Mozilla Foundation and Mozilla Corporation v. John Morzen
Claim Number: FA1607001685074
Complainant is Mozilla Foundation and Mozilla Corporation (“Complainant”), represented by David Taylor of Hogan Lovells (Paris) LLP, France. Respondent is John Morzen (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <fire-fox.us> and <firefoxos.us>, registered with Name.Com, Inc.; and <downloadfirefox.us>, <mozillafirefox.us>, and <mozillathunderbird.us>, registered with Key-Systems Gmbh.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 22, 2016; the Forum received payment on July 25, 2016.
On July 25, 2016, Name.Com, Inc. confirmed by e-mail to the Forum that the <fire-fox.us> and <firefoxos.us> domain names are registered with Name.Com, Inc. and that Respondent is the current registrant of the names. Name.Com, Inc. has verified that Respondent is bound by the Name.Com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On July 26, 2016, Key-Systems Gmbh confirmed by e-mail to the Forum that the <downloadfirefox.us>, <mozillafirefox.us>, and <mozillathunderbird.us> domain names are registered with Key-Systems Gmbh and that Respondent is the current registrant of the names. Key-Systems Gmbh has verified that Respondent is bound by the Key-Systems Gmbh registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
On August 18, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 7, 2016 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@downloadfirefox.us, postmaster@fire-fox.us, postmaster@firefoxos.us, postmaster@mozillafirefox.us, and postmaster@mozillathunderbird.us. Also on August 18, 2016, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
The Response was received on September 8, 2016—after the deadline to file a response. Thus the Forum does not consider the Response to be in compliance with ICANN Rule 5.
On September 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Notwithstanding the formally untimely Response, the Administrative Panel (the "Panel"), in its discretion, has accepted and will consider the Response in its decision.
Having reviewed the communications records, the Panel finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Pursuant to its registrations with the United States Patent and Trademark Office (“USPTO”), Complainant has rights in the MOZILLA mark (e.g., Reg. No. 2,815,227, registered Feb. 17, 2004), the FIREFOX mark (e.g., Reg. No. 2,974,321, registered July 19, 2005), and the THUNDERBIRD mark (Reg. No. 3,450,034, June 17, 2008).
The disputed domains are confusingly similar to Complainant’s trademarks. The domains incorporate the marks in their entirety either jointly or separately, the “.us” country-code top-level domain (“ccTLD”), generic terms “download” or “os,” and hyphenation.
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domains. Respondent has no trade or service mark that is identical to the domains. Respondent has not made a bona fide offering of goods or services or any legitimate noncommercial or fair use. Rather, <fire-fox.us>, <firefoxos.us>, and <mozillathunderbird.us> do not resolve to an active website; and the <mozillafirefox.us>, <downloadfirefox.us>, and domain names resolve to commercial sites and, along with <firefoxos.us>, are also listed on the Sedo platform for sale.
Respondent registered or used the disputed domains in bad faith. Since the <mozillafirefox.us>, <downloadfirefox.us>, and <firefoxos.us> domain names are associated with the Sedo platform and for sale, Policy ¶ 4(b)(i) bad faith is present. Further, Respondent registered multiple domains in an effort to deprive Complainant of the ability to register them, indicating a pattern of bad faith registrations per Policy ¶ 4(b)(ii). Next, Respondent uses the <downloadfirefox.us> to resolve to a parking page displaying commercial links for financial gain in bad faith under Policy ¶ 4(b)(iv). Respondent uses the <mozillafirefox.us> domain name to resolve to a website displaying commercial banners advertising products that are in direct competition with those of Complainant, also indicating bad faith under Policy ¶ 4(b)(iv). The disclaimers associated with the pages are irrelevant. The <fire-fox.us>, <firefoxos.us>, and <mozillathunderbird.us> domain names are inactively held, indicating bad faith per Policy ¶ 4(a)(iii). Lastly, Respondent registered the disputed domains or used them with actual and/or constructive knowledge—bad faith per Policy ¶ 4(a)(iii).
B. Respondent
Respondent consents to the transfer of all at-issue domain names.
Complainant has trademark rights in the MOZILLA, FIREFOX and THUNDERBIRD marks.
Respondent registered the at-issue domain names after Complainant acquired rights in its relevant marks.
Respondent, via its response to the Forum, unequivocally consents to having the at-issue domain names transferred to Complainant.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Preliminary Issue: Consent to Transfer
As mentioned above, Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” Paragraph 15(a) of the Rules thus permits a panel to grant a complainant’s requested relief without deference to Policy ¶¶4(a)ii or 4(a)iii when a respondent consents to such relief. See Boehringer Ingelheim Int’l GmbH v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum Jan. 9, 2003) (transferring the domain name registration where the respondent stipulated to the transfer); see also, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Nat Arb. Forum Jan. 13, 2004) (“In this case, the parties have both asked for the domain name to be transferred to the Complainant. . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.”)
In the instant case there is a clear indication that Respondent consents to transferring each of the at-issue domain names to Complainant, therefore Panel follows its rationale set out in Homer TLC, Inc. v. Jacek Woloszuk, FA613637 (Forum May 17, 2015), as well as in other similarly reasoned decisions where the respondent likewise agreed to transfer the at-issue domain name(s) to the complainant.
As more fully discussed in the cases referenced above, as a necessary prerequisite to Complainant obtaining the requested relief, even where Respondent consents to such relief, Complainant must nonetheless demonstrate that it has rights in a mark that is confusingly similar or identical to the relevant at-issue domain name. Complainant establishes its rights in each of the MOZILLA, FIREFOX and THUNDERBIRD marks through their relevant USPTO trademark registrations. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). Furthermore the at-issue domain names each incorporate one or more of Complainant’s trademarks in its entirety, adding the generic terms “download” or “os,” or hyphenation, and culminates with the ccTLD, “.us.” The resulting differences are insufficient to distinguish any of the at-issue domain names from its relevant encapsulated trademark. Therefore, the Panel finds that Respondent’s <downloadfirefox.us>, <fire-fox.us>, <firefoxos.us>, <mozillafirefox.us>, and <mozillathunderbird.us> domain names are each confusingly similar to one or more of Complainant’s trademarks pursuant to Policy ¶ 4(a)(i). See Hewlett-Packard Development Company, L.P. v. Yangxiaoyi / Qingyuan Tianheng Trading Company Ltd., FA 1625637 (Forum June 23, 2015) (“The combination of a complainant’s mark does not allow a respondent to avoid a finding of confusing similarity under Policy ¶4(a)(i).”); see also Lockheed Martin Corp. v. Roberson, FA 323762 (Forum Oct. 19, 2004) (holding that the ccTLD “.us” does not differentiate the disputed domain name from Complainant’s mark); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.).
In light of the foregoing, Respondent’s express consent-to-transfer the at-issue domain names to Complainant in response to the Complaint compels the Panel to order that the <downloadfirefox.us>, <fire-fox.us>, <firefoxos.us>, <mozillafirefox.us>, and <mozillathunderbird.us> domain names be transferred as requested and the Panel has no reason to provide any analysis under Policy ¶¶ 4(a)(ii) and/or 4(a)(iii) in support of its decision.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <downloadfirefox.us>, <fire-fox.us>, <firefoxos.us>, <mozillafirefox.us>, and <mozillathunderbird.us> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 21, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page