Complainant is Facebook Inc. of Menlo Park, California, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Above.com Domain Privacy of Beaumaris, VIC, Australia / Belcanto Investment Group Limited of Fort Charles, Charlestown, Nevis, Saint Kitts and Nevis.
The disputed domain name <fbdataminer.com> (the “Disputed Domain Name”) is registered with Above.com, Inc. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 23, 2018. On October 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On October 25, 2018, 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, and contact information in the Complaint. The Center sent an email communication to Complainant on October 25, 2018, 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 October 26, 2018.
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 November 2, 2018. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 23, 2018.
The Center appointed Roberto Bianchi as the sole panelist in this matter on December 3, 2018. 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, founded in 2004, is a leading provider of online social networking services. According to the Complaint, Facebook has more than 1.94 billion monthly active users and 1.28 billion daily active users on average worldwide. According to Alexa, Complainant’s website “www.facebook.com” currently is the third most visited website in the world. Facebook is also available for mobile devices, with 1.74 billion mobile monthly active users and 1.15 billion mobile daily active users.
Complainant owns registrations tor the FB trademark in various jurisdictions, including the following:
- US trademark FB, Reg. No. 4659777, for promoting the goods and services of others on the Internet, in International Class 35, registered on December 23, 2014 (first use in commerce in April 2014);
- Chilean trademark FB, Reg. No. 940863, for services of social introduction and creation of contacts networks in International class 45, registered on December 20, 2011;
- Mexican trademark FB, Reg. No. 1254929, for services in International Class 45, registered on November 30, 2011; and
- European Union trademark FB, Reg. No. 008981383, for social networking services in International Class 45, registered on August 23, 2011.
Complainant also owns several domain names consisting of the term “FB”, including <fb.com>, <fb.am>, <fb.asia>, <fb.bs>, <fb.co>, <fb.fr>, <fb.im>, <fb.ie>, <fb.me>, <fb.pe>, <fb.pt>, <fb.com.pt>, <fb.lk>, <fb.uk>, and <fb.co.uk>.
The Disputed Domain Name was registered on May 11, 2018.
Until recently, the Disputed Domain Name resolved to a website advertising “FB Data Miner” or “Facebook Data Miner”, described therein as an extension for the Chrome browser that extracts data from a Facebook page, group or profile into an Excel CSV file. Currently, the Disputed Domain Name resolves to a website displaying under the legend “Buy This Domain”, the following disclaimer: “The Sponsored Listings displayed above are served automatically by a third party. Neither the service provider nor the domain owner maintain any relationship with the advertisers. In case of trademark issues please contact the domain owner directly (contact information can be found in whois).” (However, no such listings are displayed on the website.)
Complainant contends as follows:
The Disputed Domain Name is identical or confusingly similar to Complainant's FB trademarks. The Disputed Domain Name incorporates Complainant’s FB trademark in its entirety with the addition of the term “data miner”. This addition does not prevent but rather reinforces the confusing similarity with Complainant’s FB trademark, as these terms are frequently associated with Facebook and its millions of users worldwide. In any event, Complainant’s trademark is still recognized within the Disputed Domain Name. The addition of the suffix “.com” does not diminish the confusing similarity with Complainant’s trademark
Respondent has no rights or legitimate interests in the Disputed Domain Name. Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy. Respondent is not a licensee of Complainant, nor has it been otherwise allowed by Complainant to make any use of its FB trademark, in a domain name or otherwise.
Respondent cannot assert that, prior to any notice of this dispute, it was using, or had made demonstrable preparations to use, the Disputed Domain Name in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy. The Disputed Domain Name is currently redirecting to a parking page containing various sponsored links. Such use of the Disputed Domain Name to attract Internet users, who may seek information on the tools for extracting personal data from Facebook users, to a parking page comprising commercial links does not represent a bona fide offering of goods or services. Respondent is clearly attempting to mislead Internet users as to the source of the website and thus capitalize on the reputation and goodwill of Complainant’s trademarks.
Respondent cannot conceivably claim that it is commonly known by the Disputed Domain Name, in accordance with paragraph 4(c)(ii) of the Policy, given the notoriety surrounding the FB trademark and its exclusive association with Complainant. According to Complainant’s research, Respondent has not secured or tried to secure any trademark in the term FB around the world. Nor can Respondent assert that it has made or is currently making a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain misleadingly to divert consumers pursuant to paragraph 4(c)(iii) of the Policy. The use of the Disputed Domain Name to redirect to a parking website containing sponsored links cannot be considered as noncommercial use. Furthermore, the fact that the Disputed Domain Name falsely suggests affiliation with Complainant by incorporating Complainant’s FB trademark so to confuse Internet users will generally exclude any possible fair use. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0.”), sections 1.9 and 2.5.
The Disputed Domain Name was registered and is being used in bad faith. Complainant's FB trademark is highly distinctive and famous throughout the world, having rapidly acquired considerable goodwill and renown worldwide, and has been continuously and extensively used since 2004. It would be inconceivable for Respondent to argue that it did not have knowledge of Complainant's FB trademark at the time of registration of the Disputed Domain Name in 2018. Complainant therefore submits that Respondent registered the Disputed Domain Name in full knowledge of Complainant’s rights, which constitutes strong evidence of bad faith.
Complainant further submits that the language “Buy the Domain” prominently displayed both on the parking page associated with the Disputed Domain Name and on the registrar’s webpage dedicated to the resale of the Disputed Domain Name (See Annex 14 to the Complaint) clearly suggests that Respondent registered the Disputed Domain Name primarily for the purpose of reselling it for a sum greater than its out-of-pocket costs related to the registration of the Disputed Domain Name, which constitutes bad faith as per paragraphs 4(b)(i) of the Policy.
In addition, Respondent has engaged in a pattern of conduct within the meaning of paragraph 4(b)(ii) of the Policy by registering numerous domain names infringing Complainant’s and other third parties’ trademark rights for the purpose of preventing trademark owners from reflecting their trademarks in corresponding domain names. Given Respondent’s knowledge of Complainant’s rights at the time of registration, the Disputed Domain Name could simply not have been chosen by Respondent for any reason other than to capitalize on Complainant’s goodwill and reputation, in order to increase the number of visitors to the parking page containing sponsored links.
The website at the Disputed Domain Name contains advertising links for services purportedly allowing Internet users to carry out data scraping activities (Annex 14 to the Complaint). It is very likely that such services could be used for harvesting personal data. Facebook’s terms and conditions prohibit the automated extraction of Facebook user data (Annex 25 provides a screen capture of Facebook's terms prohibiting the data collection using automated means). The display of these sponsored links on a website associated with Complainant’s FB trademark is therefore not only detrimental to Complainant’s reputation but promotes activities that are against Facebook’s terms and conditions and puts Internet users’ privacy and security at risk. This therefore constitutes strong evidence of bad faith.
Complainant underlines that the display of a disclaimer on the parking page to which the Disputed Domain Name is redirecting shall not prevent a finding of bad faith, as Respondent is responsible for the content appearing on the website associated with the Disputed Domain Name even though the sponsored links are in fact generated by a third party.
The fact that Respondent has deliberately chosen to conceal its identity by means of a privacy protection service is another strong indication of Respondent’s intent to use the Disputed Domain Name in a way that may be abusive or otherwise detrimental to Complainant and its rights. Given Complainant’s strong reputation worldwide, the sponsored links hosted on the parking page, the purported data scraping services to which some links redirect and even the cyberflight further to Complainant’s cease and desist letter), there is no reason why Respondent would need to protect its identity by means of a privacy shield other than to block or intentionally delay disclosure of its true identity.
Given Complainant’s strong reputation and the nature of the Disputed DomainName, which is confusingly similar to Complainant’s trademark, there cannotbe any actual or contemplated good faith use of the Disputed Domain Name as this would invariablyresult in misleading diversion and taking unfair advantage of Complainant’s rights. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Respondent did not reply to Complainant’s contentions.
By submitting printouts taken from the respective official trademark databases, Complainant has shown to the satisfaction of the Panel that it has trademark rights in the FB trademark in various jurisdictions. See section 4 above.
The Panel notes that in the Disputed Domain Name the FB mark is incorporated with the addition of the term “data miner”. The generic top level domain “.com” is also added. In the view of the Panel, since the term “data miner” refers to a technique allowing to extract personal and other data from the contents shown on Facebook, the reference directs the attention exclusively to Complainant’s mark, thus producing an impression of confusing similarity with Complainant’s mark. Therefore the Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s mark FB.
Complainant states it has not granted Respondent any license or authorization to make any use whatsoever of its FB trademark in the Disputed Domain Name or otherwise. Complainant also contends that the Disputed Domain Name is currently redirecting to a parking page containing sponsored links to attract Internet users interested in tools for extracting personal data from Facebook users. Since Respondent is clearly attempting to mislead Internet users as to the source of the website and thus capitalize on the reputation and goodwill of Complainant’s trademarks, this use is not a bona fide offering of goods or services under paragraph 4 (c)(i) of the Policy. Furthermore, the Disputed Domain Name falsely suggests affiliation with Complainant by incorporating the FB trademark so to confuse Internet users. This excludes any possible legitimate noncommercial or fair use, without intent for commercial gain to misleadingly divert consumers, pursuant to paragraph 4(c)(iii) of the Policy. Further, says Complainant, Respondent cannot conceivably claim to be commonly known by the Disputed Domain Name, given the notoriety of the FB trademark and its exclusive association with Complainant. Lastly, according to Complainant’s research, Respondent has not registered any mark in the term FB.
In the Panel’s opinion, the available evidence supports Complainant’s contentions. According to the relevant WhoIs data, Respondent’s name is Belcanto Investment Group Limited, and there is no evidence that it is called or known – commonly or otherwise – by the Disputed Domain Name, which discards the application of Policy paragraph 4(c)(ii).
Complainant, by submitting a printout from the Wayback Machine at “www.archive.org”, also has shown that on October 4, 2018, the Disputed Domain Name resolved to a website advertising a “FB Data Miner” or “Facebook Data Miner”, an extension for the Chrome browser that extracts data from a Facebook page, group or profile into an Excel “.csv” file. Annex 11 to the Complaint. Thus, Respondent is attempting to attract Internet users, presumably looking for Complainant or its FB products or services to market a third-party application or extension for the Chrome browser. In the view of the Panel, this is neither a bona fide use pursuant to Policy paragraph 4(c)(i) nor a legitimate noncommercial or fair use of the Disputed Domain Name, without intent for commercial gain to misleadingly divert consumers, pursuant to Policy paragraph 4 (c)(iii). Thus, the Panel is satisfied that Complainant made a prima facie case that Respondent lacks any rights or legitimate interests in the Disputed Domain Name.
In absence of any explanation or argument by Respondent, the Panel finds that Respondent does not have any rights or legitimate interests in the Disputed Domain Name.
Complainant has shown that its registrations for the FB trademark predate the registration of the Disputed Domain Name by several years. See section 4 above. In addition, Complainant has shown that based on an extended use, its FB mark enjoys considerable renown. Lastly, the very use of the FB mark in the “FB Data Miner” application advertised on the website at the Disputed Domain Name clearly shows that Respondent knew of Complainant, its FB trademark, products and services, and targeted them, at the time of registering the Disputed Domain Name. In the circumstances of this case, this is evidence of registration in bad faith.
In addition, Complainant has shown that Respondent was the respondent in numerous prior UDRP cases where the domain names at issue incorporated third-party marks. The Panel notes that in all these cases the panels ordered the transfer of the domain names to the trademark owners. See IG Group Limited v. Above.com Domain Privacy / Belcanto Investment Group Limited, WIPO Case No. D2013-0177; LEGO Juris A/S v. Above.com Domain Privacy / Belcanto Investment Group Limited, WIPO Case No. D2013-0626; Banco Bradesco S/A v. Belcanto Investment Group Limited, WIPO Case No. D2013-1048; Tetra Laval Holdings & Finance S.A. v. Above.com, Domain Privacy / Belcanto Investment Group Limited, WIPO Case No. D2013-2200; and, Aetna Inc. v. Above.com Domain Privacy / Belcanto Investment Group Limited, WIPO Case No. D2018-0487. In other words, Respondent is a serial cybersquatter that has engaged in a pattern of registering domain names in order to prevent the owners of a trademark from reflecting it in a corresponding domain name. This pattern of conduct authorizes the Panel to conclude that Respondent registered the Disputed Domain Name in bad faith pursuant to Policy paragraph 4(b)(ii).
As shown in section 6.B above, Respondent has been using the Disputed Domain Name to advertise an application called “FB Data Miner”. In the view of the Panel, by using the Disputed Domain Name in this manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with Complainant’s FB mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location. This is a circumstance of registration and use in bad faith pursuant to Policy paragraph 4(b)(iv).
Lastly, on December 13, 2018, the Panel connected his browser to the Disputed Domain Name, which resolved in a website consisting of a single page stating, under the legend “Buy This Domain”, the following: “The Sponsored Listings displayed above are served automatically by a third party. Neither the service provider nor the domain owner maintain any relationship with the advertisers. In case of trademark issues please contact the domain owner directly (contact information can be found in whois).” The Panel notes that no such listings were actually displayed on the website. This means that Respondent’s only contemplated use for the Disputed Domain Name is either creating confusion with Complainant’s mark in order to market a data mining application or extension, presumably for profit, or selling it. Lastly, the Panel considers that Respondent’s failure to provide any explanation for its registration and use of the Disputed Domain Name is an element strongly suggesting bad faith.
For all the above, the Panel concludes that the Disputed Domain Name was registered and is being used in bad faith.
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 <fbdataminer.com> be transferred to Complainant.
Roberto Bianchi
Sole Panelist
Date: December 17, 2018