Lockheed Martin Corporation v. Creative Edge Marketing
Claim Number: FA0807001213718
Complainant is Lockheed Martin Corporation (“Complainant”), represented by Susan
Okin Goldsmith, of Duane Morris LLP,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skunkwerksmedia.com>, registered with Godaddy.com, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 2, 2008; the National Arbitration Forum received a hard copy of the Complaint on July 3, 2008.
On July 3, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <skunkwerksmedia.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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").
9, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 29, 2008
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 email@example.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 5, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:
Complainant is the owner of the SKUNK WORKS mark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,161,482 issued July 14, 1981), and has been using this mark continuously since the 1940’s.
The mark is associated with Complainant’s goodwill that is associated with the U-2 high-altitude plane, the SR-71 high-speed jet and the F-117 NIGHTHAWK fighter jet.
In addition, Complainant owns nearly 200 domain names that include the SKUNK WORKS mark or a phonetic variation of the mark.
Respondent is not authorized to use the SKUNK WORKS mark, and Complainant is not affiliated with Respondent in any way.
Respondent registered the <skunkwerksmedia.com> domain name on July 10, 2007.
The disputed domain name resolves to an inactive website with only a single display that reads “Forbidden You don’t have permission to access / on this server.”
Respondent’s <skunkwerksmedia.com> domain name is confusingly similar to Complainant’s SKUNK WORKS mark.
Respondent does not have any rights or legitimate interests in the domain name <skunkwerksmedia.com>.
Respondent has registered and uses the disputed <skunkwerksmedia.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is 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."
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. 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 (Nat. Arb. Forum July 31, 2000) (holding that a 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.”
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 or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant holds a registration for the SKUNK WORKS service mark with the USPTO. By this registration, Complainant has sufficiently established its rights in the mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004): “Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”
The <skunkwerksmedia.com> domain name contains the phonetic equivalent of the term “works” used in Complainant’s SKUNK WORKS mark and merely adds the generic term “media.” Neither the use of a phonetic equivalent nor the addition of a generic term distinguishes the disputed domain name from Complainant’s SKUNK WORKS for purposes of a confusing similarity analysis under Policy ¶ 4(a)(i). See Pfizer Inc. v. Phizer's Antiques, D2002-0410 (WIPO July 3, 2002) (finding the <phizer.com> domain name phonetically equivalent and confusingly similar to the PFIZER mark); see also Vivendi Universal Games, Inc. v. Cupcake Patrol, FA 196245 (Nat. Arb. Forum Oct. 31, 2003):
Respondent's <blizzerd.com> domain name is confusingly similar to Complainant's BLIZZARD mark. The replacement of the letter 'a' in Complainant's BLIZZARD mark with the letter 'e' creates a domain name that is phonetically identical and confusingly similar to Complainant's mark.
See also Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding that the domain name <bodyshopdigital.com> is confusingly similar to a complainant’s THE BODY SHOP trademark).
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Under this heading, Complainant must make out a prima facie showing that Respondent lacks rights and legitimate interests in the <skunkwerksmedia.com> domain name. The burden then shifts to Respondent to establish that it has rights or legitimate interests in the disputed domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.
Complainant has met its burden under Policy ¶ 4(a)(ii), while Respondent, for its part, has failed to respond to the Complaint. In these circumstances, we are permitted to conclude that Respondent has no rights or interests cognizable under the Policy.
See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002):
Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).
We will nonetheless examine the evidence of record to determine if there is any basis for concluding that Respondent has rights or interests in its domain name sufficient to satisfy the Policy.
We begin by noting that there is no dispute as to Complainant’s allegation to the effect that Respondent’s website merely contains the message “Forbidden You don’t have permission to access / on this server.” This site content constitutes inactive holding of the domain name. Such inactive holding is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003):
[T]he Panel concludes that Respondent's [inactive] holding of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).
See also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that where a respondent declares its intent to develop a website, “[Policy ¶] 4(c)(i) requires Respondent to show 1) ‘demonstrable’ evidence of such preparations to use the domain name, and 2) that such preparations were undertaken ‘before any notice to [Respondent] of the dispute’”).
In addition, we observe that Respondent’s WHOIS information does not suggest that Respondent is commonly known by the <skunkwerksmedia.com> domain name. Furthermore, Respondent does not dispute Complainant’s assertions that Respondent is not authorized to use the SKUNK WORKS mark and that Complainant is not affiliated with Respondent in any way. Thus, we are entitled to and do conclude that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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"); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003):
Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s website resolving from the disputed domain name merely contains the aforementioned “forbidden” language. Thus, given Respondent’s inactive holding, we conclude that Respondent has engaged in bad faith registration and use of the disputed domain name under Policy ¶ 4(a)(iii). See Hewlett-Packard Co. v. Martineau, FA 95359 (Nat. Arb. Forum Aug. 30, 2000):
Respondent’s failure to submit an assertion of good faith intent to use the domain name, in addition to the passive holding of the domain name, reveal that Respondent registered and uses the domain name in bad faith.
See also Body Shop Int’l PLC v. CPIC NET, D2000-1214 (WIPO Nov. 26, 2000) (finding bad faith where (1) a respondent failed to use a domain name and (2) it is clear that that respondent registered the domain name as an opportunistic attempt to gain from the goodwill of a complainant).
In addition, it appears that Respondent registered the <skunkwerksmedia.com> domain name with at least constructive knowledge of Complainant’s rights in the SKUNK WORKS service mark by virtue of Complainant’s prior registration of that mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain name despite such constructive knowledge is, without more, evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <skunkwerksmedia.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 12, 2008
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