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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Mozilla Foundation and Mozilla Corporation v. Limpkin Walker

Case No. DME2008-0007

1. The Parties

Complainants are Mozilla Foundation and Mozilla Corporation, both of Mountain View, California, United States of America, represented by The Gigalaw Firm, Douglas M. Isenberg, Attorney at Law, LLC, United States.

Respondent is Limpkin Walker, of Wisconsin, United States.

2. The Domain Name and Registrar

The disputed domain name <getfirefox.me> (the "Domain Name") is registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on December 11, 2008. On that same day, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Domain Name and GoDaddy.com, Inc. emailed to the Center its verification response confirming that 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") as approved by the doMEn d.o.o ("doMEn"), the Rules for Uniform Domain Name Dispute Resolution Policy as approved by the doMEn (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 18, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2009. Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 8, 2009.

On January 13, 2009, the Center received an unsolicited supplemental submission from Complainant.

The Center appointed Harrie R. Samaras as the sole panelist in this matter on January 21, 2009. 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

Complainant Mozilla Foundation was established in July 2003, as a California not-for-profit corporation dedicated to the public benefit. Complainant Mozilla Corporation was established in August 2005 as a wholly owned subsidiary of Mozilla Foundation, to coordinate the development and marketing of Mozilla technologies and products. The term "Mozilla" has been used to describe, among other things, an open-source software project (the "Mozilla Project") whose code has been used as a platform for Internet projects. The result is a suite of products that have been translated into more than 50 languages. One of those products, the Firefox Internet browser, has received various accolades: the "Best of open source productivity apps" award from InfoWorld; "Editors' Choice" award from PC Magazine; "Editors' Choice" award from CNET; and the "Reader's Choice" award for "Favorite Web Browser" from Linux Journal.

Mozilla Foundation is also the owner of approximately 39 trademark registrations in approximately 17 countries consisting of or including the mark FIREFOX, including U.S. Reg. No. 2,974,321 for FIREFOX (the FIREFOX Mark). Mozilla Foundation also owns U.S. Reg. No. 3,408,321 for the FIREFOX logo. Those marks have been in use in commerce for over 4 years, since 2004. Mozilla Corporation is a licensee of the FIREFOX Mark.

Furthermore, Complainants are the registrants of approximately 78 domain names containing the FIREFOX Mark or variations thereof, including the domain name <firefox.com>, which was registered on October 6, 1998.

Respondent registered the Domain Name on July 23, 2008.

5. Parties' Contentions

A. Complainants

The Domain Name is confusingly similar to the FIREFOX Mark. Respondent has no rights or legitimate interests in the Domain Name. Respondent registered and is using the Domain Name in bad faith, including that Respondent has failed to respond to three demand emails.

B. Respondent

Respondent did not reply to Complainants' contentions.

6. Discussion and Findings

Where a party fails to present evidence in its control, the Panel may draw such inferences as it considers appropriate. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case No. D2000-0004 (February 16, 2000). Insofar as Respondent has defaulted, it is therefore appropriate to accept the facts asserted by Complainants and to draw adverse inferences of fact against Respondent where appropriate. Nonetheless, paragraph 4(a) of the Policy requires that Complainants must prove each of the following three elements to obtain an order that the Domain Name should be cancelled or transferred:

(i) the Domain Name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainants have rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith

A. Identical or Confusingly Similar

This element consists of two parts: first, do Complainants have rights in a relevant mark and, second, is the Domain Name identical or confusingly similar to that mark.

The Panel finds Complainants have established rights in the FIREFOX Mark based on long-standing use of the mark in the United States (and elsewhere) and their United States trademark registrations for the FIREFOX Mark in conjunction with computer programs for accessing and displaying files on the Internet and the intranet and network access server operating software for connecting computers to the Internet and the intranet.

The Panel further finds that the domain name <getfirefox.me> is confusingly similar to the FIREFOX Mark. The Domain Name wholly incorporates the FIREFOX Mark, adding to it the country code top-level domain ("ccTLD") ".me" (for Montenegro) and the descriptive word "get". If a domain name incorporates a complainant's mark in its entirety, it may be confusingly similar to that mark despite the addition of other words. Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512 (August 24, 2004); Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 ("when a domain name incorporates a complainant's mark in its entirety, it is confusingly similar to that mark despite the addition of other words"). See, e.g., United States Patent and Trademark Office's Trademark Manual of Examination Procedures (3d ed.) § 1215.02 ("neither the beginning of the URL (‘http: //www.') nor the TLD have any source-indicating significance"). See also Hoffmann-La Roche Inc. v. UrProxy Domains, WIPO Case No. D2007-0456 ("the relevant comparison to be made is with the second-level portion of each of the Domain Names only, as it is well-established that the top-level domain names should be disregarded for this purpose").

Furthermore, the addition of the descriptive word "get" in the Domain Name is not sufficient to avoid confusing similarity SANOFI AVENTIS v. ProtectFly.com/RegisterFly.com, WIPO Case No. D2006-1272 (finding the domain names <getambienfree.info>, <getambienhere.info> and <getambien.info> confusingly similar to complainant's AMBIEN trademark). See also Sanofi-aventis v. Standard Tactics LLC, WIPO Case No. D2007-1909 ("[t]he Panel also accepts that the addition of the word[] ‘get' [...]so as to form the second level of the Domain Name, does not prevent the Domain Name from being ‘confusingly similar' (as that term is understood for the purposes of the Policy), to the Complainant's registered trade marks"); Philadelphia Flyers, Inc. v. credoNIC.com/DOMAIN FOR SALE, WIPO Case No. D2006-0199) ("[g]enerally a user of a mark ‘may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it'").

Finally, the addition of the ccTLD ".me" is without legal significance from the standpoint of comparing the Domain Name to the FIREFOX Mark because use of a ccTLD (or gTLD) is required of domain name registrants, ".me" is one of only a few such ccTLD's, and ".me" does not serve to identify a specific enterprise as a source of goods or services. See SBC Communications v. Fred Bell aka Bell Internet, WIPO Case No. D2001-0602 (July 8, 2001).

For the foregoing reasons, the Panel finds that Complainants have satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

It is uncontested that Complainants have not licensed or otherwise authorized Respondent to use the FIREFOX Mark, for example, in a domain name. Insofar as Complainants have made a prima facie showing, Respondent lacks rights or legitimate interests to the Domain Name (Spencer Douglass, MGA v. Bail Yes Bonding, WIPO Case No. D2004-0261 (June 1, 2004)), this shifts the burden to Respondent to show evidence that it has rights or legitimate interests in the Domain Name. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270 (June 6, 2000). Such facts, without contrary evidence from Respondent, are sufficient to permit a finding in Complainants' favor on this issue. Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007 (March 6, 2000).

The Panel therefore holds that Complainants have satisfied paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets forth four criteria that are to be considered as evidence of the registration and use of a domain name in bad faith:

"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product."

These criteria are not exclusive and the Panel may conclude that Respondent acted in bad faith where other circumstances reveal the bad faith nature of the registration and use of the disputed domain name.

By not responding to the Complaint in this proceeding, Respondent has failed to invoke any circumstances which could demonstrate Respondent did not register and use the Domain Name in bad faith. Notwithstanding that, it is uncontested Respondent has registered and is using a domain name that is confusingly similar to the FIREFOX Mark which Complainants have used for over 4 years and which the United States Patent and Trademark Office registered, both, before Respondent registered the Domain Name. Furthermore Respondent's use of a buried disclaimer on the website associated with the Domain Name shows Respondent had prior knowledge of the FIREFOX Mark, and it is likely the case Respondent had such knowledge when registering and using the Domain Name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.5, available at http://www.wipo.int/amc/en/domains/search/overview#35 ("A disclaimer can also show that the respondent had prior knowledge of the complainant's trademark").

Moreover, Respondent is using the Domain Name in connection with a webpage that appears to be affiliated with or approved by Complainants. For example, prominently displayed by way of color and placement on the top of Respondent's webpage is Complainants' FIREFOX Mark and their FIREFOX logo. Further down the page, Respondent uses a screenshot of a webpage that reflects Complainants' (Mozilla's) website. Using Complainants' FIREFOX Mark and logo on its site, Respondent is offering to the public a free download of Complainants' FIREFOX 3 browser as well as free downloads of a browser that is in competition with Complainants' browser. In fact, when the public clicks on the "download now" area on Respondent's website for the FIREFOX 3 browser, they are taken to Complainants' website for the actual download. The result is that Respondent has registered and is using the Domain Name for the purpose of disrupting Complainants' business with its customers. Cf. Pancil, LLC v. Jucco Holdings, WIPO Case No. D2006-0676 ("The only explanation of what has happened is that Respondent's motive in registering and using the sites seems to be... simply to disrupt the Complainant's relationship with its customers or potential customers or attempt to attract Internet users for potential gain. These both constitute evidence of registration and use in bad faith: paragraph 4(b)(iii) & (iv) of the Policy).

Lastly, Respondent has failed to respond to three demand letters or transfer the Domain Name as requested. Such failure to positively respond provides "strong support for a determination of ‘bad faith' registration and use." Encyclopedia Britannica, Inc. v. John Zucarini and The Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330. See also RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242 (finding bad faith where respondent refused to voluntarily transfer the domain name and failed to respond to demands by complainant).

The Panel therefore holds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <getfirefox.me> be transferred to Complainant Mozilla Corporation.

Harrie R. Samaras
Sole Panelist

Dated: February 4, 2009