Complainants are Mozilla Foundation and Mozilla Corporation of Mountain View, California, United States of America (“United States” or “U.S.”), represented by Hogan Lovells (Paris) LLP, France.
Respondent is Whois Agent, Whois Privacy Protection Service, Inc. of Kirkland, Washington, United States / John Morzen of Poughkeepsie, New York, United States.
The disputed domain names, <fire-fox.biz>, <fire-fox.info>, <mozillafirefox.biz>, and <mozillafirefox.net>, are registered with Name.com, Inc. (Name.com LLC) (the “First Registrar”).
The disputed domain names, <mozillafirefoxupdate.com> and <mozillathunderbird.net>, are registered with Moniker Online Services, LLC (the “Second Registrar”).
The disputed domain name, <fire-fox.com>, is registered with GoDaddy.com, LLC (the “Third Registrar”).
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 Registrars a request for registrar verification in connection with the disputed domain names. On July 25, 2016, the First Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant of the disputed domain names, <fire-fox.biz>, <fire-fox.info>, <mozillafirefox.biz>, and <mozillafirefox.net>, and providing Respondent’s contact details. On the same date, the Third Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant of the disputed domain name, <fire-fox.com>, and providing Respondent’s contact details. On July 26, 2016, the Second Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant of the disputed domain names, <mozillafirefoxupdate.com> and <mozillathunderbird.net>, and providing Respondent’s 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 Respondent of the Complaint, and the proceedings commenced on August 4, 2016. In accordance with the Rules, paragraph 5, the due date for Response was August 24, 2016. The Center received an email communication from Respondent on August 6, 2016. A second email communication from Respondent was received on August 19, 2016. A third email communication from Respondent was received on August 26, 2016.
The Center appointed Gregory N. Albright as the sole panelist in this matter on September 6, 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.
Complainant Mozilla Foundation is a non-profit organization based in California. Complainant Mozilla Corporation is Mozilla Foundation’s wholly-owned subsidiary. Mozilla Foundation and Mozilla Corporation are hereafter referred to collectively as “Complainant.”
Complainant’s trademark registrations, including in classes 9 and 38, include the following:
-United States Trademark No. 2815227, MOZILLA, registered on February 17, 2004 (first used in commerce in 1998);
-United States Trademark No. 3187334, MOZILLA, registered on December 19, 2006;
-European Union Trademark No. 182899, MOZILLA, registered on March 3, 1999;
-International Trademark No. 974622, MOZILLA, registered on August 13, 2008;
-United States Trademark No. 2974321, FIREFOX, registered on July 19, 2005 (first used in commerce in 2004);
-European Union Trademark No. 1203934, FIREFOX, registered on March 24, 2014;
-International Trademark No. 1203934, FIREFOX, registered on March 24, 2014;
-United States Trademark No. 3450034, THUNDERBIRD, registered on June 17, 2008 (first used in commerce in 2003);
-European Union Trademark No. 5336821, THUNDERBIRD, registered on September 6, 2007; and
-International Trademark No. 974623, THUNDERBIRD, registered on August 13, 2008.
The disputed domain names were registered on the dates shown below:
-<fire-fox.biz> October 4, 2010;
-<fire-fox.info> March 3, 2013;
-<mozillafirefox.biz> October 27, 2012;
-<mozillafirefox.net> October 9, 2011;
-<mozillafirefoxupdate.com> October 20, 2011;
-<mozillathunderbird.net> November 12, 2011; and
-<fire-fox.com> February 13, 2009.
The Facts
Complainant, Mozilla Foundation, is a non-profit organization based in California that, together with its wholly-owned subsidiary, 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, Complainant supports and develops open-source software programs, and today it is best known for creating the world-renowned Mozilla Firefox Internet browser. Since it was founded in 2003, Complainant has acquired considerable goodwill and notoriety worldwide in its company name, brands, logos and trademarks, including MOZILLA, FIREFOX and THUNDERBIRD.
Firefox is a free and open-source web browser developed by Complainant (together with its subsidiary), with approximately 40 percent of its code written by its over 10,000 volunteers (or “Mozillians”) on every continent. The 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 second-most used web browser in the world and in Europe and the fourth-most used web browser in the United States (as of May 2016), according to StatCounter, a web traffic analysis tool and to the U.S. Federal Government. Firefox is available for Windows, OS X and Linux operating systems, and has expanded to mobile devices, including Android and iOS. The Firefox Internet browser is available in 89 languages, with more than 50 percent of global Firefox users using non-English versions.
Thunderbird is a free, open-source, email and messaging application developed by Complainant. Launched in 2003, Complainant’s Thunderbird software features intelligent spam filters, built-in RSS reader, and quick search. Thunderbird is built on the same technical platform as Mozilla Firefox web browser. It is currently one of the most popular open-source email clients, used by millions of people around the world.
Given the exclusive online nature of Complainant’s activity, Complainant’s domain names consisting of its trademarks are not only the heart of its entire business but also the main way for millions of users to avail themselves of its services. Reflecting its global reach, Complainant is the registrant of many domain names consisting of the trademark MOZILLA, including <mozilla.org> since 1998, <mozilla.com> and <mozilla.net> and numerous country code extensions. Complainant is also the registrant of many domain names consisting of the trademark FIREFOX, including <firefox.com> since 1998 as well as a number of domain names under country codes extensions and is also the registrant of many domain names including the trademark THUNDERBIRD.
Furthermore, Complainant has developed a strong presence online by being active on different social media forums available online, such as Facebook, Twitter, YouTube, LinkedIn and Google+.
In addition to its strong international reputation, Complainant has secured ownership of numerous trademark rights in the terms MOZILLA, FIREFOX and THUNDERBIRD, in many jurisdictions around the world.
The fame of Complainant’s trademarks is, ironically, evidenced by the number of cybersquatters who have sought to illegally exploit the very significant consumer recognition and goodwill attached to its trademarks. UDRP panelists in earlier cases have ordered respondents to transfer domain names containing Complainant’s renowned MOZILLA and FIREFOX trademarks to Complainant, including in the following decisions: Mozilla Foundation and Mozilla Corporation v. Kiran Kumar, WIPO Case No. D2016-0952 (<mozilla.lol> and <firefox.lol>); Mozilla Foundation and Mozilla Corporation v. Limpkin Walker, WIPO Case No. DME2008-0007 (<getfirefox.me>); and Mozilla Foundation, Mozilla Corporation v. Metro Media, WIPO Case No. DME2008-0006 (<firefox.me>).
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 Complainant’s business and consumers. Accordingly, Complainant devotes significant resources to protecting its trademarks in forums such as this administrative proceeding.
The disputed domain names are resolving to the following websites:
a) The disputed domain name <fire-fox.com> is resolving to a website inviting Internet users to download Complainant’s Firefox 36 browser “for free” and containing dynamic commercial banners advertising products that are in direct competition with those of Complainant’s, such as the Opera Internet browser. The website contains at the bottom the following disclaimer in fine print: “Fire-fox.com is strictly and [sic] enthusiast site. Mozilla and FireFox are registered trademarks of Mozilla. Google is a registered trademark of Google. Fire-fox.com is in no way associated with Mozilla or Google.”The disputed domain name <fire-fox.com> is listed for sale on the Sedo platform.
b) The disputed domain name <mozillafirefox.biz> resolves to a parking page containing sponsored links targeting Complainant’s goods and services, such as “software” and “open source”, and also contains a link offering the disputed domain name for sale, which redirects to the Sedo platform. The parking page also contains a disclaimer stating that: “Domain owner and Sedo maintain no relationship with third party advertisers. Reference to any specific service or trade marks is not controlled by Sedo or domain owner and does not constitute or imply its association, endorsement or recommendation.”
c) The disputed domain name <mozillafirefox.net> resolves to a purported fan site inviting Internet users to download Complainant’s Firefox 43.0.2 browser for Windows “absolutely free” and also contains a disclaimer at the bottom: “MozillaFirefox.net is strictly a Firefox enthusiast site and is in no way associated with Mozilla.”
d) The disputed domain names <fire-fox.biz>, <fire-fox.info>, <mozillafirefoxupdate.com>, and <mozillathunderbird.net> are not resolving.
Respondent is also the owner of other domain names including Complainant’s trademarks, namely <downloadfirefox.us>, <fire-fox.us>, <firefoxdownload.us>, <firefoxos.us>, <mozillafirefox.us>, and <mozillathunderbird.us>. These domain names are the subject of a parallel proceeding under the usTLD Dispute Resolution Policy.
Respondent was also previously the registrant of the domain names <ffirefox.com>, <firefox2.us>, <firefox3.us>, <firefox4.us>, <firefox5.us>, <firefox6.us>, <firefoxdownload.org>, <free-firefox.org> and <ifrefox.com> and is (or was) the registrant of other domain names including third-party trademarks such as <wikkpedia.org>, <charltonheston.us>, <meet-up.info> and <meet-up.us>.
Identical or Confusingly Similar
Complainant has trademark rights in the terms MOZILLA, FIREFOX and THUNDERBIRD in many jurisdictions throughout the world, including the registrations identified in Section 4, above.
The disputed domain names incorporate Complainant’s MOZILLA, FIREFOX and THUNDERBIRD trademarks in their entirety, either jointly or separately.
The fact that the disputed domain names <fire-fox.biz>, <fire-fox.com> and <fire-fox.info> contain a hyphen between the terms “fire” and “fox” is insufficient to diminish the confusing similarity with Complainant’s FIREFOX trademark.
Neither does the addition of the generic term “update” in the disputed domain name <mozillafirefoxupdate.com> diminish the confusing similarity with Complainant’s MOZILLA and FIREFOX trademarks. If anything, the presence of the term “update” reinforces the confusing similarity with Complainant’s trademarks, as such term is strongly associated with Complainant’s software products, which are constantly being “updated” through online downloads Complainant makes available on its websites, such as “www.mozilla.org”.
It is well established under the Policy that the generic Top-Level Domain (“gTLD”), such as “.biz,” “.com,” or “.net,” is generally immaterial when assessing whether a domain name is identical or confusingly similar to a complainant’s trademark as it is a functional element.
Rights or Legitimate Interests
Respondent is not a licensee of Complainant, nor has he been otherwise authorized or allowed by Complainant to make any use of its trademarks, in a domain name or otherwise.
Respondent cannot assert that, prior to any notice of this dispute, he was using, or had made demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services in accordance with paragraph 4(c)(i) of the Policy. As described above, the disputed domain names are either not resolving and are therefore being passively held (as is the case for the disputed domain names <fire-fox.biz>, <fire-fox.info>, <mozillafirefoxupdate.com> and <mozillathunderbird.net>), resolving to a parking page containing sponsored links and offering the disputed domain name for sale (as is the case for the disputed domain name <mozillafirefox.biz>) or are resolving to websites offering users to download Complainant’s Firefox Internet browser and displaying dynamic commercial banners to products in direct competition with those of Complainant’s, such as Opera Internet browser (as is the case for <fire-fox.com>). Such use of the disputed domain names cannot constitute a bona fide offering of goods or services as Respondent is seeking to profit from Complainant’s goodwill and renown by taking advantage of Complainant’s rights. Furthermore, the fact that the disputed domain name <mozillafirefox.biz> is up for sale on the Sedo platform cannot constitute a bona fide offering of goods and services as any value obtained from such sale would be based on Complainant’s goodwill and reputation.
Respondent cannot conceivably assert that he is commonly known by Complainant’s trademarks, in accordance with paragraph (c)(ii) of the Policy, given the notoriety surrounding Complainant’s trademarks and the fact that they are exclusively associated with Complainant in connection with software and Internet-related services. Furthermore, a search carried out by Complainant has revealed that Respondent has not secured or even sought to secure any trademark rights in the terms MOZILLA, FIREFOX or THUNDERBIRD.
Neither can Respondent assert that he has made or is currently making a legitimate noncommercial or fair use of the disputed domain names, 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. Respondent’s use of the disputed domain names <fire-fox.com> and <mozillafirefox.biz>, as described above, can be considered neither legitimate noncommercial nor fair, as the websites are clearly commercial in nature, as strongly suggested by the presence of commercial banners and sponsored links. The fact that the disputed domain names <fire-fox.biz>, <fire-fox.info>, <mozillafirefoxupdate.com>, and <mozillathunderbird.net> are not resolving is a strong indication of Respondent’s lack of rights or legitimate interests in these disputed domain names.
Respondent’s use of the disputed domain name <mozillafirefox.net> for a purported fan site offering Complainant’s Internet browser for download cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name, given the nature of the disputed domain name itself, which consists of an exact match of Complainant’s MOZILLA and FIREFOX trademarks without adornment, as it is preventing Complainant from reflecting its trademarks in the corresponding domain name and may also mislead Internet users into thinking that the disputed domain name is controlled by or affiliated to Complainant, when in fact it is not. See paragraph 2.5 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) (“A respondent does not have rights or legitimate interests in expressing its view, even if positive, on an individual or entity by using an identical or confusingly similar domain name”).
Finally, given Complainant’s renown worldwide, it is simply not possible to conceive of any plausible actual or contemplated use of the disputed domain names by Respondent (or a third party) that would not be illegitimate, as it would inevitably result in misleading diversion and unfair taking advantage of Complainant’s rights.
Registered and Used in Bad Faith
Respondent is using the disputed domain names <fire-fox.com> and <mozillafirefox.biz> to intentionally attract, for commercial gain, Internet users to his websites by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the websites, in accordance with paragraph 4(b)(iv) of the Policy.
Complainant’s trademarks are highly distinctive and so Internet users are likely to expect to find websites that are affiliated to or sponsored by Complainant at the disputed domain names <fire-fox.com> and <mozillafirefox.biz>. There is therefore no reason that could explain why Complainant’s well-known trademarks are being used by Respondent in the disputed domain names <fire-fox.com> and <mozillafirefox.biz> other than to divert traffic intended for Complainant to Respondent’s own websites. See Microsoft Corporation v. Gioacchino Zerbo, WIPO Case No. D2005-0644.
Respondent’s use of the disputed domain name <mozillafirefox.biz> to resolve to a parking page displaying commercial links - from which the Respondent (or a third party) is undoubtedly obtaining financial gain - and offering the disputed domain name for sale is clearly in bad faith as Respondent is no doubt seeking to take advantage of Complainant’s rights. See Ustream.TV, Inc. v. Vertical Axis, Inc., WIPO Case No. D2008-0598. The fact that the parking page displays a disclaimer is irrelevant as Respondent is responsible for the content appearing on the website, regardless of whether the sponsored links are automatically generated or not. See paragraph 3.8 of the WIPO Overview 2.0. Furthermore, it is not necessary for Respondent himself to have profited directly from those commercial links in order to establish bad faith use. It would be sufficient for a third party to have made some profit from such arrangements. See paragraph 3.8 of the WIPO Overview 2.0.
Respondent’s use of the disputed domain name <fire-fox.com> to resolve to a website displaying commercial banners advertising products that are in direct competition with those of Complainant, such as the Opera web browser and from which Respondent (or a third party) is no doubt obtaining financial gain, also constitutes bad faith use as Respondent is not only unduly taking advantage of Complainant’s rights but is also damaging and disrupting Complainant’s business. See Opera Software ASA v. Mike Morgan, WIPO Case No. D2006-0752. The fact that a disclaimer is displayed on the website does not cure Respondent’s bad faith, as Respondent has achieved his objective of diverting traffic away from Complainant to his own website by taking advantage of Complainant’s rights. See paragraph 3.5 of the WIPO Overview 2.0
Respondent’s use of the disputed domain name <mozillafirefox.net>, which consists of an exact match of Complainant’s trademarks, for a purported fan site constitutes bad faith use that is not consistent with the spirit of the Policy, as it is not only preventing Complainant from reflecting its trademarks under the “.net” gTLD, it is also misleading Internet users, who would usually expect to find this disputed domain name being used to point to a website that is affiliated or sponsored by Complainant. Internet users are invited to download Complainant’s Firefox 43.0.2 browser for Windows for free.
The fact that the disputed domain names <fire-fox.biz>, <fire-fox.info>, <mozillafirefoxupdate.com> and <mozillathunderbird.net> are not resolving and are therefore being passively held by Respondent does not preclude a finding of bad faith given the overall circumstances of the case, in particular Complainant’s renown worldwide and Respondent’s pattern of abusive domain name registrations as described above.
Given the overwhelming renown of Complainant’s trademarks worldwide, and the nature of the disputed domain names, there simply cannot be any actual or contemplated good faith use of the disputed domain names by Respondent or a third party other than Complainant as they would inevitably result in misleading diversion and unfair taking advantage of Complainant’s rights.
An additional indication of bad faith is Respondent’s failure to respond to Complainant’s cease and desist letter. See, for instance, Mozilla Foundation and Mozilla Corporation v. Limpkin Walker, WIPO Case No. DME2008-0007 (“Such failure to positively respond provides ‘strong support for a determination of “bad faith” registration and use.’”).
The fact that Respondent has deliberately chosen to conceal his identity by means of a privacy protection service is another strong indication of Respondent’s bad faith. There is simply no reason that could explain why Respondent would need to protect his identity by means of a privacy shield “except to frustrate the purposes of the Policy or make it difficult for a brand owner to protect its trademarks against infringement, dilution and cybersquatting.” See Ustream.TV, Inc. v. Vertical Axis, Inc, WIPO Case No. D2008-0598.
Respondent did not submit a formal response to the Complaint, as contemplated by the Rules, paragraph 5. Respondent did, however, send three emails to the Center, as noted above in Section 3 and discussed below.
In an August 6, 2016 email, Respondent John Morzen inquired whether he could “be in touch with the complainant directly to resolve” the dispute “without having to use more WIPO resources.”
On August 8, 2016, the Center notified Complainant of Respondent’s email and notified the Parties that, pursuant to the Rules, paragraph 17, the proceeding could be suspended to implement a settlement agreement if Complainant submitted a request for suspension. By August 9, 2016 email Complainant advised the Center that it did not wish to suspend the proceedings, since Complainant had attempted informal resolution before commencing this proceeding, Respondent did not respond, and Complainant incurred considerable inconvenience and expense as a result of Respondent’s actions.
In an August 19, 2016 email, Respondent once again requested that the dispute be ended. While Respondent did “[not] agree with the number of accusations made against [him],” he stated that he has “absolutely no objection to transferring all the domains in question as soon as possible […], so long as the case is terminated.” Respondent indicated that he would file a response if Complainant was not interested in such a transfer.
By August 19, 2016 email, the Center notified Complainant of Respondent’s August 19, 2016 email, and notified the Parties that if it did not receive request a suspension request from Complainant, the proceeding would continue.
On August 26, 2016, Respondent sent another email to the Center, in which he stated that he is “not disagreeing in any way with the requested remedies, or asking that the Administrative Panel to [sic] deny them”. Respondent stated: “I want the complainant to accept transfer of these domains, immediately.” While Respondent does not agree “with some of the assertions made in this case,” he is “in no way contesting […] ownership of these domains, and […] want[s] them to be transferred to the complainant, as soon as possible – preferably outside of a UDRP.” Respondent asserted that he is “a huge fan of the complainant, and desire[s] that they obtain these domains free-of-charge, as quickly as possible,” without “having proceedings take more time or resources than they need to, when [Respondent] is not disputing whom they should go to.” Respondent claimed that he was “not able to read [Complainant’s] cease and desist email” regarding “a domain that is not being disputed in this case,” and “never received a letter for any of the domains that are being disputed in this case.” Respondent concluded: “I request that the case be terminated and that I be allowed to transfer the domains to the complainant, as soon as possible as I have no interest in disputing they remain in my ownership.”
Paragraph 4(a) of the Policy requires Complainant to prove as to each disputed domain name that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) 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.
Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of the domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that Respondent has rights and legitimate interests in the disputed domain name.
A threshold question is how Respondent’s emails and conditional consent to transfer the disputed domain names to Complainant affect the analysis. Complainant was within its rights to refuse suspension of these proceedings, having incurred the substantial time and expense to present the dispute to the Center. The remaining question is whether Respondent’s consent to transfer makes it unnecessary to consider the merits of the Complaint. See paragraph 4.13 of the WIPO Overview 2.0.
In this case, Complainant has not accepted Respondent’s implicit offer of a settlement, and hence there is no basis for termination of this proceeding under paragraph 17 of the Rules.
In The Cartoon Network LP, LLLP v. Mike Morgan, WIPO Case No. D2005-1132, the Panel observed the following:
“A number of Panel decisions have considered the proper course where a respondent has unilaterally consented to transfer a disputed domain name to a complainant. There have been at least three courses proposed: (i) to grant the relief requested by the Complainant on the basis of the Respondent’s consent without reviewing the facts supporting the claim (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207; Slumberland France v. Chadia Acohuri, WIPO Case No. D2000-0195); (ii) to find that consent to transfer means that the three elements of paragraph 4(a) are deemed to be satisfied, and so transfer should be ordered on this basis (Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620; Desotec N.V. v. Jacobi Carbons AB, WIPO Case No. D2000-1398); and (iii) to proceed to consider whether on the evidence the three elements of paragraph 4(a) are satisfied because the Respondent’s offer to transfer is not an admission of the Complainant’s right (Koninklijke PhilipsElectronics N.V. v. Manageware, WIPO Case No. D2001-0796) or because there is some reason to doubt the genuineness of the Respondent’s consent (Société Française du Radiotéléphone-SFR v. Karen, WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co, WIPO Case No. D2003-0745).
There is a difference between a unilateral consent to transfer and an admission of the elements of paragraph 4(a) of the Policy. A respondent might consent to transfer in circumstances where bad faith would be strongly denied (for example, where a domain name was registered in error). Accordingly, this Panel does not accept that a unilateral consent to transfer ‘deems’ proved the three elements of paragraph 4(a) of the Policy.
However, this Panel considers that a genuine unilateral consent to transfer by the Respondent provides a basis for an immediate order for transfer without consideration of the paragraph 4(a) elements. Where the Complainant has sought transfer of a disputed domain name, and the Respondent consents to transfer, then pursuant to paragraph 10 of the Rules the Panel can proceed immediately to make an order for transfer. This is clearly the most expeditious course (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207).”
In this Panel’s view, a panel should: (1) satisfy itself that the complainant has shown that it owns the trademark rights it claims, lest the panel place its imprimatur upon a transfer of the disputed domain name(s) to a person or entity who is not entitled to it; (2) accept a respondent’s genuine and unambiguous consent to transfer as an admission that the respondent does not hold rights or legitimate interests in the disputed domain name(s), or a waiver of any right to assert any such rights or legitimate interests; and (3) where the panel finds a broader interest in reaching and recording substantive determination (e.g., in connection with patterns of conduct under paragraph 4(b)(ii) of the Policy) and has reason to conclude that the respondent is a serial cybersquatter, reach the question of bad faith registration and use for the benefit of trademark owners, panels, or courts in subsequent proceedings. In this Panel’s view, the Respondent’s consent to transfer here should not prevent a finding of bad faith that may inform the determination of other potential disputes.
Accordingly, the Panel will briefly address the three elements of paragraph 4(a) of the Policy below.
Complainant has shown that it owns rights in the trademarks MOZILLA, FIREFOX, and THUNDERBIRD, and that the disputed domain names are identical or confusingly similar to those trademarks. The first element of paragraph 4(a) of the Policy is satisfied.
The Panel notes that Respondent has not asserted any rights or legitimate interests in respect of the disputed domain names in his email communications. On the contrary, Respondent has given his consent to transfer of the disputed domain names, which in this Panel’s view either constitutes an admission that he does not hold any rights or legitimate interests in the disputed domain names, or a knowing waiver of any right to claim otherwise in this proceeding. The second element of paragraph 4(a) of the Policy is satisfied.
The Panel agrees with Complainant that there are many indicia of Respondent’s registration and use of the disputed domain names in bad faith.
Most significant, Respondent registered and used seven domain names that incorporate Complainant’s trademarks, over a period of more than four years. Complainant has also indicated that a parallel proceeding is currently pending regarding six additional “.us” domain names registered by Respondent that also incorporate Complainant’s trademarks. This is a course of conduct, not an isolated registration of a single domain name that might be viewed as a mistake.
The Panel also rejects Respondent’s suggestion that there is no bad faith because he is Complainant’s “fan.” In this Panel’s view, a “fan” does not need to register seven domain names over a period of several years to show his admiration for a trademark owner who has not granted him any right to use its valuable trademarks. Further, Complainant has shown that Respondent has used some of the disputed domain names for profit, to create confusion about Complainant’s sponsorship of the disputed domain names, and to direct users to the websites of Complainant’s competitors. Respondent’s passive holding of the remaining disputed domain names also interferes with Complainant’s trademark rights, and constitutes bad faith use. Even assuming that Respondent is Complainant’s “fan,” that does not excuse registration and use of domain names in a manner that improperly harms the trademark owner’s interests, or exploits the value of the trademarks for profit in contravention of the Policy.
The Panel therefore finds that the third element of paragraph 4(a) of the Policy is satisfied.
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, <fire-fox.biz>, <fire-fox.info>, <mozillafirefox.biz>, <mozillafirefox.net>, <mozillafirefoxupdate.com>, <mozillathunderbird.net>, and <fire-fox.com>, be transferred to Complainant, Mozilla Corporation.
Gregory N. Albright
Sole Panelist
Date: September 20, 2016