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 WhoisGuard Protected of Panama, Panama / isha Chaudhary of Noida, India, Domains By Proxy, LLC of Scottsdale, Arizona, United States / Anand Soni of Mathura, India. 2. The Domain Names and Registrars
The disputed domain name is registered with NameCheap, Inc., and the disputed domain name is registered with GoD, LLC (the “Registrars”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 10, 2018. On December 11, 2018, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On December 11, 2018 and December 12, 2018, the Registrars transmitted by email to the Center their verification responses disclosing registrant and contact information for the disputed domain names which differed from the named Respondents and contact information in the Complaint. The Center sent an email communication to the Complainants on December 17, 2018 providing the registrant and contact information disclosed by the Registrars, and inviting the Complainants to submit an amendment to the Complaint. The Complainants filed an amended Complaint on December 21, 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 Respondents of the Complaint, and the proceedings commenced on December 27, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 16, 2019. On January 16, 2019, the Center received two email communications from a third party purporting to be a representative of the Respondent Anand Soni. On January 21, 2019, the Center informed the Parties it would proceed to panel appointment.
The Center appointed Alfred Meijboom as the sole panelist in this matter on January 24, 2019. 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, was established in 2002 and 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, which is the third most used web browser in the world with more than half a billion users worldwide.
The first 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 more than 60 jurisdictions).
Each of the Complainant’s abovementioned trademark registrations (together and individually referred to as the “Trademark”) were filed for, inter alia, “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”.
The Respondents registered the disputed domain names on July 25, 2017 and on October 22, 2018. The disputed domain name presently redirects to the website attached to the disputed domain name (the “Respondents’ Website”), which displays the Trademark and Complainant’s other trademarks, and offers technical support via a telephone number that has been reported as fraudulent. 5. Parties’ Contentions A. Complainant
The Complainants alleged that the disputed domain names are confusingly similar to the Trademark. According to the Complainants, the Trademarks are incorporated in the respective disputed domain names entirely, whilst the addition of “support” only reinforces the confusing similarity with the Trademark as it is strongly relates to the Complainants’ activities to provide help or assistance to users of their FIREFOX Internet browser through the Complainants’ website.
The Complainants further alleged that the Respondents have no rights or legitimate interests in respect of the disputed domain names because, inter alia, (i) the Respondents are not a licensee of the Complainants, nor have they been otherwise authorized or allowed by the Complainants to make any use of the Trademark or other trademarks of the Complainants, in a domain name or otherwise, (ii) the Respondents are not using, or making demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services, but rather seem to try to access personal data of the users of the Complainants’ FIREFOX Internet browser for their own financial gain, (iii) the Respondents are not commonly known by the Trademark, and (iv) the Respondents have not made or are currently making a legitimate noncommercial or fair use of the disputed domain names, without intent for commercial gain to misleadingly divert consumers as the terms and conditions of the Respondents’ Website specify that the Respondents’ services “are available to clients who pay for charges of subscription”, thus demonstrating the Respondents’ intent for commercial gain.
Finally, the Complainants claimed that the Respondents registered and used the disputed domain names in bad faith. Given the global fame of the Trademark, the fact that the Trademark has been incorporated in its entirety into the disputed domain names, and the fact that the Respondents’ Website used the Trademark and offers paid support to users of the Complainants’ FIREFOX Internet browser, the disputed domain names can only have been registered with the Trademark in mind, with the purpose of deliberately causing confusion amongst Internet users as to the source of the Respondents’ Website in order to take unfair advantage of the Complainants’ goodwill and reputation, which according to the Complainants clearly constitutes bad faith registration. Further, the Complainants further submit that the Respondents have engaged in a pattern of conduct by registering the two disputed domain names and a third abusive domain name which contains a famous third party trademark for the purpose of preventing the trademark owners from reflecting their trademarks in corresponding domain names.
Moreover the Complainants submit that the Respondents are using the disputed domain names to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the trademark as to the source, sponsorship, affiliation or endorsement of the website, which constitutes use of the disputed domain names in bad faith. B. Respondent
The Respondents did not reply to the Complainants’ contentions. 6. Discussion and Findings Consolidation of multiple Complainants and multiple Respondents
The Complainants have requested consolidation of the Complainants.
WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.16 explains the principles governing the question of whether a complaint filed with the Center by multiple complainants may be brought against (one or more) respondents.
The WIPO Overview 3.0 explains that these criteria encompass situations in which, inter alia, (i) the complainants either have a specific common grievance against the respondent, or the respondent has engaged in common conduct that has affected the complainants’ individual rights in a similar fashion; (ii) it would be equitable and procedurally efficient to permit the consolidation.
The Complainants request consolidation based on the circumstance that the second Complainant is a wholly owned subsidiary of the first Complainant and has been authorized to use the trademarks of the first Complainant, including the Trademark. The Complainants submit that they have a sufficient common legal interest in the Trademark reproduced in the disputed domain names in order to file a joint Complaint.
The Panel finds that the legal affiliation of the Complainants, in absence of an objection to consolidation by the Respondents is sufficient to justify the consolidation of the Complainants. This is consistent with the Policy and Rules, comports with prior relevant UDRP decisions in this area, and is appropriate in light of the aforementioned principles. The Panel therefore will proceed to a decision on the merits.
The Complainants have also requested consolidation of the two Respondents in this matter.
The Complainants claim that the disputed domain names are under common control by the Respondents as, inter alia, the disputed domain name redirects to the disputed domain name , the disputed domain name previously pointed to the Respondents’ Website that is now attached to the disputed domain name , the contact information displayed on the Respondents’ Website under the disputed domain name contains the email address “info@”, the Respondents are both based in Uttar Pradesh, India.
The consensus view of UDRP panels is expressed in WIPO Overview 3.0, section 4.11.2 “Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario”. The Panel is satisfied that the Complainants submitted convincing and adequate evidence showing that the disputed domain names are under common control. As a result thereof consolidation of the Respondents is fair and equitable in absence of arguments from the Respondents. The Panel therefore allows the consolidation of the Respondents. Response allegedly on behalf of the Respondent Anand Soni
On January 16, 2019, the Center received two email communications from a third party purporting to be a representative of the Respondent Anand Soni, claiming that “[Anand Soni] respects the law and is ready to delete or transfer the domain whatever the complainants wants and wrap up this disputes”. On the same date the Center replied and asked the sender of the email to identify herself or himself and clarify her/his relationship to the Respondent(s), and provide information sufficient to establish the legitimacy of the submission in the context of the dispute. Later on January 16, 2019, said third party replied to the Center. She or he claimed to manage all the domain and hosting services for Respondent Anand Soni and submitted images of one page of the Complaint and one page of the Center’s correspondence. On January 21, 2019 the Center sent the parties to this dispute an email submitting that it has not received sufficient confirmation of the identity of the third party in relation to the Respondent.
The Panel reviewed the correspondence between the alleged representative of the Respondent Anand Soni and the Center, and agrees with the Center that such third party did actually not disclose her/his identity, and could not sufficiently show her/his relationship with the Respondent(s), if any. The Panel shall therefore not allow admission of the third party communication in these proceedings but notes that it would not change the outcome. The decision on the merits
The Respondents did not file a Response. However, as set out in section 4.3 of the WIPO Overview 3.0, the consensus view of UDRP panels is that the respondent’s default does not automatically result in a decision in favor of the complainant. The Complainants must still establish each of the three elements required by paragraph 4(a) of the Policy. Although the Panel may draw appropriate inferences from the Respondents’ default, paragraph 4 of the Policy requires the Complainants to support their assertions with actual evidence in order to succeed in these proceedings. Paragraph 14(b) of the Rules provides that, in the absence of exceptional circumstances, the Panel shall draw such inferences as it considers appropriate from a failure of a party to comply with a provision or requirement of the Rules. The Panel finds that in this case there are no such exceptional circumstances.
Under the Policy, the Complainants must prove that:
(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
(ii) the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) the disputed domain names have been registered and are being used in bad faith. A. Identical or Confusingly Similar
It is well established that the gTLDs “.com” and “.org”, should typically be disregarded in the assessment under paragraph 4(a)(i) of the Policy.
The Panel finds that the disputed domain names are confusingly similar to the Trademark. The Respondents have taken the Trademark in its entirety, and added the descriptive word “support” at the end of the disputed domain names. The added term is insufficient to differentiate the disputed domain names and the Trademark.
Consequently, the first element of paragraph 4(a) of the Policy is met. B. Rights or Legitimate Interests
The Complainant must show a prima facie case that the Respondents lack rights or legitimate interests in the disputed domain names, which the Respondents may rebut (e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Panel takes note of the various allegations of the Complaint and in particular that no authorization has been given by the Complainants to the Respondents to use the Trademark or register the disputed domain names, the Respondents have not been commonly known by the disputed domain names, the Respondents have no prior rights or legitimate interests in the disputed domain names, and the disputed domain names resolve to the Respondents’ Website thereby intentionally creating confusion as to the source, sponsorship, affiliation or endorsement of such website. As the Respondents use the disputed domain names misleadingly creates an association with the Complainants for their own commercial gain, there is no bona fide offering of goods and services by the Respondent.
The allegations of the Complainant remain unchallenged. There is no evidence before the Panel to show that the Respondent has rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complainants have satisfied the requirements of paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, there is evidence of registration and use of the disputed domain names in bad faith where the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service offered on the Respondent’s website or location.
In the Panel’s view, it is obvious that at the time the Respondents registered the disputed domain names they must have had the Trademark in mind as it had already been registered and used for many years worldwide, whereas the Respondents’ Website uses the Trademark in connection to offering support for the Complainants’ FIREFOX Internet browser. Furthermore, the use of the Trademark and the lack of an effectivedisclaimer would likely confuse Internet users into believing a relationship existed between the Complainants and the Respondents. Under the circumstances, the Panel is therefore satisfied that the Respondent registered the disputed domain name in bad faith and that the use which the Respondent made of the disputed domain name to attract Internet users for the Respondent’s commercial gain constitutes use of the disputed domain name in bad faith.
Consequently, the third and last element of paragraph 4(a) of the Policy is also met. 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, and , be transferred to the second Complainant Mozilla Corporation.
Alfred Meijboom
Sole Panelist
Date: February 4, 2019
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