national arbitration forum

 

DECISION

 

Lockheed Martin Corporation v. Adam Cox

Claim Number: FA1202001427832

 

PARTIES

Complainant is Lockheed Martin Corporation (“Complainant”), represented by Lynne M. J. Boisineau of McDermott Will & Emery LLP, California, USA.  Respondent is Adam Cox (“Respondent”), Virginia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <skunkworksapparel.com> and <skunkworksclothing.com>, registered with Go Daddy.

 

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.

 

The Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on February 2, 2012; the National Arbitration Forum received payment on February 8, 2012.

 

On February 2, 2012, Go Daddy confirmed by e-mail to the National Arbitration Forum that the <skunkworksapparel.com> and <skunkworksclothing.com> domain names are registered with Go Daddy and that Respondent is the current registrant of the names.  Go Daddy has verified that Respondent is bound by the Go Daddy 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 February 13, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 5, 2012 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@skunkworksapparel.com and postmaster@skunkworksclothing.com.  Also on February 13, 2012, 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 March 13, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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 names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

 

Complainant, Lockheed Martin Corporation, claims that it is engaged in the business of manufacturing, designing, researching, and providing consulting and advising services regarding building, designing, and testing commercial and military aircraft equipment.

Complainant contends that it owns many trademark registrations for its SKUNK WORKS mark with the United States Patent and Trademark Office (“USPTO”) including the trademark No. 1,161,482 registered with the United States Patent and Trademark Office (“USPTO”) on July 14, 1981) ( “ the SKUNK WORKS mark” ). Complainant also licences the use of the SKUNK WORK trademark for the promotion of various products including apparel and clothing

 

Complainant claims that Respondent, Adam Cox, registered both the <skunkworksapparel.com> and <skunkworksclothing.com> domain names on May 15, 2011 and that they resolve to a web page that includes sponsored “pay-per-click” links, none of which are affiliated by Complainant’s business.

 

 Complainant therefore contends that the domain names are confusingly similar to the SKUNK WORKS mark, that Respondent has no right or legitimate interest in respect of either domain name and that they were both registered and used in bad faith.  

 

 

B. Respondent

 

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is the registered owner of several trademarks for SKUNK WORKS including the trademark No. 1,161,482 registered with the United States Patent and Trademark Office (“USPTO”) on July 14, 1981) ( “ the SKUNK WORKS mark” ). Complainant is also the owner of many domain names incorporating the SKUNK WORKS mark.

Complainant licenses its SKUNK WORKS mark for use in connection with a range of products including apparel and clothing.

Respondent registered the disputed domain names on May 15, 2011. They resolve to a web page that includes sponsored “pay-per-click” links, none of which are affiliated with Complainant’s business.  

 

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."

 

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.

(4)  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.”).

 

Identical and/or Confusingly Similar

 

Complainant contends that it is the owner of several trademarks including the trademark No. 1,161,482 for SKUNK WORKS registered with the United States Patent and Trademark Office (“USPTO”) on July 14, 1981 ( “ the SKUNK WORKS mark” ).The Panel accepts Complainant’s evidence to that effect. The panel in Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) found that when a complainant registers its marks with the USPTO, that complainant has established rights in the mark. See also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a) (i)). The Panel accordingly finds that, by registering its mark with the USPTO, Complainant has effectively established rights in the SKUNK WORKS mark.

 

Complainant argues that Respondent’s <skunkworksapparel.com> and <skunkworksclothing.com> domain names are confusingly similar to Complainant’s SKUNK  WORKS mark because both domain names incorporate Complainant’s mark in its entirety and add the generic terms “apparel,” and “clothing,” respectively.  The Panel finds that the addition of the generic terms is insufficient to distinguish the disputed domain names from the mark .That is so because the SKUNK WORKS mark has been well-known since approximately 1943 and it is publicly known that Complainant licenses the use of the mark for the promotion of various products including apparel and clothing ; accordingly internet users are likely to think that the disputed domain names are domain names of Complainant and that they will lead to official websites of Complainant or its licensees dealing with those products. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term.)

 

Complainant also contends that removing the spaces of the mark, and adding a gTLD to the mark are inadequate changes to distinguish the disputed domain name from the mark. The Panel agrees with that contention and  finds that the disputed domain names are confusingly similar to Complainant’s SKUNK WORKS mark under Policy ¶ 4(a)(i).); see U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”).  Complainant also contends that, by removing the space between the words in the mark and adding the generic top-level domain (“gTLD”) “.com,” Respondent did not render the domain names sufficiently distinct from the SKUNK WORKS mark for the purposes of Policy ¶ 4(a) (i). The Panel also agrees with that contention which is now well-established.

 

For those reasons, Complainant has made out the first of the three elements that it must establish.

 

 

Rights or Legitimate Interests

 

It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a) (ii), and then the burden shifts to Respondent to show that it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).

 

Complainant then seeks to make out that prima facie case by arguing , first, Respondent is not commonly known by either of the <skunkworksapparel.com> and <skunkworksclothing.com> domain names, because Complainant contends that the WHOIS information identifies the domain registrant as “Adam Cox.” Complainant asserts that Respondent provides no evidence, including the WHOIS information that supports the inference that Respondent is commonly known by the disputed domain name. Previous panels, as those in Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) and Gambro AB v. Family Health & Wellness Ctr., D2001-0447 (WIPO May 25, 2001), determined that the respondent is not commonly known by the disputed domain name when the evidence lacked any proof of such a fact, including in the WHOIS information. The Panel therefore finds that, based on the WHOIS information and the lack of other supporting evidence, Respondent is not commonly known by either of the <skunkworksapparel.com> and <skunkworksclothing.com> domain names and thus can claim no rights or legitimate interests in the names under Policy ¶ 4(c)(ii) on that basis.

 

Complainant also argues that Respondent’s disputed domain names correspond to a website that “promote[s] other commercial websites” by displaying assorted click-through links, which take website visitors to those third-party websites. Evidence submitted by Complainant supports that contention. Complainant contends that such use of the domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name and the Panel agrees with that contention. The panel in Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) found that failure to offer any goods or services on the respondent’s website besides links to commercial sites is not a bona fide offering of goods or service under Policy ¶ 4(c) (i) or a legitimate noncommercial or fair use under Policy ¶ 4(c) (iii). See also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)). The Panel therefore concludes that use of the domain names to maintain a website offering hyperlinks to businesses  that compete with Complainant in the same products does not amount to a bona fide offering of goods or services under Policy ¶ 4(c)(i) or  a legitimate noncommercial or fair use of the domain names under Policy ¶ 4(c)(iii). Accordingly, those considerations show that the Respondent could not rely on them to establish a right or legitimate interest in the disputed domain names.

 

The prima facie case is strengthened by the fact that Respondent chose to incorporate in his domain names the entirety of Complainant’s well-known and long-standing SKUNK WORKS mark without any permission or approval from Complainant and to append to it two generic expressions that describe products promoted through the use of the trademark under licence from Complainant.

 

Complainant has thus made out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain names. As Respondent has not filed a Response or endeavoured by any other means to rebut that prima facie conclusion, the Panel finds that Complainant has made out the second of the three elements that it must establish.

 

Registration and Use in Bad Faith

 

It is clear that it must be established both that the disputed domain names were registered in bad faith and that they have been used in bad faith.

 

It should also be noted that the criteria of bad faith set out in Policy ¶ 4(b) (ii) are not exclusive and that a complainant may prove bad faith in the general sense of that word as well as on the basis of those specified criteria.

 

Complainant endeavours to establish bad faith on the part of Respondent by arguing, first, that Respondent registered the domain names to prevent Complainant from registering the names for its business. The Panel accepts that contention, as it must be inferred from the fact that Respondent used in the domain names Complainant’s SKUNK WORKS mark and two of the products promoted under licence by means of the mark, that part of Respondent’s intention was to prevent Complainant from registering the trademark and the products in domain names. The Panel therefore finds that Respondent’s registration of the two domain names with that intention is evidence of bad faith registration and use within the meaning of Policy ¶ 4(b) (ii) and also within the general meaning of bad faith.

 

Complainant also argues that Respondent used the confusingly similar domain names with the intention of attracting consumers to its website for profit by generating confusion over the relationship between the website and Complainant’s business. Complainant claims that Respondent receives referral fees from displaying third-party hyperlinks and argues that profiting from misdirected Internet users clicking on the links demonstrates bad faith registration and use. The Panel agrees with that contention and finds that the disputed domain names were registered with the intention of attracting consumers to the website by using a confusingly similar name and profiting from the misdirection of internet users.  The Panel therefore finds that such an intent supports the conclusion that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b) (iv). See Caterpillar, Inc. v. Phillips, FA 824404 (Nat. Arb. Forum Dec. 5, 2006) (finding Policy ¶ 4(b) (iv) bad faith registration when the respondent registered and used the disputed domain name to resolve to a commercial links page because the respondent was profiting from the goodwill of the mark); see also 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)”).

 

Complainant also alleges that, because of the established and widespread use of its SKUNK WORKS mark, Respondent had actual knowledge of Complainant’s rights in the mark and that such conduct shows bad faith both in the registration and use of the disputed domain names. It is always open to a Panel to infer actual knowledge from the totality of the evidence, even if direct evidence of it is not available. On this occasion and having regard to the totality of the evidence the Panel concludes that Respondent had actual notice of Complainant’s rights in the mark and that Respondent therefore registered the domain names in bad faith under Policy ¶ 4(a) (iii) and also used them in bad faith. That is so because Complainant’s trademark is well-known and has been so for many years. Moreover the evidence is that members of the public would be aware that clothing and apparel are two of the product lines promoted by means of the licensing of the SKUNK WORKS mark. Accordingly, the Panel’s view is that such an inference as that described above may be drawn. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

Complainant has thus made out the third of the three elements that it must establish.

 

 

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 <skunkworksapparel.com>, <skunkworksclothing.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC

Panelist

Dated:  March 15, 2012

 

 

 

 

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