February 15, 2022
Meta files a UDRP complaint to protect the Metaverse
Meta files a UDRP complaint to protect the Metaverse

Meta filed a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) for 16 domain names including <facebookblockchain.com>, <facedigicoin.com> and <facecryptobook.com>. The decision showcases the attractive benefits of the UDRP to brand owners when faced with multiple infringing domains, in addition to the rising popularity of decentralised terms in the traditional DNS ecosystem.

Complaints must satisfy three limbs of the UDRP to warrant a transfer of the disputed domain names:

  • The domain name(s) are confusingly similar to the registered trade mark of the complainant;
  • The respondent lacks rights or legitimate interests in the domain name(s); and
  • The domain name(s) are registered and used in bad faith

The 16 domain names were registered between January and March 2021, resolving either to the Respondent’s own re-sale page, third-party resale pages, or another website of the Respondent, <quranholybook.com>, requesting donations on the webpage. Meta argued a lack of bona fide goods and services at the domain names, proving a pattern of bad faith conduct by the Respondent. Meta requested the transfer of the 16 domain names.

The Respondent argued that Australia – the territory of the business of the Respondent – was not a mutual jurisdiction for domain name disputes under ICANN. In addition to arguing that the domain names were not confusingly similar, nor registered or used in bad faith, the Respondent argued a willingness to transfer to the domain names before the Complaint was filed.

The Panelist found the domain names to be confusingly similar to Meta’s FACE and FACEBOOK marks, as well as lacking legitimate rights or interests in the domain name. Several of the domains increased in their sale price from USD 250 to USD 282,575 throughout the duration of the domain’s lifecycle. Combining this with the use of pay-per-click advertising at the domain names, the Panelist found bad faith registration and use, ordering a transfer of the domain names to the Complainant.

Meta have had success with UDRP filings since their prominent company name change. A recent case involving the FACEBOOK mark and their planned cryptocurrency ‘Libra’ in <librafbook.com> (WIPO D2021-3712) has proven the distinctive character of the mark, as well as highlighting the threshold of the “recognizability” test used by Panelists.

The decision raises some key points when filing UDRP complaints:

  • An established domain monitoring programme heavily benefits identifying domains that are registered within in a short space of time.
  • Keywords associated with Non-Fungible Tokens (NFTs), Decentralised Finance (DeFi) and cryptocurrency should be considered when keeping a programme relevant in the changing digital landscape.
  • UDRPs are not limited by the number of domain names included within a complaint. Complaints have included 1,500 domains in the past (see Inter-Continental Hotels Corporation, Six Continents Hotels, Inc. v. Daniel Kirchhof, WIPO Case No. 2009-1661).
  • UDRP case law, such as General Electric Company v. Marketing Total S.A WIPO Case No. D2007-1834), has established arguments for a multiple domain name complaint, even when registrant information is not identical.Awareness of these factors can improve efficiency and reduce the cost of filing per domain, particularly in a post-GDPR era. Our blog post by Jixuan Si, UDRP Consolidation Request? How to Increase the Impact of UDRP Proceedings with Lower Costs’ summarises this in detail.

Meta has filed 22 complaints since their change of name. With Facebook, Instagram and WhatsApp featuring as recurrent complainants, the trend is expected to continue in 2022 with Meta. Brand owners must remain aware of decentralised trends and factor them into traditional domain strategies to detect issues before they mature, such as updating a keyword list in a monthly domain watch.

With the exponential increase in NFTs and the rise in unregulated blockchain domains (e.g., .nft, .bitcoin and .eth), we are seeing more brand owners revisit their domain name strategies and enforcement policies. An online brand enforcement programme, such as those managed by the Online Brand Enforcement team here at Stobbs, can assist with improving your brand’s online health.

Online Brand Enforcement /  Domains /  Tech /  Finance /  Disputes

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