WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mozilla Foundation and Mozilla Corporation v. Whois privacy services provided by DomainProtect LLC / Exide Ltd.

Case No. D2018-0720

1. The Parties

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

The Respondent is Whois privacy services provided by DomainProtect LLC of Saint Petersburg, Russian Federation / Exide Ltd. of Saint Petersburg, Russian Federation, internally represented.

2. The Domain Name and Registrar

The disputed domain name <get-firefox.com> is registered with NeoNIC OY (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 30, 2018. On April 3, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 6, 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 the Complainant on April 10, 2018, 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 April 14, 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 the Respondent of the Complaint, and the proceedings commenced on April 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 8, 2018. The Response was filed with the Center on May 7, 2018.

The Center appointed James Bridgeman as the sole panelist in this matter on May 30, 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.

4. Factual Background

The First Complainant, Mozilla Foundation, which was established in 2003 is a non-profit organization that, together with its wholly-owned subsidiary, the Second Complainant, Mozilla Corporation, supports and develops open source software programs including the Firefox Internet browser. The Complainants are hereinafter referred to as the “Complainant”.

The Complainant owns a portfolio of trademark registrations for the FIREFOX trademark in a number of jurisdictions throughout the world including:

• United States Trademark No. 2974321, FIREFOX, registered on July 19, 2005;

• European Union Trade Mark No. 1203934, FIREFOX, registered on March 24, 2014; and

• International Trademark No. 1203934, FIREFOX, registered on March 24, 2014 (designating the Russian Federation).

Each of the Complainant’s abovementioned trademark registrations are for goods in class 9 of the Nice Classification.

The Complainant owns a large portfolio of domain name registrations consisting of the term “firefox”, including <firefox.com> which was registered in 1998 and including <firefox.al> (Albania), <firefox.asia> (Asia), <firefox.be> (Belgium), <firefox.com.cn> (China), <firefox.hu> (Hungary), <firefox.id> (Indonesia), <firefox.ie> (Ireland), <firefox.in> and <firefox.org.in> (India), <firefox.lc> (Saint Lucia), <firefox.lt> (Lithuania), <firefox.me> (Montenegro), <firefox.ms> (Montserrat), <firefox.my> (Malaysia), <firefox.name>, <firefox.pt> (Portugal), <firefox.qa> (Qatar) and <firefox.com.ru> (Russian Federation).

The Complainant’s main website is available at “www.mozilla.org”, and the Complainant has an active presence on Facebook, Twitter, YouTube, LinkedIn and Google+.

The disputed domain name was registered on April 14, 2012, and redirects to a parking page containing links including, “Free Web Browsers”, “Download Mozilla Firefox”, “Download Latest Firefox”, “Firefox for Mac”.

The disputed domain name is also being offered for sale on the associated website and upon clicking on the link inviting Internet users to inquire about the disputed domain name, it redirects users to a form displaying the message that “[o]ffers under $500 US are usually not considered”. At the bottom of the page, the following message is displayed: “This is a good faith offer. If you believe that your rights are violated please read the disclaimer”. The disclaimer reads as follows: “This domain name was acquired for bona fide commercial use. The owner intends to avoid infringements of third parties’ intellectual property rights and interests and take measures by all means reasonably assumed to do so.”

The Respondent has given no information about itself except for its address and contact details in Saint Petersburg, Russian Federation.

The disputed domain name is registered in the name of a privacy service and the name of the underlying registrant was disclosed by the Registrar in the course of this proceeding. Except where the context otherwise indicates, any reference to the Respondent hereinafter shall be deemed to refer to the underlying registrant of the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant relies in its above-mentioned registered trademark rights in the FIREFOX mark acquired through its trademark registrations and at common law. The Complainant asserts that since its establishment, the Complainant has acquired considerable rights and goodwill worldwide through the extensive use of “Firefox” in its company name, brands, logos and trademarks on the Internet.

The Complainant states that Firefox is a free and open-source web browser developed by the Complainant, with approximately 40 percent of its code written by its over 10,000 volunteers, referred to as “Mozillians” on every continent. The Complainant’s FIREFOX Internet browser was released in November 2004 and enjoyed instant success, with 100 million downloads within the first year of its release and now used by more than half a billion people around the world including the Russian Federation, where the Respondent is established.

The Complainant asserts that the term “firefox” in connection with software and online services is exclusively associated with the Complainant. All of the search results obtained by typing the term “firefox” in Google’s search engine available at “www.google.com” refer to the Complainant.

The Complainant was recently alerted to the fact that the disputed domain name had been registered in 2012 using a privacy protection service and resolves to a parking page which targets the Complainant, its products and services.

On February 23, 2018, the Complainant’s lawyers sent a cease and desist letter to the Respondent by email and registered post asserting the Complainant’s trademark rights and asking the Respondent to transfer the disputed domain name to the Complainant. The Respondent did not reply and so the Complainant had no choice but to file this Complaint in order to protect its rights and protect consumers from being misled as to the source of the website to which the disputed domain name resolves.

The Complainant submits that the disputed domain name is confusingly similar to the Complainant’s FIREFOX trademark because it incorporates the Complainant’s FIREFOX trademark in its entirety and the addition of the generic term “get” and a hyphen does not diminish the confusing similarity with the Complainant’s trademark because the Complainant’s FIREFOX trademark is clearly recognizable in the disputed domain name.

The Complainant further submits that it is well established that the generic Top-Level Domain (“gTLD”) “.com” extension is a functional element and it is generally immaterial when comparing a domain name and a complainant’s trademark under the Policy.

The Complainant submits that the disputed domain name is therefore identical to the Complainant’s trademark in accordance with paragraph 4(a)(i) of the Policy.

The Complainant then submits that the Respondent has no rights or legitimate interests in respect of the disputed domain name arguing that numerous panels including the panel in The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064 have found under the Policy that “once the Complainant makes a prima facie showing that the registrant does not have rights or legitimate interests in the domain name, the evidentiary burden shifts to the registrant to rebut the showing by providing evidence of its rights or interests in the domain name”. This assertion is also supported by the views of panelists as outlined in section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).

The Complainant submits that the Respondent is not a licensee of the Complainant, nor has it been otherwise authorised or allowed by the Complainant to make any use of its FIREFOX trademark in a domain name or otherwise; furthermore the Respondent is unable to invoke any of the circumstances set out in paragraph 4(c) of the Policy, in order to demonstrate rights or legitimate interests in the disputed domain name; and neither can the Respondent 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 Complainant also argues that the Respondent is using the disputed domain name to redirect to a parking page containing sponsored links targeting the Complainant and its goods and services from which the Respondent or a third party is undoubtedly obtaining financial gain and such use cannot possibly be considered a bona fide offering of goods or services because the Respondent is clearly seeking to unduly profit from the Complainant’s goodwill for its own financial gain.

The Complainant argues that prior panels deciding under the Policy have held that parking pages built around a trademark (as contrasted with PPC pages built around a dictionary word and used only in connection with the generic or merely descriptive meaning of the word) do not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor do they constitute a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii). In this regard the Complainant cites inter alia the views of panelists as set out in section 2.9 of the WIPO Overview 3.0 (“panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”).

The Complainant further argues that the Respondent’s offer to sell the disputed domain name on the associated website cannot be considered a bona fide offering of goods or services given the nature of the disputed domain name itself, which is confusingly similar to the Complainant’s highly distinctive and renowned FIREFOX trademark.

Additionally, the Complainant submits that, given the notoriety surrounding the Complainant’s FIREFOX trademark, the Respondent cannot conceivably assert that it is commonly known by the term “firefox”, in accordance with paragraph 4(c)(ii) of the Policy. Furthermore, it is highly unlikely that the Respondent has secured or even sought to secure any trademark rights in the term “firefox”; and neither can the 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 to misleadingly divert consumers or to tarnish the trademark or service mark at issue, pursuant to paragraph 4(c)(iii) of the Policy. As described above, the disputed domain name is redirecting to a parking page that is clearly commercial in nature, as evidenced by the presence of numerous commercial links from which the Respondent (or a third party) is undoubtedly obtaining financial gain.

Furthermore, the Respondent is seeking to sell the disputed domain name on the associated website. Such use of the disputed domain name by the Respondent cannot be considered either legitimate noncommercial or fair, as the Respondent is clearly seeking to unfairly exploit the goodwill of the Complainant’s trademark for its own financial gain. See Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598 (finding that parking pages built around a trademark do not constitute a legitimate noncommercial or fair use pursuant to the Policy).

Finally, given the Complainant’s renown worldwide, and the nature of the disputed domain name itself, which is confusingly similar to the Complainant’s trademark, it is simply not possible to conceive of any plausible actual or contemplated use of the disputed domain name by the Respondent (or a third party) that would not be illegitimate, as it would inevitably result in misleading diversion and unfair taking advantage of the Complainant’s rights. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

The Complainant therefore asserts that the Respondent has no rights or legitimate interests in the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.

The Complainant also asserts that the disputed domain name was registered and is being used in bad faith.

The Complainant’s FIREFOX trademark is highly distinctive and has acquired considerable renown and goodwill worldwide, including in the Russian Federation, as a result of its continuous and extensive use for over 10 years in connection with computer and Internet-related products and services. Furthermore, as described above, the Complainant has registered trademark rights in FIREFOX since at least 2005 in the United States.

The Complainant’s valuable reputation is not only crucial to maintain the value and distinctiveness of its trademarks, but also vital to the success, integrity and protection of the Complainant’s business and consumers.

Given the nature of the Internet and the Complainant’s renown and goodwill worldwide, including in the Russian Federation, where the Respondent is based, it would be inconceivable for the Respondent to argue that it was unaware of the Complainant’s rights at the time of registration of the disputed domain name in 2012, particularly as the Complainant’s Firefox browser was one of the most popular browsers at this time in the world and in the Russian Federation.

The Complainant therefore submits that the Respondent registered the disputed domain name in full knowledge of the Complainant’s rights. Prior panels deciding under the Policy have held that actual and constructive knowledge of a complainant’s rights at the time of registration of a domain name constitutes strong evidence of bad faith. See eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 (“Actual or constructive knowledge of the Complainant’s rights in the Trademarks is a factor supporting bad faith”) and E. & J. Gallo Winery v. Oak Investment Group, WIPO Case No. D2000-1213 (finding bad faith where the respondent “knew or should have known” of the complainant’s trademark).

The Complainant further submits that the Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring it to the Complainant who is the owner of the trademark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the disputed domain name, in accordance with paragraph 4(b)(i) of the Policy.

As described above, the disputed domain name, which incorporates the Complainant’s highly distinctive and renowned trademark, is being offered for sale on the associated website. Furthermore, the online form inviting Internet users to submit an offer expressly provides that “Offers under $500 US are usually not considered”, which demonstrates that the Respondent is seeking to sell the disputed domain name in excess of its out-of-pocket costs. The Complainant therefore submits that the overall circumstances of this case strongly suggest that the Respondent’s offer to sell the disputed domain name on the associated website is in bad faith, as the Respondent is seeking to take advantage of the Complainant’s rights. See section 3.1.1 of the WIPO Overview 3.0 and Educational Testing Service v. TOEFL, WIPO Case No. D2000-0044.

The Complainant submits that the Respondent’s disclaimer at the bottom of the form on its offer for sale (“This is a good faith offer. If you believe that your rights are violated please read the disclaimer”) cannot be considered to cure the Respondent’s bad faith.

The Complainant also submits that the Respondent deliberately registered the disputed domain name seeking to take advantage of the Complainant and its rights. The Respondent’s subsequent use of the disputed domain name to resolve to a parking page containing sponsored links (as described in more detail below) leaves no doubt as to this fact.

The Complainant therefore submits that the Respondent registered the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

The Complainant adds that the Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website, in accordance with paragraph 4(b)(iv) of the Policy.

The Complainant’s FIREFOX trademark is highly distinctive and well known and so Internet users are likely to expect to find a website that is affiliated to or sponsored by the Complainant at a domain name consisting of the FIREFOX trademark in conjunction with the generic term “get”. There is therefore no reason that could explain why the Complainant’s well-known FIREFOX trademark is being used by the Respondent in the disputed domain name other than to deliberately divert traffic intended for the Complainant to the Respondent’s own website. See Microsoft Corporation v. Gioacchino Zerbo, WIPO Case No. D2005-0644 (“[The Respondent’s] conduct constitutes evidence of bad faith use, since the Respondent is trying to profit from the reputation of the Complainant’s trademark, by increasing the traffic on its website through the exact reproduction of a third-party trademark”).

The Complainant further submits that the Respondent’s use of the disputed domain name, which reproduces the Complainant’s highly distinctive and renowned trademark, to point to a parking website displaying sponsored links targeting the Complainant and its services, clearly constitutes bad faith use as the Respondent is deliberately seeking to profit from the Complainant’s goodwill and renown for its own financial gain.

The Complainant argues that the Respondent is responsible for the content appearing on the website associated with the disputed domain name, regardless of whether the sponsored links are automatically generated or not. See section 3.5 of the WIPO Overview 3.0 (“Particularly with respect to ‘automatically’ generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests”).

The Complainant argues that furthermore, under the Policy it is not necessary for the Respondent itself to have profited directly from those commercial links in order to establish bad faith use. It would be sufficient for the third parties behind the sponsored links or another third party to have made some profit from such arrangements. This submission is supported by the views expressed in section 3.5 of the WIPO Overview 3.0 (“Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith”).

The Complainant also argues that given the overwhelming renown of the Complainant’s trademark worldwide, and the nature of the disputed domain name itself, which identically reproduces the Complainant’s FIREFOX trademark, there simply cannot be any actual or contemplated good faith use of the disputed domain name by the Respondent or a third party other than the Complainant as it would invariably result in misleading diversion and unfair taking advantage of the Complainant’s rights. See Telstra Corporation Limited v. Nuclear Marshmallows, supra.

The Complainant further submits that an additional strong indication of the Respondent’s bad faith is the fact that the Respondent has concealed its identity by means of a privacy protection service. This submission is also supported by UDRP panelist views as expressed in section 3.6 of the WIPO Overview 3.0 of bad faith; a respondent filing a response may refute such inference.

Finally, the Complainant argues that the Respondent’s failure to respond to the Complainant’s cease and desist letter is an additional strong indication in support of a finding of bad faith.

B. Respondent

In its very brief Response the Respondent merely states “[w]e consent to the remedy requested by the Complainant and agree to transfer the disputed domain name to the Complainant.”

C. Complainant’s Reply

In a reply by email, the Complainant requested that notwithstanding the Respondent’s consent to a transfer that this Panel proceed to make a decision on the merits.

6. Preliminary Procedural Issue: Consent to Remedy

The Respondent has agreed to transfer the disputed domain name to the Complainant outside the standard settlement process under paragraph 17 of the Rules. Section 4.10 of the WIPO Overview 3.0.states that in such circumstances many UDRP panels will order the requested remedy solely on the basis of such consent. In such cases, the panel gives effect to an understood party agreement as to the disposition of their case (whether by virtue of deemed admission, or on a no-fault basis).

In some cases, despite such respondent consent, a panel may in its discretion still find it appropriate to proceed to a substantive decision on the merits. Scenarios in which a panel may find it appropriate to do so include (i) where the panel finds a broader interest in recording a substantive decision on the merits – notably recalling UDRP paragraph 4(b)(ii) discussing a pattern of bad faith conduct, (ii) where while consenting to the requested remedy the respondent has expressly disclaimed any bad faith, (iii) where the complainant has not agreed to accept such consent and has expressed a preference for a recorded decision, (iv) where there is ambiguity as to the scope of the respondent’s consent, or (v) where the panel wishes to be certain that the complainant has shown that it possesses relevant trademark rights.

In the present case the Complainant has expressly requested that this Panel proceed to make a determination on the merits, and in the view of this Panel there is no reason to proceed otherwise.

7. Discussion and Findings

The Complainant requests that this Panel direct that disputed domain name be transferred to it in accordance with the Policy.

Paragraph 4(a) of the Policy requires the Complainant to establish that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has adduced convincing evidence that it has rights in the FIREFOX mark acquired through its abovementioned trademark registrations and its extensive use of the mark in particular as the name of its well-known Internet browser.

Having compared both this Panel decides that the disputed domain name <get-firefox.com> is confusingly similar to the Complainant’s FIREFOX trademark. It is a combination of the dictionary word “get”, a hyphen, the Complainant’s distinctive FIREFOX trademark and the gTLD “.com” extension.

The term “firefox” is the only distinctive and dominant feature of the disputed domain name. This incorporates the Complainant’s trademark in its entirely into the disputed domain name. The presence of the hyphen between the words “get” and “firefox” serves to emphasise that the “firefox” element is separate from the “get” element and this serves to highlight the Complainant’s trademark within the disputed domain name.

This Panel therefore finds that the disputed domain name is confusingly similar to the FIREFOX trademark in which the Complainant has rights. The Complainant has therefore succeeded in the first element of the test in paragraph 4(a) of the Policy.

B. Rights or Legitimate Interests

The Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name arguing:

- that the Respondent is not a licensee of the Complainant, nor has it been otherwise authorized or allowed by the Complainant to make any use of its FIREFOX trademark in a domain name or otherwise;

- neither can the Respondent 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 because the Respondent is using the disputed domain name to redirect to a parking page containing sponsored links targeting the Complainant and its goods and services from which the Respondent or a third party is undoubtedly obtaining financial gain and such use cannot possibly be considered a bona fide offering of goods or services because the Respondent is clearly seeking to unduly profit from the Complainant’s goodwill for its own financial gain;

- that parking pages built around a trademark (as contrasted with PPC pages built around a dictionary word and used only in connection with the merely descriptive meaning of the word) do not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor do they constitute a legitimate noncommercial or fair use pursuant to paragraph 4(c)(iii);

- that, given the notoriety surrounding the Complainant’s FIREFOX trademark, the Respondent cannot conceivably assert that it is commonly known by the term “firefox”, in accordance with paragraph 4(c)(ii) of the Policy;

- that it is highly unlikely that the Respondent has secured or even sought to secure any trademark rights in the term FIREFOX;

- neither can the Respondent assert that it has made or is currently making a legitimate noncommercial or fair use of the disputed domain name; and

- that the Respondent is seeking to sell the disputed domain name on the associated website and such use of the disputed domain name by the Respondent cannot be considered either legitimate noncommercial or fair use, and that it is not possible to conceive of any plausible actual or contemplated use of the disputed domain name by the Respondent (or a third party) that would not be illegitimate, as it would inevitably result in misleading diversion and unfair taking advantage of the Complainant’s rights.

It is well established that in such circumstances the burden of production shifts to the Respondent.

In the present case the Respondent has not denied any of the Complainant’s allegations but has merely consented to the requested remedy and agreed to transfer the disputed domain name to the Complainant. The Respondent has therefore failed to discharge the burden of production and in the circumstances this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant has therefore succeeded in the second element of the test in paragraph 4(a) of the Policy.

C. Registered and Used in Bad Faith

In the absence of any denial or explanation to the contrary, and having considered the evidence adduced by the Complainant, this Panel accepts the Complainant’s submissions that the disputed domain name was registered and is being used in bad faith.

It is most improbable that the registrant was unaware of the Complainant and its web browser when the disputed domain name was registered. The Firefox browser was well established when the disputed domain name was registered. The term “firefox” is distinctive. The word “get” means to acquire and in combination with the name of a famous web browser is indicative of downloading software. In the circumstances this Panel finds that the disputed domain name was registered in bad faith in order to target and take predatory advantage of the Complainant’s trademark.

Furthermore this Panel finds that on the balance of probabilities the Respondent is profiting from the links which appear on the web page to which the disputed domain name resolves and is thereby profiting from the goodwill and reputation of the Complainant’s FIREFOX trademark.

In the circumstances of the present case this Panel finds that the disclaimer which the Respondent has posted is disingenuous because it is most improbable that the Respondent is not aware that any commercial use of the disputed domain name would interfere with the Complainant’s rights.

This Panel finds therefore that on the balance of probabilities, by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the web page to which the disputed domain name resolves by creating a likelihood of confusion with the Complainant’s FIREFOX mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web page and the disputed domain name is therefore being used in bad faith.

The Complainant has therefore succeeded in the third element of the test in paragraph 4(a) of the Policy and is entitled to the reliefs sought.

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 name, <get-firefox.com>, be transferred to the Complainant.

James Bridgeman
Sole Panelist
Date: June 12, 2018