The Complainant is Mozilla Foundation and Mozilla Corporation of United States of America (“United States”), represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Ranjeet Kumar, Samsung India Private Limited of Maharashtra, India. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 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 Registrar a request for registrar verification in connection with the disputed domain name. On December 11, 2018, the Registrar transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on December 18, 2018. In accordance with the Rules, paragraph 5, the due date for Response was January 7, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 8, 2019.
The Center appointed Marilena Comanescu as the sole panelist in this matter on January 14, 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.
The language of the proceeding is English. 4. Factual Background
The Complainant, Mozilla Corporation is a wholly-owned subsidiary of the Mozilla Foundation which is a non-profit, public benefit organization based in California. The Complainant supports and develops open source software programs, and in particular, “Mozilla Firefox” is a free and open-source web browser developed by the Complainant which was released in November 2004 and which currently is the third most used web browser in the world, according to the web traffic analysis tool StartCounter. The Complainant and its Firefox Internet browser received numerous honors and awards worldwide.
The Complainant owns several trademark registrations for MOZILLA, such as the United States trademark word registration No. 2815227 filed on September 25, 1998 and registered on February 17, 2004 for goods in class 9 and the European Union trademark word registration No. 00182899 filed on April 1, 1996 and registered on March 3, 1999 for goods and services in classes 9, 38 and 42.
The Complainant (or its subsidiary) owns numerous domain names for or including Mozilla name, the main one being registered in 1998.
According to the information provided in the Complaint, this Panel agrees that MOZILLA trademark is well known in connection with software and online services. See also Mozilla Foundation and Mozilla Corporation v. Kiran Kumar,WIPO Case No. D2016-0952 and Mozilla Foundation, Mozilla Corporation v. Whois Privacy Shield Services / Hiroshi Sakamoto,WIPO Case No. D2016-1488.
The disputed domain name was registered on April 22, 2018 and, according to the evidence provided in the Complaint, at the time of filing the Complaint it was used in connection with a website supposedly offering 24 hours assistance to solve technical problems relating to the Complainants’ Firefox browser, providing such services based on a subscription fee and was displaying representations of Complainant’s word and figurative MOZILLA trademarks.
According to Annex 12 to Complaint, the website associated with the disputed domain name presents similarities with at least three other websites corresponding to domain names containing third parties trademarks and supposedly offering support hotlines for such third parties’ products and services. One of the similarities refer to the contact telephone numbers which were reported on websites relating to scam activities as such numbers were likely used for fraudulent activities.
Further, the website to which the disputed domain name is pointing contains a disclaimer stating: “Mozilla Support Number is an independent provider of remote tech support for third party products. Any use of third party trademarks, brand names, product and services is only referential”.
According to Complainant’s searches provided as Annex 26 to Complaint, the Respondent’s company name “Samsung India Private Limited” does not exist in the Indian companies registry.
On August 16, 2018, the Complainant sent a letter to the Respondent asking to voluntarily transfer the disputed domain name to it. No response was received. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is confusingly similar to its well known trademark MOZILLA, the Respondent has no rights or legitimate interests in the disputed domain name, and the Respondent registered and is using the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In view of the Respondent’s default, the discussion and findings will be based upon the contentions in the Complaint and any reasonable position that can be attributable to the Respondent. Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the following circumstances are met:
(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 the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel will further analyze the potential concurrence of the above circumstances. A. Identical or Confusingly Similar
The Complainant holds rights in the MOZILLA trademark.
The disputed domain name incorporates the Complainant’s trademark MOZILLA in its entirety, with the addition of the dictionary terms “support” and “number”. However, such addition does not prevent a finding of confusing similarity as the Complainant’s trademark is clearly recognizable within the disputed domain name.
Numerous UDRP panels have considered that the addition of other terms (whether descriptive, pejorative, meaningless or otherwise) to trademarks in a domain name is not sufficient to escape a finding of confusing similarity. See section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
Further, it is well established in decisions under the UDRP that the generic Top-Level Domain (“gTLD”) (e.g. “.com”, “.info”, “.net”, “.org”) may typically be disregarded for the purposes of consideration of confusing similarity between a trademark and a domain name.
Given the above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark MOZILLA, pursuant to the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
The Complainant asserts that the Respondent does not hold any trademark rights, license or authorization whatsoever to use the mark MOZILLA, that the Respondent is not commonly known by the disputed domain name and that the Respondent has not used the disputed domain name in connection with a legitimate noncommercial or fair use or a bona fide offering of goods and services.
Under the Policy, “where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element”. See section 2.1 of the WIPO Overview 3.0.
The Respondent has not replied to the Complainant’s contentions and has not come forward with relevant evidence to rebut the Complainant’s prima facie case.
There is nothing in the record suggesting that the Respondent has ever been commonly known by the disputed domain name.
The Respondent has used the disputed domain name in connection with a website allegedly providing technical assistance for problems relating to the Complainants’ Firefox browser, in exchange of payment of a subscription and displaying without authorization the Complainant’s trademark. This is definitely not an activity falling under the circumstances listed by paragraph 4(c) of the UDRP as demonstrating Respondent’s rights or legitimate interests in the disputed domain name.
The disclaimer posted on the website associated with the disputed domain name will be addressed under chapter C below.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii). C. Registered and Used in Bad Faith
The Complainant holds trademark rights for MOZILLA since 1998 and its mark is well known worldwide. The disputed domain name was created in 2018 and incorporates the Complainant’s mark together with generic words “support” and “number”, words commonly used in various industries, including in the Complainant’s business.
For the above, the Panel finds that the disputed domain name was registered in bad faith, knowing the Complainant and targeting its trademark.
According to the Complaint and unrebutted by the Respondent, at the time of filing the Complaint, the Respondent was using the disputed domain name to allegdly provide technical services for Complainant’s products presenting itself as an independent provider named ”Mozilla Support Number” and was displaying Complainant’s trademarks to further increase the confusion. These apparent services were provided in exchange of a subscription fee paid by Internet users diverted on the disputed domain name and confused into believing that there is a sort of connection or association between the Complainant and the Respondent.
Paragraph 4(b)(iv) of the Policy provides that the use of a domain name to intentionally attempt “to attract, for commercial gain, Internet users to [the respondent’s] website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the respondent’s] website or location or of a product or service on [the respondent’s] website or location” is evidence of registration and use in bad faith.
The Respondent was using without permission the Complainant’s well know trademark in order to get traffic on its web portal and to obtain commercial gain from the false impression created for the Internet users with regard to a potential affiliation or connection with the Complainant. This false impression was increased by the incorporation of the Complainant’s trademark in the disputed domain name, the use of the MOZILLA mark on the website and the services offered on such website.
The mere presence of the disclaimer which is not prominent, and at the end of the webpage on the website associated with the disputed domain name cannot cure such bad faith, due to the overall circumstances of this case. The Panel notes in particular, the unauthorized use of the Complainant’s distinctive and famous marks in the disputed domain name and on the corresponding website; the disclaimer’s size, position and content which was not sufficiently prominent and clear to support a finding that the Respondent has undertaken reasonable steps to avoid unfairly passing itself off as related to the Complainant or to otherwise confuse Internet users; the fact that the disputed domain name incorporates a widely known trademark together with descriptive words corresponding to the Complainants’ area of activity; the content of the website suggests the false impression of being an official authorized support service of the Complainant; the similarities between the website under the disputed domain name and third parties websites, very likely used for fraudulent activities, as presented in Annex 12 to Complaint; the contact details of the Respondent provided in the WhoIs which are inaccurate since the communication with the Respondent failed (and the Complainant’s searches provided as Annex 26 reveal there is no such company name registered in India) and the Respondent’s refusal to participate in the present procedure or to respond to Complainant’s cease and desist letter. See also sections 3.7 and 3.2.1 of the WIPO Overview 3.0.
For all the above reasons, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith, pursuant to the Policy, paragraph 4(a)(iii). 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 be transferred to the Complainant.
Marilena Comanescu
Sole Panelist
Date: January 23, 2019
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