DECISION

Darl McBride c/o The SCO Group v. Peter Prior

Claim Number:  FA0310000201643

PARTIES

Complainant is Darl McBride c/o The SCO Group (“Complainant”), represented by Lisa A. Osman, of Dorsey & Whitney LLP, Republic Plaza Building, Suite 4700, 370 Seventeenth Street, Denver, CO, 80202, USA.  Respondent is Peter Prior (“Respondent”), Bannisters Road, Guildford, Surrey, GREAT BRITAIN.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <darlmcbride.com>, registered with NameSecure.com.

PANEL

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.

James A. Carmody, Esq.,  as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on October 7, 2003; the Forum received a hard copy of the Complaint on October 9, 2003.

On October 10, 2003, NameSecure.com confirmed by e-mail to the Forum that the domain name <darlmcbride.com> is registered with NameSecure.com and that Respondent is the current registrant of the name. NameSecure.com has verified that Respondent is bound by the NameSecure.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On October 17, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 6, 2003 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@darlmcbride.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On November 13, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., 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."  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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <darlmcbride.com> domain name is confusingly similar to Complainant’s DARL MCBRIDE mark.

2. Respondent does not have any rights or legitimate interests in the <darlmcbride.com> domain name.

3. Respondent registered and used the <darlmcbride.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant is the CEO of SCO, a computer software products and computer consultation services company.  A well-recognized member of the computer technology industry, Complainant asserts common law rights in the mark DARL MCBRIDE, his personal name.  Complainant states that the media uses the marks SCO and DARL MCBRIDE interchangeably, arguing that secondary meaning exists in the mark DARL MCBRIDE.  A lawsuit between SCO and another large technology company has partially contributed to the fame of the Complainant’s mark.  Many members of the open-source community—those who propone computer software created with code that is in the public domain—oppose Complainant’s lawsuit.

Respondent registered <darlmcbride.com> on June 16, 2003.  Respondent uses the domain name to refer Internet users to <perens.com>, a website hosted by Bruce Perens, an active member of the open-source community—the group in opposition to the Complainant’s lawsuit.

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."

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(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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.

Identical and/or Confusingly Similar

Respondent has failed to submit a Response in this proceeding.  Thus, the Panel is permitted to accept all reasonable allegations and inferences in the Complaint as true.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant 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”).

In the absence of a Response asserting the contrary, the Complainant has established his common law rights in his name.  See Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not necessary and that the name “Julia Roberts” has sufficient secondary association with Complainant that common law trademark rights exist); see also Jagger v. Hammerton, FA 95261 (Nat. Arb. Forum Sept. 11, 2000) (Complainant held common law trademark rights in his famous name MICK JAGGER).

Respondent’s domain name <darlmcbride.com> is identical to Complainant’s mark DARL MCBRIDE.  The only difference is the space, which is not significant enough to distinguish one from the other.  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding that Respondent’s domain name <charlesjourdan.com> is identical to Complainant’s marks); see also Tech. Prop., Inc. v. Burris, FA 94424 (Nat. Arb. Forum May 9, 2000) (finding that the domain name <radioshack.net> is identical to Complainant’s mark, RADIO SHACK).

Accordingly, the Panel finds that the <darlmcbride.com> domain name is identical to Complainant’s DARL MCBRIDE mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent is using the disputed domain name to redirect Internet users to <perens.com>, a website hosted by Bruce Perens.  Perens is an advocate for open-source—the free-use model for computer code that some feel Complainant’s lawsuit threatens.  Respondent is deceptively using a domain name identical to Complainant’s well-known name to provide materials critical of Complainant.  Respondent’s redirection from the <darlmcbride.com> domain name to websites that are ideologically opposed to Complainant does not establish rights or legitimate interests in the domain name under Policy ¶¶ 4(c)(i) and (iii).  See Meijer, Inc. v. Porksandwich Web Services FA 97186 (Nat. Arb. Forum July 6, 2001) (finding that it is reasonable to shift the burden of proof to Respondent to show why no reasonable alternatives exist to use of that particular domain name that includes the mark or name of Complainant for a criticism site aimed at Complainant); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).

Respondent, Peter Prior, is not “commonly known” by the disputed domain name.  Given the WHOIS contact information for the disputed domain, one can infer that Respondent is not commonly known by the name.  In addition, Complainant has not licensed or authorized Respondent to use the <darlmcbride.com> domain name.  Thus, it is reasonable for the Panel to infer that Policy ¶ 4(c)(ii) does not apply to Respondent.  See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Complainant alleges that Respondent acted in bad faith in registering and using the disputed domain name.  Respondent attempted to mislead Internet users by incorporating the Complainant’s mark into its domain name.  By intentionally passing itself off as Complainant, Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii).  See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the Respondent demonstrated bad faith where the Respondent was aware of the Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).

In addition, using a domain name identical to another’s mark to criticize the owner of the mark demonstrates bad faith registration and use.  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding bad faith where Respondent knowingly chose a domain name, identical to Complainant’s mark, to voice its concerns, opinions, and criticism about Complainant); see also Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (finding that Respondent registered the domain names <kwasizabantu.com>, <kwasizabantu.org>, and <kwasizabantu.net> in bad faith where Respondent published negative comments regarding Complainant’s organization on the confusingly similar website).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <darlmcbride.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  November 17, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/1053.html