Meta Platforms, Inc. v Registration Private, Domains By Proxy, LLC / Cyril

WIPO Case No. D2022-2341

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Meta Platforms, Inc. v. Registration Private, Domains By Proxy, LLC / Cyril
Ramadar

Case No. D2022-2341

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 Registration Private, Domains By Proxy, LLC, United States / Cyril Ramadar, United

States.

2. The Domain Names and Registrar

The disputed domain names <metafacebookmail.com>, <metafacebooknews.com>,
<metafacebookproperties.com>, <metafacebookreviews.com>, <metafacebookshop.com>,

<metafacebookspace.com> are registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 28, 2022. On June 29, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On June 30, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on June 30, 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 amended Complaint on July 5, 2022.

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 July 7, 2022. In accordance with the Rules, paragraph 5,
the due date for Response was July 27, 2022. The Center received an email communication from the
Respondent on July 27, 2022. The Center notified the commencement of Panel appointment process on
July 29, 2022.

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The Center appointed Evan D. Brown as the sole panelist in this matter on August 3, 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 a multinational technology conglomerate and is the parent company of the entities that operate Facebook, Instagram, and WhatsApp. It owns the trademark META, which it has procured through a series of assignments. That mark is the subject of registrations in several jurisdictions, including the United

States (Reg. No. 5,548,121, registered on August 28, 2018). It also owns the trademark FACEBOOK, which it has procured through a series of assignments. That mark is the subject of registrations in several jurisdictions, including the United States (Reg. No. 3,041,791, registered on January 10, 2006).

According to the WhoIs records, the disputed domain names were registered on October 29, 2021, one day
after the Complainant publicly announced that it was changing its name from Facebook, Inc. to Meta
Platforms, Inc. The Respondent has used five of the six disputed domain names to display
Registrar-provided pages that show sponsored advertising links. The disputed domain name

<metafacebookmail.com> does not resolve to an active website.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain names are identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names were registered and are being used in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, on July 27, 2022, the respond”.1

6. Discussion and Findings

To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied: (i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights, (ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names, and (iii) the disputed domain names have been registered and are being used in bad faith. The Panel finds that all three of these elements have been met in this case.

A. Identical or Confusingly Similar

This element requires the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and, second, whether the disputed domain names are identical or confusingly similar to that mark. This element under the Policy functions primarily as a standing requirement. WIPO Overview of

1 The Panel notes that the Complaint was transmitted to the Respondent in the Center’s Notification of Complaint on July 7, 2022, to all

available contact details of the Respondent, including the email address used to send the informal communication, pursuant to
paragraph 2(a) of the Rules. Moreover, after receipt of such communication the Center again provided the Respondent with the
Notification of Complaint. The Respondent has not participated further in this proceeding.

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

A registered trademark provides a clear indication that the rights in the mark shown on the trademark
certificate belong to its respective owner. See Advance Magazine Publishers Inc., Les Publications Conde
Nast S.A. v. Voguechen, WIPO Case No. D2014-0657. The Complainant has demonstrated its rights in the
META and FACEBOOK marks by providing evidence of its trademark registrations.

The disputed domain names incorporate the META and FACEBOOK marks in their entirety with other words such as “properties” and “reviews”. These other elements within the disputed domain names do not prevent a finding of confusing similarity between the disputed domain names and the Complainant’s META and

FACEBOOK marks. See WIPO Overview 3.0, section 1.8. The META and FACEBOOK marks remains sufficiently recognizable for a showing of confusing similarity under the Policy.

Accordingly, the Complainant has satisfied this first UDRP element.

B. Rights or Legitimate Interests

The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. If the Complainant makes that showing, the burden of production of demonstrating rights or legitimate interests shifts to the Respondent (with the burden of proof always remaining with the Complainant).

On this point, the Complainant asserts, among other things, that: (1) it has not authorized the Respondent to use the META or FACEBOOK marks in the disputed domain names, (2) the Respondent is not using the disputed domain names in connection with any bona fide offering of goods or services, (3) the Respondent is not commonly known by the disputed domain names, and (4) the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names.

The Panel finds that the Complainant has made the required prima facie showing. The Respondent has not presented evidence to overcome this prima facie showing. And nothing in the record otherwise tilts the balance in the Respondent’s favor.

Furthermore, the nature of the disputed domain name, incorporating the Complainant’s widely known
trademarks (META and FACEBOOK) and descriptive terms, carries a risk of implied affiliation and cannot
constitute fair use as it effectively impersonates or suggests sponsorship or endorsement by the
Complainant. Columbia Insurance Company v. Name Redacted, WIPO Case No. D2022-0528; WIPO

Overview 3.0, section 2.5.1.

The Panel finds that the Complainant has established this second element of the Policy.

C. Registered and Used in Bad Faith

Because the Respondent registered the disputed domain names the day after the Complainant publicly announced its name change, and noting the strong reputation of the Complainant and at least its FACEBOOK mark at that time, it is implausible to believe that the Respondent was not aware of the META and FACEBOOK marks when it registered the disputed domain names. In the circumstances of this case, the mere registration of domain names that are confusingly similar to a well-known trademark by an unaffiliated entity can by itself create a presumption of bad faith registration of the disputed domain names. Government Employees Insurance Company v. Joel Rosenzweig, RegC, WIPO Case No. D2021-1221. Noting the above, bad faith use is shown from the Respondent’s activities of using the disputed domain names to present pay-per-click links for commercial gain. Id. Moreover, in these circumstances, the fact that one disputed domain name does not resolve to an active website does not prevent a finding of bad faith.

For these reasons, the Panel finds that the Complainant has successfully met this third element.

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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, <metafacebookmail.com>, <metafacebooknews.com>,
<metafacebookproperties.com>, <metafacebookreviews.com>, <metafacebookshop.com>, and

<metafacebookspace.com>, be transferred to the Complainant.

/Evan D. Brown/
Evan D. Brown
Sole Panelist
Date: August 18, 2022