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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mozilla Foundation and Mozilla Corporation v. On behalf of moziiia.com OWNER, c/o whoisproxy.com / Mr Fabian Simon, Vondos GmbH

Case No. D2019-2965

1. The Parties

The Complainant is Mozilla Foundation and Mozilla Corporation, United States of America (“United States”), represented by Ridder, Costa & Johnstone LLP, United States.

The Respondent is On behalf of moziiia.com OWNER, c/o whoisproxy.com, United States / Mr Fabian Simon, Vondos GmbH, Germany.

2. The Domain Names and Registrar

The disputed domain names <moziiia.com> and <moziiia.org> are registered with RegistryGate GmbH (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 3, 2019. On December 3, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On December 4, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on December 4, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on December 5, 2019.

The Center verified that the Complaint, together with the amendment to 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 in English and German of the Complaint, and the proceedings commenced on December 11, 2019. In accordance with the Rules, paragraph 5, the due date for Response was December 31, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2020.

The Center appointed Alistair Payne as the sole panelist in this matter on January 10, 2020. 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 Registrar confirmed in the Request of Registrar Verification on December 4, 2019, that the Registration Agreement for the disputed domain names is in German hence, an email was sent on that same day inviting the Parties to comment on the language of the proceeding in German or English. On December 5, 2019, the Complainant requested the proceedings to be in English and no communication was received from the Respondent on this matter. The proceedings have been conducted in dual languages – English and German.

4. Factual Background

The Complainant Group (Mozilla Foundation and Mozilla Corporation) is a non-profit organization that since 2002 has supported and developed open source software programs and in particular, has created and distributed the Firefox Internet browser which is used by more than 250 million people worldwide, making it the third most used Internet browser in the world. Its main website is located at “www.mozilla.org” and it also owns “www.mozilla.com”, which re-directs to its main website. The Complainant Group either owns or has the right to enforce various trade mark registrations for its MOZILLA trade mark, including United States trade mark number 2815227 registered on February 17, 2004, and European Union trade mark number 000182899 registered on March 3, 1999.

The disputed domain names were registered simultaneously on August 29, 2018.

According to the Complaint, the websites at the disputed domain names host fraudulent versions of the Complainant Group’s own add-on blocklist and telemetry endpoint.

5. Parties’ Contentions

A. Complainant

The Complainant Group submits that Mozilla Foundation owns registered trade mark rights in its MOZILLA trade mark as set out above and that Mozilla Corporation has the licence and legal right to enforce these marks. It says that the first element of the disputed domain name prior to the Top-Level Domain (“TLD”) element is identical to MOZILLA apart from the substitution of the letter “i” in place of the letter “l”. It says that the disputed domain names are virtually identical in spelling, appearance and overall consumer impression to the Complainant Group’s official domain names, particularly in the context of use in a browser address bar or configuration page. It notes that wherever the letter “i” is rendered as a capital letter the level of confusing similarity is even greater. As a result, says the Complainant Group, each of the disputed domain names are confusingly similar to its MOZILLA registered trade mark.

The Complainant Group asserts that the disputed domain names are in practice being used by the Respondent to unblock malicious browser add-ons in infected Firefox installations, leaving users vulnerable to malware that would have been removed in an uninfected browser and to steal user data. The Complainant Group notes that it discovered in 2019 that the Respondent was hosting a fraudulent version of its add-on blocklist on the <moziiia.com> disputed domain name and by doing so was able to deceive Firefox users. The Complainant Group submits that even if an infected user checks his or her Firefox settings that the URL for the fraudulent blocklist will appear so similar to the correct URL that the user is unlikely to notice that he or she has an infected browser. In addition and as an additional consequence, the Complainant Group submits that infected clients end up by sending privacy analytics information to a server other than the Complainant Group’s server and over which the Complainant Group has no control. The result, says the Complainant Group, is that user safety, security, and privacy is put at risk.

The Complainant Group concludes by submitting that the fact that the disputed domain names are confusingly similar to the Complainant Group’s official domain names means that the Respondent is able to engage in this malicious activity in a way that is more likely to mislead users. It says that considering the Respondent’s blatantly abusive registration and use of the disputed domain names, it had to bring this Complaint in order to protect consumers from being misled as to the source of the websites associated with the disputed domain names and to protect consumers from the malicious software that is still being hosted and operated at the disputed domain names.

The Complainant Group submits that the Respondent has no rights or legitimate interests in the disputed domain names. It is not a licensee of the Complainant Group and has not been authorised by the Complainant Group to use the MOZILLA trade marks. In that the websites at the disputed domain names host fraudulent versions of the Complainant’s own add-on blocklist and privacy analytics software endpoint, it says that the Respondent is clearly aware of the Complainant Group and of its mark. The Complainant Group further asserts that the Respondent cannot legitimately claim to be commonly known by the disputed domain names which it notes are misspellings of the Complainant Group’s trade mark. Finally, in this regard, the Complainant Group submits that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names.

The Complainant Group submits that the Respondent must have been aware of the MOZILLA mark when it registered the disputed domain names, on the basis that it is a highly distinctive mark that has acquired considerable renown and goodwill worldwide as a result of extensive use of the last 15 years. It notes that prior UDRP panels have recognized the extent and strength of this renown, such as the panel in Mozilla Foundation and Mozilla Corporation v. Kiran Kumar, WIPO Case No. D2016-0952, <mozilla.lol>.

The Complainant Group asserts that the fact that the disputed domain names consist of the Complainant Group’s trade mark with an “i” substituted for an “l” is itself evidence of bad faith as it is apparent that the Respondent deliberately chose to register the disputed domain names in order to cause confusion and to take advantage of the Complainant Group’s rights. This practice, often referred to as “homograph spoofing” according to the Complainant Group, is evidence not only of the registration of the disputed domain names in bad faith.

As far as use in bad faith is concerned, the Complainant Group submits that the Respondent’s use of the disputed domain names as part of a sophisticated effort to keep malicious add-ons installed on users’ browsers and to steal user data which amounts to the use of a deceptive domain name to facilitate the distribution of malware amounts to clear use in bad faith as has been found by previous UDRP panels and in particular: Electronic Frontier Foundation v. Shawanda Kirlin, WIPO Case No. D2015-1628; Twitter, Inc. v. Moniker Privacy Services/accueil des solutions inc, WIPO Case No. D2013-0062; Spoke Media Holdings, Inc. v. Andrey Volkov, WIPO Case No. D2010-1303.

B. Respondent

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

6. Discussion and Findings

Language of the Proceedings

The Registration Agreement for the disputed domain names is in the German language but the Complainant Group has submitted the Complaint and supporting and subsequent materials in English. The Complainant Group requests that the Panel exercise its discretion under Paragraph 11(a) of the Rules to make the language of the proceedings be the English language and submits in summary that: (i) the content hosted at the disputed domain names is a fraudulent version of the Complainant Group’s content and is all in English; (ii) the current Registrar maintains the Registration Agreement in both English and German: (iii) the former registration agreement with Amazon was entirely in English; (iv), the true Respondent, Mr. Simon appears from the “Vondos Media” LinkedIn profile to list proficiency in both the English and German languages; and (v) there is other evidence that Mr. Simon has made web postings in English. Accordingly, submits the Complainant Group, in view of its corporate language being English it would be most appropriate and efficient for the proceeding to be in English. The Panel has taken note of the factors identified by the Complainant Group to support its case in this regard and notes that as Mr. Simon, who also appears to be a principal of “Vondos Media”, does indeed list himself on his LinkedIn profile as speaking English, and as the Respondent has not objected to the language of the proceedings, it appears to the Panel that there is no disadvantage to the Respondent in the case proceeding in English. On the other hand, there would be considerable inconvenience and expense to the Complainant Group to now have to proceed in the German language. In all of these circumstances the Panel determines that it is most appropriate for the case to proceed in the English language.

A. Identical or Confusingly Similar

The Complainant Group has demonstrated that it owns or has the legal right to enforce various trade mark registrations for its MOZILLA trade mark, including United States trade mark number 2815227 registered on February 17, 2004, and European Union trade mark number 000182899 registered on March 3, 1999. The first element of the disputed domain names prior to the TLD name element is identical to MOZILLA, apart from the substitution of the letter “i” in place of the letter “l”. The Panel accepts the Complainant Group’s submission that the disputed domain names are very similar in spelling, appearance, and overall consumer impression to the MOZILLA mark and that this is even more so the case when they are used in the context of a browser address bar or configuration page. Accordingly, the Panel finds that each of the disputed domain names are confusingly similar to the Complainant Group’s MOZILLA registered trade mark.

B. Rights or Legitimate Interests

The Complainant Group has submitted that the Respondent is not a licensee of the Complainant Group and has not been authorised by the Complainant Group to use the MOZILLA trade mark. It says that the Respondent cannot legitimately claim to be commonly known by the disputed domain names which it notes are misspellings of the Complainant Group’s trade mark. In that the websites at the disputed domain names host fraudulent versions of the Complainant Group’s own add-on blocklist and privacy analytics software endpoint, as noted below under Part C, it appears that the Respondent was clearly aware of the MOZILLA mark and of its owner upon registration of the disputed domain names and has registered the disputed domain names as part of a plan to mislead Internet users.

The Panel finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent has failed to provide any explanation for its use of the disputed domain names as described by the Complainant. This use appears to the Panel to be intended at the least to mislead Internet users, if not to be fraudulent. It is not legitimate conduct for bona fide purposes and accordingly the Panel finds that the Complainant Group has succeeded in making out the necessary case under this element of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the MOZILLA mark is unusual and highly distinctive. It also appears, based on the evidence submitted by the Complainant, that the MOZILLA mark has acquired considerable renown and goodwill worldwide as a result of extensive use of the last 15 years. Indeed, prior panels have recognized the extent and strength of this renown, for example see Mozilla Foundation and Mozilla Corporation v. Kiran Kumar, supra. In that the disputed domain names are, as noted above, confusingly similar similar to the MOZILLA mark, that they were only registered on August 29, 2018, many years after the Complainant Group’s first use of MOZILLA, and considering the Complainant Group’s unchallenged submission that it discovered in 2019 that the Respondent was hosting a fraudulent version of its add-on blocklist at the website at the <moziiia.com> disputed domain name, the Panel infers that the Respondent must have been well aware of the Complainant Group’s MOZILLA mark at the date of registration of the disputed domain names and registered the disputed domain names on purpose.

The Complainant Group has submitted that the disputed domain names are in practice being used by the Respondent to unblock malicious browser add-ons in infected the Complainant Group’s Firefox installations, leaving users vulnerable to malware that would have been removed in an uninfected browser and to steal user data. The Complainant Group says that even if an infected user checks his or her Firefox settings that the URL for the fraudulent blocklist will appear so similar to the correct URL that the user is unlikely to notice that he or she has an infected browser. In addition, the Complainant Group says that infected clients end up by sending privacy analytics information to a server other than the the Complainant Group’sMozilla server and over which the Complainant Group has no control. This says the Complainant Group puts user safety, security, and privacy at risk.

It appears to the Panel that the Respondent has registered the disputed domain names in order to confuse Internet users into thinking that they have reached domain names associated with the Complainant Group. The result, based on the Complainant Group’s evidence, is that malicious add-ons are installed onto users’ browsers, through the websites to which the disputed domain names divert. There is significant potential, as pointed out by the Complainant Group, for the Respondent to misuse or steal Internet users’ data as a result, although there is no evidence on the record of user data having been stolen in fact. This sort of use of the disputed domain names, which essentially amounts to facilitating the distribution of malware, has been found by previous UDRP panels to amount to use in bad faith. See in particular: Electronic Frontier Foundation v. Shawanda Kirlin, supra.

It is apparent to the Panel that the Respondent deliberately chose to register the disputed domain names in order to cause confusion and to take advantage of the Complainant Group’s rights. The Panel’s finding in this regard is only reinforced by the fact that the Respondent used a privacy service to register the disputed domain names and to mask its true identity. The Respondent has failed to explain its conduct or to rebut these submissions. As a result, the Panel finds that, the Respondent has both registered and used the disputed domain names in bad faith and that the Complaint also succeeds under this element of 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 disputed domain names, <moziiia.com> and <moziiia.org>, be transferred to Mozilla Corporation, as requested by the Complainant Group.

Alistair Payne
Sole Panelist
Date: January 19, 2020

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