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 Shield Services of Irvine, California, United States / Hiroshi Sakamoto of Nara, Japan. 2. The Domain Name and Registrar
The disputed domain name, , is registered with Phoenix, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 22, 2016. On July 25, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 26, 2016, 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 Complainants on August 1, 2016, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainants to submit an amended Complaint. The Complainants filed an amended Complaint on August 2, 2016.
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 August 3, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 23, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 24, 2016.
The Center appointed Carolina Pina-Sánchez as the sole panelist in this matter on September 13, 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 Corporation is a wholly-owned subsidiary of the Mozilla Foundation which is a non-profit, public benefit organization. Mozilla Foundation provides open-source products such as FIREFOX, SEAMONKEY and THUNDERBIRD. In particular, “Mozilla Firefox” is a free and open-source web browser developed by the Complainants which was released in November 2004. Written evidence of facts has been provided by the Complainants as Annex 5.
The Mozilla Foundation is the trademark owner of the MOZILLA trademarks in various jurisdictions which cover several classes of goods and services, including but not limited to class 9 and 38 of the Nice Classification, in particular “Computer programs for accessing and displaying files on both the internet and the intranet; network access server operating software for connecting computers to the internet and the intranet” and “Computer on-line and consulting services relating to computer communications; access to communication services and electronic communication networks; access to commercial transactions over electronic communications networks”.
Such trademark registrations include, among others:
- United States Trademark No. 2815227, MOZILLA, registered on February 17, 2004;
- United States Trademark No. 3187334, MOZILLA, registered on December 19, 2006;
- European Union Trademark No. 000182899, MOZILLA, registered on March 3, 1999; and
- International Trademark No. 974622, MOZILLA, dated August 13, 2008, which designates Austria, Switzerland, Croatia, Kenya, Republic of Korea, Macedonia, Norway, Singapore, Turkey, and Ukraine.
Written evidence of these registered rights has been provided by the Complainants as Annex 12.
The Complainants (Mozilla Foundation or its subsidiary) are the registrants of domain names consisting of the MOZILLA mark, including since 1998, , and , as well as domain names including the term “mozilla-europe”, such as and , and domain names including the MOZILLA mark at several country code Top-Level Domains, such as , , , , , etc.
The Complainants have provided copies of the WhoIs records of some of these domain names as Annex 12.
The disputed domain name (hereinafter, the “Domain Name”), was registered on April 18, 2016.
According to the Complainants, at the time of filing the Complaint, the Domain Name was resolving to a website in Japanese providing information on card loan services (Annex 9 of the Complaint includes screen captures of the websites and an English translation of the website) and it had mail exchanger records (or “MX records”) attached to it (Annex 10 of the Complaint).
At present, the Domain Name resolves to a DNS error page displaying the following message: “Network Error (dns_server_failure). Your request could not be processed because an error occurred contacting the DNS server. The DNS server may be temporarily unavailable, or there could be a network problem. For assistance, contact your network support team”.
The Complainants state that they received a direct unsolicited offer to sell the Domain Name (at the time when it was resolving to a 403 Forbidden error page). An email is provided as Annex 11 of the Complaint showing that an individual named Sharda Kwon contacted the Complainants asking if they would be interested in selling the Domain Name).
The Respondent is Mr. Hiroshi Sakamoto, an individual residing in Japan. However, at the time of the filing of the Complaint, the Domain Name was registered using a privacy protection service. 5. Parties’ Contentions A. Complainant
The Complainants assert that the Domain Name is confusingly similar to the trademark in which the Complainants have prior rights in accordance with paragraph 4(a)(i) of the Policy due to the following reasons, inter alia:
The Domain Name incorporates the term MOZILLA in its entirety.
The addition of a geographical term such as “Europe” does not diminish the confusing similarity with the Complainants’ trademark and neither does the presence of a hyphen between the Complainants’ trademark and the term “Europe”. Furthermore, the Complainants submit that the term “Europe” reinforces the confusing similarity with the Complainants’ trademark, as until 2012 the Complainants owned an affiliate of same name (i.e., “Mozilla Europe”) and are also currently still using the domain names and to redirect to “www.”, a website detailing its presence in London, Paris and Berlin.
The generic Top-Level Domain (“gTLD”), such as “.com”, is immaterial when assessing whether a domain name is identical or confusingly similar to a complainant’s trademark as it is a functional element.
The Complainants submit that the Respondent has no rights or legitimate interests in the Domain Name in accordance with paragraph 4(a)(ii) of the Policy due to, inter alia, the following reasons:
The Respondent is not a licensee of the Complainants, nor has it been otherwise authorized or allowed by the Complainants to make any use of the MOZILLA trademark, in a domain name or otherwise.
The use of the Domain Name in order to resolve to a website providing information about card loan services that are completely unrelated to the Complainants is simply an attempt by the Respondent to create the appearance of a legitimate interest and cover up the Respondent’s real intentions which are to sell the Domain Name to the Complainants.
The Respondent cannot assert that it is commonly known by the term MOZILLA, given the notoriety surrounding the Complainants’ trademark and the fact that it is exclusively associated with the Complainants.
The direct unsolicited offer to sell the Domain Name received by the Complainants is a strong indication that the Respondent is not intending to use the Domain Name in a fair manner but rather seeking to exploit the goodwill and reputation attached to the Complainants’ trademark for the Respondent’s own financial gain.
Given the Complainants’ renown worldwide and the nature of the Domain Name, which consists of an exact match of the Complainants’ highly distinctive and well-known MOZILLA trademark in conjunction with the term “Europe”, it is simply not possible to conceive any plausible actual or contemplated use of the 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 Complainants’ rights.
Lastly, the Complainants assert that the Domain Name was registered and is being used in bad faith in accordance with paragraph 4(a)(iii) of the Policy due to the following reasons:
The Complainants are renowned worldwide.
The Complainants received a direct, unsolicited offer to sell the Domain Name.
There is evidence that the Respondent may be using, or is intending to use, the Domain Name for the purposes of email (as shown by the MX records attached).
The Respondent has chosen to conceal its identity by means of a privacy protection service.
The Respondent has registered at least two other domain names including well-known third-party brands (i.e., and ). B. Respondent
The Respondent did not reply to the Complainants’ contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets the following three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration: (i) the respondent’s 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 domain name; and (iii) the respondent’s domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the complainant establishes that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. Consequently, the complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.
As explained above, the Complainants are the holder of prior trademark registrations for MOZILLA in various jurisdictions (evidence provided in Annex 12 of the Complaint).
The Domain Name is identical to Complainants’ trademark MOZILLA, except that (1) the Domain Name incorporates the geographical term “Europe”, separated by a hyphen and (2) the Domain Name adds the gTLD “.com”.
On comparison, the Panel considers that a sufficient degree of similarity exists between the Domain Name and the trademark MOZILLA to mislead Internet users, because the Domain Name contains the mark and merely adds the descriptive term “Europe” to form the Domain Name. See Moncler S.r.l. v. Shuangying Chen, WIPO Case No. D2011-0416; see also Dell Computer Corporation v. MTO C.A. and Diabetes Education Long Life, WIPO Case No. D2002-0363.
As to whether the Domain Name is identical or confusingly similar to the Complainants’ mark, the relevant comparison to be made is with the second-level portion of the Domain Name only as it is well-established that the gTLD “.com” generally may be disregarded for this purpose (Segway LLC v. Chris Hoffman,WIPO Case No. D2005-0023.
The Panel also considers that when assessing the confusing similarity it has to be taken into consideration that the term “mozilla” has a high degree of inherent distinctiveness. The Complainants have also evidenced the well-known character of the trademark. Written evidence has been provided by Complainants regarding these facts as Annex 5 of the Complaint (i.e., Mozilla awards, news publications and the entry in Wikipedia).
In the light of the above, the Panel considers that the Complainants have evidenced the first of the requirements established by the Policy. B. Rights or Legitimate Interests
The second of the elements necessary for a registration of an abusive domain name to exist, in accordance with the Policy, is that the Respondent should not have legitimate interests or rights in respect of the Domain Name.
In this case, the Complainants have evidenced prima facie, in the opinion of this Panel, the absence of legitimate interests or rights of the Respondent relating to the Domain Name.
The Complainants assert that the Respondent cannot conceivably assert that it is commonly known by the term “mozilla” given the notoriety surrounding the Complainants’ trademark and the fact that it is exclusively associated with the Complainants. Furthermore, the Complainants state that it is unlikely that the Respondent has secured or even sought to secure any trademark rights in the term “mozilla”. In the opinion of the Panel the case file contains no elements that refute such submissions of the Complainants.
It must be noted that when the Complaint was filed the Domain Name resolved to a website offering information about card loan services that had no apparent relation to the term “mozilla”, and the Respondent appeared to intend to use the Domain Name for email. At the moment, it does not resolve to a website. Such use of the Domain Name is a strong indication of the Respondent’s lack of rights or legitimate interests in the Domain Name.
Where a respondent has registered and used a domain name in bad faith (see the discussion below under Section 6.C.), that respondent cannot be found to have made a bona fide offering of goods and services. See The PNC Financial Services Group, Inc. and PNC Bank, N.A. v. Azra Khan, WIPO Case No. D2002-0701; see also AltaVista Company v. Saeid Yomtobian, WIPO Case No. D2000-0937.
Lastly, although the absence of an answer to the Complaint cannot evidence, alone considered, the absence of legitimate interests or rights in the Domain Name, it may be used as additional relevant evidence to draw a conclusion to such effect. Indeed, the absence of an answer to the Complaint together with the rest of the circumstances of the case lead the Panel to consider that the Respondent is lacking the necessary arguments to evidence the existence of legitimate interests or rights in the Domain Name. In this regard, see Cortefiel, S.A. v. Miguel García Quintas,WIPO Case No. D2000-0140 and Cortefiel, S.A. v. The Gallery Group,WIPO Case No. D2000-0162.
In the light of the above, the conclusion may be reached that the Complainants have also evidenced the absence of legitimate interests or rights of the Respondent, thus meeting the second of the requirements established by the Policy. C. Registered and Used in Bad Faith
Lastly, it is necessary to evaluate whether the Domain Name has been registered and is being used in bad faith.
In the opinion of this Panel, various elements permit it to be stated that the Domain Name has been registered and is being used in bad faith.
Firstly, many previous UDRP decisions mentioned as a decisive factor, in evaluating the existence of bad faith registration of a domain name, the prior knowledge of the trademark by the Respondent.
In this case, circumstances exist that permit it to be stated that the Respondent knew the prior rights of the Complainants in the name “Mozilla”,, given the fame of the MOZILLA trademarks around the world which was recognized in Mozilla Foundation and Mozilla Corporation v. Kiran Kumar,WIPO Case No. D2016-0952, which found bad faith as the “Respondent registered the disputed domain names many years after the FIREFOX and MOZILLA marks had become famous around the world”. Written evidence of the reputation of the MOZILLA marks was filed by the Complainants as Annex 5 of the Complaint.
The Complainants also submit that the Respondent registered the Domain Name in bad faith because the Respondent contacted the Complainants with an offer to sell the Domain Name. The Panel considers that the fact that the Respondent initiated contact with the Complainants suggests knowledge of the existence of the Complainants’ trademarks and of the similar domain names held by the Complainants. Due to this circumstance, together with the reasons noted above, and in the absence of any explanation from the Respondent, the Panel concludes that the Respondent has registered the Domain Name in bad faith seeking to trade on the goodwill and reputation of the Complainants’ well-known MOZILLA mark as described in paragraph 4(b)(i) of the Policy.
Given the present circumstances, and in line with previous UDRP decisions, the Panel notes that the current inactive use does not prevent a finding of use in bad faith. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.2.
In the light of the above, this Panel considers that the Complainants have also evidenced the third and last requirement established by 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 Domain Name, , be transferred to the Complainant, Mozilla Corporation.
Carolina Pina-Sánchez
Sole Panelist
Date: September 27, 2016
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