WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Mozilla Foundation and Mozilla Corporation v. Kiran Kumar
Case No. D2016-0952
1. The Parties
Complainants are Mozilla Foundation and Mozilla Corporation of Mountain View, California, United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Kiran Kumar of Palo Alto, California, United States.
2. The Domain Names and Registrar
The disputed domain names <firefox.lol> and <mozilla.lol> are registered with Gandi SAS (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2016. On May 13, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On May 17, 2016, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.
The Center verified that the 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 May 31, 2016. In accordance with the Rules, paragraph 5, the due date for Response was June 20, 2016. Respondent sent emails to the Center on June 6, 9 and 10, 2016, but did not submit any formal response or reply substantively to Complainant’s allegations. Accordingly, the Center notified the parties about the commencement of panel appointment process on June 21, 2016.
The Center appointed Steven L. Snyder as the sole panelist in this matter on June 29, 2016. 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 Mozilla Foundation (the “Foundation”) owns the FIREFOX and MOZILLA marks and licenses these marks to its wholly-owned subsidiary, the Mozilla Corporation (the “Corporation”). In turn, the Corporation uses these marks in connection with a web browser. The Foundation and the Corporation are Complainants in this proceeding.
Based on the marks’ use in commerce, the Foundation has obtained registrations in the United States and the European Union for both the FIREFOX and MOZILLA marks. Complainants (or their predecessors) have used the MOZILLA mark since 1998 and the FIREFOX mark since 2004. SeeUnited States registration nos. 2815227 (MOZILLA) and 2974321 (FIREFOX). These marks are also incorporated into many domain names registered to the Foundation and used by the Corporation.
According to the registration information, Respondent goes by the name Kiran Kumar and lives in Palo Alto, California, United States. Respondent registered the disputed domain names at the start of December 2015.
5. Parties’ Contentions
Complainants claim that the FIREFOX-brand web browser has enjoyed tremendous success, dating from its introduction almost a dozen years ago: “The Mozilla Firefox Internet browser was released in November 2004 and enjoyed instant success, with 100 million downloads within the first year of its release. Today, more than half a billion people around the world use Firefox as their Internet browser, making it the 2nd most-used web browser in the world….”
These marks have been used as domain names in numerous Top-Level Domains (“TLDs”). Here are but a few of Complainants’ domain names: <mozilla.org>; <mozilla.com>; <mozilla.net>; <firefox.com>; <firefox.com.cn>; and <firefox.org.in>.
To protect its famous marks, Complainants have registered the FIREFOX and MOZILLA marks in numerous jurisdictions around the world, including the United States (Respondent’s alleged home) and the European Union.
Without any authorization from Complainants, Respondent registered the disputed domain names in December 2015 and then linked those domain names to an active website that had nothing to do with Complainants’ famous web browser: “The Domain Names were until very recently both redirecting to identical websites at www.flymesky.com displaying a photograph of two primates and offering photography services in India.”
This is not the first time that Respondent has taken a famous trademark and registered it as a domain name without first obtaining permission from the trademark’s owner: “The Respondent is also the owner of many domain names infringing well-known third party trademarks under the ‘.lol’ extension … including but not limited to <adobe.lol>, <audi.lol>, <budweiser.lol>, <burberry.lol>, <ferrari.lol>, <honda.lol>, <hsbc.lol>, <gucci.lol>, <ikea.lol>, <mastercard.lol>, <pizzahut.lol>, <toyota.lol>, <tripadvisor.lol>, [and] <zara.lol>.”
After becoming aware of Respondent’s registration of the disputed domain names, Complainants corresponded with Respondent and demanded he transfer the registrations to Complainants. Respondent suggested that Complainants might pay him a sizeable sum to take that step: “On 25 April 2016, the Complainant’s lawyers followed-up with the Respondent and on the same day the Respondent replied that ‘I got someone offering $10K for the same Domain, what do you think?”
In further correspondence, Respondent claimed to be acting within India’s law and said he was confident in his position: “Let’s see who will win, I did consult a lawyer and I am very clear on my legal position and on 29th domain will be transferred to the new Opportunist. best of luck on finding the new owner.”
Complainants argue that Respondent’s actions necessitated the filing of this proceeding, both to protect Complainants’ interests and those of the public: “Given the blatantly abusive registration and use of the Domain Names, and the Respondent’s evident disregard for the law and for the Complainant’s rights in the subsequent correspondence, the Complainant had no choice but to file the present Complaint in order to request the transfer of the Domain Names under the Policy to protect its legitimate business interests and rights and to protect consumers from being misled as to the source of the websites to which the Domain Names resolves.”
Based on the facts summarized above, Complainants argue that they have established each of the three elements required by the UDRP and that the disputed domain names should be transferred to their ownership.
Respondent did not file a Response to the Complaint.
6. Discussion and Findings
According to the Registrar of the disputed domain names, “[t]he .lol extension is dedicated to the popular acronym for ‘laugh out loud’, and associated humor and play.” In Complainants’ view, there is nothing funny about their famous trademarks being registered in the “.lol” TLD by a stranger. Complainants wish to have the registrations transferred to their ownership. To fulfill this wish, Complainants must prove the following three elements:
First, that that the disputed domain names are identical or confusingly similar to trademarks or service marks in which Complainants have rights;
Second, that Respondent has no rights or legitimate interests in the disputed domain names; and
Third, that the disputed domain names have been registered and are being used in bad faith.
SeeUDRP paragraph 4(a); Verizon Trademark Services LLC v. Registration Private, Domains By Proxy, LLC / Anthony Frangiosa, Installernet, Inc., WIPO Case No. D2016-0412.
A. Identical or Confusingly Similar
Complainants have strong rights in both FIREFOX and MOZILLA, as shown by the many years of continuous and extensive usage in commerce, as well as by the numerous trademark registrations in the United States and the European Union.
Complainants are also right when they argue that the disputed domain names, <firefox.lol> and <mozilla.lol>, are confusingly similar to their marks. The mere addition of a TLD to a trademark or service mark does not differentiate the resulting domain name from the mark. That is why UDRP panels typically ignore the TLD when determining whether there is any confusing similarity between a complainant’s mark and a disputed domain name.
When the “.lol” TLD is set aside, there is no difference between the disputed domain names and Complainants’ marks. An Internet user may reasonably be confused into believing the disputed domain names are sponsored by or affiliated with Complainants. See, e.g., Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525 (disregarding additional material and finding confusing similarity “when a domain name wholly incorporates a complainant’s registered mark”).
Complainants have proved the first element required by the UDRP.
B. Rights or Legitimate Interests
Respondent did not formally respond to the Complaint and so the Panel’s task is to determine whether the Complainants have established a prima facie case. This task is not difficult in this case: Complainants’ unrefuted proof demonstrates that Respondent was not commonly known as FIREFOX or MOZILLA, that Respondent was not using or preparing to use the disputed domain names in connection with a bona fide offering of goods or services, and that Respondent was not making a legitimate noncommercial or fair use of the disputed domain names.
On the unrefuted evidence introduced in this proceeding, the Panel must conclude that Complainants have established a prima facie case and that Respondent does not have any rights or legitimate interests in the disputed domain names. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (concluding that respondent would not have registered the disputed domain name unless it illegitimately wished “to create an impression of an association with the Complainant”).
Complainants have proved the second element required by the UDRP.
C. Registered and Used in Bad Faith
Respondent registered the disputed domain names many years after the FIREFOX and MOZILLA marks had become famous around the world. He then linked the disputed domain names to a commercial website. When Complainants became aware of the disputed domain names and demanded Respondent transfer their registrations, he instead suggested that Complainants pay him USD 10,000.
This apparently is not the first time Respondent has registered a famous trademark as a domain name in the “.lol” TLD without the prior authorization of the trademark’s owner. As noted above, Respondent has allegedly done the same with the ADOBE, AUDI, BUDWEISER, FERRARI, HONDA, GUCCI, IKEA and TOYOTA marks.
These facts, Complainants argue, demonstrate Respondent’s bad faith registration and use of the disputed domain names. The Panel agrees. See eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 (“No plausible explanation exists as to why Respondent selected the name EBAY as part of the Domain Name other than to trade on the goodwill of eBay”).
Complainants have proved the third element required by the UDRP.
For the foregoing reasons, in accordance with paragraphs 4(i) of the UDRP and 15 of the Rules, the Panel orders that the disputed domain names, <firefox.lol> and <mozilla.lol> be transferred to Complainants.
Steven L. Snyder
Date: July 13, 2016