The NetBSD Foundation v. Charles Hannum
Case No. D2015-0976
1. The Parties
The Complainant is The NetBSD Foundation of New York, New York, United States of America, represented internally.
The Respondent is Charles Hannum of Somerville, Massachusetts, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 9, 2015. On June 9, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 15, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 6, 2015.
The Center appointed William R. Towns as the sole panelist in this matter on July 10, 2015. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is a non-profit organization and describes itself as the successor to the NetBSD Project. The NetBSD Project’s roots trace to the University of California at Berkley. Founded in the early 1990s by three individuals and the Respondent, the NetBSD Project has been described as a collaborative effort to produce a freely available UNIX-like open source operating system.
The result of this collaborative effort was the NetBSD operating system, the earliest release of which was NetBSD 0.8 in April 1993. The Complainant owns a United States trademark registration for NETBSD for use with computer operating systems, applied for on January 18, 2012, and issued by the United States Patent and Trademark Office (“USPTO”) on August 28, 2012. The registration certificate reflects a first use in commerce date of April 21, 1993.
The Respondent currently is the registrant of the disputed domain name , according to the concerned Registrar’s WhoIs records. The disputed domain name was created on March 20, 1994, and InternNIC communications provided by the Complainant reflect the NetBSD Project to have been the original registrant. A Mr. Demetriou was the administrative and technical contact. According to a statement from Mr. Demetriou included as an annex to the Complaint, when Mr. Demetriou left the NetBSD Project he asked the Respondent to assume responsibility for the domain name. Mr. Demetriou states that while he intended for the Respondent to assume the role of administrative and technical contact, he did not authorize the Respondent to register the disputed domain name in his own name.
The Respondent parted ways with the Complainant in 2006. The Complainant maintains that since then the Respondent has ignored numerous attempts by the Complainant to contact him regarding the disputed domain name. Even so, the use of the disputed domain name with the Complainant’s website has continued. The Complainant has been able to maintain operational and administrative control due to the continuity of the domain name servers. Recently, however, there have been changes in the ownership of several of the name servers. The Complainant is concerned that the Registrar will not process a request to change servers, should it become necessary, because it is the Respondent who is listed as the domain name registrant. The Complainant also is concerned for this reason that it will not be able to deploy Domain Name System Security Extensions (DNSSEC) to guard against hackers and other security issues affecting its software distribution chain.
5. Parties’ Contentions
The Complainant submits that it is the owner of a registered United States trademark for “NetBSD” for use in connection with computer operating systems. The Complainant maintains it has used “NetBSD” as a mark since 1993. The Complainant asserts that the disputed domain name is identical or confusingly similar to the mark.
The Complainant maintains that the Respondent has no rights or legitimate interests in respect of the disputed domain name. According to the Complainant, the Respondent previously was one of many active members of the NetBSD Foundation, Inc. (“the Company”). The Complainant explains that the disputed domain name was registered by another active member of the Company, Mr. Demetriou, who transferred the disputed domain name to the Respondent when he left the Company in 1996, so that the Respondent could serve as the technical and administrative contact on behalf of the Company. The Complainant submits that the Respondent left the Company in 2006 and despite repeated and consistent attempts has ignored all requests to transfer to the disputed domain name to the Company.
The Complainant asserts that the Respondent has become an “obstructionist” to the Complainant’s legitimate business activities by ignoring the Complainant’s repeated attempts to contact him, including by certified mail, email, telephone, through acquaintances, and finally through legal counsel. The Complainant asserts that the Respondent has never used or claimed to have used the disputed domain name in any personal or business capacity whatsoever, other than the use in connection with the Complainant’s activities.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. According to the Complainant, the Respondent was acting in a fiduciary capacity when he accepted the transfer of the disputed domain name and maintained it on behalf of the Company. The Complainant asserts that the Respondent was disgruntled about certain matters when he left the Company in 2006, and that he is using his control over the domain name registration in a retaliatory manner to cause harm to the Company. The Complainant submits that the Respondent breached his fiduciary duty by acting in bad faith and refusing to return full control of the disputed domain name to the Company when he left in 2006 and for the last nine years. The Complainant avers it has searched over twenty years of email archives and can find no written authorization for the Respondent to transfer the disputed domain name to himself.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. See Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See also Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name are the sole remedies provided to the complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is identical to the Complainant’s NETBSD mark. In considering the question of identity or confusing similarity, the first element of the Policy operates essentially as a standing requirement.1 The threshold inquiry under the first element of the Policy is framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar. Although generic Top-Level Domains (gTLDs) may in appropriate circumstances be considered when evaluating identity or confusing similarity, gTLDs may also be disregarded, and usually are not taken into consideration when evaluating the identity or confusing similarity between the complainant’s mark and the disputed domain name.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
C. Rights or Legitimate Interests
As noted above, once the complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel finds that the Complainant has made a prima facie showing. The disputed domain name is identical to the Complainant’s mark. The Respondent registered the disputed domain name without the Complainant’s authorization or consent. There is no indication in the record that the Respondent has been commonly known by the disputed domain name. The Respondent has in essence improperly held the disputed domain name since its registration and has not responded to the Complainant’s requests that the disputed domain name be transferred.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in a disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s use 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent has not submitted a response to the Complaint, in the absence of which the Panel may accept all reasonable inferences and allegations in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009. Regardless, the Panel has carefully reviewed the record in this case, and finds nothing therein that would bring the Respondent’s registration and use of the disputed domain name within any of the “safe harbors” of paragraph 4(c) of the Policy.
The Respondent was one of the founders of the NetBSD Project and until sometime in 2006 remained associated with the Complainant. Accordingly, the Panel considers that the Respondent would have been aware of the Complainant’s rights or prospective rights in the NETBSD mark when registering the disputed domain name. While the Complainant did not obtain a U.S. registration for the NETBSD mark prior to 2012, the mark is distinctive and there is evidence of its use by the Complainant as an indicator of source as far back as 1993, giving rise to common law rights in the mark.
The Panel concludes that the Respondent is improperly holding the disputed domain name. As such, the Respondent has not used or made demonstrable preparations in his own right to use the disputed domain name in connection with a bona fide offering of goods or services. That the Respondent has allowed the disputed domain name to resolve to the Complainant’s website does not constitute use by the Respondent for purposes of the UDRP. Nor has the Respondent attempted to make a legitimate noncommercial or fair use of the disputed domain name, such as for purposes of criticism. As noted above, the Respondent has not been commonly known by the disputed domain name, and the Panel finds no basis in the record on which the Respondent could credibly claim to have been authorized to transfer the registration of the disputed domain name to himself.
In short, and absent any reply by the Respondent, there is nothing in the record before the Panel to support a claim by the Respondent of rights or legitimate interests in the disputed domain name.
Accordingly, the Panel finds the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from or in some manner exploit the trademark of another. Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004 0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. In the absence of any reply from the Respondent, the Panel concludes from the record that the Respondent was aware of the Complainant’s rights or prospective rights in the NETBSD mark when registering the disputed domain name. The Complainant contends, and the Respondent has not refuted, that the Respondent was never authorized to register the disputed domain name in his own name. The Complainant demonstrated that prior to the registration of the disputed domain name by the Respondent, the registration was held in the name of the organization, not an individual. The Respondent’s subsequent registration of the disputed domain name in his own name, under the circumstances, constitutes registration in bad faith. See Champion Innovations, Ltd. v. Udo Dussling (45FHH), WIPO Case No. D2005-1094.
The Panel finds that the lack of affirmative action on the part of the Respondent does not preclude a finding of bad faith registration and use in the circumstances of this case. See Telstra Corporation Limited v. Nuclear Marshmallows, supra. The Respondent’s actions – which the Panel can interpret only as intentional – have prevented the Complainant, a non-profit organization, from registering a “.org” gTLD reflecting its mark. The Panel cannot envision any commercial use the Respondent could make of the disputed domain name that would not in some manner trade on the Complainant’s mark. Further, the Panel finds that the Respondent could not now make any credible noncommercial or fair use of the disputed domain name having received notice of this dispute given that the Respondent has not previously sought to actively use the disputed domain name for any potentially legitimate purpose. The Panel finds that in the totality of the circumstances the Respondent has effectively dispossessed the Complaint of the disputed domain name which constitutes bad faith use for the purposes of the Policy.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
William R. Towns
Date: July 24, 2015