Lockheed Martin Corporation v. First Strike / Joe Quinn
Claim Number: FA1009001345534
Complainant is Lockheed Martin Corporation ("Complainant"), represented by Lynne M.J. Boisineau of McDermott Will & Emery LLP, California, USA. Respondent is First Strike / Joe Quinn ("Respondent"), represented by Carol Spawn Desmond of Satterlee Stephens Burke & Burke LLP, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lockheed-aerospace.com>, registered with Register.com.
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.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 9, 2010; the National Arbitration Forum received payment on September 10, 2010.
On September 13, 2010, Register.com confirmed by e-mail to the National Arbitration Forum that the <lockheed-aerospace.com> domain name is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 September 16, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 6, 2010 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@lockheed-aerospace.com. Also on September 16, 2010, the Written Notice of the Complaint, notifying Respondent of the email 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 October 11, 2010.
On October 11, 2010, a timely Additional Submission was received.
On October 22, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that the domain name at issue is confusingly similar to Complainant’s LOCKEED and LOCKHEED MARTIN trademarks. Complainant contends that the domain name contains Complainant’s identical mark LOCKHEED and adds the descriptive term “aerospace” (which is a part of Complainant’s business). Complainant further contends that <lockheed-aerospace.com> is likely to be confused with Complainant’s marks and it is likely to misleadingly attract potential customers of Complainant.
Complainant contends that Respondent has no rights or legitimate interests in the Domain Name. Complainant affirms that Complainant is entitled to a presumption of ownership, validity, and the exclusive right to use its marks in connection with the goods and services named in its registration certificates. Complainant further contends that its marks have acquired distinctiveness through Complainant’s continuous and exclusive use of the marks. Complainant asserts that the domain name at issue is not owned, affiliated with, or endorsed by Complainant. Complainant further asserts that Respondent is neither affiliated with, nor it has been licensed or permitted to use Complainant’s Marks or any domain names incorporating the Marks. Complainant contends that none of the websites that can be reached through the pay-per-click links on the website located at the domain name are affiliated with, sponsored, or endorsed by Complainant. Complainant affirms that Respondent is not using the domain name in connection with a bona fide offering of goods or services since Respondent uses the domain name to promote other commercial websites, and it is presumed that the registrant receives compensation for each misdirected user. Complainant contends that Respondent is not commonly known by the domain name. Complainant claims that Complainant’s prior rights in the domain name precede Respondent’s registration.
Complainant contends that Respondent registered the domain name in bad faith. Complainant argues that Complainant sent a cease and desist letter to Respondent and Respondent called Complainant indicating that Respondent might be willing to transfer the domain name to Complainant in exchange for reimbursement of the domain registration costs. Complainant contends that no further response has been received from Respondent. Complainant asserts that Respondent is neither affiliated with, nor has it been licensed or permitted to use Complainant’s marks or any domain names incorporating the marks. Complainant affirms that Respondent is using the domain name to provide sponsored click-through links which direct to commercial websites, including sites related to Complainant’s competitors. Complainant further contends that it is presumed that Respondent commercially benefits from the use of said click-through links. Complainant contends that Respondent continues to use the domain name even though it is aware of Complainant’s trademark rights.
B. Respondent
Respondent contends that its use of the domain name was limited to a unique data cache within its internal systems for internal, noncommercial use. Respondent further contends that the domain name was never displayed or used publicly or in any means accessible to the public.
Respondent contends that it has rights or legitimate interests in respect of the domain name since the domain name offered a noncommercial cache of sale and purchase information allowing Respondent’s staff a best price means to readily promote commerce with Complainant. Respondent further asserts that the domain name at issue was for non commercial but internal use, and that there was neither any intent nor any ability for consumers to have been diverted.
Respondent contends that Respondent has not registered and used the domain name in bad faith. Respondent claims that at present the site is neither owned nor controlled by Respondent and at the time of domain name renewal Respondent understood that the domain name remained private and was not accessible to the public. Respondent contends that it does not intend to attract internet users to Respondent’s website for commercial gain. Respondent further affirms that Respondent and Complainant are not competitors; indeed Complainant represents a potential market for Respondent. Respondent argues that Respondent provided Complainant with information regarding its documented out-of-pocket costs directly related to the domain name.
C. Additional Submissions
Complainant contends that Respondent does not deny that the domain name is identical or confusingly similar to Complainant’s marks and that Complainant is in the aerospace business. Thus, Complainant asserts that internet users are likely to be confused by the similarities between Complainant and the domain name at issue.
Complainant contends that the domain name is publicly accessible by simply typing the domain name into a web browser. Complainant further contends that the domain name is not blocked or inaccessible to the public and provides various sponsored click-through links which direct internet users to third-party commercial websites (including sites related to Complainant’s competitors). Complainant attests that Respondent does not deny that it is not commonly known by the domain name.
Complainant contends that Respondent is using the domain name to display links to third-party websites offering goods or services in competition with Complainant. Complainant claims that Respondent’s admissions denote Respondent’s intent to attract, for commercial gain, internet users to its website. Complainant asserts that Respondent supplies its products and services to major aerospace and defense contractors. Complainant contends that Respondent is familiar with Complainant’s business and its famous marks. Complainant affirms that Respondent’s website was publicly available in December 2009, and it contained third-party pay-per-click links as well. Complainant contends that after receiving the cease and desist letter, the domain name at issue has been publicly available and displaying said pay-per-click links.
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:
(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.
Complainant asserts that it owns multiple trademark registrations for its LOCKHEED and LOCKHEED MARTIN marks, used for goods and services relating to aerospace, aeronautics, electronic systems, information and technology services, integrated systems and solutions, and space systems. Complainant submits evidence of its United States Patent and Trademark Office (“USPTO”) registrations for its LOCKHEED (e.g., Reg. No. 2,627,156 issued October 1, 2002) and its LOCKHEED MARTIN (e.g., Reg. No. 2,289,019 issued October 26, 1999) marks.
The Panel finds that Complainant’s registrations of its LOCKHEED and LOCKHEED MARTIN marks are sufficient evidence of Complainant’s rights in those marks under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Complainant contends that Respondent’s <lockheed-aerospace.com> domain name is confusingly similar to Complainant’s LOCKHEED mark. Complainant argues that Respondent’s disputed domain name incorporates Complainant’s LOCKHEED mark and merely adds a hyphen and the descriptive term “aerospace,” which Complainant contends describes a well-known aspect of Complainant’s business.
The Panel finds that the addition of a descriptive term and a hyphen are not sufficient to distinguish a disputed domain name from a mark. See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a)(i) confusingly similar analysis.”).
The Panel also finds that the addition of a generic top-level domain (“gTLD”), such as “.com,” is irrelevant for the purposes of Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”).
Complainant alleges that Respondent is not commonly known by the disputed domain name as a business, an individual or any other organization. Complainant further alleges that no correspondence between Complainant’s previous counsel and Respondent’s counsel indicates Respondent is commonly known by the disputed domain name. The WHOIS information identifies the registrant of the disputed domain name as “First Strike / Joe Quinn,” which Complainant contends does not imply that Respondent is commonly known by the disputed domain name.
The Panel finds, based on the evidence in the record, that Respondent is not commonly known by the <lockheed-aerospace.com> domain name and, as such, lacks rights and legitimate interests in the domain name pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant asserts that Respondent is using the disputed domain name to resolve to a website that features click-through links that direct Internet users to third-party commercial websites, some of which belong to Complainant’s competitors in the aerospace industry. Complainant presumes that Respondent receives compensation each time a misdirected Internet user accesses one of the displayed links.
The Panel finds that Respondent’s use of the <lockheed-aerospace.com> domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use for the purposes of Policy ¶ 4(c)(iii). See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry).
Complainant, in its Additional Submission, argues that Respondent’s claim that the domain name is not publicly accessible is false. Complainant indicates that the disputed domain name is publicly accessible by simply typing the disputed domain name into any web browser. Complainant alleges that the resolving website is not blocked or inaccessible to the public as an internal site or intranet likely would be, but rather the resolving website features various sponsored click-through links.
The Panel finds that the domain name at issue is publicly accessible by simply typing said domain name into any web browser.
The Panel finds that Respondent’s registration and use of the disputed domain name to display links to Complainant’s competitors in the aerospace industry constitutes a disruption of Complainant’s business and is evidence of Respondent’s bad faith pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant asserts that Respondent is using the disputed domain name to redirect Internet users to a commercial website where Respondent provides various sponsored click-through links which direct Internet users to websites, including those of Complainant’s competitors. Complainant further asserts that Respondent registered, and is using, the disputed domain name with the intent to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s LOCKHEED mark as to the source, sponsorship, affiliation or endorsement of Respondent’s website.
The Panel finds that Respondent has demonstrated bad faith registration and use under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Complainant asserts further that Respondent had actual and/or constructive notice of Complainant’s rights in the mark prior to registration of the domain name. Complainant contends that Respondent had actual notice of Complainant’s trademark rights in the LOCKHEED mark pursuant to the cease and desist letter Respondent received from Complainant’s previous counsel. Complainant, in its Additional Submission, points out that Respondent asserts in its Response that its intent in registering the disputed domain name was to direct business to itself that Complainant may have and this indicates that Complainant had actual knowledge of Complainant and its LOCKHEED mark.
Although constructive knowledge has generally not been held sufficient to support a finding of bad faith, the Panel finds Respondent has actual knowledge of Complainant's mark. The Panel further finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Complainant argues in its Additional Submission that Respondent believes that Complainant represents a potential market for Respondent as evidenced by statements Respondent makes in its Response. Complainant further argues that although Respondent may not be a direct competitor of Complainant, a screenshot of Respondent’s website indicates that Respondent supplies its products and services to major aerospace and defense contractors. Complainant indicates that this allows Respondent to use the disputed domain name in a directly competitive and disruptive manner to promote the business of another aerospace or defense contractor that is a competitor of Complainant.
Although Respondent asserts that Internet users who access the <lockheed-aerospace.com> domain name are directed to a <register.com> that is neither owned nor controlled by Respondent, Complainant contends that Respondent continues to allow competitive third-party, revenue-generating links to be active on a publicly accessible website from the disputed domain name.
The Panel finds that Respondent is ultimately responsible for the content on the website associated with the disputed domain name and as such has demonstrated bad faith. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“Although the websites accessed via the Disputed Domains may be operated by domain parking service providers, that activity is legally and practically attributable back to respondent. [The] respondent has given those service providers permission to use the Disputed Domains . . . . [The] respondent has expressly authorized the activities being carried on by the domain parking service providers, either specifically or by carte blanche. It must be presumed that [the] respondent is aware of the general nature of the services provided by those organizations and the business model that they employ . . . . The key fact here is that [the] respondent, in collaboration with the domain parking service providers, is exploiting [the] complainant's goodwill.”); see also Cengage Learning Inc. v. Myers, FA 1116919 (Nat. Arb. Forum, Jan. 15, 2008)(“the view of the panel is that, in the absence of evidence to the contrary in any particular case, of which there is none in the present case, a party in the position of the respondent is also responsible for the sponsored links currently appearing on the website.”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lockheed-aerospace.com> domain name be TRANSFERRED from Respondent to Complainant.
Calvin A. Hamilton, Panelist
Dated: November 2, 2010
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