Lockheed Martin Corporation v. Tom Miller / Eastern Technology Group
Claim Number: FA1404001552534
Complainant is Lockheed Martin Corporation (“Complainant”), represented by Lynne M. J. Boisineau of McDermott Will & Emery LLP, California, USA. Respondent is Tom Miller / Eastern Technology Group (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <uavskunkworks.com>, registered with Register.com, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 3, 2014; the National Arbitration Forum received payment on April 3, 2014.
On April 4, 2014, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <uavskunkworks.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 April 4, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 2014 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@uavskunkworks.com. Also on April 4, 2014, 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 April 30, 2014, 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Policy ¶ 4(a)(i): Complainant’s Rights and the Disputed Domain Name
Complainant, Lockheed Martin Corporation, uses the SKUNK WORKS mark to identify a research facility wherein many of Complainant’s military and commercial aircraft and equipment have been, and are presently being, developed. Complainant’s SKUNK WORKS mark is protected by United States Patent and Trademark Office ("USPTO") trademark registration. See, e.g., Reg. No. 2,759, 221, registered Sept. 2, 2003.
Respondent’s <uavskunkworks.com> domain name is confusingly similar to the SKUNK WORKS mark. The domain name adds the acronym “UAV” (unmanned aerial vehicle) and the generic top-level domain ("gTLD") “.com” to the SKUNK WORKS mark and eliminates the spacing in the mark.
Policy ¶ 4(a)(ii): Respondent Lacks Rights and Legitimate Interests
Respondent, Tom Miller / Eastern Technology Group, has not been commonly known as the <uavskunkworks.com> domain name. The only information available suggests that the <uavskunkworks.com> domain name was registered by “Tom Miller” of “Eastern Technology Group.” Complainant has never authorized Respondent’s use of the SKUNK WORKS mark in domain names.
Respondent is not using the <uavskunkworks.com> domain name in connection with any bona fide offering of goods or services. The only verifiable use of this <uavskunkworks.com> domain name is for the promotion of various hyperlinks at a generic, template-style website.
Policy ¶ 4(a)(iii): Respondent’s Bad Faith Use and Registration
Respondent is profiting from the likelihood that Internet users will confuse Complainant as a sponsor or endorser of the type of content Respondent posts on the <uavskunkworks.com> domain name’s website. Respondent profits because each commercial hyperlink, when clicked by an Internet user, generates income for Respondent.
Correspondence between the parties shows that Respondent was aware of Complainant’s rights in the SKUNK WORKS mark prior to domain name registration.
B. Respondent
While Respondent did not submit a formal response, Respondent submitted an e-mail stating “The current domain name has been registered but, is not in use?? I just own it…there is not a web site directed to or from this domain.”
Complainant owns multiple trademark registrations for goods and services relating to manufacture, design and testing services with respect to commercial and military aircraft and related equipment. Complainant owns rights in the SKUNK WORKS mark through registration with the United States Patent and Trademark Office ("USPTO"). See, e.g., Reg. No. 2,759, 221, registered Sept. 2, 2003.
Respondent registered the <uavskunkworks.com> domain name on January 1, 2014. Respondent does not use the disputed domain name.
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 has rights in the SKUNK WORKS mark under Policy ¶ 4(a)(i) through registration with the United States Patent and Trademark Office ("USPTO"). See Amusement Art, LLC v. zarathustra james / bomit, FA 1536201 (Nat. Arb. Forum Jan. 29, 2014) (Complainant’s registration of the MR BRAINWASH mark with the USPTO establishes its rights in the mark pursuant to Policy ¶ 4(a)(i)).
Respondent’s <uavskunkworks.com> domain name is confusingly similar to the SKUNK WORKS mark under Policy ¶ 4(a)(i). The domain name adds the acronym “UAV” (unmanned aerial vehicle) and the gTLD “.com” to the SKUNK WORKS mark. See Best Western Int’l, Inc. v. Lost in Space, SA, FA 126834 (Nat. Arb. Forum Nov. 7, 2012) (finding that the deletion of spacing in a mark and the addition of a gTLD are irrelevant as they are dictated by the standardized nature of second- and top-level domain names, and further that the addition of generic and descriptive terms fails to negate confusing similarity).
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 has not been commonly known by the <uavskunkworks.com> domain name under Policy ¶ 4(c)(ii). Complainant has not authorized Respondent’s use of the SKUNK WORKS mark in domain names. See Jordan Cook p/k/a Reignwolf v. Ryan Crase, Ryan Crase Creative Media, FA 1520515 (Nat. Arb. Forum Oct. 28, 2013) (Respondent not commonly known by the <reignwolf.com> and <reignwolfmusic.com> domain names when the respondent did not make any claim that it was actually known by the domain names).
Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii) because Respondent does not use the disputed domain name. The failure to make an active use of a disputed domain name that is confusingly similar to a complainant’s registered mark is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). “Failing to make an active use of a disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.” Lockheed Martin Corporation v. wolstenholme, Cynthia, FA 1522289 (Nat. Arb. Forum Nov. 4 2013).
Respondent registered and is using the disputed domain name in bad faith because Respondent does not use the domain name. Failure to make an active use of a confusingly similar domain name constitutes bad faith use and registration under Policy ¶ 4(a)(iii). See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).
Complainant claims that correspondence between the parties shows that Respondent was aware of Complainant’s rights in the SKUNK WORKS mark prior to domain name registration. The Panel finds that Respondent had actual knowledge of Complainant's well known mark. Therefore, Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See 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).
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 <uavskunkworks.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: May 13, 2014
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