Lockheed Martin Corporation v. Grassroots fitness project
Claim Number: FA1306001504539
Complainant is Lockheed Martin Corporation (“Complainant”), represented by Lynne M.J. Boisineau of McDermott Will & Emery LLP, Irvine, California, USA. Respondent is Grassroots fitness project (“Respondent”), represented by Wilfredo Rivera, New York, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lockheedmartian.net> (the “Disputed Domain Name”), registered with Tucows Inc.
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.
Douglas M. Isenberg as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 12, 2013, naming as the Respondent “Contact Privacy Inc. Customer 0133583369”. The National Arbitration Forum received payment on June 12, 2013.
On June 13, 2013, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <lockheedmartian.net> domain name is registered with Tucows, Inc. and that the current registrant of the name is “Grassroots fitness project”. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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”). Further, Tucows, Inc., stated that the Disputed Domain Name was created on February 22, 2013.
On June 13, 2013, the Forum informed Complainant of a deficiency in the Complaint regarding the identity of the Respondent. On the same date, Complainant submitted an amended complaint, identifying the Respondent as “Grassroots fitness project”. Accordingly, hereafter in this decision, references to “Complaint” shall refer to the amended complaint, and references to “Respondent” shall refer to “Grassroots fitness project”.
On June 13, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 3, 2013 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@lockheedmartian.net. Also on June 13, 2013, 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.
A timely Response was received and determined to be complete on July 2, 2013.
On July 3, 2013, Complainant timely submitted an additional submission, which the Panel has considered.
On July 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Douglas M. Isenberg 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.
Complainant requests that the Disputed Domain Name be transferred from Respondent to Complainant.
A. Complainant
In its Complaint, Complainant contends, in relevant part, as follows:
· “Complainant owns multiple trademark applications and registrations [for LOCKHEED and LOCKHEED MARTIN] for goods and services in the fields of aerospace, aeronautics and aircraft, electronic systems, information and technology services, integrated systems and solutions, and space systems, as well as a wide variety of goods and services related thereto.” In support thereof, Complainant provided a schedule of its global trademark registrations and applications as well as copies of its U.S. trademark registration certificates.
· “Complainant, through its predecessor-in-interest, has used the LOCKHEED mark since as early as 1926. The first U.S. trademark registration for the LOCKHEED mark dates back to 1934, and the earliest trademark registrations for the LOCKHEED MARTIN mark date back to 1995.”
· “Complainant’s worldwide fame is demonstrated by its number 59 ranking on the 2013 listing of U.S. Fortune 500 companies.”
· “Complainant… owns, directly or beneficially, nearly 240 domain names containing LOCKHEED, LOCKHEED MARTIN, or formative spelling variations of” these trademarks.
· The Disputed Domain Name is confusingly similar to the LOCKHEED MARTIN trademark because it differs by only one letter.
· Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because “Respondent is neither affiliated with, nor has it been licensed or permitted to use Complainant’s [trademarks] or any domain names incorporating the [trademarks]”; Respondent is using the Disputed Domain Name to “redirect[] [Internet users] back to Complainant’s website”; “Respondent is not commonly known by the Domain Name, either as a business, individual, or other organization”; and Respondent “has failed to make any developments or ‘demonstrable preparations’ to use the [Disputed] Domain Name with a bona fide offering of goods or services.”
· The Disputed Domain Name has been registered and is being used in bad faith because Respondent has not responded to two demand letters, sent on April 17, 2013, and May 17, 2013; Respondent’s website only contains links that “redirect to the Hover.com web host page”; and “[g]iven the well-known status of Complainant’s [trademarks] and Complainant’s ownership of the domains lockheed.com and lockheedmartin.com, there is no reason for Respondent to have registered the [Disputed] Domain Name other than to trade off of the reputation and goodwill of Complainant’s [trademarks].”
B. Respondent
In its Response, Respondent contends, in relevant part, as follows:
· “My name is Wilfredo Rivera. I am an artist and I intend to use Lockheed Martian as the name of a cartoon/comic. Hence I registered and purchased the domain ‘Lockheedmartian.net’. Alternately I would be open to sell the domain ‘lockheedmartian.net’ to the complainant for $5000.”
C. Additional Submissions
In its additional submission, Complainant contends, in relevant part, as follows:
· “Under the Policy, Respondent’s registration and use of the Domain Name for the purpose of selling the Domain Name to Complainant for $5,000, which upon information and belief is in excess of Respondent’s out-of-pocket costs directly related to the Domain Name, is additional evidence of the registration and use of the Domain Name in bad faith.”
The Panel finds that the Disputed Domain Name is confusingly similar to Complainant’s LOCKHEED and LOCKHEED MARTIN trademarks, that Respondent has no rights or legitimate interests in respect of the Disputed Domain Name and that the Disputed Domain Name was registered and is being used in bad faith.
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.
Based upon the trademark registrations cited by Complainant, as described above, it is apparent that Complainant has rights in the trademarks LOCKHEED and LOCKHEED MARTIN. This finding is consistent with previous panels that also have considered the same trademarks, including Lockheed Martin Corporation v. Wesley Kenzie, NAF Claim No. 1437907 (transfer of <lockheedmarton.com> and <lockheedmartun.com>) and Lockheed Martin Corporation v. Above.com Domain Privacy, NAF Claim No. 1409588 (transfer of <lockhedmartin.com>).
As to whether the Disputed Domain Name is identical or confusingly similar to the LOCKHEED and LOCKHEED MARTIN trademarks, the relevant comparison to be made is with the second-level portion of the Disputed Domain Name only (i.e., “lockheedmartian”), as it is well-established that the top-level domain name (i.e., “.net”) should be disregarded for this purpose.
As this Panel has said before, the addition of a single letter in a relevant trademark typically does nothing to alleviate any confusing similarity – especially where, as here, the second-level domain name is 15 characters long. Hunter Douglas Industries, BV, and Hunter Douglas Window Fashions, Inc. v. Erik Little, WIPO Case No. D2005-0460 (“the difference of a single letter in a 13-character domain name… is insignificant for purposes of confusing similarity”). See also Microsoft Corporation v. sripaskaran ratansothy, NAF Claim No. 1476225 (“[t]he addition of a single letter to a mark does not remove the domain names from the realm of confusing similarity”).
Accordingly, the Panel finds that Complainant has proven the first element of the UDRP.
Complainant has argued that “Respondent is neither affiliated with, nor has it been licensed or permitted to use Complainant’s [trademarks] or any domain names incorporating the [trademarks]”; Respondent is using the Disputed Domain Name to “redirect[] [Internet users] back to Complainant’s website”; “Respondent is not commonly known by the Domain Name, either as a business, individual, or other organization”; and Respondent “has failed to make any developments or ‘demonstrable preparations’ to use the [Disputed] Domain Name with a bona fide offering of goods or services.”
Under the UDRP, “a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, paragraph 2.1. Here, although Respondent has stated that it “intend[s] to use Lockheed Martian as the name of a cartoon/comic,” this statement is unsupported either factually by any evidence of its truth or legally by any arguments of its significance.
Accordingly, the Panel is satisfied that Complainant has proven the second element of the UDRP.
Whether a domain name is registered and used in bad faith for purposes of the UDRP may be determined by evaluating four (non-exhaustive) factors set forth in the UDRP: (i) circumstances indicating that the registrant has registered or the registrant has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location. UDRP, paragraph 4(b).
Here, it is unclear which, if any, of the foregoing paragraphs Complainant alleges create bad faith. Nevertheless, by registering and using a domain name that is confusingly similar to Complainant’s well-established trademarks, it is apparent that Respondent has engaged in a form of typosquatting, a practice that previous panels have found to be evidence of bad faith. See, e.g., Zone Labs, Inc. v. John Zuccarini d/b/a The Cupcake Patrol, NAF Claim No. 190613 (“[t]yposquatting, itself is evidence of bad faith registration and use”); eDreams, Inc. v. Private Whois, WIPO Case No. D2009-1507 (“such an obvious case of typosquatting” constitutes bad faith); and Gamestop, Inc. v. A Kiansu, NAF Claim No. 1441429 (“taking advantage of common misspellings of a mark in a domain name is considered typosquatting and is evidence of bad faith registration and use”).
In addition, Respondent’s offer to sell the Disputed Domain Name to Complainant for $5,000, without explanation, would appear to constitute bad faith pursuant to paragraph 4(b)(i) of the UDRP. See, e.g., Sunbelt Rentals, Inc. v. Host Master c/o Transure Enterprise Ltd, NAF Claim No. 1325884 (finding bad faith where respondent offered to sell the disputed domain name to complainant for $5,000).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lockheedmartian.net> domain name be TRANSFERRED from Respondent to Complainant.
Douglas M. Isenberg, Panelist
Dated: July 15, 2013
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