WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mozilla Foundation, Mozilla Corporation v. Bozlul Haque

Case No. D2017-0672

1. The Parties

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

The Respondent is Bozlul Haque of West Bromwich, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).

2. The Domain Name and Registrar

The disputed domain name <downloadfirefoxbrowser.com> is registered with GoDaddy.com, LLC (the ”Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2017. On April 3, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 4, 2017, 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 April 20, 2017. In accordance with the Rules, paragraph 5, the due date for Response was May 10, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2017.

The Center appointed Johan Sjöbeck as the sole panelist in this matter on May 23, 2017. 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 Complainant supports and develops open source software programs, including the FIREFOX Internet browser. The Complainant has provided evidence that it is the owner of the following FIREFOX trademarks:

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

- European Union Trademark No. 1203934, FIREFOX, registered on March 24, 2014.

- International Trademark No. 1203934, FIREFOX, registered on March 24, 2014.

The disputed domain name <downloadfirefoxbrowser.com> was registered by the Respondent on June 7, 2006.

5. Parties’ Contentions

A. Complainant

The Complainant, the Mozilla Foundation, is a non-profit organization based in California that, together with its wholly-owned subsidiary, the Mozilla Corporation, is dedicated to promoting the development of the Internet as a global public resource. As part of its mission to promote openness, innovation, and opportunity on the Internet, the Complainant supports and develops open source software programs, and today it is best known for creating the world-renowned FIREFOX Internet browser.

Since it was founded in 2003, the Complainant has acquired considerable goodwill and notoriety worldwide in its company name, brands, logos and trademarks, including MOZILLA and FIREFOX. The Complainant’s main website is available at “www.mozilla.org”. FIREFOX is a free and open-source web browser developed by the Complainant together with its subsidiary, with approximately 40% of its code written by over 10,000 volunteers worldwide. Mozilla’s 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 4th most-used web browser in the world according to StatCounter, a web traffic analysis tool.

The term “Firefox” in connection with software and online services is exclusively associated with the Complainant, as shown by the fact that 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 its FIREFOX trademark had been registered under the “.com” generic Top Level-Domain (gTLD) by the Respondent. The disputed domain name is pointing to a website offering an outdated version of the Complainant’s FIREFOX software for download and displaying the Complainant’s FIREFOX logo. The website also contains a dynamic commercial banner advertising products that are in direct competition with those of the Complainant’s, such as the Google Chrome browser.

On June 8, 2016, the Complainant sent a cease-and-desist letter to the Respondent by email and by 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. On August 10, 2016, the Complainant sent a follow-up email to the Respondent who, again, did not reply.

The disputed domain name <downloadfirefoxbrowser.com> incorporates the term “Firefox” in its entirety. The addition of the terms “download” and “browser” does not diminish but rather reinforces the confusing similarity with the Complainant’s trademark as the terms are strongly associated with the Complainant’s browser product, which is constantly being downloaded from the Complainant’s official websites.

The Respondent is not a licensee of the Complainant, nor has he been otherwise authorized or allowed by the Complainant to make any use of its FIREFOX trademark, in a domain name or otherwise. The Respondent cannot assert that, prior to any notice of this dispute, he 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 Respondent is using the disputed domain name to resolve to a website offering the Complainant’s FIREFOX software for download and containing a dynamic commercial banner advertising products that are in direct competition with those of the Complainant. Such use of the disputed domain name cannot constitute a bona fide offering of goods or services as the Respondent is obtaining financial gain derived from the Complainant’s goodwill and renown.

The website associated with the disputed domain name has the same “look and feel” as earlier versions of the Complainant’s official website and prominently displays, without authorization, the Complainant’s logo.

The Respondent cannot conceivably assert that he is commonly known by the term FIREFOX, in accordance with paragraph (c)(ii) of the Policy, given the notoriety surrounding the Complainant’s FIREFOX trademark and the fact that it is exclusively associated with the Complainant in connection with software and online services.

Given the nature of the Internet and the Complainant’s renown and goodwill worldwide, including in the United Kingdom, it would be inconceivable for the Respondent to argue that he was unaware of the Complainant’s rights at the time of registration of the disputed domain name in 2006, not long after its launch, particularly as the Complainant’s FIREFOX browser was one of the most popular browsers at this time and the second most popular browser in the United Kingdom according to media and the web analytic tool “OneStat.com”.

The addition of the terms “download” and “browser”, is a strong indication of the Respondent’s knowledge of the Complainant’s trademark rights at the time of registration, as these terms refer precisely to the Complainant’s product. Furthermore, the use of the Complainant’s logo and the presence of a disclaimer referring to the Complainant is an additional strong indication of the Respondent’s awareness of the Complainant’s rights. The fact that a disclaimer is displayed on the website does not cure the Respondent’s bad faith as the Respondent has achieved his objective of diverting traffic away from the Complainant to his own website by taking advantage of the Complainant’s rights.

The Complainant further submits that the Respondent registered the disputed domain name to prevent the Complainant from reflecting its trademark in the corresponding domain name and has engaged in a pattern of such conduct. The Respondent is closely related to the registrant of other domain names infringing well-known third party trademarks and so the Respondent’s connection to a pattern of abusive domain name registrations can only be interpreted as a strong indication of his bad faith in the present case.

The Respondent’s website displays commercial banners. The Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to his website by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation or endorsement of the website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:

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

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

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

A. Identical or Confusingly Similar

The Complainant is, according to the submitted evidence, the owner of the registered trademark FIREFOX. The disputed domain name <downloadfirefoxbrowser.com> incorporates the Complainant’s trademark in its entirety with the addition of the common terms “download” and “browser”. The addition of these terms to the Complainant’s FIREFOX trademark is insufficient to avoid a finding of confusing similarity under the first element of the Policy.

Having the above in mind, the Panel concludes that the disputed domain name <downloadfirefoxbrowser.com> is confusingly similar to the Complainant’s trademark FIREFOX and that the Complainant has proven the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish rights or legitimate interests in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:

(i) that it has made preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute; or

(ii) that it is commonly known by the disputed domain name, even if it has not acquired any trademark rights; or

(iii) that it intends to make 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.

The Complainant has not licensed or otherwise consented to the Respondent’s use of the FIREFOX trademark in connection with the disputed domain name <downloadfirefoxbrowser.com> which is confusingly similar to the Complainant’s trademark. There is no evidence in the case indicating that the Respondent has made preparations to use the disputed domain name in connection with a bona fide offering of goods or services prior to the dispute. On the contrary, the evidence indicates that the Respondent has used the Complainant’s trademark for its own commercial advantage by displaying the Complainant’s logo together with a dynamic commercial banner which advertises products that are in direct competition with those of the Complainant.

Although given the opportunity, the Respondent has not rebutted the Complainant’s prima facie case. The Respondent has not submitted any evidence indicating that it is the owner of any trademark rights or that the Respondent is commonly known by the disputed domain name. Furthermore, there is no evidence indicating that the Respondent intends to make a legitimate noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainant’s trademark.

The Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy or otherwise, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also satisfied the requirement under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:

(i) circumstances indicating the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the disputed domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name; or

(ii) circumstances indicating that the disputed domain name was registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided there is a pattern of such conduct; or

(iii) circumstances indicating that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the disputed domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other online location, by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on that website or location.

The Complainant’s registered trademark FIREFOX predates the registration of the disputed domain name <downloadfirefoxbrowser.com>. The Panel notes that the Complainant has made several attempts to contact the Respondent via post and email but the Respondent has not replied.

It has been argued by the Complainant that the Respondent sought to take advantage of the goodwill associated with the Complainant’s mark. The Complainant has submitted evidence demonstrating that the Respondent is using the disputed domain name for a commercial website which offers an outdated version of the Complainant’s Internet browser for download. According to the submitted evidence, the Respondent’s website has the same “look and feel” as the Complainant’s old website and it displays the Complainant’s logo. In addition, the website contains a dynamic commercial banner which promotes products that are in direct competition with those of the Complainant. Given the above and in the absence of contrary evidence, the Panel finds that the Respondent knew or should have known of the Complainant’s trademark when the Respondent registered and used the disputed domain name.

Thus, the evidence in the case before the Panel indicates that the disputed domain name <downloadfirefoxbrowser.com> has intentionally been registered and used in an attempt to attract, for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s trademark FIREFOX as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website. The fact that the website contains a disclaimer that states that the disputed domain name is not associated with “Mozilla” does not change the Panel’s bad faith finding.

There is no evidence in the case file that refutes the Complainant’s submissions. The Panel therefore concludes that the Complainant has proven the requirements under paragraph 4(a)(iii) of the Policy and that the disputed domain name <downloadfirefoxbrowser.com> has been registered and used in bad faith.

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 <downloadfirefoxbrowser.com> be transferred to the Complainant.

Johan Sjöbeck
Sole Panelist
Date: May 30, 2017