Lockheed Martin Corporation v. Morse Mark / Lockheed Emerson Group Limited
Claim Number: FA1211001471066
Complainant is Lockheed Martin Corporation (“Complainant”), represented by Lynne M. J. Boisineau of McDermott Will & Emery LLP, California, USA. Respondent is Morse Mark / Lockheed Emerson Group Limited (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lockheedemerson.com>, registered with Hichina Zhicheng Technology Ltd.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 13, 2012; the National Arbitration Forum received payment on November 13, 2012. The Complainant was submitted in both Chinese and English.
On November 13, 2012, Hichina Zhicheng Technology Ltd. confirmed by e-mail to the National Arbitration Forum that the <lockheedemerson.com> domain name is registered with Hichina Zhicheng Technology Ltd. and that Respondent is the current registrant of the name. Hichina Zhicheng Technology Ltd. has verified that Respondent is bound by the Hichina Zhicheng Technology 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 November 16, 2012, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of December 6, 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@lockheedemerson.com. Also on November 16, 2012, the Chinese language 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 December 20, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings will be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <lockheedemerson.com> domain name is confusingly similar to Complainant’s LOCKHEED mark.
2. Respondent does not have any rights or legitimate interests in the <lockheedemerson.com> domain name.
3. Respondent registered and used the <lockheedemerson.com> domain name in bad faith.
B. Respondent failed to submit a timely Response in this proceeding.
Complainant has rights in the LOCKHEED mark, used in connection with aerospace, aeronautics, and aircraft electronic systems, information and technology systems, integrated systems and solutions, and space systems. Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registration for the LOCKHEED mark (Reg. No. 2,627,156 registered October 1, 2002).
Respondent registered the <lockheedemerson.com> domain name on August 8, 2012. The <lockheedemerson.com> domain name resolves to a website which attempts to pass itself off as being run by or affiliated with Complainant.
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.”).
Complainant provides the Panel with evidence of Complainant’s ownership of its USPTO registration for the LOCKHEED mark. Therefore, the Panel finds that Complainant has rights in the LOCKHEED mark pursuant to Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Respondent’s <lockheedemerson.com> domain name is composed of Complainant’s mark, the term “emerson,” a reference to a technology company, and the gTLD “.com.” The Panel finds that the addition of a descriptive term and a gTLD does not distinguish the disputed domain name from Complainant’s mark. 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 Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that Respondent’s <lockheedemerson.com> domain name is confusingly similar to Complainant’s LOCKHEED mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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.”).
Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain name given that Respondent is not commonly known by the <lockheedemerson.com> domain name. Complainant states that Respondent is not licensed or otherwise authorized to use the disputed domain name. According to the WHOIS record for the <lockheedemerson.com> domain name, Respondent registered the domain name under the name “Morse Mark / Lockheed Emerson Group Limited. According to Complainant, while Respondent has a corporate registration with the California Secretary of State, the Hong Kong address listed in the corporate registration appears to be for service of process rather than for Respondent’s business. Moreover, Complainant argues that the California address listed in the WHOIS record and on the <lockheedemerson.com> domain name’s resolving website is a website that, when searched, is available for lease. Complainant argues that there is no affirmative evidence that Respondent is commonly known by the disputed domain name. Previously panels have found that, despite a WHOIS record that suggests the respondent is commonly known by a domain name, a respondent is not commonly known by the disputed domain name where all other evidence contradicts Respondent being known by the disputed domain name. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”). Therefore, the Panel finds that Respondent is not commonly known by the <lockheedemerson.com> domain name and therefore does not have rights or legitimate interests in the <lockheedemerson.com> domain name under Policy ¶ 4(c)(ii).
Complainant contends that the <lockheedemerson.com> domain name resolves to a website which attempts to pass itself off as being run by or affiliated with Complainant. Complainant argues that Respondent utilizes the LOCKHEED mark in the domain name and on the resolving website, and Respondent states that it and Complainant are cooperating in a business venture. Panels have found that a respondent’s attempt to pass itself off as being or being affiliated with a complainant is a clear demonstration of not having rights or legitimate interests. See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). Thus, the Panel finds that Respondent’s use of the <lockheedemerson.com> domain name to attempt to pass off as Complainant 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.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Policy ¶ 4(b) outlines four factors that may be considered when making a determination of bad faith. This list, however, was never intended to be exhaustive. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”). Therefore, the Panel considers the totality of the circumstances to determine whether Respondent registered and uses the <lockheedemerson.com> domain name in bad faith.
Respondent’s <lockheedemerson.com> domain name resolves to a website which attempts to pass itself off as being run by or affiliated with Complainant. The panel in Enterprise Rent-A-Car Co. v. Web Pescados LLC, FA 1002828 (Nat. Arb. Forum Jul. 24, 2007), held that trying to pass itself off as a complainant indicates that the respondent registered and uses the domain name in bad faith. Accordingly, the Panel finds that Respondent’s attempt to make Internet users believe that the <lockheedemerson.com> domain name is run by or affiliated with Complainant demonstrates that Respondent registered and uses the <lockheedemerson.com> domain name in bad faith under Policy ¶ 4(a)(iii).
Complainant asserts that Respondent has only chosen the <lockheedemerson.com> domain name because Respondent was aware of Complainant’s trademarks, business, and worldwide fame, and Respondent is trying to associate itself with Complainant. Respondent falsely states that it is in a business venture with Complainant. The Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lockheedemerson.com> domain name be TRNASFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: December 27, 2012
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