Red Hat, Inc. v. Dave Haecke
Claim Number: FA0606000726010
PARTIES
Complainant is Red Hat, Inc. (“Complainant”), represented by Ross Q. Panko, of Arent Fox PLLC, 1050 Connecticut Avenue NW, Washington, DC 20036. Respondent is Dave Haecke (“Respondent”), 8418 E. Shea Blvd. Suite 150, Scottsdale, AZ 85260.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <redhat.org>
and <redhatconsulting.com>, registered with Go Daddy Software, Inc.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Flip Petillion as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 2, 2006; the National Arbitration Forum received a hard
copy of the Complaint on June 8, 2006.
On June 5, 2006, Go Daddy Software, Inc. confirmed by e-mail to the
National Arbitration Forum that the <redhatconsulting.com>
domain name is registered with Go Daddy Software, Inc. and that the Respondent
is the current registrant of the name. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, Inc. registration agreement and has thereby agreed to resolve
domain-name disputes brought by third parties in accordance with ICANN’s
Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 8, 2006, Go Daddy Software, Inc. confirmed by e-mail to the
National Arbitration Forum that the <redhat.org>
domain name is registered with Go Daddy Software, Inc. and that the
Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by
the Go Daddy Software, Inc. registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with the
Policy.
On June 12, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of July 3, 2006 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@redhat.org and postmaster@redhatconsulting.com by
e-mail.
A timely Response was received and determined to be complete on July 3,
2006.
On July 7, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Flip Petillion as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant
makes the following assertions:
1. The <redhat.org> domain name is identical to Complainant's
trademarks/service marks.
The <redhatconsulting.com> domain name is confusingly similar to
Complainant's trademarks/service marks.
2. Respondent has no rights or legitimate interest
in the <redhat.org> and the <redhatconsulting.com> domain
names.
3. Respondent has registered
and used the domain names in bad faith.
B. Respondent
Respondent requests the Panel to deny Complainant’s request as to the <redhat.org>
domain name.
FINDINGS
1. Complainant Red Hat is the owner of numerous trademark
registrations for the mark RED HAT, including U.S. Trademark Registration Nos.
2,142,662, 2,561,410, and 2,991,587.
Complainant
adopted and began using its mark RED HAT in connection with computer software
and related goods and services, including consulting services, as early as
1994. The RED HAT mark has been in
continuous use since at least as early as 1994.
Complainant uses its RED HAT mark on its web site, located
at <redhat.com>, in connection with its software and related goods and
services.
Complainant has developed and marketed its RED HAT
mark.
2. Respondent owns the domain name <redhat.org>,
a domain name that was registered on November 22, 1997, and that was acquired
by Respondent for $1,275 on an eBay auction on or about September 28,
2005. Respondent also registered the
domain name <redhatconsulting.com> on November 2, 2005.
3. On April 19, 2006, upon receiving a cease and desist
letter from Complainant’s outside counsel, Respondent replied that he would not
cease his use of the <redhat.org> domain name.
4. Complainant has demonstrated that Respondent has engaged
in numerous attempts to sell the domain names at high prices.
5. Respondent claims that in a telephone
conversation with Complainant, Respondent agreed to transfer the <redhatconsulting.com>
domain name registration to Complainant.
However, Respondent did not agree to transfer the <redhat.org>
domain name and contests Complainant’s allegations as to this domain name. In his response, Respondent confirms
agreeing with the transfer of ownership of the <redhatconsulting.com>
domain name to Complainant.
DISCUSSION
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.”
Respondent claims that in a telephone conversation with Complainant, Respondent agreed to transfer the <redhatconsulting.com> domain name registration to Complainant. However, Respondent did not agree to transfer the <redhat.org> domain name and contests Complainant’s allegations as to this domain name.
The Panel finds that in a
circumstance such as this, where Respondent has admitted that it does not have
an interest in the <redhatconsulting.com> domain name anymore, the
Panel will forego the traditional UDRP analysis with respect to this domain
name and order the immediate transfer of the domain name, while continuing with
the traditional Policy analysis regarding the <redhat.org> domain
name. 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.”); see also Disney Enters., Inc. v. Morales,
FA 475191 (Nat. Arb. Forum June 24, 2005) (“[U]nder such circumstances, where
Respondent has agreed to comply with Complainant’s request, the Panel felt it
to be expedient and judicial to forego the traditional UDRP analysis and order
the transfer of the domain names.”).
*
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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.
Complainant asserts that it has registered the RED HAT mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,142,662 issued March 10, 1998; Reg. No. 2,561,410 issued April 16, 2002; Reg. No. 2,991,587 issued September 6, 2005) in connection with computer software products and services.
The Panel finds that Complainant
has established rights in the RED HAT mark through its valid trademark
registrations with the USPTO, and that its rights in the mark predate
Respondent’s registration of the <redhat.org> domain name on
September 28, 2005.
Complainant also asserts that the <redhat.org> domain name is identical to its RED HAT mark because the disputed domain name contains the entire registered mark and merely adds the generic top-level domain (“gTLD”) “.org.”
The Panel finds that the mere addition
of the gTLD “.org” is insufficient to distinguish Respondent’s <redhat.org>
domain name from Complainant’s RED HAT mark, thus rendering the disputed domain
name identical to the mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Mehrotra,
D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name
<microsoft.org> is identical to the complainant’s mark); see also BMW
AG v. Loophole, D2000-1156 (WIPO Oct. 26, 2000) (finding that there is “no
doubt” that the domain name <bmw.org> is identical to the complainant’s
well-known and registered BMW trademarks).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) ( “Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
Complainant alleges that Respondent is not commonly known by the <redhat.org> domain name (nor the <redhatconsulting.com> domain name), because the WHOIS information lists “Dave Haecke” as the registrant of the disputed domain names, and there is no other evidence in the record suggesting that Respondent is commonly known by the disputed domain names. Complainant also asserts that it has not authorized or licensed Respondent to register or use domain names incorporating Complainant’s RED HAT mark or any variation.
The Panel agrees that Respondent is
not commonly known by the disputed domain names, and finds that Respondent does
not have rights or legitimate interests in the domain names pursuant to Policy
¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA
96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests
because the respondent is not commonly known by the disputed domain name or
using the domain name in connection with a legitimate or fair use); see also
Wells Fargo & Co. v. Onlyne Corp. Services11,
Inc., FA 198969 (Nat. Arb. Forum Nov. 17,
2003) (“Given the WHOIS contact information for the disputed domain [name], one
can infer that Respondent, Onlyne Corporate Services11, is not commonly known
by the name ‘welsfargo’ in any derivation.”).
Complainant claims that Respondent was using
the <redhat.org> and <redhatconsulting.com> domain
names to divert Internet users to a commercial search engine website with links
to multiple websites offering the software products of Complainant and its
competitors. After Complainant sent
Respondent a cease-and-desist letter, Respondent allegedly changed the content
of the website to display the text “Scottsdale Consulting,” followed briefly by
the text “Red Hat Poker Club.”
Complainant claims that Respondent’s domain names now redirect Internet
users to the <newyorkdomainexchange.com> domain name.
The Panel finds that Respondent’s past and
present uses of the disputed domain names for commercial gain, presumably by
earning “click-through” fees for each consumer Respondent diverts to other
websites, are not bona fide offerings of goods or services pursuant to
Policy ¶ 4(c)(i) or a legitimate noncommercial or fair uses pursuant to Policy
¶ 4(c)(iii). See Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's
registration and use of the <gayaol.com> domain name with the intent to
divert Internet users to Respondent's website suggests that Respondent has no
rights to or legitimate interests in the disputed domain name pursuant to
Policy Paragraph 4(a)(ii).”); see also Nike, Inc. v. Dias,
FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering
of goods or services where the respondent used the complainant’s mark without
authorization to attract Internet users to its website, which offered both the
complainant’s products and those of the complainant’s competitors).
Complainant also alleges that Respondent has
offered to sell the <redhat.org> domain name for far in excess of
Respondent’s out-of-pocket costs.
Complainant specifically alleges that Respondent attempted to sell the
<redhat.org> domain name registration on eBay for $30,000 to
$50,000, and that at one point, Respondent was asking for $100,000.
The Panel finds that by offering to sell the
<redhat.org> domain name registration, Respondent does not have
any rights or legitimate interests in the disputed domain name pursuant to
Policy ¶ 4(a)(ii). See
Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb.
Forum May 27, 2003) (holding that under the circumstances, the respondent’s
apparent willingness to dispose of its rights in the disputed domain
name suggested that it lacked rights or legitimate interests in the domain
name); see also Hewlett-Packard
Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31,
2000) (finding no rights or legitimate interests where the respondent
registered the domain name with the intention of selling its rights).
Complainant contends that Respondent has made numerous attempts to sell the disputed domain names at high prices. Complainant claims that Respondent offered the <redhat.org> domain name registration in an eBay auction for between $30,000 and $50,000, and that at one point Respondent was asking for $100,000 in order to sell the <redhat.org> and <redhatconsulting.com> domain names together. Complainant maintains that Respondent stated in the narrative of the eBay auction that the <redhat.org> domain name would be a “great domain for software” and that Respondent claimed to have received several offers of up to $10,500 for the <redhat.org> domain name. Complainant also provides evidence of a reply e-mail Respondent wrote to Complainant upon receiving Complainant’s cease-and-desist letter, in which Respondent stated, “I will NOT transfer the domain under any circumstances that does [sic] not compensate me for the value of the domain.”
The Panel concludes that
Respondent’s numerous attempts to sell the disputed domain name registrations
suggests bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Campmor,
Inc. v. GearPro.com, FA 197972 (Nat. Arb.
Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and
offered to sell it to Complainant for $10,600. This demonstrates bad faith
registration and use pursuant to Policy ¶ 4(b)(i).”); see also Neiman Marcus
Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15,
2003) (finding the respondent’s offer to sell the domain name for $2,000
sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)); see
also Kabushiki Kaisha Hitachi Seisakusho (Japan Corp.) v.
Fortune Int’l Dev. Ent. Co., D2000-0412 (WIPO July 2, 2000) (finding the
respondent’s offer to sell the domain name for $100,000 constitutes bad faith).
The
Panel finds that Respondent has engaged in bad faith registration and use
pursuant to Policy ¶ 4(b)(iii), because Respondent has allegedly used the <redhat.org>
and <redhatconsulting.com> domain names to operate a commercial
search engine with links to the software products of Complainant and its
competitors and also to divert Internet users to several different domain
names, including the <newyorkdomainexchange.com> domain name. Therefore, the Panel finds that Respondent
registered and used the disputed domain names primarily to disrupt
Complainant’s business in violation of Policy ¶ 4(b)(iii). See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000)
(defining “competitor” as “one who acts in opposition to another and the
context does not imply or demand any restricted meaning such as commercial or
business competitor”); see also Gen.
Media Commc’ns, Inc. v. Vine Ent., FA 96554 (Nat. Arb. Forum Mar. 26, 2001)
(finding bad faith where a competitor of the complainant registered and used a
domain name confusingly similar to the complainant’s PENTHOUSE mark to host a
pornographic web site); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert Internet
users to a competitor's website. It is a reasonable inference that Respondent's
purpose of registration and use was to either disrupt or create confusion for
Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and]
(iv).”).
Furthermore,
Complainant alleges that Respondent was using the <redhat.org> and
<redhatconsulting.com> domain names for several different
purposes, all of which redirected Internet users to other websites for
commercial gain. First, Complainant
contends that Respondent was redirecting Internet users to a commercial search
engine with links to the software products of Complainant and its competitors,
and presumably earning referral fees for diverting consumers to other websites. Second, Complainant contends that Respondent
linked the disputed domain names to a page displaying the text “Scottsdale
Consulting” and that Respondent subsequently changed the text to “Red Hat Poker
Club.” Finally, Complainant asserts
that Respondent is now using the disputed domain names to redirect Internet
users to a website at the <newyorkdomainexchange.com> domain name.
The
Panel determines that Respondent has been taking advantage of the confusing
similarity between the disputed domain names and Complainant’s RED HAT mark in
order to profit from the goodwill associated with the mark. The Panel finds
that Respondent’s past and present uses of the <redhat.org> and
<redhatconsulting.com> domain names constitute bad faith
registration and use under Policy ¶ 4(b)(iv).
See G.D. Searle & Co. v. Celebrex Drugstore, FA
123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered
and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the
respondent was using the confusingly similar domain name to attract Internet
users to its commercial website); see
also MathForum.com, LLC v.
Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under
Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly
similar to the complainant’s mark and the domain name was used to host a
commercial website that offered similar services offered by the complainant
under its mark).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <redhat.org>
and <redhatconsulting.com>
domain name be TRANSFERRED from Respondent to Complainant.
Flip Petillion, Panelist
Dated: July 24, 2006
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