Red Hat, Inc. v. Muhammad Shahzad
Claim Number: FA1805001787738
Complainant is Red Hat, Inc. (“Complainant”), represented by Maury M. Tepper of Tepper & Eyster, PLLC, North Carolina, USA. Respondent is Muhammad Shahzad (“Respondent”), Pakistan.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <redhatspam.com>, registered with GoDaddy.com, 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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 21, 2018; the Forum received payment on May 21, 2018.
On May 22, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <redhatspam.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 May 24, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 13, 2018 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@redhatspam.com. Also on May 24, 2018, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 18, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) as Panelist.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Red Hat, Inc., is a leading provider of open source software and support offering 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 owns registrations for the RED HAT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,142,662 registered Mar. 10, 1998), and with many other countries around the world. Respondent’s <redhatspam.com> domain name is confusingly similar to Complainant’s mark as Respondent adds the term “spam” and the generic top-level domain “.com.”
Respondent has no rights or legitimate interests in the <redhatspam.com> domain name. Further, Respondent is not authorized to use Complainant’s mark. Additionally, Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to offer competing software goods and services.
Respondent registered and used the disputed domain name in bad faith as Respondent uses the disputed domain name for commercial gain by creating a likelihood of confusion with Complainant’s mark. Further, Respondent had constructive knowledge of Complainant’s rights to the mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <redhatspam.com>domain name.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims rights to the RED HAT mark through worldwide registrations which include the USPTO (e.g., Reg. No. 2,142,662 registered March 10, 1998). Registration of a mark with multiple trademark agencies is sufficient to demonstrate rights to a mark per Policy ¶ 4(a)(i). See Fossil Group, Inc. v. wuruima wu, FA 1544486 (Forum Mar. 21, 2014) (holding, “Complainant’s registration of the FOSSIL mark with trademark agencies worldwide, including the USPTO and SAIC, establishes Complainant’s rights in the FOSSIL mark pursuant to Policy ¶ 4(a)(i).”). The Panel finds Complainant has demonstrated rights to the RED HAT mark per Policy ¶ 4(a)(i).
Complainant argues Respondent’s <redhatspam.com> domain name is confusingly similar to the RED HAT mark. Panels have found the addition of a descriptive term, a complainant’s mark, and a gTLD to a domain name are insufficient to distinguish the domain name from a finding of confusing similarity. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists 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). Here, Complainant avers, “[t]he term ‘spam’ refers to irrelevant or inappropriate messages sent electronically to a large number of recipients; [thus] . . . the presence of the word ‘spam’ [in the disputed domain name] merely reinforces an association with the Complainant and its well-known software and internet-based products.” Further, Complainant indicates, Respondent merely adds Complainant’s RED HAT mark and the gTLD “.com” to the disputed domain name. The Panel finds Respondent’s disputed domain name is confusingly similar to the Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues Respondent has no rights or legitimate interests in the <redhatspam.com> domain name. Further, Complainant claims Respondent has no authorization to use the RED HAT mark, and Respondent is not known by the name “Red Hat.” Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Complainant provides a copy of the relevant WHOIS information which identifies Respondent as “Muhammad Shahzad.” The Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant contends Respondent does not use the domain name in connection with a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Use of a domain name to offer competing goods and/or services is typically not a bona fide offering of goods or services, or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Here, Complainant provides screenshots of the disputed domain name’s resolving website which purportedly offers software competitive with Complainant’s offerings. The Panel finds Respondent’s use of the disputed domain name in not in accordance with Policy ¶¶ 4(c)(i) and (iii) and Respondent has no rights or legitimate interests in respect of the domain name.
Complainant has proved this element.
Complainant contends Respondent had constructive knowledge of Complainant’s rights to the RED HAT mark prior to registering the disputed domain name. Constructive knowledge is insufficient to support a finding of bad faith under the Policy. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel finds Complainant’s constructive knowledge argument does not support a finding of bad faith under Policy ¶ 4(a)(iii).
Complainant argues Respondent registered and used the disputed domain name in bad faith as Respondent uses the disputed domain name for commercial gain by creating a likelihood of confusion with Complainant’s mark. Such use of a domain name can demonstrate bad faith per Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). Here, Complainant argues that Respondent generates revenue by diverting users seeking information about Complainant’s computer-related products and services to Respondent’s website, where it purports to offer similar goods/services. The Panel finds from Complainant’s uncontested allegations and evidence that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant has proved this element.
DECISION
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 <redhatspam.com> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
Dated: June 19, 2018
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