Lockheed Martin Corporation v. Alexander Lemeshenko
Claim Number: FA2006001899905
Complainant is Lockheed Martin Corporation (“Complainant”), represented by Jonathan Uffelman of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, District of Columbia, USA. Respondent is Alexander Lemeshenko (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lockheedmartin.shop>, registered with NETIM SARL.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 11, 2020; the Forum received payment on June 11, 2020.
On June 19, 2020, NETIM SARL confirmed by e-mail to the Forum that the <lockheedmartin.shop> domain name is registered with NETIM SARL and that Respondent is the current registrant of the name. NETIM SARL has verified that Respondent is bound by the NETIM SARL 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 June 22, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 13, 2020 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@lockheedmartin.shop. Also on June 22, 2020, 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 July 13, 2020.
Complainant submitted an Additional Submission under date of July 15, 2020, and Respondent has not objected to that submission.
On July 15, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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
In its Complaint, complaint asserts, inter alia, that:
Complainant is a defense contractor and a global security and aerospace company.
Complainant holds a registration for the LOCKHEED MARTIN service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 2,022,037, registered December 10, 1996, and most recently renewed as of January 18, 2017.
Respondent registered the domain name <lockheedmartin.shop> on September 18, 2019.
The domain name is confusingly similar to Complainant’s LOCKHEED MARTIN service mark.
Respondent lacks rights to or legitimate interests in the domain name.
Respondent has not been commonly known by the domain name.
Complainant has not authorized Respondent to use the LOCKHEED MARTIN mark.
Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
In fact, Respondent fails to make any active use of the domain name at all.
Respondent has offered to sell the domain name to Complainant for an amount in excess of its out-of-pocket costs to register the domain name.
Respondent registered the domain name with knowledge of Complainant’s rights in the LOCKHEED MARTIN mark.
Respondent registered and uses the domain name in bad faith.
B. Respondent
In its Response to the Complaint, Respondent alleges, among other things, that:
Respondent registered the <lockheedmartin.shop> domain name in honor of a canine companion, whose name is Lockheed Martin.
Respondent registered the domain name on a “spur of the moment whim [and] it has no particular practical purpose.”
“[T]he facts are that there is a blank page.”
Respondent’s inactive holding is not sufficient to prevent Respondent from having rights to or legitimate interests in the domain name.
Respondent did not register the domain name to harm Complainant’s business and there is no evidence of bad faith on its part.
C. Additional Submission
In its Additional Submission, Complainant asserts, among other things, that:
Respondent does not dispute Complainant’s allegation that the challenged <lockheedmartin.shop> domain name is confusingly similar to Complainant’s LOCKHEED MARTIN mark.
Respondent does not deny that it knew of Complainant’s LOCKHEED MARTIN mark when the domain name was registered.
(1) the domain name registered by Respondent is substantively identical and confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
Complainant has rights in the LOCKHEED MARTIN service mark sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum December 30, 2018):
Complainant’s ownership of a USPTO registration for … [its mark] … demonstrate[s] its rights in such mark for the purposes of Policy ¶ 4(a)(i).
This is true without regard to whether Complainant’s rights in its mark arise in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here the WHOIS record shows that Respondent is situated in France, but there is other information in the record showing that its actual residence is in Ukraine). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy¶4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <lockheedmartin.shop> domain name is substantively identical and confusingly similar to Complainant’s LOCKHEED MARTIN service mark. The domain name incorporates the mark in its entirety, merely deleting the space between its terms and adding the generic Top Level Domain (“gTLD”) “.shop.” See, for example, Roche Therapeutics Inc. v. Williams Shorell, FA 1684961 (Forum August 30, 2016):
Complainant asserts Respondent’s … domain name is identical to the … mark. The addition of a generic top level domain to a mark does not differentiate the domain from said mark under Policy¶4(a)(i).
Further see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy¶4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
As to Respondent’s deletion of the space between the terms of Complainant’s mark in forming the domain name, that does not change the outcome. This is because domain name syntax does not permit the use of blank spaces.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the challenged <lockheedmartin.shop> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the disputed <lockheedmartin.shop> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the LOCKHEED MARTIN mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Alexander Lemeshenko,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner). See also Navistar International Corporation v. N Rahmany, FA 620789 (Forum June 8, 2015) (finding, under Policy¶4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
We next observe that Complainant asserts, without any objection from Respondent, that Respondent fails to use the <lockheedmartin.shop> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, in that Respondent fails to make any active use of the domain name at all. In the circumstances presented by the Complaint, including that the domain name appears to have remained inactive for the entire period of its existence from the time of its registration on September 18, 2019, with no demonstrated evidence of an intent to put it to use, as well as Respondent’s admission in its Response to the Complaint that the domain name was registered on a “spur of the moment whim [and] it has no particular practical purpose,” we may comfortably conclude that Respondent’s employment of the domain name is neither a bona fide offering of goods or services by means of it under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018):
Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy¶4(c)(iii).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We must examine now whether the facts presented by the parties’ pleadings adequately establish that the <lockheedmartin.shop> domain name has both been registered and is now used in bad faith within the contemplation of Policy ¶ 4(a)(iii). The same factors considered above with regard to the question whether Respondent has rights to or legitimate interests in the domain name, to wit: that the domain name appears to have remained inactive for the entire period of its existence from the time of its registration on September 18, 2019, with no demonstrated evidence of an intent to put it to use, as well as Respondent’s admission in its Response to the Complaint that the domain name was registered on a “spur of the moment whim [and] it has no particular practical purpose,” apply with equal force to the question of bad faith registration and use. See, for example, Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-003 (WIPO February 18, 2000).
When these points are considered with the evidence that Respondent has actively attempted to conceal its whereabouts by showing in its WHOIS record that it may be found in France whereas in fact it resides in Ukraine, we must conclude that Respondent has registered the domain name in bad faith.
It is, however, a separate question whether Respondent has also used the domain name in bad faith, the problem arising from the fact that the domain name has not been actively used at any time from the moment of its registration. This conundrum was addressed convincingly in Telstra Corp. Ltd. v. Nuclear Marshmallows, supra. There a panel concluded, after an analysis of facts closely analogous to those presented here, that:
[I]naction (eg. passive holding) in relation to a domain name registration can, in certain circumstances, constitute a domain name being used in bad faith.
Given the circumstances already outlined above, and considering also that it is scarcely possible to conceive of a use to which Respondent might put the domain name without offending the Policy, as well as that Respondent’s possession of the domain name prevents Complainant from reflecting its LOCKHEED MARTIN mark in a corresponding domain name, we conclude that Respondent is using the domain name in bad faith within the meaning of Policy ¶ 4(a)(iii). See, for example, CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum February 14, 2018):
Respondent’s domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.
Finally, under this head of the Policy, it is clear from the evidence that Respondent knew of Complainant and its rights in the LOCKHEED MARTIN mark when Respondent registered the <lockheedmartin.shop> domain name. This further illustrates Respondent’s bad faith in registering it. See, for example, Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel … here finds actual knowledge [and therefore bad faith in the registration of a domain name] through the name used for the domain and the use made of it.
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <lockheedmartin.shop> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 21, 2020
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