Meta Platforms, Inc. v võ Hữu Nhân

WIPO Case No. D2023-5243

ARBITRATION

AND

MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Meta Platforms, Inc. v. Võ Hữu Nhân

Case No. D2023-5243

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 Võ Hữu Nhân, Viet Nam.

2. The Domain Name and Registrar

The disputed domain name <buymetaverified.com> (the “Disputed Domain Name”) is registered with

Squarespace Domains II LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15,

2023. On December 18, 2023, the Center transmitted by email to the Registrar a request for registrar

verification in connection with the Disputed Domain Name. On December 18, 2023, 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 (Contact Privacy inc., Customer

7151571251) and contact information in the Complaint. The Center sent an email communication to the

Complainant on December 21, 2023, 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 December 22, 2023.

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 January 2, 2024. In accordance with the Rules, paragraph

5, the due date for Response was January 22, 2024. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on January 30, 2024.

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The Center appointed Nicholas Weston as the sole panelist in this matter on February 6, 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.

The language of the proceeding is the language of the registration agreement, English.

4. Factual Background

The Complainant, Meta Platforms, Inc., (“Meta”) is a United States social technology company that operates

a number of businesses including Facebook, Instagram, Meta Quest (formerly Oculus), and WhatsApp. The

Complainant holds a portfolio of registrations for the trademark META, and variations of it, in numerous

countries. An example includes United States Registration No. 5548121 for the mark META, registered on

August 18, 2018 and assigned to the Complainant on October 28, 2021. On February 19, 2023, Meta

launched a subscription service known as “Meta Verified”, which allows verified users of Instagram and

Facebook to add a blue check mark to their accounts for a monthly fee.

The Complainant owns numerous domain names that comprise or contain the trademark META, including

the domain name <meta.com>.

The Disputed Domain Name was registered on April 2, 2023. The Disputed Domain Name redirected to a

Google Drive webpage entitled “MetaVerifiedAvailable(3).zip”, which listed a number of documents for

download.

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.

Notably, the Complainant cites its trademark registrations around the world, for the mark META, as prima

facie evidence of ownership.

The Complainant submits that it has produced evidence its rights in the mark META predates the

Respondent’s registration of the Disputed Domain Name. The Complainant submits that the Disputed

Domain Name is confusingly similar to its trademark, for the reason that the Disputed Domain Name

incorporates in its entirety the META trademark, and that the confusing similarity is not removed by the

additional words “buy and verified”, or the generic Top-Level Domain (“gTLD”) “.com”.

The Complainant contends that the Respondent has no rights or legitimate interests in respect of the

Disputed Domain Name because, “[t]he Respondent is not a licensee of the Complainant. The Respondent

is not affiliated with the Complainant in any way. The Complainant has not granted any authorization for the

Respondent to make use of its META trademark, in a domain name or otherwise” and none of the

circumstances set out in paragraph 4(c) of the Policy apply. The Complainant also contends that the “the

website previously associated with the [Disputed] Domain Name prominently displayed the Complainant’s

distinctive and well-known logo and made explicit reference to ‘Meta Verified’, the Complainant’s new

subscription service introduced on 19 February 2023. The Respondent’s such use of the [Disputed] Domain

Name cannot be considered as a bona fide offering of goods or services”.

Finally, the Complainant alleges that the registration and use of the Disputed Domain Name was, and

currently is, in bad faith, contrary to the Policy and the Rules having regard to the prior use and fame of the

Complainant’s trademarks, and, it submits, “the Complainant’s widely reported subscription service ‘Meta

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Verified’ was introduced on 19 February 2023, i.e., less than two months before the [Disputed] Domain

Name was registered. Noting the composition of the Domain Name and the timing of its registration, the

Complainant submits that the Respondent could not credibly argue that it did not have the Complainant’s

trademarks in mind when registering the [Disputed] Domain Name.” The Complainant also argues that “the

Respondent previously used the [Disputed] Domain Name to point to a website featuring the Complainant’s

famous logo and purportedly offering for download a Chrome Extension dedicated to the Complainant’s

‘Meta Verified’ service. In light of the composition of the [Disputed] Domain Name and noting the nature of

the Respondent’s websites, Internet users were likely to be misled into believing that the Respondent’s

websites were affiliated with or somehow otherwise endorsed by the Complainant in connection with its

‘Meta Verified’ service.”

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant has the burden of proving the following:

(i) that the Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which

the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

(iii) that the Disputed Domain Name has been registered and is being used in bad faith.

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 of WIPO Panel Views on

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

Based on the available record, the Panel finds 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 Complainant has

produced sufficient evidence to demonstrate that it has registered trademark rights in the mark META in

numerous countries.

Turning to whether the Disputed Domain Names are identical or confusingly similar to the META trademark,

the Panel observes that the Disputed Domain Name is comprised of: (a) the word “buy”; (b) followed by an

exact reproduction of the Complainant’s trademark META; (c) followed by the word “verified”; (d) followed

by the gTLD “.com”.

It is well established that the gTLD used as part of a domain name is generally disregarded under the first

element confusing similarity test. WIPO Overview 3.0, section 1.11.1. The relevant comparison to be made

is with the second-level portion of each of the Disputed Domain Name, specifically: “buymetaverified”.

The Panel finds 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.

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Although the addition of the words “buy” and “verified” 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.

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 Disputed 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 Disputed Domain Name

(although the burden of 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.

The Panel finds that the combined term “buymetaverified” has no ordinary meaning other than in connection

with the Complainant. Furthermore, there is no indication that the Respondent was commonly known by the

terms “buymetaverified” prior to registration of the Disputed Domain Name and the Complainant also

contends that it has not licensed, permitted, or authorized the Respondent to use the trademark META. The

Panel also notes that the composition of the Disputed Domain Name carries a risk of implied affiliation (see

WIPO Overview 3.0, section 2.5.1).

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.

The Panel notes the evidence that the Disputed Domain Name at one point resolved to a Google Drive

webpage where malware may be downloaded supports the Complainant’s submission that this does not

represent a bona fide offering of goods or services, or a legitimate noncommercial or fair use, given the

substantial reputation and goodwill of the Complainant’s mark or capacity to otherwise mislead Internet

users.

Panels have held that the use of a Disputed Domain Name for illegal activity – here, impersonation of the

Complainant, distributing malware for the purpose of phishing, and passing off, can never confer rights or

legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1.

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.

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Paragraph 4(b) of the Policy sets out a list of non-exhaustive circumstances that may indicate that a domain

name was registered and used in bad faith, but other circumstances may be relevant in assessing whether a

respondent’s registration and use of a domain name is in bad faith. WIPO Overview 3.0, section 3.2.1.

In the present case, the Panel finds that the evidence in the case shows the Respondent registered and has

used the Disputed Domain Name in bad faith.

On the issue of registration, given the composition of the Disputed Domain Name, and the well-known nature

of the Complainant’s trademark, the Panel is satisfied that the Respondent targeted the Complainant when it

registered the Disputed Domain Name (see Meta Platforms, Inc. and Meta Platforms Technologies, LLC v.

Libin, WIPO Case No. D2022-4996 (“Complainant’s META Mark quickly became well known throughout the

world”); Meta Platforms, Inc., Meta Platforms Technologies, LLC v. 叶昭龙 (Ye Zhao Long), WIPO Case No.

D2022-4981 (“the Complainant’s well known META and QUEST trademarks”); Meta Platforms, Inc. v.

Carlos, WIPO Case No. D2023-4487 (“[t]he Panel notes in particular the distinctiveness and fame of the

Complainant’s FACEBOOK and META trademarks”)).

The Complainant’s mark is so widely known, the Panel is prepared to infer from its combination with the term

“verified” that the Respondent knew, or should have known, that its registration would be identical or

confusingly similar to the Complainant’s trademark (see WIPO Overview 3.0, section 3.2.2).

On the issue of use, the Complainant’s evidence is that at one point the Disputed Domain Name resolved to

a Google Drive webpage where, the Complainant alleges, “the purported Chrome Extension for the “Meta

Verified” service offered for download via the [Disputed] Domain Name may be used to harvest personal

data or to spread malware, for phishing or for other unauthorized or illegal activities”. In line with prior UDRP

panel decisions, the Panel finds that the use of a Disputed Domain Name to distribute software or malware

products supports a finding of bad faith. WIPO Overview 3.0, section 3.3.

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 <buymetaverified.com> be transferred to the Complainant.

/Nicholas Weston/ Nicholas Weston

Sole Panelist

Date: February 20, 2024