Meta Platforms, Inc. v Ori Bohadana

WIPO Case No. D2023-1148

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Meta Platforms, Inc. v. Ori Bohadana

Case No. D2023-1148

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 Ori Bohadana, Israel.

2. The Domain Name and Registrar

The disputed domain name <cryptofacebook.com> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 14, 2023. connection with the disputed domain name. On March 16, 2023, 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.

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 March 17, 2023. In accordance with the Rules, paragraph
5, the due date for Response was April 6, 2023. The Respondent did not submit any response. Accordingly,
the Center notified the Respondent’s default on April 12, 2023.

The Center appointed Anne-Virginie La Spada as the sole panelist in this matter on April 19, 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.

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4. Factual Background

The Complainant is a social technology company, based in the United States. Among other products and services, the Complainant operates Facebook and is active in the cryptocurrency field.

The Complainant is the owner of, among other:

- The United States trademark registration No. 3041791 for FACEBOOK, registered on January 10, 2006 in

classes 35 and 38;

- The Israeli trademark registration No. 209768 for FACEBOOK, registered on March 10 2010 in class 9.

The Complainant is the owner of the domain name <facebook.com>.

The disputed domain name was registered on December 26, 2021. At the time of filling of the Complaint, and on the date of the Panel’s decision, it did not resolve to an active website.

On February 13, 2023, the Complainant sent a cease and desist letter to the Respondent by e-mail. No response was received.

5. Parties’ Contentions
A. Complainant

According to the Complainant, the disputed domain name is confusingly similar to its trademark, as it identically reproduces its trademark with the mere addition of the term “crypto”.

The Complainant further contends that the Respondent has no rights or legitimate interests in the disputed domain name, as the Respondent is not authorized by the Complainant to use the disputed domain name, and there is no indication that the Respondent is known under the disputed domain name. The Respondent

has not used the disputed domain name in connection with any bona fide offering of goods or services, nor is
the Respondent making any legitimate noncommercial use of the disputed domain name.

The Complainant further contends that the disputed domain name was registered and used in bad faith, for the following reasons: (i) the Respondent registered the disputed domain name in full knowledge of the Complainant’s rights with a view to capitalizing on the goodwill and reputation associated with the Complainant’s trademark; and (ii) the Respondent has not been making any apparent substantive use of the disputed domain name. 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 name that would not result in creating a misleading impression of association with the Complainant.

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

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(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 name reproduces the Complainant’s trademark FACEBOOK in its entirety with no alteration, and combines this trademark with the term “crypto”.

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 trademark FACEBOOK is clearly recognizable in the disputed domain name. The mere addition of the term “crypto” does not prevent a finding of confusing similarity between the disputed domain name and the Complainant’s trademark.

UDRP panels accept that a generic Top-Level Domain (“gTLD”), such as “.com”, 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.

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 name, nor has the Complainant granted to the
Respondent any authorization to use the disputed domain name.

There is also no evidence that the Respondent has used or is planning to use the disputed domain name for a bona fide offering of goods or services.

Moreover, the composition of the disputed domain name carries a risk of implied affiliation, as it incorporates the Complainant’s trademark with the addition of the term “crypto” which may allude to the field of cryptocurrencies where the Complainant is active (see WIPO Overview 3.0, section 2.5.1).

Finally, the Panel may draw from the lack of a Response the inferences that it considers appropriate, according to the Rules, paragraph 14(b).

In view of the above, the Panel finds that the Complainant has established a prima facie case that the
Respondent lacks rights or legitimate interests in the disputed domain name.

Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, 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

UDRP panels have recognized in past decisions the widespread use and renowned character of the
Complainant’s trademark FACEBOOK (see Facebook Inc. v. fan wu, WIPO Case No. D2021-2594;
Facebook Inc. and Instagram, LLC v. Brandon Glidden, WIPO Case No. D2021-2008; and Facebook, Inc. v.
Online Admin, DotBadger Domains, WIPO Case No. D2021-1210). The Panel accepts that the

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Complainant’s trademark is well known and that the Respondent most probably knew of the Complainant’s trademark when he registered the disputed domain name. Thus, the Panel finds that the disputed domain name was registered in bad faith.

The Respondent does not appear to have used the disputed domain name in connection with an active website.

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

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 trademark FACEBOOK is distinctive and well known. The Respondent failed to submit a Response or to allege any actual or contemplated use of the disputed domain name. Also, the Respondent did not provide accurate contact details. Indeed, the DHL shipment of the Complaint could not

be delivered. In addition, it is difficult to imagine what legitimate use the Respondent could make of the mistakenly assume that such website is operated or endorsed by the Complainant, when such is not the case.

disputed domain name, given the fact there is no relationship between the Respondent and the Complainant.

For the reasons set out above, the Panel finds that the Respondent has registered and is using the disputed domain name in bad faith, and that the Complainant has accordingly 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 name <cryptofacebook.com> be transferred to the Complainant.

/Anne-Virginie La Spada/
Anne-Virginie La Spada
Sole Panelist
Date: May 3, 2023