Red Hat, Inc. v. Daniel Pocock / Software Freedom Institute SA
Claim Number: FA2201001980642
Complainant is Red Hat, Inc. (“Complainant”), represented by Maury M. Tepper, III of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is Daniel Pocock / Software Freedom Institute SA (“Respondent”), Switzerland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <wemakefedora.org>, registered with Gandi SAS.
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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 17, 2022. The Forum received payment on January 17, 2022.
On January 18, 2022, Gandi SAS confirmed by e-mail to the Forum that the <wemakefedora.org> domain name is registered with Gandi SAS and that Respondent is the current registrant of the name. Gandi SAS has verified that Respondent is bound by the Gandi SAS registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On January 18, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 2022 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 firstname.lastname@example.org. Also on January 18, 2022, 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.
A timely Response was received and determined to be complete on February 28, 2022.
On March 7, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is a leading provider of open-source software and support. Complainant offers a range of products, including Linux platforms, middleware, cloud computing and storage for companies in a wide range of industries, and provides support and training and certification courses for its software.
Complainant has used the trademark FEDORA in connection with these goods and services since at least as early as September, 2001 and has advertised them over the Internet via the web site “www.getfedora.org” since 2014. Complainant has rights in the FEDORA mark through registration of the mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <wemakefedora.org> domain name is confusingly similar to Complainant’s mark.
Respondent has no rights to or legitimate interests in the <wemakefedora.org> domain name. Respondent is not commonly known by the domain name. Complainant has not consented to Respondent’s use of the domain name and has not authorized or licensed to Respondent any rights in the FEDORA mark. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent’s adoption of a name that is virtually identical to Complainant’s registered trademark to offer or to discuss software and software design and development services does not constitute any right or legitimate interest in the domain name on the part of Respondent.
Respondent registered the <wemakefedora.org> domain name in bad faith with actual knowledge of Complainant’s rights in the FEDORA mark and did so in order to disrupt Complainant’s business. Respondent uses the domain name in bad faith to divert Complainant’s customers for commercial gain.
The prefix “We Make” is not confusing. It is entirely accurate. As an open-source product, volunteers make Fedora side by side with the employees of Complainant. This is noted in Complainant’s founding documents, Exhibit 104:
“There is a place in Fedora for anyone who wants to help, regardless of technical skill level, as long as they believe in our core values. Like any friends, we occasionally disagree on details, but we believe in finding an acceptable consensus to serve the interests of advancing free software. We believe in a strong partnership between Red Hat and our enormous volunteer community, since they both provide essential contributions that help the Fedora Project succeed.”
This statement makes it clear that Respondent’s Software Freedom Institute SA and other institutions are welcome collaborators on Complainant’s Fedora product. Complainant operates an official site, FedoraPlanet.org which aggregates blogs from volunteers. It is very similar to <wemakefedora.org>. Nonetheless, FedoraPlanet.org has chosen to censor the contributions of some volunteers (Exhibit 114). <wemakefedora.org> includes the censored blogs. This is an important distinction that justifies the existence of a web site that is inevitably similar.
To avoid any confusion, there is a disclaimer at the top of the web page informing visitors about the trademark and giving visitors a direct link to the trademark holder's official web page.
As to legitimacy, on March 30, 2021, Complainant acknowledged and consented to the use of the trademark by volunteers (Exhibits 101 and 102). For 10 months after that email exchange Complainant did not make any legal complaint, despite being well aware of Respondent’s web site.
Complainant does not pay us for contributions of intellectual property but gives us badges recognizing our efforts. These further convey the rights of all volunteers to assert We Make Fedora. As We Make Fedora, we are authoring a software product as volunteers and as a community. We have a clear right and interest in asserting our authorship.
During 2021 various community members published blogs that were censored from the official aggregation site operated by Complainant (FedoraPlanet.org) but they appeared uncensored on the <wemakefedora.org> aggregation site, which provides a means for volunteers to highlight their work, past and present, despite the efforts of other parties to delete or disparage those contributions.
As to bad faith, Complainant has submitted five articles posted by different volunteers on <wemakefedora.org> in early October 2021 which appear to describe technical subjects and social phenomena in the open-source community (Exhibit 4). None of these articles appear to be asking for money. None of them are asking visitors to abandon Complainant’s Fedora product and use an alternative. These blogs complement the development of Complainant’s Fedora product. Through its founding documents (Exhibit 104), Complainant encourages volunteers to contribute content and speak freely.
Respondent’s <wemakefedora.org> website does not feature banner advertising or any other additions to the content. It only contains the original content created by Fedora volunteers. The only banner on the site is the disclaimer encouraging people to download Fedora, which includes contributions from the volunteers, from Complainant's official download page. Therefore, the claim that Respondent is operating the site for commercial gain is unsubstantiated and somewhat vexatious.
The Complaint appears to be about stifling the voices of volunteers in the community and suppressing evidence of our authorship of intellectual property in the open-source products distributed under the trademark FEDORA.
Respondent clearly has an interest in the domain name due to the communication from the trademark owner at the time of registration, public statements made by Complainant encouraging us to engage in free ways of working and the longstanding history of joint authorship of the trademarked product, FEDORA.
The domain name is not used in bad faith, given that the web site directs people back to the trademark owner's site, doesn't ask for money, doesn't run banner advertising, doesn't ask for personal registration. It has been demonstrated that the trademark owner is suppressing the blogs of some volunteers with authorship rights and Respondent’s site exists to give those voices an equal status. The founding documents published by the trademark owner (Exhibit 104) encourage us to give voice to all sides.
Complainant has failed to establish all the elements entitling it to relief and has brought the Complaint primarily to harass the domain-name holder.
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.
Complainant has shown that it has rights in the FEDORA mark through registration of the mark with the USPTO (e.g., Reg. No. 3,283,928 registered August 21, 2007).
“It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the complainant’s trademark and the disputed domain name.
This test typically involves a side-by-side comparison of the domain name and the textual components of the relevant trademark to assess whether the mark is recognizable within the disputed domain name…”
Applying this test, the Panel finds Respondent’s <wemakefedora.org> domain name to be confusingly similar to Complainant’s mark because it incorporates the FEDORA mark in its entirety and adds the descriptive words “we make”, which do not distinguish the domain name from the mark, and the inconsequential “.org” generic top-level domain (“gTLD”), which may be ignored.
Complainant has established this element.
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by Respondent, shall demonstrate rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to Respondent of the dispute, the use by Respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
The <wemakefedora.org> domain name was registered on March 29, 2021, many years after the registration of Complainant’s FEDORA mark, at a time when Respondent has shown that he had been contributing for some years as an unpaid volunteer to the content of Complainant’s website and had received numerous badges in recognition of his efforts.
Complainant says it has not consented to Respondent’s use of the domain name. However, in an email dated March 30, 2021 (Exhibit 101), Complainant consented to Respondent’s use of the domain name so long as the website followed Complainant’s trademark guidelines relating to Community sites and accounts.
Those guidelines are as follows:
“Community sites and accounts
Fedora defines community sites and accounts as pages related to the Fedora Project, but not officially maintained by Marketing team members or Social Media administrators. Often, these groups are specific to a region or country. These pages are usually run by an individual contributor or a group of contributors. These sites are non-commercial in nature (they are not selling a product).
Examples of these pages include (but are not limited to):
· placing the Fedora Trademarks on a personal web site or blog to support Fedora
· making a page on a social networking web service to support Fedora
· linking to Fedora from a wiki to provide information or show support for Fedora
While these online community sites and accounts are not officially endorsed by the Fedora Project or Red Hat, because they are part of the Fedora Community (and use the Fedora trademarks to identify themselves), their site owners, moderators, administrators, and users are required to comply with the Fedora Code of Conduct. Community sites and accounts which are unable to meet this standard of conduct will be required to cease use of the Fedora trademarks, and will be not be promoted/advertised by Fedora. Our intent is for all Fedora community members to have a positive and welcoming experience in all community spaces, official and unofficial.
It is permissible to use the Fedora Trademarks on community sites and accounts to show your support for the Fedora Project, provided that:
· where possible, the design logo hyperlinks to the Fedora Project website, http://fedoraproject.org/, or if that is not possible, the site includes a prominent link to the Fedora Project website at http://fedoraproject.org/.
· the site indicates clearly that it is not affiliated with or endorsed by the Fedora Project; in addition, where possible:
o the site must include the text "This site is not affiliated with or endorsed by the Fedora Project" prominently on any page that includes the Fedora Trademarks, and
o if the Fedora Trademarks appear in a page header or any area that is designed to be presented on more than one page, the notice must also be designed to be presented on all of those pages as well. (i.e., if the Fedora Trademarks appear in a site-wide header, the informational text must appear in that header or an identically site-wide footer.)
· the site does not use visual styling that could be confusing to viewers or visitors as to whether the site is hosted by or on behalf of the Fedora Project.”
The <wemakefedora.org> domain name resolves to a web site containing multiple blog posts on topics related to software, including in particular, uncensored versions of blogs previously appearing in censored form on Complainant’s website. The landing page of Respondent’s web site prominently features the name “We Make Fedora”, indicating that “we” are contributors to Complainant’s community sites and accounts.
Complainant has shown that Respondent’s website also features prominently the following statement, including links to Complainant’s web pages:
“Fedora is a Trademark of Red Hat, Inc, an operating system built by volunteers around the world. This page is provided so that independent volunteers can showcase our contributions to Fedora and Free Software in general. Official Fedora Download page ” (Complaint Exhibit 4).
There are no advertisements on the Respondent's website. There is no evidence that Respondent is a competitor of Complainant, nor is there any evidence that Respondent has operated the website for any commercial purpose. The Panel rejects Complainant's submission, unsupported by evidence, that Respondent's conduct is likely to have been undertaken for commercial gain.
The Panel finds that Respondent is operating a genuine, noncommercial website from a domain name that contains an appendage ("we make") that, as noted in the Response, is clearly an identifier of contributors to Complainant’s website. In registering the domain name using an appendage that identifies Complainant’s contributors, Respondent is not attempting to impersonate Complainant nor misleadingly to divert Internet users. Rather, Respondent is using the FEDORA mark in the domain name to identify Complainant for the purpose of operating a website that contains some criticism of Complainant. Such use is generally described as "fair use" of a trademark.
Accordingly, the Panel finds that the Respondent has rights or legitimate interests in the <wemakefedora.org> domain name both because Complainant consented to Respondent’s use of the domain name so long as the website followed Complainant’s trademark guidelines and because Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain misleadingly to divert Internet users or to tarnish Complainant's FEDORA trademark.
Complainant has failed to establish this element.
Respondent requests that the Panel consider whether the Complaint amounts to harassment under UDRP Rule 15(e).
Paragraph 15(e) of the Rules provides that if “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”. Reverse Domain Name Hijacking (RDNH) is defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
The mere lack of success of the complaint is not itself sufficient for a finding of Reverse Domain Name Hijacking; rather, as stated in the WIPO Jurisprudential Overview 3.0, paragraph 4.16:
“Reasons articulated by panels for finding RDNH include: (i) facts which demonstrate that the complainant knew it could not succeed as to any of the required three elements – such as the complainant’s lack of relevant trademark rights, clear knowledge of respondent rights or legitimate interests, or clear knowledge of a lack of respondent bad faith (see generally section 3.8) such as registration of the disputed domain name well before the complainant acquired trademark rights…”
Despite Complainant having consented, on the day after Respondent registered the domain name, to Respondent’s use of the domain name for a website, so long as Respondent complied with Complainant’s trademark guidelines, the Complaint does not contain contend that Respondent has failed to comply with those guidelines. Instead, the Complaint asserts that Complainant has not consented to Respondent’s use of the domain name and that Respondent’s adoption of a name that is virtually identical to Complaint’s registered trademark to offer or to discuss software and software design and development services does not constitute any right or legitimate interest in the domain name on the part of Respondent.
In light of these circumstances the Panel finds that Complainant brought this proceeding despite having clear knowledge of Respondent’s rights or legitimate interests in the domain name and that the proceeding was brought primarily to harass the domain-name holder.
Complainant having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED and declares that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.
Accordingly, it is Ordered that the <wemakefedora.org> domain name REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: March 14, 2022
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