ADMINISTRATIVE PANEL DECISION Red Hat, Inc. v. Syed Hussain, d/b/a CPIC Net and MIC Case No. D2000-1442
1. The Parties The Complainant in this administrative proceeding is Red Hat, Inc., a corporation organized under the laws of the State of Delaware, having its principal place of business located in Durham, North Carolina, U.S.A.
The Respondent is Syed Hussain, d/b/a/ CPIC Net and MIC, whose address is 15 5th Street, Closter, New Jersey 07624, U.S.A.
2. The Domain Names and Registrar The domain names in dispute are as follows: , and . The domain names were registered by Respondent with BulkRegister.com on May 9, 2000.
3. Procedural Background On October 23, 2000, the WIPO Arbitration and Mediation Center (“Center”) received from Complainant via e-mail a complaint for decision in accordance with the Uniform Policy for Domain Name Dispute Resolution, adopted by the Internet Corporation of Assigned Names and Numbers (“ICANN”) on August 26, 1999 (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
The Complaint was filed in compliance with the requirements of the Rules and the Supplemental Rules, payment was properly made, the administrative panel was properly constituted, and the Panelist submitted the required Statement of Acceptance and Declaration of Impartiality and Independence.
The instant Administrative Proceeding was commenced on November 10, 2000.
Respondent did not file a Response, and a "Notification of Respondent Default," dated December 1, 2000, was forwarded by WIPO to Respondent.
The decision of the Panel was due to the Center on or before January 10, 2001.
4. Factual Background Founded in 1994, Complainant Red Hat is the leading provider of open source Internet infrastructure solutions, ranging from small embedded devices to high availability clusters and web servers. Complainant owns U.S. Trademark Registration No.2,142,662 for the mark RED HAT, as used since 1994 on or in connection with computer software and consultation in the field of computer software. Complainant also owns numerous registrations for the RED HAT mark throughout the world. (See Complaint, Exhibit D for list of RED HAT registrations owned by Complainant.) More than 600,000 web sites worldwide run on RED HAT Linux server software shipments.
Complainant has continuously and extensively advertised and promoted its RED HAT mark in numerous print and communications media throughout the U.S. See Complaint, Exhibit F. Complainant also uses the RED HAT mark on its web site, located at redhat.com.
As noted above, Respondent registered the domain names in dispute on May 9, 2000. This was the same day that Red Hat issued a press release announcing the creation of a new division named "Red Hat Ventures." See Complaint, Exhibit N. None of the web sites using the disputed domain names is operational.
On August 7, 2000, Complainant's counsel, Mr. Andrew B. Cohen, of the firm Moore & Van Allen, PLLC, wrote to and e-mailed Mr. Hussain demanding relinquishment of the domain names in dispute. In return, Red Hat offered to reimburse Mr. Hussain for his documented out-of-pocket costs directly related to the domain names. See Complaint, Exhibit J. According to an affidavit submitted by Mr. Cohen (see Complaint, Exhibit K), Mr. Hussain stated that he was willing to transfer the domain names to Red Hat at a price that would "make everybody happy." When Mr. Cohen asked Mr. Hussain what price he had in mind, he responded that Mr. Cohen should make an offer for the domain names based on what they are worth to Red Hat. Mr. Hussain then indicated that his out-of-pocket costs were not nearly enough to get him to transfer the domain names and that Red Hat could go to arbitration or to court but that it would cost them money and they might as well pay him.
5. Parties' Contentions Complainant contends that the domain names in issue are substantially identical and, therefore, confusingly similar to the RED HAT mark. It further argues that Respondent has no rights or legitimate interests in the domain names, as evidenced by the fact that: (1) Respondent does not operate a business or other organization under the RED HAT mark; (2) Respondent does not own any trademark or related rights in the RED HAT mark; and (3) Respondent is not making a legitimate noncommercial or fair use of the domain names.
In support of its contention that the domain names were registered and are being "used" in "bad faith," Complainant notes and argues that: (1) the domain names were registered the very same day Red Hat announced the creation of the "Red Hat Ventures" division; (2) Respondent has offered to sell, transfer, or otherwise assign the domain names to Complainant for financial gain, without having any bona fide use or intent to use the domain names for the offering of goods and/or services; (3) Respondent registered the domain names to prevent Complainant from reflecting the mark in a corresponding domain name and has engaged in a pattern of such conduct; and (4) other panels and courts have condemned Respondent's actions in registering domain names corresponding to marks owned by others.
6. Discussion and Findings The Panel has carefully weighed the evidence presented and determines that Complainant clearly has met the requirements set forth in paragraph 4.a.of the Policy.
There is no question that the domain names in dispute are confusingly similar to Complainant's RED HAT mark. The domain names incorporate, in full, Complainant's RED HAT mark. The addition to the disputed domain names of the generic term "ventures" and the top-level domains ".com"; ".org"; and ".net" is without legal significance.
It is also clear that Complainant, through its long use of, and registrations covering, the RED HAT mark, has rights in the mark.
There also is no evidence that Respondent has rights or legitimate interests with respect to the domain names.
Finally, there is ample evidence to support a determination of "bad faith" registration and use. The evidence establishes that Mr. Hussain registered the domain names primarily for the purpose of selling or otherwise transferring the domain name registrations to Complainant for valuable consideration in excess of his documented out-of-pocket costs, within the meaning of paragraph 4.b.(i) of the Policy.
The evidence also supports a determination that Respondent registered the domain names in order to prevent Complainant from reflecting the RED HAT mark in a corresponding domain name. It is also clear that Respondent has engaged in a pattern of such conduct, Complainant submitted evidence (see Complaint, Exhibit O) establishing that Respondent has registered numerous other domain names that are similar to the marks owned by other companies, including usolympicstore.com, ritz-carltondubai.com, bellsouthmobile.com, donnakaranshoes.com, and barbieone.com. Thus, paragraph 4.b.(ii) of the Policy is implicated.
Finally, the Panel takes note of the fact that, as alleged by Complainant, Respondent has been found by other Panels to have engaged in "bad faith" registration and use of domain names. These Panel decisions include United States Olympic Committee v. MIC, Case No D2000-0189 (finding Respondent registered and used the domain name in bad faith) and Morgan Stanley Dean Witter Co. v. Syed Hussain, CPIC Net, File No. FA00040000094449 (ordering transfer of domain names ). See Complaint, Exhibits P and Q. Complainant also submitted evidence that Respondent is a named Defendant in a pending action in federal district court arising out of its registration of the domain names and . The Court, in that action, noted that the record supported a finding that Respondent's "purpose" in registering domain names consisting of another entity's trademark "was not to profit from sales …but rather was to extort money from the owner of the marks." See McCrae's, Inc. v. Syed Hussain, d/b/a CPIC Net, 2000 U.S. Dist. LEXIS 10452 (S.D. Miss. June 30, 2000). See Complaint, Exhibit R.