the non- distinctive terms “shop” and “clone” at the beginning. Given the extensive use of the FB trademark in connection with the Complainant’s social network Facebook, which occurs in numerous countries, including in Viet Nam, where the Respondent resides, it is very unlikely that the Respondent registered the Disputed Domain Name in a fortuity. Also, in consideration of the use of the Disputed Domain Name and the content of the website at the Disputed Domain Name, the Panel is of the view that the Respondent obviously knew the Complainant and its FB trademark when it registered the Disputed Domain Name, and the Panel considers the registration is an attempt by the Respondent as to take advantage of the reputation and goodwill of the Complainant’s trademark.

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Bearing in mind that the Respondent is offering fake or cloned accounts for the Complainant’s social media network, the Panel finds that the Respondent intentionally tries to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of its website on its website, which is indicative of bad faith within the meaning of paragraph 4(b)(iv) of the Policy.

Based on the foregoing findings, 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 <shopclonefb.com> be transferred to the Complainant.

/Pham Nghiem Xuan Bac/
Pham Nghiem Xuan Bac
Sole Panelist
Date: January 10, 2025