WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mozilla Foundation, Mozilla Corporation v. Whois Privacy, Private by Design, LLC / Andrey S, spb
Case No. D2021-1825
1. The Parties
The Complainants are Mozilla Foundation (“Foundation”) and Mozilla Corporation (“Corporation”), United States of America (“United States” or “U.S.”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Whois Privacy, Private by Design, LLC, United States / Andrey S, spb, Russian Federation.
2. The Domain Name and Registrar
The disputed domain name <mozillamail.com> (the “Domain Name”) is registered with Porkbun LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2021. On June 10, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On June 10, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainants on June 14, 2021 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on June 18, 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 June 23, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 13, 2021. A Respondent communication was received by the Center on June 24, 2021, which requested suspension of the present administrative proceeding. A possible settlement email was sent to the Parties on June 24, 2021 by the Center. On June 28, 2021, the Complainant requested the administrative proceeding continue. On July 14, 2021, the Center informed the Parties that it would proceed with the panel appointment process pursuant to paragraph 6 of the Rules.
The Center appointed Jeremy Speres as the sole panelist in this matter on July 21, 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.
4. Factual Background
The Complainants provide, amongst others, Internet-related open-source software including the well-known FIREFOX web browser and the THUNDERBIRD email client. The Complainants have, since 1998, used the MOZILLA mark extensively in connection with their projects.
Foundation owns many trade mark registrations for the MOZILLA mark in many jurisdictions, including, inter alia, European Union Trade Mark No. 000182899, registered on March 3, 1999. Furthermore, the Panel has independently established that Foundation owns Russian Federation Trade Mark registration number 383719 for the word mark MOZILLA in classes 9 and 38, with a registration date on July 15, 2009. UDRP panels may undertake limited factual research into matters of public record (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at section 4.8).
The Domain Name was registered on November 20, 2020 and, as at the filing of the Complaint and the drafting of this decision, did not resolve to a website. However, according to evidence provided in the Complaint, the Domain Name is used for spam emails.
5. Parties’ Contentions
The Complainants contend that the Domain Name is confusingly similar to their mark, that the Respondent has no rights or legitimate interests in it, and it was registered and used in bad faith given that it takes advantage of the Complainants’ well-known trade mark to distribute spam email. Accordingly, the Complainants request transfer of the Domain Name to the Complainant, Mozilla Corporation.
The Respondent filed a response that did not comply with paragraph 5 of the Rules, simply asking for the dispute to be suspended and attaching a standard settlement form without addressing the Complainants’ contentions.
6. Discussion and Findings
A. Preliminary Issue - Consolidation - Multiple Complainants
Foundation and Corporation are joint complainants. Corporation is a wholly-owned subsidiary of Foundation and the evidence shows that Corporation is licensed to use and enforce Foundation’s trade marks globally.
Subsidiaries of parent companies, and in particular licensees that are authorised to enforce a licensor’s trade marks, have standing to file complaints under the Policy (WIPO Overview 3.0 at section 1.4.1).
The Panel finds that the Complainants have a specific common grievance, and it would be equitable and procedurally efficient to allow consolidation in these circumstances (WIPO Overview 3.0 at section 4.11).
B. Identical or Confusingly Similar
Where the trade mark is recognisable in the domain name, the addition of other terms does not prevent a finding of confusing similarity (WIPO Overview 3.0 at section 1.8). The Complainants’ registered MOZILLA trade mark is the first and most prominent element of the Domain Name and the remainder, apart from the generic Top-Level Domain (“gTLD”), consists of the common dictionary term “mail” which does not render the Complainants’ mark unrecognisable.
The Complainants have satisfied the standing requirement under paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
The Complainants have made out a prima facie case that the Respondent lacks rights or legitimate interests and the burden of production thus shifts to the Respondent (WIPO Overview 3.0 at section 2.1).
The Complainants’ mark was registered (including in the Respondent’s country) and was well-known in many jurisdictions long prior to registration of the Domain Name, as confirmed in numerous UDRP cases (e.g. Mozilla Foundation and Mozilla Corporation v. Super Privacy Service LTD c/o Dynadot, WIPO Case No. D2019-1474). The Domain Name is confusingly similar to the Complainants’ mark and the Complainants have certified that the Domain Name is unauthorised by them. There is no evidence in the record that any of the circumstances set out in paragraph 4(c) of the Policy pertain and the Panel therefore assumes there are none or else the Respondent would have put those forward.
The Complainants adduced credible evidence showing that the Domain Name has been blacklisted for spam by a reputable anti-spam forum, in addition to evidence of actual spam postings on various forums using email addresses hosted at the Domain Name. This cannot constitute a bona fide offering of goods or services for purposes of Paragraph 4(c)(i) of the Policy (Capstone Mortgage Co. v. Joshua Shook or J. Shook, Inc., WIPO Case No. D2004-0395).
The Complainants have satisfied paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Complainants’ mark, being a portmanteau of “mosaic” and “godzilla”, is an invented term with no ordinary meaning and is highly specific to the Complainants. This clearly indicates that the Respondent had the Complainants’ mark in mind when registering the Domain Name (Bayer Aktiengesellschaft v. H. Monssen, WIPO Case No. D2003-0275; and WIPO Overview 3.0 at section 3.2.1).
The Panel has independently considered various forum postings made using email addresses hosted at the Domain Name. All such postings encourage users to visit Russian-language websites, which the Panel visited, offering frequency converters for sale. It is thus likely that the Respondent adopted the Domain Name incorporating the Complainants’ well-known, invented mark in order to add a veneer of credibility to these spam activities for the Respondent’s commercial gain. This is made more likely by the fact that the Complainants have in the past used a name, “Mozilla Mail & Newsgroups”, which had in fact been abbreviated by users to “Mozilla Mail”, for an email client, and the Complainants currently offer a well-known email client under the THUNDERBIRD mark. It is thus probable that the Respondent sought to capitalise on this association with email. This is a clear indicator of bad faith under paragraph 4(b)(iv) of the Policy (Quikbook, Inc. v Peloton-Mark Nichols, WIPO Case No. D2007-1370).
The Complainants have satisfied paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <mozillamail.com> be transferred to the Complainant, Mozilla Corporation.
Date: August 3, 2021