Metaquest.autos, Metaquest.earth

The timeline behind metaquest.autos

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

ARBITRATION AND MEDIATION CENTER ADMINISTRATIVE PANEL DECISION Meta Platforms, Inc., and Meta Platforms Technologies, LLC v. Chad Domitrovich Case No. D2023-3984 1. The Parties The Complainants are Meta Platforms, Inc. (the “First Complainant” or “Meta”), United States of America (“United States”), and Meta Platforms Technologies, LLC (the “Second Complainant”), United States, represented by Hogan Lovells (Paris) LLP, France (hereinafter collectively referred to as the “Complainants”). The Respondent is Chad Domitrovich, United States. 2. The Domain Names and Registrar The disputed domain names <metaquest.autos> and <metaquest.earth> (the “Disputed Domain Names”) are registered with Squarespace Domains II LLC (the “Registrar”). 1 3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2023. On September 25, 2023, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Names. On September 26, 2023, 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 (Contact Privacy Inc. Customer 7151571251) and contact information in the Complaint. The Center sent an email communication to the Complainants on October 6, 2023, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Center sent another email communication to the Complainants on the same day, informing the change of the Registrar. The Complainants filed an amended Complaint on October 11, 2023. 1 The Complaint was filed identifying Google LLC (“Google”) as the registrar. On October 4, 2023, Google confirmed that on June 15, 2023, it entered into a purchase agreement with the current Registrar Squarespace Domains II LLC (“Squarespace”), in which Squarespace purchased all domain registrations and related customer accounts from Google. Google confirmed that both Google and Squarespace would comply with the UDRP and implement the Panel’s Decision in this proceeding. page 2 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 October 12, 2023. In accordance with the Rules, paragraph 5, the due date for Response was November 1, 2023. The Respondent did not submit a formal response, but sent several email communications to the Center between October 12 and November 1, 2023. The Center sent an email communication to the Parties regarding possible settlement on October 12, 2023, however, the Complainant requested the Center to proceeding with the case. Accordingly, the Center notified the commencement of panel appointment on November 2, 2023. Further email communications were received from the Respondent between November 2 and November 7, 2023. The Center appointed Lynda M. Braun as the sole panelist in this matter on November 14, 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. The Center received other email communications from the Respondent on November 28 and December 1, 2023. 4. Factual Background The First Complainant is a United States social technology company that is the owner of the trademark registrations for the META trademark, and operates, inter alia, Facebook, Instagram, Meta Quest (formerly “Oculus”), and WhatsApp. Formerly known as Facebook Inc., the First Complainant announced its change of name to Meta Platforms, Inc. on October 28, 2021. Its focus is to bring the metaverse to life, to help people connect, find communities and grow businesses, allow users to share immersive experiences with other people even when they cannot be together, and do things that they could not do in the physical world. The Second Complainant is the owner of trademark registrations for the QUEST trademark and is a wholly- owned subsidiary of the First Complainant. The Second Complainant initially operated under the corporate name of its predecessor in interest, Oculus VR, LLC, and then changed its name to Facebook Technologies, LLC in 2018. Acquired by the First Complainant in March 2014, Oculus rapidly acquired and developed considerable goodwill and renown worldwide in connection with its virtual reality (“VR”) software and apparatus. The First Complainant currently markets and offers its VR products (including the “Meta Quest” headsets) via its official website at “www.meta.com/quest”. The Complainants own numerous trademark registrations for META, QUEST, and META QUEST in the United States and numerous jurisdictions worldwide, including, but not limited to, the following: META, United States Trademark Registration No. 5548121, registered on August 28, 2018, and assigned to the First Complainant on October 26, 2021; META, Monaco Trademark Registration No. 2200039, registered on February 8, 2022; QUEST, United States Trademark Registration No. 6,279,215, registered on February 23, 2021; QUEST, European Union Trademark No. 017961685, registered on June 16, 2020; META QUEST, Australian Trademark Registration No. 2240066, registered on October 17, 2022; META QUEST, Hong Kong, China Trademark Registration No. 305847175, registered on August 11, 2022; and META QUEST, Indian Trademark Registration No. 5304464, registered on January 29, 2022. The aforementioned trademark registrations will hereinafter collectively be referred to as the “META, QUEST and META QUEST Marks”. page 3 The Disputed Domain Names were registered on July 5, 2023. At the time of filing of the Complaint, both Disputed Domain Names redirected to the First Complainant’s official website at “www.meta.com” and were also listed as available for sale on the domain name marketplace “www.dan.com”. At the time this Decision was drafted, the Disputed Domain Names resolved to error landing pages that stated “this site can’t be reached. metaquest.autos’s (metaquest.earth’s) server IP address could not be found”. On July 24, 2023, the Complainants’ lawyers, in an attempt to resolve the matter amicably, sent a cease- and-desist letter to the Respondent. The Complainants received no response. 5. Parties’ Contentions A. Complainants The following are the Complainants’ contentions: - the Complainants requested consolidation of the two Complainants in this proceeding; - the Disputed Domain Names are confusingly similar to the Complainants’ META, QUEST and META QUEST Marks; - the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; - the Disputed Domain Names were registered and are being used in bad faith; and - the Complainants seek the transfer of the Disputed Domain Names from the Respondent to the Complainants in accordance with paragraph 4(i) of the Policy. B. Respondent The Respondent did not submit a formal response to the Complainant’s contentions, although the Respondent sent multiple informal communications to the Center between October 12 and December 1, 2023, mainly expressing its willingness to transfer the disputed domain names to the Complainants (most likely at a cost). 6. Discussion and Findings 6.1 Preliminary Issue: Consolidation of the Complainants The Complainants submitted a request for consolidation in this proceeding in their Complaint. Pursuant to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11, the consolidation of multiple complainants filing a joint complaint against one or more respondents is subject to the discretion of the appointed panel. In assessing whether a complaint filed by multiple complainants may be brought against one or more respondents, the appointed panel should consider whether (i) the complainants have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants in a similar fashion; and (ii) it would be equitable and procedurally efficient to permit the consolidation. The Panel therefore submits that consolidation of the Complainants would be appropriate in the present proceeding and would not have any unfair prejudicial effect on the Respondent. Moreover, the Complainants have been the target of common conduct by the Respondent, who has engaged in bad faith registration and use of the Disputed Domain Names. Keeping this in mind, the Panel notes that the page 4 Complainants in the present administrative proceeding are affiliated since the Second Complainant is a wholly-owned subsidiary of the First Complainant. As such, the two entities have a sufficient common legal interest in the META, QUEST, and META QUEST Marks incorporated in the Disputed Domain Names. In addition, both Disputed Domain Names redirected to the same website; both Disputed Domain Names were registered on the same day, July 5, 2023, using the same Registrar; both Disputed Domain Names are associated with the same IP addresses, and both Disputed Domain Names include the Complainants’ META, QUEST and META QUEST Marks, as described above. Therefore, the Panel considers that it is fair and equitable under the circumstances of the case to permit consolidation as the Complainants are not only affiliated companies as parent and subsidiary, but also have common interests. Consequently, the Panel concludes that the Complainants may be consolidated and proceed with their Complaint. 6.2 Substantive Matters Paragraph 4(a) of the Policy requires that the Complainants prove the following three elements in order to prevail in this proceeding: (i) the Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and (iii) the Disputed Domain Names were registered and are being used in bad faith. A. Identical or Confusingly Similar Paragraph 4(a)(i) of the Policy requires a two-fold inquiry: a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark. The Panel concludes that in the present case, the Disputed Domain Names are confusingly similar to the META, QUEST, and META QUEST Marks as explained below. It is uncontroverted that the Complainants have established rights in the META, QUEST, and META QUEST Marks based on their several years of use, their fame worldwide, and their registered trademarks for the META, QUEST, and META QUEST Marks in the United States and jurisdictions worldwide. The registration of a mark satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case. As stated in section 1.2.1 of the WIPO Overview 3.0, “[w]here the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”. Thus, the Panel finds that the Complainants satisfied the threshold requirement of having rights in the META, QUEST, and META QUEST Marks. The Disputed Domain Names wholly incorporate the Complainants’ META QUEST Mark (omitting the space between the elements “meta” and “quest”) as well as a combination of its META and QUEST Marks, followed by the generic Top-Level Domain (“gTLD”) “.autos” or “.earth”. The presence of the META, QUEST, and META QUEST Marks in the Disputed Domain Names in their entirety is sufficient to establish confusing similarity between the Disputed Domain Names and the Complainants’ trademarks. WIPO Overview 3.0, section 1.7. Finally, the addition of a gTLD such as “.autos” or “.earth” in a domain name is a technical requirement. Thus, it is well established that such element may typically be disregarded when assessing whether a domain name is identical or confusingly similar to a trademark. See Proactiva Medio Ambiente, S.A. v. Proactiva, WIPO Case No. D2012-0182, and WIPO Overview 3.0, section 1.11.1. Thus, the Panel concludes that the Disputed Domain Names are identical or confusingly similar to the Complainants’ META, QUEST, and META QUEST Marks. page 5 Accordingly, the Panel finds that the first element of paragraph 4(a) of the Policy has been met by the Complainants. B. Rights or Legitimate Interests Under the Policy, a complainant has to make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, the respondent carries the burden of production of evidence that demonstrates rights or legitimate interests in the disputed domain name. If the respondent fails to do so, the complainant may be deemed to have satisfied paragraph 4(a)(ii) of the Policy. See WIPO Overview 3.0, section 2.1. There is no evidence in the record suggesting that the Respondent has rights or legitimate interests in the Disputed Domain Names. The Complainants have not authorized, licensed, or otherwise permitted the Respondent to use the Complainants’ META, QUEST, and META QUEST Marks. There is also no evidence that the Respondent is commonly known by the Disputed Domain Names or by any similar names, nor has the Respondent made any demonstrable preparations to use the Disputed Domain Names in connection with a bona fide offering of goods or services. Moreover, by using the Disputed Domain Names to redirect to the First Complainant’s official website, the Respondent has not used the Disputed Domain Names in connection with a bona fide offering of goods or services and, therefore, cannot establish rights or legitimate interests pursuant to paragraph 4(c)(i) of the Policy. Further, such use cannot constitute a legitimate noncommercial or fair use of the Disputed Domain Names as contemplated by paragraph 4(c)(iii) of the Policy. See WhatsApp LLC v. Domain Admin, Whois Privacy Corp., WIPO Case No. D2021-1117. Further, the Disputed Domain Names are also listed for sale on the domain marketplace website “www.dan.com”. See Turner Network Television, Inc. v. Expired Domain Resource****Maybe For Sale on Dynadot Marketplace**** c/o Dynadot, WIPO Case No. D2018-1036 (“The offering of the Domain Name for sale does not constitute a bona fide sale of goods or services or a legitimate noncommercial or fair use”). Moreover, the Disputed Domain Names are comprised of the Complainant’s META, QUEST and META QUEST Marks in their entirety, reflecting the name of the Complainants’ Meta Quest product. The Disputed Domain Names thus carry a high risk of implied affiliation with the Complainants and therefore cannot give rise to any legitimate claim of fair use. See WIPO Overview 3.0, section 2.5.1. In sum, the Panel finds that the Complainants have established an unrebutted prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Names. Accordingly, the Panel finds that the second element of paragraph 4(a) of the Policy has been met by the Complainants. C. Registered and Used in Bad Faith The Panel finds that based on the record, the Complainants have demonstrated the existence of the Respondent’s bad faith pursuant to paragraph 4(b) of the Policy. First, based on the circumstances here, the Panel concludes that the Respondent’s registration and use of the Disputed Domain Names had been done for the specific purpose of trading on the name and reputation of the Complainants and their META, QUEST, and META QUEST Marks. See Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, WIPO Case No. D2000-0847 (“[t]he only plausible explanation for Respondent’s actions appears to be an intentional effort to trade upon the fame of Complainant’s name and mark for commercial gain”). page 6 Second, with respect to the use of the Disputed Domain Names, the evidence submitted shows that the Disputed Domain Names redirected at first to the First Complainant’s official website, which constitutes bad faith pursuant to paragraph 4(b)(iv) of the Policy. A domain name marketplace website has also listed the Disputed Domain Names for sale. The Respondent’s listing of the Disputed Domain Names for sale via “www.dan.com” supports the inference that the Respondent registered the Disputed Domain Names with a view to selling them for valuable consideration in excess of its out-of-pocket costs in bad faith pursuant to paragraph 4(b)(i) of the Policy. Then, as of the writing of this Decision, the Disputed Domain Names redirect to an error landing page, which the Panel finds demonstrates the Respondent’s bad faith registration and use of the Disputed Domain Names under the doctrine of passive holding, particularly considering the Disputed Domain Names coincide with the Complainants’ well-known trademarks, and a lack of formal Response from the Respondent. See WIPO Overview 3.0, section 3.3. Third, the Panel finds it likely that the Respondent had actual knowledge of the Complainants’ META, QUEST and META QUEST Marks and targeted the Complainants when it registered the identical or confusingly similar Disputed Domain Names, demonstrating the Respondent’s bad faith. UDRP panels have found that the registration of a domain name that is confusingly similar to a well-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. See WIPO Overview 3.0, section 3.1.4; see also Carrefour SA v. Registration Private, Domains By Proxy, LLC / 3232 33232, WIPO Case No. D2022-1952. Moreover, the Complainants’ widely-publicized rebranding from “Oculus Quest” to “Meta Quest” was announced on October 28, 2021, prior to the Respondent’s registration of the Disputed Domain Names on July 5, 2023. When combined, the trademarks META, QUEST, and META QUEST in the Disputed Domain Names form a distinctive combination that is readily associated with the Complainants. As such, the Panel concludes that the Respondent could not credibly argue that it did not have knowledge of the Complainants’ trademarks when registering the Disputed Domain Names. Accordingly, the Panel finds that the third element of paragraph 4(a) of the Policy has been met by the Complainants. 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 <metaquest.autos> and <metaquest.earth> be transferred to the Complainants. /Lynda M. Braun/ Lynda M. Braun Sole Panelist Date: December 1, 2023

Source of record: WIPO . Reproduced for research; WIPO is the authoritative source.