Decisión del Panel Administrativo nº D2022-0725 of WIPO Arbitration and Mediation Center, April 27, 2022 (case Meta Platforms, Inc. v. Richard Dynas)

Resolution DateApril 27, 2022
Issuing OrganizationWIPO Arbitration and Mediation Center
DecisionTransfer
DominioGeneric Domains

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Meta Platforms, Inc. v. Richard Dynas

Case No. D2022-0725

1. The Parties

Complainant is Meta Platforms, Inc., United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.

Respondent is Richard Dynas, United States.

2. The Domain Names and Registrar

The disputed domain names [horizoncreator.com], [horizoncreators.com], [horizondiscover.com], [horizoneasy.com], [horizonengineer.com], [horizonexpand.com], [horizongirl.com], [horizonhomebuilder.com], [horizonmeeting.com], [horizonmultiverse.com], [horizonqueen.com], [horizonsex.com] and [horizonxxx.com] (the “Domain Names”) 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 March 2, 2022. On March 3, 2022, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On March 4, 2022, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on March 7, 2022, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on March 9, 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 Respondent of the Complaint, and the proceedings commenced on March 11, 2022. In accordance with the Rules, paragraph 5, the due date for Response was March 31, 2022. The Response was filed with the Center on March 11, 2022.

On March 22, 2022, Complainant submitted a Supplemental Filing. Respondent sent an email communication to the Center on March 22, 2022, objecting to Complainant’s Supplemental Filing. Respondent submitted a Supplemental Filing on March 25, 2022. Respondent then submitted additional Supplement Filings on April 14-17, 2022, while also submitting emails in which Respondent raised the prospect of settlement discussions with Complainant. In view of these submissions, the Panel issued Procedural Order 1, seeking Complainant’s response to Respondent’s April 14-17 submissions. Complainant submitted its Reply on April 21, 2022. Among other things, Complainant’s Reply confirms that Complainant has no interest in settlement discussions with Respondent. Finally, Respondent on April 21, 2022, submitted an email claiming that legal counsel for Complainant faces a conflict of interest because counsel is also a listed panelist for the Center.

The Center appointed Christopher S. Gibson as the sole panelist in this matter on March 23, 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.

Complainant requested that this case be allowed to proceed on the basis of a single consolidated Complaint for all the Domain Names based on multiple factors supporting the inference that the Domain Names are subject to common control. Respondent did not object to this request and, through his submissions, has confirmed that the Domain Names were all registered by Respondent.

4. Factual Background

Complainant is a United States social technology company that operates Facebook, Instagram, Meta Quest (formerly Oculus), Novi, Portal, and WhatsApp. Formerly known as "Facebook, Inc.", Complainant changed its name to "Meta Platforms, Inc." on October 28, 2021. Complainant's states that its focus is to bring the metaverse to life and help people connect, find communities, and grow businesses.[1]

Complainant has made investments to develop a strong presence online by being active on various social-media platforms. For instance, Complainant's official page on Facebook has over 72 million "likes". In addition, Complainant has 13.9 million followers on Twitter and 1.7 million on Instagram. Complainant states it has developed considerable reputation and goodwill worldwide in connection with a large number of goods and services, including, inter alia, the provision of a social virtual reality experience called "Horizon Worlds", where people can create and explore together. This collaborative platform, which was first announced in September 2019 under the name "Facebook Horizon", has an integrated game creation system for the Meta Quest virtual reality headsets.

Complainant has secured ownership of trademark registrations for HORIZON in jurisdictions around the world for use in connection with its Horizon products and services, including the following:

- United Kingdom Trademark No. 3499858, HORIZON, registered on September 18, 2020;

- Swiss Trademark Registration No. 758821, HORIZON, registered on February 2, 2021;

- Taiwanese Trademark Registration No. 02146118, HORIZON, registered on June 1, 2021;

- European Union Trademark No. 018252474, HORIZON, registered on June 15, 2021;

- Chinese Trademark Registration No. 47189601, HORIZON, registered on July 7, 2021; and

- Japanese Trademark Registration No. 6452202, HORIZON, registered on October 6, 2021.

Complainant provided evidence of media coverage in the days leading up to its name change from Facebook to Meta Platforms, including articles dating from October 19-20, 2021, where there was speculation that the new company name might include the word “horizon”, which Facebook had already been using for its virtual reality applications, such as “Horizon Worlds” and a version for workplace collaboration called “Horizon Workrooms”.

All the Domain Names were registered on either October 20 or 22, 2021. All of them redirect to a website at “www.dan.com”, where they have been offered for sale.

Respondent sent numerous unsolicited messages both to Complainant and Complainant's lawyers. Between October 26, 2021, and February 25, 2022, Respondent sent thirteen emails and one voice mail to Complainant, while also contacting Complainant's lawyers fifty-two times, by email and voice messages. Below are excerpts from several of the numerous emails that were sent by Respondent to Complainant and its lawyers:

October 26, 2021:

“Hello -

My name is Richard Dynas and I am the exclusive broker for MetaMultiverse.com. Cut your cost of acquisition by owning an exact match domain name.

We use Escrow for the security of our clients.

I also have some Horizon names for sale.”

November 3, 2021:

“I have some names that are perfect for Facebooks rebrand. I did not register these today, I just happen to own them.

I will sign an NDA to discuss and use a 3rd party if needed.

Lets have a conversation.”

November 4, 2021:

“Good morning. Just as an FYI - I have two Fortune 500 companies contacting me about all these names. One only wants the Meta and the other wants them all. I would like to sell them as a group but I would split them up.

I have not heard back from you if there is any interest, but I obviously can't hold these names. If I negotiate the price I need, it's first come first serve. If you decide you have an interest, I will give you the right of first refusal.”

December 7, 2021:

“Good afternoon. I just reached out via telephone and I believe I was cut off while transferring to your assistant.

There may have been a language barrier.

I want to apologize for contacting you so many times the past few days. I have other buyers with timelines. Meta and Horizon domain names are in demand right now and I have the best names on the market so I am getting many inquiries. I do not want to lose my chance at a sale.

Obviously the easiest path to sell these names is to Meta. I also think it is the most ethical. I pride myself on doing things the right way and not harming anyone.

I cant hold these names forever, that would be bad business on my end. I accept Crypto - Cash or Equity or a combination of all.

I only need to know if Meta has an interest. If they do not please let me know so I can sell the names off. You can unsubscribe at the bottom or send me a quick email.”

January 18, 2022:

“We have received an initial offer for some of the names. I was asked to take down MetaMultiverse.com down as we work on competitive pricing, and I have complied.

If you look at the companies that have jumped into this space, and who have bought other companies to bolster their presence, you will understand why I am attracting big buyers and big money. This space is on fire and its only in its infancy.

Does Meta have an interest? I cant turn down real offers versus a company that is just looking. I hope you understand.”

February 2, 2022:

“Please note, that I did not register these domains to target Facebook. I thought that they were attractive as they contain the generic word ‘Horizon’, which has a lot of use outside of Facebook. As you have indicated your concern, while I still believe I’m entitled to hold, develop, or sell these domain names to any party, I’m willing to transfer these names to you and forego any rights I may have in exchange for the nominal payment of $10,000 per domain name. I’ve consulted with legal counsel, but do not wish to escalate this and hope we can reach a good faith resolution. We can use escrow.com if this is something your client is amenable to doing.

If you have an interest in MetaMultiverse.com we can bundle all names in one package. This will include the...

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