national arbitration forum

 

DECISION

 

Lockheed Martin Corporation v. Zinna Worldwide Media LLC

Claim Number: FA1208001457194

 

PARTIES

Complainant is Lockheed Martin Corporation (“Complainant”), represented by Lynne M. J. Boisineau of McDermott Will & Emery LLP, California, USA.  Respondent is Zinna Worldwide Media LLC (“Respondent”), Colorado, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <viralskunkworks.com>, registered with GoDaddy.com, LLC.

 

PANEL

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.

 

The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 8, 2012; the National Arbitration Forum received payment on August 14, 2012.

 

On August 10, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <viralskunkworks.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 August 14, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 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@viralskunkworks.com.  Also on August 14, 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 September 10, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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

    1. Complainant registered the SKUNK WORKS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,759,221 registered September 2, 2003);
    2. Respondent’s <viralskunkworks.com> domain name is confusingly similar to Complainant’s SKUNK WORKS mark;
    3. Respondent is not commonly known by the disputed domain name;
    4. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name;
    5. Respondent resolves the disputed domain name to a pay-per-click website offering links to third-party companies;
    6. Respondent gains commercially from the resolving website by collecting click-through fees from the linked websites;
    7. Respondent currently has actual knowledge of Complainant’s rights in the SKUNK WORKS mark and had at least constructive knowledge when Respondent registered the disputed domain name.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Lockheed Martin Corporation, uses multiple trademark registrations for goods and services relating to designing, building, equipping and testing commercial and military aircraft.  Complaint registered the SKUNK WORKS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,759,221 registered September 2, 2003).

 

Respondent, Zinna Worldwide Media LLC, registered the <viralskunkworks.com> domain name on April 9, 2012.  Respondent resolves the disputed domain name to a pay-per-click website offering links to third-party companies.

 

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.

 

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 registered the SKUNK WORKS mark with the USPTO (Reg. No. 2,759,221 registered September 2, 2003).  Thus, the Panel finds that Complainant has rights in the SKUNK WORKS mark under Policy ¶ 4(a)(i).  See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).

 

Respondent’s <viralskunkworks.com> domain name is confusingly similar to Complainant’s SKUNK WORKS mark under Policy ¶ 4(a)(i).  The disputed domain name includes the entire mark, while adding the generic term “viral” and the generic top-level domain (“gTLD”) “.com.”  The space between the terms of the mark has been eliminated.  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 Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names).

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show 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).

 

Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).  The WHOIS information identifies the registrant of the <viralskunkworks.com> domain name as “Zinna Worldwide Media LLC.”  See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

 

Respondent resolves the disputed domain name to a pay-per-click website offering links to various third-party companies.  Based upon this use, the Panel finds that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.  See 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).

 

Registration and Use in Bad Faith

 

Respondent gains commercially from the resolving website by collecting click-through fees from the linked websites.  Respondent resolves the disputed domain name to a pay-per-click website offering links to third-party companies.  The Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).  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).

 

As Respondent had actual knowledge of Complainant’s rights in the SKUNK WORKS mark prior to registering the disputed domain name, the Panel finds that Respondent registered the domain name in bad faith under Policy ¶ 4(a)(iii).  See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); 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).

 

DECISION

Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <viralskunkworks.com> domain name be TRANSFERRED from Respondent to Complainant.

 

The Honorable Charles K. McCotter, Jr., Panelist

Dated:  September 24, 2012

 

 

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