national arbitration forum

 

DECISION

 

Lockheed Martin Corporation v. Motor City Aviation / Todd Bates

Claim Number: FA1208001458944

 

PARTIES

Complainant is Lockheed Martin Corporation (“Complainant”), represented by Lynne M. J. Boisineau of McDermott Will & Emery LLP, California, USA.  Respondent is Motor City Aviation / Todd Bates (“Respondent”), Michigan, USA.

 

REGISTRARS AND DISPUTED DOMAIN NAMES

The domain names at issue are <mooneyskunkworks.com>, registered with Register.com, Inc., and <motorcityskunkworks.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 Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 21, 2012; the National Arbitration Forum received payment on August 28, 2012.

 

On August 23, 2012, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <mooneyskunkworks.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name.  Register.com, Inc. has verified that Respondent is bound by the Register.com, Inc. 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 23, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <motorcityskunkworks.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 30, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 19, 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@mooneyskunkworks.com and postmaster@motorcityskunkworks.com.  Also on August 30, 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 26, 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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

      Complainant made the following contentions.

 

1.    Respondent registered the <mooneyskunkworks.com> and <motorcityskunkworks.com> domain names no earlier than February 14, 2012.  See Complainant’s Exhibit A.

2.    Complainant owns trademark registrations for the SKUNK WORKS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,759,221 registered September 2, 2003).  See Complainant’s Exhibit E.

3.    Respondent’s <mooneyskunkworks.com> and <motorcityskunkworks.com> domain names are confusingly similar to Complainant’s SKUNK WORKS mark.

4. Respondent has no rights or legitimate interests in respect of the domain   names.

5.    Respondent is not commonly known by the <mooneyskunkworks.com> and <motorcityskunkworks.com> domain names.

6.    Respondent is not affiliated with Complainant and is not licensed or permitted to use Complainant’s SKUNK WORKS mark.

7.    The domain names have been registered and are being used in bad faith.

8.    Respondent uses the disputed domain names to host sponsored, pay-per-click hyperlinks.  See Complainant’s Exhibit C.

9.   Respondent registered and uses the <mooneyskunkworks.com> and <motorcityskunkworks.com> domain names for the purpose of attracting, for commercial gain, Internet users to the resolving websites by creating a likelihood of confusion with Complainant’s SKUNK WORKS mark.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Complainant is a United States company that for many years has been prominent in the aircraft industry.

2.    Complainant owns trademark registrations for the SKUNK WORKS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,759,221 registered September 2, 2003).  See Complainant’s Exhibit E.

3.    Respondent registered the disputed domain names on February 14, 2012  and July 9, 2012.

4. The disputed domain names redirect internet users to websites where Respondent provides various sponsored links that direct users to third party commercial websites.

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

 

The first question that arises is whether Complainant has rights in a trademark or service mark. Complainant claims that it owns trademark registrations for the SKUNK WORKS mark with the USPTO (e.g., Reg. No. 2,759,221 registered September 2, 2003).  See Complainant’s Exhibit E.  Complainant alleges that Complainant uses the mark in connection with manufacturing, product design, research, engineering technical consulting and advisory services for designing, building, equipping and testing commercial and military aircraft.  Based on Complainant’s USPTO trademark registrations, the Panel finds that Complainant established rights in the SKUNK WORKS mark under Policy ¶ 4(a) (i).  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).

 

The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SKUNK WORKS mark. Complainant contends that Respondent’s <mooneyskunkworks.com> and <motorcityskunkworks.com> domain names are confusingly similar to Complainant’s SKUNK WORKS mark.  Complainant notes that the disputed domain names contain Complainant’s entire mark and also contain as prefixes the generic terms “mooney” and “motorcity” respectrively. The Panel also notes that the disputed domain names do not contain the space found in Complainant’s mark but do feature the generic top-level domain (“gTLD”) “.com.”  The Panel determines that Respondent’s removal of a space, addition of generic terms and addition of the gTLD all fail to distinguish the disputed domain names from Complainant’s mark adequately.  See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a) (i)); see also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).  As the Panel makes such a determination, the Panel concludes that Respondent’s <mooneyskunkworks.com> and <motorcityskunkworks.com> domain names are confusingly similar to Complainant’s SKUNK WORKS mark pursuant to Policy ¶ 4(a) (i).

 

Complainant has thus 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 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); 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.”).

 

The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:

 

(a)  Respondent has chosen to take Complainant’s SKUNK WORKS mark  and to use it in its domain names;

 

(b)  Respondent has then added as prefixes  to the trademark the words “mooney”  and “motor city “ respectively which reinforces the notion that the disputed domain names are official domain names of Complainant and that they will lead to official websites of Complainant;

 

(c)  Respondent has engaged in these activities without the consent or approval of Complainant to use the SKUNK WORKS mark in a domain name or otherwise;

 

(d)  Further, Complainant alleges that Respondent is not affiliated with Complainant and is not licensed or permitted to use Complainant’s SKUNK WORKS mark.  The Panel notes that Respondent did not respond to this proceeding and that the WHOIS information identifies “Motor City Aviation / Todd Bates” as the registrant of the <mooneyskunkworks.com> and <motorcityskunkworks.com> domain names.  In light of the evidence in the record, the Panel holds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c) (ii).  See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name);

 

(e) Complainant further alleges that Respondent uses the disputed domain names to host sponsored, pay-per-click hyperlinks.  See Complainant’s Exhibit C.  According to Complainant’s screenshots, the Panel notes that the hyperlinks are entitled “Mooney Airplane Company,” “Aircraft for Sale,” “Planes for Sale,” etc.  As Complainant is in the aviation business and widely known to be so, the Panel treats these hyperlinks as competing hyperlinks.  The Panel determines that Respondent’s provision of competing hyperlinks is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <mooneyskunkworks.com> and <motorcityskunkworks.com> domain names.  See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was 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)).

 

All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain names.

 

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

 

 

Registration and Use in Bad Faith

 

It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and have been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.

 

Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.

 

First, according to Complainant, Respondent registered and uses the <mooneyskunkworks.com> and <motorcityskunkworks.com> domain names for the purpose of attracting, for commercial gain, Internet users to the resolving websites by creating a likelihood of confusion with Complainant’s SKUNK WORKS mark.  Complainant alleges that Respondent commercially benefits from the pay-per-click hyperlinks found on the resolving website.  See Complainant’s Exhibit C.  The Panel finds that Respondent is attempting to create confusion as to Complainant’s association with the disputed domain names by using Complainant’s SKUNK WORKS mark in the domain names and by hosting hyperlinks relating to Complainant’s business.  As the Panel agrees with Complainant and finds that Respondent commercially benefits from the hyperlinks and that it is attempting to create confusion,  the Panel also finds that Respondent registered and uses the <mooneyskunkworks.com> and <motorcityskunkworks.com> domain names in bad faith according to 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).”).

 

Secondly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain names using the SKUNK WORKS mark and in view of the conduct that Respondent engaged in when using them, Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.

 

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 <mooneyskunkworks.com> and <motorcityskunkworks.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

The Honourable Neil Anthony Brown QC

Panelist

Dated:  September 28, 2012

 

 

 

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