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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mozilla Foundation and Mozilla Corporation v. Whois Privacy, Private by Design, LLC / Nguyen Vo, Dao Nguyen, Phuc Tran, Tran Vu, Phuc Nguyen, and Alex James

Case No. D2021-0310

1. The Parties

The Complainants are Mozilla Foundation and Mozilla Corporation, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.

The Respondents are Whois Privacy, Private by Design, LLC, United States / Nguyen Vo, Dao Nguyen, Phuc Tran, Tran Vu, Phuc Nguyen, and Alex James, Viet Nam.

2. The domain names and Registrar

The disputed domain names <firefoxadsbusiness.com>, <firefoxads.com>, <firefoxadsdigital.com>, <firefoxagencydigital.com>, <firefoxforads.com>, <firefoxforbusines.com>, <firefoxforbusiness.com>, <firefoxfordigital.com>, and <firefoxformarketing.com> are registered with Porkbun LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 1, 2021. On February 2, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with some of the disputed domain names. On February 2, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for some of 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 3, 2021, 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 5, 2021.

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 February 8, 2021. In accordance with the Rules, paragraph 5, the due date for Response was February 28, 2021. The Respondents did not submit any response. Accordingly, the Center notified the Respondents’ default on March 1, 2021.

On March 5, 2021, the Complainant submitted an unsolicited supplemental filing to the Center, requesting the addition of four domain names to the proceeding. On March 8, 2021, the Center informed the Complainant that the unsolicited supplemental filing would be brought to the Panel’s attention, upon appointment, for its consideration and to order further procedural steps, if any.

The Center appointed Mathias Lilleengen as the sole panelist in this matter on March 11, 2021. 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.

On March 11, 2021, the Panel instructed the Center to request a registrar verification and notify the amended Complaint against the Respondent in respect of the domain names <devfirefoxads.com>, <firefoxforbusiness.link>, <firefoxforsolution.com>, and <firefoxsolution.com> that have been added to the Complaint after the notification of the Complaint, cf. the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.12. On March 11, 2021, the Registrar disclosed registrant and contact information for the four domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on March 12, 2021, 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 March 17, 2021. On March 19, 2021, the Center formally notified the Respondents of the Complaint in respect of the four added domain names. The due date for Response was set to April 8, 2021. The Respondents did not submit any response.

4. Factual Background

The Complainant supports and develops open source software programs, and created the Firefox internet browser back in 1998, as part of the Netscape browser project. Since the foundation of the Mozilla project and the release of Mozilla 1.0 in 2002, the Complainant has acquired goodwill and notoriety in its company name, brands, logos and trademarks, including FIREFOX. The Firefox Internet browser is available in 89 languages, with more than 50 per cent of global Firefox users using non-English versions.

The Mozilla Foundation and the Mozilla Corporation have jointly filed the Complaint. The Mozilla Corporation is a subsidiary of the Mozilla Foundation. The Mozilla Foundation owns the trademarks on which the present Complaint is based, such as United States Trademark No. 2974321, registered on July 19, 2005, and European Union Trademark No. 3888617 registered on November 10, 2005.

The Complainant also owns numerous domain names that include the Complainant’s trademark, e.g., <firefox.com> registered in 1998, and the Complainant is active on different social media forums, such as Facebook, Twitter, and YouTube.

The disputed domain names were registered in the period from December 25, 2020 to January 10, 2021. The four domain names added to the Complaint after notification of the initial Complaint were registered on February 7, 2021 (<firefoxforsolution.com> and <firefoxsolution.com>), February 22, 2021 (<devfirefoxads.com>) and February 26, 2021 (<firefoxforbusiness.link>).

At the time of drafting the Decision, the disputed domain names resolved to parking pages or error pages of different kind.

5. Parties’ Contentions

A. Complainant

Complainant asserts that the disputed domain names are registered to the same person, or under the common control by connected parties, and thus that consolidation would be fair and equitable. It is based on the following:

(a) The disputed domain names are registered with the same privacy service.
b) The dispute domain names were registered between December 25, 2020 and February 26, 2021.
c) The disputed domain names are or used to be on the same web hosting server.
d) The disputed domain names are on the same four name servers.
e) The disputed domain names follow the same pattern with the trademark FIREFOX in addition to generic terms.
f) The disputed domain names target the Complainant's trademark.
g) At least two of the disputed domain names, <firefoxforbusiness.com> and <firefoxads.com>, previously pointed to the same fraudulent website set up to look like an advertising service run by the Complainant.
h) None of the disputed domain names (apart from <firefoxforbusiness.link>) are currently being actively used.
i) The disputed domain name <firefoxforbusiness.link> is currently being used to point to a web page displaying a “Privacy Policy” for the “Firefox for Business app”. There is a close resemblance between its name “Firefox for Business app” and the service purportedly proposed by the Respondent on the websites related to other disputed domain names included in the present Complaint <firefoxforbusiness.com> and <firefoxads.com>. The Respondent’s fraudulent scheme was advertised by the Respondent via a Facebook advertisement entitled “Firefox For Business”.
j) The disputed domain names indicate Vietnam as the registrant's country and "100000" as the postal code.
k) The disputed domain names indicate the same street address (02 Quang Trung).
l) The disputed domain names indicate the same email address (“developer.tiktokbussiness@[...].com”).
m) The disputed domain names indicate the same street address (02 Le Loi).
n) The street number in the registrant address is written with a “0” before it for all registrants.
o) The registrant city is spelled “Ha Noi” for all disputed domain names.
p) The disputed domain names were registered using a gmail email address.

The Complainant requests the domain names <devfirefoxads.com>, <firefoxforbusiness.link>, <firefoxforsolution.com>, and <firefoxsolution.com> to be added to the Complaint, as the said four domain names have been registered by the Respondent in an abusive pattern to frustrate the Complainant and the procedure. The Complainant submits that the Respondent will not be unfairly prejudiced by allowing the additional domain names to be included in the present proceeding, and the opposite would cause the Complainant to incur additional time and costs, and that would be contrary to the time- and cost-efficient nature of the Policy. Moreover, the Complainant contends that not to include all the domain names could potentially lead to varying decisions from separate proceedings.

The Complainant provides evidence of trademark registrations, and argues that all the disputed domain names incorporate the Complainant’s trademark FIREFOX in its entirety. The addition of the descriptive terms “for”, “business”, “busines”, “ads”, digital”, “agency”, “marketing”, “dev”, and “solution” does not prevent a finding of confusing similarity with the Complainant's FIREFOX trademark.

The Complainant asserts that the Respondent is not authorized to use the Complainant’s trademark. The Respondent cannot establish rights in the disputed domain names as it has not made any use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. On the contrary, the Complainant submits that the disputed domain names <firefoxforbusiness.com> and <firefoxads.com> have been used in a fraudulent scheme to purport the Complainant's official website.

The Complainant argues that the Respondent has intentionally attempted to attract Internet users, for commercial gain, by creating confusion with the Complainant’s trademark, evident from the use of the said two disputed domain names. Moreover, the Complainant further submits that the Respondent has engaged in a pattern of conduct within the meaning of paragraph 4(b)(ii) of the Policy by registering 13 disputed domain names abusing the Complainant's trademark rights. The fact that most of the disputed domain names currently are not resolving to active websites does not prevent a finding of bad faith, given the strength and renown of the Complainant's FIREFOX trademark. The Respondent’s use a privacy protection service to conceal its identity, further points to bad faith. Finally, the Complainant argues that one cannot conceive of any good faith use to which the domain names could be put by the Respondent.

B. Respondent

The Respondents did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Procedural matters

The Panel allows the addition of the four domain names <devfirefoxads.com>, <firefoxforbusiness.link>, <firefoxforsolution.com> and <firefoxsolution.com>. There is evidence of the Respondents attempting to frustrate the proceedings by registration of additional domain names subsequent to notification of the initial Complaint. The Panel has ordered, and the Center has executed, relevant notification of the proceeding as to those additional domain names so that the Respondent has had a fair opportunity to answer the claims made against it. The Respondents will not be unfairly disfavored by allowing the additional domain names to be included in the present proceeding, and the Respondents have been presented with an opportunity to argue even against the addition. See WIPO Overview 3.0, section 4.12.2.

The Complainant argues that the domain names are under the common control. The Panel has carefully examined the evidence in the case file and notes that the Respondents have not – despite given the opportunity – argued or filed any evidence to rebut. The Panel notes the pattern in the registrants’ contact information noted above, including the use of the same hosting server, the nature of the trademark and the domain names, and the Respondents’ decision to register four additional domain names subsequent to the notification of the Complaint. The Panel concludes that consolidation would be fair and equitable to the parties. Based on the evidence, and a consideration of procedural efficiency, the Panel orders consolation of all thirteen disputed domain names. See WIPO Overview 3.0, section 4.11.2.

B. Identical or Confusingly Similar

The Complainant has established that it has rights in the trademark FIREFOX. The test for confusing similarity involves a comparison between the trademark and the domain names. The disputed domain names incorporate the Complainant’s trademark, with the addition of the terms “for”, “business”, “busines”, “ads”, digital”, “agency”, “marketing”, “dev”, and “solution”. The additions do not prevent a finding of confusing similarity between the domain names and the trademark.

For the purpose of assessing under paragraph 4(a)(i) of the Policy, the Panel may ignore the generic Top-Level Domains, see WIPO Overview 3.0, section 1.11.

The Panel finds that the domain names are confusingly similar to a trademark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

C. Rights or Legitimate Interests

The Complainant has made unrebutted assertions that it has not granted any authorization to the Respondents to register the disputed domain names containing the Complainant’s trademark or otherwise make use of the Complainant’s mark. There is no evidence that the Respondents have registered the disputed domain names as a trademark or acquired unregistered trademark rights. The Respondents cannot establish rights in the disputed domain names, particularly as they have not made use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering. The Respondents’ use of the disputed domain names <firefoxforbusiness.com> and <firefoxads.com> is clearly not bona fide.

Accordingly, the Panel finds that the Respondents have no rights or legitimate interests in respect of the disputed domain names in accordance with paragraph 4(a)(ii) of the Policy.

D. Registered and Used in Bad Faith

The Panel agrees with the Complainant that it is likely that the Respondents were aware of the Complainant when the Respondents registered the disputed domain names. It seems to the Panel that the Respondents have registered the disputed domain names and used two of them in a fraudulent scheme to attract Internet users for commercial gain, by creating confusion with the Complainant’s trademark. Moreover, the sheer number of disputed domain names, indicates that the Respondents have engaged in a pattern of conduct within the meaning of paragraph 4(b)(ii) of the Policy. The fact that most of the disputed domain names currently are not resolving to active websites does not prevent a finding of bad faith, given the renown of the Complainant's FIREFOX trademark, see WIPO Overview 3.0, section 3.3. The Respondents’ use a privacy protection service to conceal their identity, points in the context of the case to bad faith. Finally, the fact that the Respondents registered four domain names after being notified of the original UDRP Complaint further indicates bad faith.

For the reasons set out above, the Panel concludes that the disputed domain names were registered and are being used in bad faith, within the meaning of paragraph 4(a)(iii) of the Policy.

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 <firefoxadsbusiness.com>, <firefoxads.com>, <firefoxadsdigital.com>, <firefoxagencydigital.com>, <firefoxforads.com>, <firefoxforbusines.com>, <firefoxforbusiness.com>, <firefoxfordigital.com>, <firefoxformarketing.com>, <devfirefoxads.com>, <firefoxforbusiness.link>, <firefoxforsolution.com>, and <firefoxsolution.com> be transferred to the Complainant, Mozilla Corporation.

Mathias Lilleengen
Sole Panelist
Date: April 14, 2021

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