The Linux Foundation v. Daniel Elmore
Claim Number: FA1707001742130
Complainant is The Linux Foundation (“Complainant”), represented by Julia Belagorudsky of Gesmer Updegrove LLP, Massachusetts, USA. Respondent is Daniel Elmore (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <linuxmark.org>, registered with Network Solutions, 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.
Charles A.Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on July 28, 2017; the Forum received payment on July 28, 2017.
On July 31, 2017, Network Solutions, LLC confirmed by e-mail to the Forum that the <linuxmark.org> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 August 1, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 21, 2017 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@linuxmark.org. Also on August 1, 2017, 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 August 19, 2017.
On August 21, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.
On August 25, 2017, Complainant timely filed an Additional Submission.
On August 29, 2017, Respondent timely filed an Additional Submission.
Having reviewed the communications records, the Administrative Panel (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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a non-profit consortium of open-source entities, including Amazon, Cisco, eBay, Facebook, Google, etc., dedicated to promoting standardization and technical collaboration among those and other entities involved with open-source software. In furtherance of Complainant’s mission, Complainant has acquired an exclusive license from the owner of the LINUX mark to sublicense that mark and to protect, enforce, and defend it. The LINUX mark was used as early as August 1994 and was registered on September 5, 1995 (Reg. No. 1,916,230) with the United States Patent and Trademark Office (“USPTO”). Respondent’s <linuxmark.org> domain name (the “Domain Name”) is confusingly similar to the LINUX mark because it incorporates the mark completely and simply adds the term “mark” and the generic top-level domain (“gTLD”) “.org.”
Respondent has no rights or legitimate interests in the Domain Name. He is not known by any form of LINUX or LINUX MARK and thus cannot establish rights under Policy ¶ 4©(ii). Furthermore, Respondent acquired the Domain Name on March 24, 2017 after Complainant inadvertently allowed its registration of the Domain Name to expire on February 24, 2017. Respondent thus knew of Complainant’s rights in that name when he did so. He began using the Domain Name and its corresponding web site to “educate both seasoned software developers as well as up and coming entrepreneurs in safely navigating the world of brands and trademarks.” Respondent’s website contains and displays Complainant’s LINUX mark in its entirety. This use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name within the meaning of Policy ¶ 4©(iii).
Respondent registered and uses the Domain Name in bad faith. He acquired it shortly after Complainant, which had owned the Domain Name for some seventeen years, inadvertently allowed its registration to expire. This strongly suggests an opportunistic registration corresponding to Complainant’s core business. Given the use Respondent currently makes of the web site resolving from the Domain Name, there is no plausible explanation for his registration and use thereof other than to trade on the goodwill of Complainant and its LINUX mark. Respondent’s registration and use of the Domain Name further deprives Complainant of the use of one of the most relevant and valuable domain names corresponding to its LINUX mark.
B. Respondent
The addition of “mark” to LINUX serves to create a clear directive that the Domain Name refers to the mark itself and not to Complainant’s products or services. The term “Linux mark” is a commonly-referenced and discussed topic among technologists and entrepreneurs. The way in which Linus Torvald, the owner of the trademark, addressed the issue of trademarking and the length of time it took to reach a satisfactory approach caught the attention of many tech media journalists. Because of this the Linux trademark became a frequent headline in prominent tech-focused publications.
Complainant provided no evidence to show Respondent’s purported lack of rights and legitimate interests. Respondent’s web site clearly shows the intent for it to serve as a resource for technologists to learn and discuss trademarks. The content, imagery and links on the web site do not create confusion in regards to its source, sponsorship, affiliation or endorsement. The web site’s operation constitutes a bona fide offering of goods or services given Respondent’s time and effort put into its development and its fully operational status.
Respondent did not register and use the domain name in bad faith. There was nothing “opportunistic” about Respondent’s registration. Respondent purchased the Domain Name in the same manner that all expiring domains are acquired.
Complainant is attempting to use the UDRP to confiscate a domain lost through mismanagement, and that is an abusive use of the UDRP.
C. Additional Submission—Complainant
Respondent’s Exhibit 5 contains a disclaimer stating that his web site is not owned by, operated by, or affiliated with Linux. This disclaimer was added to Respondent’s website only after Complainant filed this proceeding. Irrespective of the time it was added, a disclaimer does not cure Respondent’s bad faith, nor does it dispel a substantial likelihood of confusion when an Internet user first sees the Domain Name. Complainant submitted copies of screenshots from Respondent’s web site as of July 25, 2017, before the Complaint was filed.
Respondent stated in the Response that he invested in developing the web site resolving from the Domain Name to reach its target audience through search engine optimization. His using search engine optimization is further evidence of bad faith.
D. Additional Submission—Respondent
Respondent added the disclaimer not because Respondent believes in the possibility of confusion of affiliation, but only to attempt to appease Complainant, who on July 25, 2017 sent him a request to return the Domain Name to it. The Domain name is not used in connection with any goods or services of Complainant and is not targeting trademarked keywords in search engine optimization.
FINDINGS AND DISCUSSION
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.
Preliminary Procedural Matter
Complainant filed an Additional Submission, alleging that after the filing of the Complaint in this matter, Respondent added a disclaimer to his web site stating that the web site is not owned by, operated by, or affiliated with Linux. Complainant also submitted with its Additional Submission an Exhibit 1 consisting of screenshots of Respondent’s web site as of July 25, 2017, prior to the filing of this case. The web pages shown on these screenshots do not contain any form of disclaimer. Since the disclaimer was added after the filing of the Complaint herein and thus could not have been known to Complainant at the time it filed its Complaint, the Additional Submission was properly filed and was considered by the Panel. Respondent filed an Additional Submission on August 29, 2017 responding specifically and exclusively to the matters asserted in Complainant’s Additional Submission. Accordingly, the Panel considered it as well.
Decision on the Merits
The Panel makes the findings and determinations set forth below with respect to the Domain Name.
The LINUX mark was registered with the USPTO on September 5, 1995 (Reg. No. 1,916,230) (Exhibit 3 to Complaint), and was subsequently assigned, in August 1997, to one Linus Torvalds (Exhibit 3 to Complaint). These documents prove that Linus Torvalds owns the mark. Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). By written Trademark License Agreement dated September 23, 2015, Mr. Torvalds granted an exclusive license of his rights in the LINUX mark to Complainant (Exhibit 4 to Complaint), expressly including the right to enforce his trademark rights, by sending infringement notices and/or bringing infringement actions. Other Panels have held that a license agreement from the owner of a mark can confer rights in and to that mark to the licensee for the purposes of Policy ¶ 4(a)(i). See, Toyota Motor Sales U.S.A. Inc. v. J. Alexis Prods., D2003-0624 (WIPO Oct. 16, 2003) (holding that a non-exclusive licensee to a mark has established rights in that mark). Accordingly, the Panel finds that Complainant, as exclusive licensee of the LINUX mark, has established rights in and to that mark within the meaning of Policy ¶ 4(a)(i).
Further, there is no question that the Domain Name is confusingly similar to the LINUX mark. It incorporates the mark completely and simply adds the term “mark” and the gTLD “.org.” Generic terms may not distinguish a mark, and gTLDs have been deemed irrelevant. See, 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.); see also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”).
Respondent asserts that his addition of the word “mark” indicates that the Domain Name refers to the LINUX trademark, and not to Complainant’s organization, or its products or services. He states that numerous articles in tech-focused periodicals have titles such as “Linus Explains Linux Trademark Issues,” and “Linux is Really Trademark Now,” apparently arguing that using the LINUX mark in the title of an article is permissible and therefore so should using it in a domain name be permissible. Respondent thus appears to assert a defense typically referred to as the nominative fair use doctrine, which does permit trademarks belonging to one person to be used in a domain name owned by another under certain circumstances. This argument is more appropriately addressed in connection with the Rights and Legitimate Interests element of the case and will be dealt with there.
In the meantime, the Panel finds that the Domain Name is confusingly similar to the LINUX mark, in which Complainant has demonstrated and substantial rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in the domain name. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If, though, the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Decision Overview 3.0 at ¶ 2.1.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) he is not commonly known by the name LINUX or any variation thereof, (ii) he is not licensed or otherwise authorized by Complainant to use the LINUX mark, and (iii) he uses the web site resolving from the Domain Name to promote his own enterprise which, ironically enough, seeks to educate trademark owners on how to protect their rights, and which does not constitute a bona fide offering of goods and services within the meaning of Policy ¶4(c)(i). These allegations appear to be true and for this reason the Panel finds that Complainant has made a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name. It is thus incumbent upon Respondent to demonstrate that he does.
Respondent bases his claim to rights and legitimate interests primarily on the doctrine of nominative fair use, claiming that Complainant’s Mark is included in the Domain Name only to identify and make reference to Complainant to enable consumers to understand that the resolving web site is a “resource for technologists to learn, understand, and discuss trademarks.” He asserted this argument in connection with the Policy ¶ 4(a)(i) element of the case but it is more appropriately considered here.
This doctrine of nominative fair use was articulated by the Ninth Circuit Court of Appeals decisions in New Kids on the Block v. News American Publishing, Inc., 971 F.2d. 302 (9th Cr. 1992), and Toyota Motor Sales, U.S.A., Inc .v. Tabari, 610 F.3d. 1171 (9th Cir. 2010). In New Kids, two newspapers used the name of the popular band New Kids on the Block in reader polls regarding that band. The court held that the referential use of another’s trademark is permissible where (i) the trademark owner’s product or service cannot be readily identified without using the mark, (ii) the mark is used only so much as is necessary for such identification, and (iii) such use does not suggest sponsorship or endorsement by the mark owner. 971 F.2d. at 308. In Tabari, the plaintiffs were auto brokers who registered and used the domain names <buy-a-lexus.com> and <buyorleaselexus.com.> The court in this case held that “momentary uncertainty” does not preclude the nominative use of another’s mark in a domain name, provided that a truthful use is being made to describe the domain name registrant’s business.” 610 F.2. at 1179.
The nominative fair use doctrine is founded upon the principle that “trademark law does not prevent the truthful use of trademarks.” 610 F.2d. at 1176-77. At the same time, the referential use of another’s trademark is permissible only to the extent necessary and such use must not suggest a false affiliation or endorsement by the trademark owner. Id. At 1171.
Respondent’s Domain Name fails to meet any of the criteria articulated by the Ninth Circuit. Respondent has failed to demonstrate any need to include the LINUX mark in his Domain Name. The page of his web site attached to his Response as Exhibit 5, and the pages attached to Complainant’s Additional Submission as Exhibit 1, contain text identifying in general terms difficulties brand owners may experience in protecting their trademark rights in today’s technology-oriented environment. It does refer to Complainant’s licensing strategy as a way to meet those challenges, but that is the only reference to the LINUX mark on the entire page. The web site is clearly not about or focused on Complainant or its LINUX mark but is oriented to the problem or difficulty of protecting trademark rights in general. More importantly, the web site clearly constitutes and promotes an enterprise operated by Respondent for his own business purposes, in his sole interests. Further, despite Respondent’s assertions to the contrary, the Domain Name does suggest sponsorship, affiliation or endorsement of the resolving web site by Complainant. This is particularly so in light of the fact that Complainant originally registered the Domain Name and used it in connection with its operations for some seventeen years before inadvertently allowing its registration to expire. There is no factual basis for a finding of nominative fair use in this case.
Respondent also asserts that he is using the Domain Name in connection with a
bona fide offering of goods and services, consisting of serving as a resource for technologists to learn, understand and discuss trademarks. While he indeed appears to offer this type of service, he does so by means of a Domain Name that fully incorporates Complainant’s mark. It is evident that he was fully aware of Complainant and its rights in that mark from the moment he acquired the Domain Name. As discussed above, Complainant had registered and maintained the Domain Name in its own name for seventeen years prior to Respondent’s acquisition of it, and Respondent, who holds himself out as being informed in the matter of tech-oriented trademarks generally, would certainly have been aware of the LINUX mark. He admitted in his argument bearing on nominative fair use that he was aware of the headlines of many articles in tech-focused periodicals mentioning the presence of Linux in the tech trademark milieu. Using a domain name containing the trademark of another to attract Internet traffic to one’s own web site offering similar or competing services has never been held to constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use of a domain name. Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”) Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks). Respondent is not using the Domain Name in connection with a bona fide offering of goods or services, nor is he making a legitimate noncommercial or fair use of it within the meaning of Policy ¶¶ 4(c)(i) or 4(c)(iii).
Respondent has not asserted, and there does not appear to be any other basis for a finding of rights or legitimate interests in the Domain Name. Considering all of the evidence, the Panel finds that Complainant has made a prima facie case and that Respondent has failed to come forward with evidence to rebut that showing. As stated above, once a Complainant establishes a prima facie case of no rights or legitimate interests, the burden of going forward with evidence shifts to Respondent. Kraft Foods Global Brands, LLC v. Jet Stream Enterprises Limited, Jet Stream, WIPO Case No. 2009-0547. In this case Respondent has failed to meet that burden.
For the foregoing reasons the Panel finds that Complainant has sustained its burden of showing that Respondent has no rights or legitimate interests in the Domain Name.
Although Respondent argues that the addition of the word “mark” to Complainant’s LINUX mark in the Domain Name shows that the resolving web site is about the LINUX mark, the Panel has rejected that argument, and finds that Respondent is using the Domain Name to attract for commercial gain Internet users to his web site by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of his web site. As discussed above, the screenshots of pages from Respondent’s web site clearly demonstrate that the site is not about LINUX or its programs or services, but is instead what Respondent has said it is, i.e., a resource for technologists to learn, understand and discuss trademarks. The screenshot submitted by Respondent (Exhibit 5 to the Response), invites visitors to get Respondent’s monthly newsletter (to launch in the fourth quarter 2017). The screenshots submitted as Exhibit 1 to Complainant’s Additional Submission identify the owner or operator of the web site as “Technology Trademarks” and offer the same type of commentary on the issues involved with protecting trademarks generally. There is on both exhibits a short paragraph describing Complainant’s strategy of sublicensing the name Linux to entities who produce or deal in Linux-based software, but the great bulk of the material consists of text apparently authored by or for Respondent dealing generally with the subject of protecting tech-oriented trademarks. While there is nothing improper or nefarious about the business purpose or activities of the web site, Respondent is clearly using Complainant’s mark to attract Internet users to his web site, and that is evidence of bad faith use. Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”)
As discussed above in connection with the rights and legitimate interests element of the case, it is clear that Respondent had actual knowledge of Complainant and its mark at the time he registered it. Respondent is informed and knowledgeable in the matter of tech-focused tradenames and publications in that field, and this same Domain Name had been registered for years in the name of Complainant. Complainant specifically alleged in its Complaint that Respondent knew of Complainant’s rights in the Domain Name when purchasing it through NameJet, and Respondent does not deny that allegation. Indeed, as Complainant alleges, it is highly likely that he purchased the Domain Name for the very reason that it did contain the LINUX mark and would attract Internet traffic to his web site. The Panel finds that Respondent had actual knowledge of Complainant's mark at the time he registered the Domain Name and this is evidence of bad faith registration within the meaning of Policy ¶ 4(a)(iii). See, Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
For the foregoing reasons, The Panel finds that Respondent registered and is using the Domain Name in bad faith.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <linuxmark.org> Domain Name be TRANSFERRED from Respondent to Complainant.
Respondent’s claim of reverse domain name hijacking is rejected.
Charles A. Kuechenmeister, Panelist
Dated: August 30, 2017
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