Rackspace US, Inc. v. Russell Harrower
Claim Number: FA1411001592005
Complainant is Rackspace US, Inc. (“Complainant”), Texas, United States. Respondent is Russell Harrower (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rackspace.xyz>, registered with GoDaddy, LLC.
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.
Hugues G. Richard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 25, 2014; the National Arbitration Forum received payment on November 25, 2014.
On November 25, 2014, Go Daddy, LLC confirmed by e-mail to the National Arbitration Forum that the <rackspace.xyz> domain name is registered with Go Daddy, LLC and that Respondent is the current registrant of the name. Go Daddy, LLC has verified that Respondent is bound by the Go Daddy, LLC 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 November 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 15, 2014 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@rackspace.xyz. Also on November 25, 2014, 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 December 10, 2014.
On December 17, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Hugues G. Richard as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a global company headquartered in San Antonio, Texas, with offices and data centers operating in different countries, including in Australia, Respondent’s home country. Complainant states that it is a global leader in web server hosting and related IT services, which it has been commercializing since 1998 under the trade-mark RACKSPACE. It has invested considerable amounts of money for the promotion of its RACKSPACE trade-mark and, over time, has become internationally recognized by consumers and industry peers.
Complainant is also the registered owner of the RACKSPACE trade-mark in connection with web hosting, communications and related IT services in the US (Reg. Nos. 4086759, 2510081 and 3210712), Europe (CTM 004704193 and CTM 005258355), Mexico (Reg. No. 744182), Turkey (Reg. No. 2006 40531) and Australia (Reg. nos. 839233, 938982 and 1449271), the earliest registration dating from June 2000. All of the abovementioned registrations are in full force and effect, as it appears from the trade-mark registrations filed in bulk as Exhibit A of the Complaint, corroborated by the affidavit of William Alberts, VP and Associate General Counsel for the Complainant, attached as Exhibit J of the Complaint.
Apart from the abovementioned registered trade-marks, Complainant also owns, since August 1998, the domain name <rackspace.com>, as it appears from Exhibit F “WHOIS Contact Information for Complainant’s Primary Domain Name” of the Complaint, which attracts over 389,000 visitors per month, as it appears from Exhibit I “Compete.com Results for Complainant’s Primary Domain Name” of the Complaint. According to Complainant such extensive Internet traffic shows that the RACKSPACE trade-mark is well recognized by the public.
Complainant argues that Respondent’s <rackspace.xyz> domain name is identical and confusingly similar to Complainant’s RACKSPACE trade-mark, since the domain name incorporates its trade-mark in its entirety. According to Complainant, the addition of the top level domain “.xyz” is irrelevant for establishing similarity; a top level domain name constitutes a necessary functional addition to any domain name.
Complainant also states that Respondent does not have any rights or legitimate interests in the domain name as a) Respondent is not commonly known by the domain name, b) Respondent has failed to make active use of the domain name, c) Respondent has offered the domain name for sale to Complainant within a few hours of registering it and d) Complainant registered its RACKSPACE trade-mark and primary domain name well prior to the registration of the disputed domain name by Respondent and Respondent is not licensed by or affiliated in any way with Complainant.
Finally, Complainant argues that Respondent has registered the domain name in bad faith since a) Respondent could not have been unaware of Complainant’s RACKSPACE trade-mark at the time the domain name was registered b) Respondent registered the domain name primarily for the purpose of selling it for profit and offered to sell the domain name to the Complainant for a price exceeding out of pocket costs, within hours of its registration, c) Respondent has failed to respond to Complainant’s cease and desist letter and d) the disputed domain name has an obvious connection with Complainant’s well known trade-mark.
B. Respondent
Respondent states that he is entitled to use the same domain name as Complainant, as long as they do not operate in the same industry. He claims that he is not violating any trade-mark or Internet laws and that the parties to the present proceedings conduct their operations in different fields of activity: the disputed domain name is used by Respondent in connection with pool hall locations, while Complainant is using the RACKSPACE trade-mark for web hosting services.
Respondent states that he is willing to sell the domain name for $5,000 USD, which he considers to be a “fair amount”, given the business plan he has allegedly already developed in connection with the domain name. Respondent threatens to sue both Complainant and ICANN “if Rackspace Inc. steals or if ICANN turns this domain over to Rackspace Inc.”. He also threatens to use his influence in the social media should Complainant launch transfer proceedings in relation to the disputed domain name.
The Panel finds that Complainant has established exclusive trade-mark rights in the RACKSPACE trade-mark, represented by:
- U.S. No 4086759 RACKSPACE (word), registered January 17, 2012;
- U.S. No. 2510081 RACKSPACE (word), registered November 20, 2001;
- U.S. No. 3210712 RACKSPACE (word), registered February 20, 2007;
- CTM 004704193 RACKSPACE (word), registered January 19, 2007;
- CTM 005258355 RACKSPACE (word), registered July 8, 2008;
- MX No. 744182 RACKSPACE (word), registered April 30, 2002;
- TR No. 2006 40531 RACKSPACE (word), registered July 27, 2007;
- AU No. 839233 RACKSPACE (word), registered June 16, 2000;
- AU No. 938982 RACKSPACE (word), registered December 30, 2002;
- AU No. 1449271 RACKSPACE (word), registered September 19, 2011;
- AU No. 1243800 RACKSPACE HOSTING (design), registered May 29, 2008;
- AU No. 1503669 RACKSPACE CLOUD SERVERS (word), registered July 20, 2012;
- AU No. 1503670 RACKSPACE RACK SERVERS (word), registered July 20, 2012;
- AU No. 1515824 RACKSPACE THE OPEN CLOUD COMPANY (word), registered September 21, 2012;
- AU No. 1515825 RACKSPACE THE OPEN CLOUD COMPANY (design), registered September 21, 2012;
- AU No. 1515822 THE RACKSPACE OPEN CLOUD (word), registered August 8, 2012;
all of which are used in connection with web hosting services, consultancy, telecommunications and related IT services, the registrations covering International classes 35, 38, 41 and 42 (Exhibit A “Complainant’s Trademark Registrations” of the Complaint).
On August 14, 1998, Complainant also registered the domain name <rackspace.com>, which allows users to log into their accounts and manage their services (Exhibit F “WHOIS Contact Information for Complainant’s Primary Domain Name” of the Complaint).
Respondent registered the disputed domain name <rackspace.xyz> on July 14, 2014 (as shown in Exhibit B “WHOIS Contact Information for the Disputed Domain Name” of the Complaint). On the same day, Respondent sent a Dropbox message to Complainant offering to sell the domain name for the sum of $5,000 USD (Exhibit D “Dropbox Message from Respondent Offering to Sell Disputed Domain Name”).
On July 18, 2014, by means of a cease and desist letter, Complainant’s legal department requested that Respondent no longer used the RACKSPACE name and transferred the disputed domain name, in light of Complainant’s rights in the registered RACKSPACE trade-marks (Exhibit G “Complainant’s Demand Letter to Respondent” of the Complaint). No response was received from Respondent.
On December 11, 2014, following the serving of the Complaint upon Respondent, the content of the website resolving from the disputed domain name was changed to display the map of Australia and a listing of several pool halls located on said map (“Screen shot taken 11-12-2014” filed with the Response).
No relationship exists between the Respondent and the Complainant. The Respondent is not a licensee of the Complainant and has not otherwise obtained any authorization from Complainant to use the RACKSPACE trade-mark.
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.
As stated above, Complainant has shown rights in the mark RACKSPACE by virtue of its registrations in the US, Europe, Mexico, Turkey as well as in Australia, Respondent’s country of origin. All of the trade-mark registrations predate the registration of the disputed domain name by the Respondent and are sufficient evidence for Complainant’s rights under Policy ¶ 4(a)(i). See, e.g., Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i)”).
Complainant alleges that the disputed domain name <rackspace.xyz> is identical with its RACKSPACE trade-mark., save for the immaterial addition of the generic top-level domain “.xyz”. The Panel finds that the disputed domain name is indeed identical to Complainant’s trade-mark; the addition of a generic top-level domain is seen as trivial and non-distinctive for the purposes of this comparison does not lessen in any way the confusing similarity between the disputed domain name and Complainant’s mark. See AutoAnything, Inc. v. YAO WU / HKMEDIA.COM, FA1411001589961 (Nat. Arb. Forum Dec. 16, 2014) (finding that the generic top-level domain “.com” is regarded as trivial and non-distinctive), Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top-level domain names such as “.net” or “.com” do not affect the domain name for the purpose of determining whether it is identical or confusingly similar); Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding the <granarolo.com> domain name confusingly similar to the complainant’s registered G GRANAROLO mark).
Accordingly, the Panel finds that the disputed domain name is identical to Complainant’s RACKSPACE trade-marks according to Policy ¶ 4(a)(i).
The Panel also finds that the disputed domain name is confusingly similar to Complainant’s other trade-marks that contain the word RACKSPACE, namely RACKSPACE HOSTING, RACKSPACE CLOUD SERVERS, RACKSPACE RACK SERVERS, RACKSPACE THE OPEN CLOUD COMPANY and THE RACKSPACE OPEN CLOUD, since the domain name consists of the first and most distinctive part of these trade-marks, namely RACKSPACE. See e.g., Sensient Technologies Corporation v. Sumer Kolcak, FA 1355265 (Nat. Arb. Forum Nov. 22, 2010) (finding that the domain name <sensient.co> was confusingly similar to the Complainant’s SENSIENT TECHNOLOGIES trademark because it consisted of the first, as well as most distinctive part of the mark).
In order to be successful under Policy 4(a)(ii), Complainant must establish prima facie that Respondent lacks rights or legitimate interests in the disputed domain name. The Respondent then has the burden of demonstrating that he does have rights or legitimate interests in the domain name at issue. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant points to a series of circumstances showing that Respondent does not have rights or interests in the domain name. Complainant first contends that Respondent is not commonly known by the <rackspace.xyz> domain name. The WHOIS information for said domain name, submitted as Exhibit B of the Complaint, lists the registrant as “Russell Harrower”, a name unrelated to the domain name, and Respondent is not affiliated in any way with the Complainant and was never authorized by Complainant to use the RACKSPACE trade-mark.
In the absence of evidence to the contrary, the Panel agrees with the Complainant that the Respondent is not commonly known by the <rackspace.xyz> domain name pursuant to Policy ¶ 4(c)(ii). See Sensient Technologies Corporation v. Sumer Kolcak, FA 1010001355265 (Nat. Arb. Forum Nov. 22, 2010) (finding that where the WHOIS information for the disputed domain name listed “Sumer Kolcak”, a name that had no relation to the disputed domain name, the Respondent was not commonly known by the <sensient.co> domain name).
Second, Complainant argues that Respondent has failed to make an active use of the disputed domain name, which further demonstrates that he lacks rights and legitimate interests in the domain name as per Policy ¶ 4(a)(ii). In light of the evidence showing the changing nature and content of the website resulting from the domain name, the Panel finds that the domain name is not actively used in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is the Respondent making a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).
Specifically, Claimant’s evidence shows that, on July 16, 2014, the website resulting from the domain name claimed to be a social media website, displaying the slogan “Racking your social media” (Exhibit C “Screenshots of the Websites Reachable through the Disputed Domain Name” of the Complaint). Following Complainant’s cease and desist letter dated July 18, 2014, Exhibit G of the Complaint, the content of the page hosted on the domain name claimed to be promoting a website about the game of tennis:
“Rackspace is launching in 2015 the site is aimed for all tennis lovers, the site will offer all tennis players the best spaces to get there racket out and play a game of tennis.
How did we get the name Rack Space
Rack – it’s what you hold when you play tennis
Space – it’s the space that you play the tennis tennis (sic) court aka a space of ground for a game of tennis. Together you get Rack Space!”
(Exhibit C “Screenshots of the Websites Reachable through the Disputed Domain Name” of the Complaint).
Lastly, as of December 2014, the webpage displays the map of Australia and list several pool halls located on said map (“Screen shot taken 11-12-2014” of the Response). As of the date of this decision, the “About” section of the website indicates that it is designed for renting pool venues, stating:
“RackSpace.xyz launched on the 11 of December 2014 - While we had been working on the system for quite sometime a company tried to steal our domain name and forced us to launch eariler than we wanted.
The reason why we choose RackSpace.xyz is because a few of us every friday head over to the local venue, we might play at a mates place to and we all say "who racking them up." So there you go if you put Rack and Space together you get RackSpace.xyz
However saying this, we may be forced to hand over our domain name to a US company, if this happens we will keep you informed on our Twitter and Facebook page – Twitter.
[…]
Rackspace.xyz is owned and operated by Bonush PTY LTD and falls under ownership of the company, Founder Russell Harrower also founder of Netcast.xyz and iPet.xyz is proud to demonstrate what he believes will become a great, tool for snooker venue owners and players who love to "rack'em up!".
It is apparent from the above that the Respondent is neither actively using nor demonstrably preparing to use the disputed domain name. The nature of the website resulting from the domain name is variable, as is the explanation for how the domain name was selected: from a social media website - “Racking your social media”—to a website designed for tennis lovers—“Rack” for racket and “Space” for tennis courts—to, finally, a website listing pool halls located in Australia—“RackSpace” for “Who’s racking them up”. The specious and frequently changing nature of the announced website indicates that Respondent does not have a demonstrable intention to use the <rackspace.xyz> domain name for any specified bona fide offering of goods or services under Policy ¶ 4(c)(i). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint).
Moreover, the fact that Respondent offered to sell the domain name to Complainant within hours of its registration, as shown in Exhibit D of the Complaint, suggests, according to Complainant, that the domain name was registered for the purpose of resale. The Panel agrees that Respondent’s prompt offer to sell the domain name is suggestive of an intent to register the domain name primarily for resale, and not for any bona fide offering of goods and services or legitimate noncommercial purpose. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name).
Thus, Complainant established, prima facie, that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). Given Complainant’s evidence and considering the limited arguments and evidence brought forward by Respondent, the Panel has no reason to believe that Respondent registered and used the domain name for any other purpose than to offer it for sale to Complainant. Respondent has thus failed to meet his burden of demonstrating his rights or legitimate interests under Policy ¶ 4(c).
Complainant argues that Respondent registered the domain name primarily for the purpose of selling it for profit, which demonstrates bad faith under Policy ¶ 4(b)(i). He also argues that, in light of the longstanding trade-mark registrations held by Complainant for the mark RACKSPACE and given Complainant’s extensive online presence, Respondent should be deemed to have constructive knowledge of Complainant’s rights in said trade-mark.
The Panel concurs with this line of reasoning, which is complemented by Respondent’s prompt offer to sell the domain name to the Complainant within hours of the registration for the amount of $5000 USD. This allows for a finding of bad faith under Policy ¶ 4(b)(i), as it is more likely than not that Respondent understood that it could benefit from the resale of a domain name that is identical with the Complainant’s trade-mark. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name). In his Dropbox message to Claimant, Exhibit D of the Complaint, Respondent claims that he “brought (sic) rackspace.xyz before [he] realised that rackspace.com was a thing”. However, the evidence adduced by the Complainant shows that its RACKSPACE trade-marks are well-known and enjoy a significant presence on the Internet, as per Exhibit H “Results of “RACK SPACE” in major Search Engines” of the Complaint. As such, the Panel finds it unlikely that Respondent had been unaware of Complainant’s right in the RACKSPACE trade-mark prior to registering the disputed domain name, yet he promptly recognized them within hours of the registration. This being the case, Respondent could not have registered a domain name identical to Complainant’s trade-mark in good faith. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware of the complainant's YAHOO! mark at the time of registration”).
Finally, Respondent’s threats to sue both ICANN and Complainant “for the theft of a domain name” if “Rackspace Inc. steals or if ICANN turns his domain over to Rackspace Inc.” and to use his media leverage against Complainant also amount to bad faith behavior, adding to the aforementioned evidence of Respondent’s bad faith registration and use of the disputed domain name. See Sensient Technologies Corp. v. Sumer Kolcak, FA 1355265 (Nat. Arb. Forum Nov. 22, 2010) (finding that the Respondent’s threats against the Complainant and the registrar president were evidence of remarkable bad faith behavior).
Considering all of the above mentioned elements, the Panel finds that Respondent registered and used the domain name in bad faith and, thus, that Policy Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <rackspace.xyz> domain name be TRANSFERRED from Respondent to Complainant.
Hugues G. Richard, Panelist
Dated: January 5, 2014
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