national arbitration forum

 

DECISION

 

Lockheed Martin Corporation v. Counter Balance Enterprises Limited / Counter Balance

Claim Number: FA1108001405603

 

PARTIES

Complainant is Lockheed Martin Corporation (“Complainant”), represented by Lynne M.J. Boisineau of McDermott Will & Emery LLP, California, USA.  Respondent is Counter Balance Enterprises Limited / Counter Balance (“Respondent”), Thailand.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <lockheedmarting.com>, registered with FABULOUS.COM PTY LTD.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

Tyrus R. Atkinson, Jr., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 31, 2011; the National Arbitration Forum received payment on September 7, 2011.

 

On September 1, 2011, FABULOUS.COM PTY LTD. confirmed by e-mail to the National Arbitration Forum that the <lockheedmarting.com> domain name is registered with FABULOUS.COM PTY LTD. and that Respondent is the current registrant of the name.  FABULOUS.COM PTY LTD. has verified that Respondent is bound by the FABULOUS.COM PTY LTD. 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 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 28, 2011 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@lockheedmarting.com.  Also on September 8, 2011, 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.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On October 3, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

 

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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.

 

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 <lockheedmarting.com> domain name is confusingly similar to Complainant’s LOCKHEED MARTIN mark.

 

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

 

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

 

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

 

FINDINGS

Complainant, Lockheed Martin Corporation, is a manufacturer and distributor of aerospace, aeronautics, electronic systems, information and technology services, integrated systems and solutions, and space systems goods, as well as many others.  Complainant presents the following trademarks with the United States Patent and Trademark Office ("USPTO"):

 

1.  LOCKHEED (e.g., Reg. No. 2,627,156 registered October 1, 2002);

2.  LOCKHEED MARTIN and Design (e.g. Reg. No. 2,289,019 registered October 26, 1999); and

3.  LOCKHEED MARTIN (e.g. Reg. No. 2,022,037 registered December 10, 1996).

 

Respondent, Counter Balance Enterprises Limited / Counter Balance, registered the <lockheedmarting.com> domain name on October 18, 2010.  Respondent’s disputed domain name resolves to a website that contains a search feature and third-party hyperlinks to businesses and websites unrelated to Complainant. 

 

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.  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 the 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:

 

(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

 

Complainant has submitted to the Panel evidence that it owns numerous worldwide trademarks for its LOCKHEED MARTIN mark, including those with the USPTO (e.g. Reg. No. 2,022,037 registered December 10, 1996).  The Panel finds that such evidence is sufficient for Complainant to establish rights in its mark under Policy ¶ 4(a)(i), regardless of where the marks are registered.  See 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); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

Complainant argues that the <lockheedmarting.com> domain name is confusingly similar to Complainant’s LOCKHEED MARTIN mark.  Complainant notes that domain name merely removes the space between the terms of the mark, adds the letter “g,” and adds the generic top-level domain (“gTLD”) “.com.”  The Panel agrees with Complainant and finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).  See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”).

 

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

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent does not any rights and legitimate interests in the <lockheedmarting.com> domain name.  Complainant is required to make a prima facie case in support of these allegations.  Once Complainant has produced a prima facie case, the burden of proof shifts to Respondent to show that it possesses rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”).  The Panel finds that Complainant has produced a prima facie case.  Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not have any rights or legitimate interests in the <lockheedmarting.com> domain name.  See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).

 

Complaint argues that Respondent is neither commonly known by the <lockheedmarting.com> domain name, nor has Complainant given Respondent permission to use Complainant’s mark.  The WHOIS information identifies “Counter Balance Enterprises Limited / Counter Balance” as the registrant of the <lockheedmarting.com> domain name, and there is no further evidence on record that Respondent is commonly known by the disputed domain name.  The Panel finds that without evidence of Respondent being commonly known by the disputed domain name, Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Based upon Complainant’s evidence and arguments, it is clear that Respondent’s disputed domain name resolves to a website that has been commonly referred to as a links directory.  The premise behind such a website is to place as many links as possible on the resolving site after registering a confusingly similar domain to drive up Internet traffic.  When Internet users search for Complainant, they can wind up going to Respondent’s website where they may click-through to the companies advertised on the website.  Respondent will generally make money in proportion to how many users click-through to the other websites.  In this instance, the links direct Internet users to websites under such headings as “career,” “airline tickets,” and “job,” to websites that have nothing in common with Complainant.  The Panel finds that such use of a confusingly similar domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).

 

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

 

Registration and Use in Bad Faith

 

Complainant has presented evidence to show that Respondent’s disputed domain name resolves to a website featuring a search engine and third-party links to various unrelated businesses and websites.  Complainant argues that such use of the domain name is proof that Respondent registered and is using the domain name in bad faith under Policy ¶ 4(b)(iv).  The Panel accepts such an argument, and finds that Respondent registered and is using the domain name in bad faith under Policy ¶ 4(b)(iv), where Respondent is presumably profiting from Internet users who mistakenly happen upon its website.  See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).

 

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 <lockheedmarting.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  October 17, 2011

 

 

 

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