The Complainant is Facebook, Inc. of Menlo Park, California, United States of America, represented by Hogan Lovells (Paris) LLP, France.
The Respondents are WhoisGuard Protected, WhoisGuard, Inc. of Panama / Md Nazmul Hasan of Dhaka, Bangladesh / Addie Raajpoot of Lahore, Punjab, Pakistan. 2. The Domain Names and Registrar
The disputed domain names and (the “Disputed Domain Names”) are registered with NameCheap, Inc. and GoD, LLC (the “Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2019. On February 18, 2019 and on February 28, 2019, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On February 18, 2019 and February 28, 2019, the Registrars 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 and contact information in the Complaint. The Center sent an email communication to the Complainant on February 22, 2019 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 February 27, 2019.
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 March 6, 2019. On March 20, 2019, the Complainant requested suspension of the proceedings. On the same date, the Center suspended the proceedings. On March 29, 2019, the Complainant requested reinstitution of the proceedings and filed a further amended Complaint. On April 2, 2019, the Center reinstituted the proceedings. In accordance with the Rules, paragraph 5, the new due date for Response was April 8, 2019. The Center received informal email communications from the Respondent (see below as to the identity of the Respondent) on March 8, March 12, March 15, 2019. No formal response was received. Accordingly, the Center notified the Parties about the commencement of the panel appointment process on April 9, 2019.
The Center appointed Nick J. Gardner as the sole panelist in this matter on April 18, 2019. 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. 4. Factual Background
The relevant facts are straightforward and can be summarized as follows.
The Complainant is the well-known provider of online social networking services headquartered in Menlo Park, California, Unites States. The Complainant’s service was originally developed in 2004 and since then has expended so that it has (as of September 2018) some 2.27 billion monthly active users.
The Complainant trades as FACEBOOK and also uses a shorthand version of its name in the form FB, which is registered as a trademark in various jurisdictions around the world (for example, European Union Trade Mark No. 008981383, FB, registered on August 23, 2011 and United States Trademark No. 4782235, FB, registered on July 28, 2015). This trademarks are referred to in this decision as the FB trademark.
The Disputed Domain Name was registered on June 23, 2018, and the Disputed Domain Name was registered on June 27, 2018.
At the time the Complaint was filed the Disputed Domain Names each resolved to websites with an identical layout, purporting to offer subscriptions to data-scraping services targeting Facebook users' data. The websites prominently displayed the heading “World’s First All-In-One Facebook Tool: Complete Management, Mass Automation, Mass Extraction & Engagement Suite”. Both of the Disputed Domain Names made use of the same IP address. The websites offered various monthly pricing plans comprising alternate packages of the Respondent’s services, ranging from USD 77-500.
The Complainant’s terms and conditions expressly prohibit automated extraction of Facebook user data (see - ). Notably:
“1. These terms govern your collection of data from Facebook through automated means, such as through harvesting bots, robots, spiders, or scrapers (‘Automated Data Collection’), as well as your use of that data.
2. You will not engage in Automated Data Collection without Facebook’s express written permission.
[...]
5. You agree that you will not sell any data collected through, or derived from data collected through, Automated Data Collection.” 5. Parties’ Contentions A. Complainant
The Complainant says that the Disputed Domain Names are each confusingly similar to the FB trademark in that they each simply add descriptive terms to that trademark.
The Complainant says that the Respondent has no rights or legitimate interests in the term “FB”.
The Complainant says that the Respondent’s registration and use of the Disputed Domain Names is in bad faith. It says each of the Disputed Domain Names was chosen with knowledge of the Complainant’s name and trademark. It says that each of the Disputed Domain Names have been used in connection with websites purporting to offer subscriptions to data-scraping services of the Complainant’s users’ profiles. Any such data could plausibly be used for phishing, or other illicit online activity. Moreover, such activity, being a threat to the Complainant’s users’ privacy, is expressly prohibited by the Complainant’s terms and conditions. It also says that the use of aliases and the inclusion of inaccurate or incomplete WhoIs information may be seen as further evidence of the Respondent’s bad faith. B. Respondent
No formal Response has been filed. 6. Discussion and Findings 6.1 Preliminary Matters
This is a case which is in formal terms brought against two Respondents, one for each of the Disputed Domain Names.
A complaint is allowed to proceed with multiple respondents when the domains or websites are under common control. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.11.2 where it states: “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.”
With reference to the above, the Panel agrees with the Complaint that the Disputed Domain Names are likely under common control given they each make use of the same IP address (see above). Furthermore, since the Disputed Domain Names shared the same website content it is highly likely that both of the Disputed Domain Names are being controlled by a single entity, and thus are subject to common control. See Eli Lilly and Company v. Darren K. Headley et al.,WIPO Case No. D2013-1303 and the cases therein cited. Accordingly the Panel considers the above criteria are met.
The Panel further considers it is able to proceed to determine this Complaint and to draw inferences from the Respondent’s failure to file a formal Response. While the Respondent’s failure to file a formal Response does not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default (see, e.g., Verner Panton Design v. Fontana di Luce Corp,WIPO Case No. D2012-1909).
The Panel also notes this is a case where one Respondent (“WhoisGuard Protected, WhoisGuard, Inc.”) appears to be a privacy or proxy service.
The Panel in this case adopts the approach of most UDRP panels, as outlined in the WIPO Overview 3.0 at section 4.4.5, as follows:
“In all cases involving a privacy or proxy service and irrespective of the disclosure of any underlying registrant, the appointed panel retains discretion to determine the respondent against which the case should proceed.
Depending on the facts and circumstances of a particular case, e.g., where a timely disclosure is made, and there is no indication of a relationship beyond the provision of privacy or proxy registration services, a panel may find it appropriate to apply its discretion to record only the underlying registrant as the named respondent. On the other hand, e.g., where there is no clear disclosure, or there is some indication that the privacy or proxy provider is somehow related to the underlying registrant or use of the particular domain name, a panel may find it appropriate to record both the privacy or proxy service and any nominally underlying registrant as the named respondent.”
In the present case the Panel considers the substantive Respondent or Respondents to be Md Nazmul Hasan of Dhaka, Bangladesh / Addie Raajpoot of Lahore, Pakistan. The Panel will for convenience adopt the approach the Complainant has used and refer to the “Respondent” in the singular but that term should be understood to refer to both identified persons if they are in fact two separate persons. 6.2 Substantive Matters
To succeed, in accordance with paragraph 4(a) of the Policy, the Complainant must satisfy the Panel in relation to each Disputed Domain Name that:
(i) the Disputed Domain Name is identical with or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name;
(iii) the Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has rights in the FB trademark. The Panel finds that each of the Disputed Domain Names is confusingly similar to this trademark. Previous UDRP panels have consistently held that domain names are identical or confusingly similar to a trademark for purposes of the Policy “when the domain name includes the trademark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662). It is established that, where a mark is the distinctive part of a disputed domain name, the disputed domain name is considered to be confusingly similar to the registered mark (DHL Operations B.V. v. DHL Packers,WIPO Case No. D2008-1694).
It is also established that the addition of a descriptive or geographic term (such as here “leadscraper” and “mailextractor”) to a disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman,WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does not prevent a finding of confusing similarity under the first element (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
It is also well established that the generic Top-Level Domain (“gTLD”), in this case “.com”, does not affect the Disputed Domain Name for the purpose of determining whether it is identical or confusingly similar. See, for example, Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
Accordingly, the Panel finds that each of the Disputed Domain Names is confusingly similar to the Complainant’s trademark and hence the first condition of paragraph 4(a) of the Policy has been fulfilled. B. Rights or Legitimate Interests
The Panel finds the FB trademark is, on the evidence before the Panel, a term in which the Complainant has developed a significant reputation.
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that a respondent has rights or legitimate interests in a domain name:
(i) before any notice to the respondent of the dispute, use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
None of these apply in the present circumstances. The Complainant has not authorised, licensed, or permitted the Respondent to register or use either of the Disputed Domain Names or to use the FB trademark. The Complainant has prior rights in the FB trademark which precede the Respondent’s acquisition of each of the Disputed Domain Names. The Complainant has therefore established a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Names and thereby the burden of production shifts to the Respondent to produce evidence demonstrating rights or legitimate interests in respect of the Disputed Domain Names (see, for example, Do The Hustle, LLC v. Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel finds that the Respondent has failed to produce any evidence to establish his rights or legitimate interests in either of the Disputed Domain Names. Accordingly the Panel finds the Respondent has no rights or any legitimate interests in the Disputed Domain Names and the second condition of paragraph 4(a) of the Policy has been fulfilled. C. Registered and Used in Bad Faith
In the present circumstances, the distinctive nature of the FB trademark, and the evidence as to the extent of the reputation the Complainant enjoys in the FB trademark, and the fact that the Disputed Domain Names combines the FB trademark with descriptive terms suggesting a service directed at the Complainant’s social networking service and the lack of any explanation from the Respondent as to why he registered the Disputed Domain Names lead the Panel to conclude the registration and use were in bad faith.
The Panel concludes that the Respondent chose to register domain names comprising the Complainant’s trademark combined with the descriptive words “leadscraper” and “mailextractor”. The evidence before the Panel does not provide sufficient material for the Panel to reach a conclusion on exactly what the Respondent’s intention was in so doing. Whilst the websites linked to the Disputed Domain Names purported to offer a service enabling the Complainant’s user data to be extracted it is not clear on the evidence whether or not this was a bona fide offer. Under paragraph 4(b) of the Policy a non-exhaustive list of factors evidencing registration and use in bad faith comprises:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
In the present circumstances factor (ii) is not applicable but the Panel cannot clearly determine which, if any, of the other factors may apply. It seems likely that factor (iv) applies. However, the Panel notes that in any event this list is non exhaustive and takes the view that the acquisition of the Disputed Domain Names with knowledge of the Complainants’ trademark is itself evidence of bad faith registration – see The Channel Tunnel Group Ltd. v. John Powell,WIPO Case No. D2000-0038. Further as the Complainant points out the services the Respondent is purporting to offer are themselves in breach of the Complainant’s terms and conditions which is further evidence of bad faith registration and use. This is particularly so given that the Respondent has not filed a formal Response and hence has not availed himself of the opportunity to present any case of good faith that he might have. The Panel infers that none exists.
Accordingly, the Panel finds that each of the Disputed Domain Names has been registered and is being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled 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 and be transferred to the Complainant.
Nick J. Gardner
Sole Panelist
Date: April 26, 2019
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