Lockheed Martin Corporation v. yoyo.email et al.
Claim Number: FA1406001563665
Appellant: yoyo.email of Dunsatble, International, GB.
Respondent: Lockheed Martin Corporation of Bethesda, Maryland, United States of America. Respondent Representative: McDermott Will & Emery LLP of Irvine, California, United States of America.
REGISTRIES and REGISTRARS
Registries: Spring Madison, LLC
Registrars: GoDaddy.com, LLC
The undersigned certify that they have acted independently and impartially and, to the best of their knowledge, have no known conflict in serving as Appeal Panelists in this proceeding.
Jonathan Agmon, as Appeal Panelist (Chair).
Douglas M. Isenberg, as Appeal Panelist.
Terry Peppard, as Appeal Panelist.
Decision by the Examiner: June 27, 2014
Appeal submitted: July 8, 2014
Respondent submitted reply: July 14, 2014
Decision was issued on: August 6, 2014
Having reviewed the communications records, the Panelists find that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Appellant seeks reversal of the Examiner's Final Determination that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
URS Procedure 12.1 provides that each party shall have the right to seek a de novo appeal of the Determination based on the existing record within the URS proceedings. The appellant must identify the specific grounds on which the party is appealing.
URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly
similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and
that is in current use; or (ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the
URS complaint is filed.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad
faith.
GROUNDS OF APPEAL
Appellant’s grounds of appeal are as follows:
1. That the Appellant has legitimate right or interest in the domain names.
2. That the domain names were not registered or used in bad faith.
3. That it provided clear and convincing evidence under URS 5.7.1 – that before any notice to Registrant of the dispute, Registrant’s use of, or demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services.
4. That it provided clear and convincing evidence under URS 5.7.3 – that Registrant is making a legitimate or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
5. That the Examiner erred in finding contrary to URS 5.9.1 that trading in domain names for profit, and holding a large portfolio of domain names, are of themselves indicia of bad faith under the URS.
6. That an issue of genuine material fact exists and therefore the Examiner should have rejected the Complaint under URS 8.4.
7. The Complainant failed to meet the URS burden of proof requiring clear and convincing evidence under URS 9.3.
8. That the Complaint was abusive because it failed to include evidentiary support under URS 11.2.2(ii).
FINDINGS OF FACT BY THE EXAMINER
Complainant is the owner of U.S. Trademark Registration Number 2,627,156 for the mark LOCKHEED, which was registered on October 1, 2002, and which is in current use. Complainant is the owner of U.S. Trademark Registration Number 2,762,006 for the mark LOCKHEED MARTIN, which was registered on September 9, 2003, and which is in current use.
Respondent contends that Complainant has not shown current use of the word marks. However, Complainant has provided two files with the extension “.smd” as evidence of current use. These are “signed mark data” files, which contain encrypted data confirming that the word marks have been validated by ICANN’s Trademark Clearinghouse for proof of use.
Respondent contends that, in determining whether the domain names are identical, the generic top level domain “.email” should be considered as part of the domain names. Respondent also contends that the domain names are not confusingly similar to Complainant’s marks as the domain names will not be available to Internet users or to the public.
Complainant contends that Respondent is neither affiliated with, nor has it been licensed or permitted to use Complainant’s marks or any domains incorporating the marks. Complainant also contends that Respondent has not made any demonstrable preparations to use the disputed domain names.
Respondent contends that it has made demonstrable preparations to use the domain names for a bona fide offering of goods and services. Respondent is developing a new email directory and courier service that will record the sending and receipt of emails. Respondent acquired a series of domain names under the “.email” new gTLD as soon as domain names under that gTLD became available for purchase. Respondent says that it is one of the world’s largest registrants of “.email” domain names.
Respondent contends that its proposed use of the disputed domain names is a fair use, as it does not intend to use the domain names as trademarks, but as email addresses.
Although Respondent’s service will be free of charge, Respondent says that it intends to commercialize the system.
PRELIMINARY ARGUMENTS
Appellant filed new evidence with the appeal submissions. Appellant failed to seek permission to file new evidence, and we therefore rely on the evidence filed within the URS Proceedings.
Appellant argued that an issue of genuine material fact exists and therefore the Examiner should have rejected the Complaint under URS 8.4; that the Complainant failed to meet the URS burden of proof requiring clear and convincing evidence under URS 9.3; and that the Complaint was abusive because it failed to include evidentiary support under URS 11.2.2(ii). We disagree.
Having regard to the record of these proceedings, we find that the Complaint was not abusive under URS 11.2.2(ii). The factual contentions made by the Respondent were factually supported. As with UDRP proceedings, once the Complainant shows a prima facie case, the burden shifts to the respondent to come forward with appropriate evidence demonstrating rights or legitimate interests in the disputed domain name. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). In this case, sufficient evidence was brought forward to make a prima facie case by the Complainant.
We agree with the Examiner that there are no genuine issues of material fact as to each of the three elements of the URS. The parties do not dispute the facts at issue, rather their interpretation with respect to the URS Procedure. Thus, we make the following legal findings and conclusions.
LEGAL FINDINGS AND CONCLUSIONS:
Having reviewed the entire submissions from the Appellant and Respondent, and the entire case file in the URS Proceedings, we reviewed de novo the specific grounds of appeal (URS 12.1) and make the following legal findings and conclusions:
IDENTICAL OR CONFUSINGLY SIMILAR
Appellant did not appeal the finding that the second-level portions of the <lockheed.email> and <lockheedmartin.email> domain names are identical or confusingly similar to Respondent’s LOCKHEED and LOCKHEED MARTIN word marks, respectively, insofar as they incorporate the marks in their entirety.
RIGHTS OR LEGITIMATE INTERESTS
Appellant submitted that it has rights or legitimate interests in the disputed domain names.
There is no evidence that Appellant is known as LOCKHEED or LOCKHEEDMARTIN. The Respondent has not given any permission to the Appellant to use the LOCKHEED or LOCKHEED MARTIN trademarks.
The Appellant does not allege that it has legitimate rights or interests to the LOCKHEED or LOCKHEED MARTIN trademarks, rather that it has a legitimate interest to use the Respondent's registered trademarks by virtue of the nominative fair use defense.
The doctrine of nominative fair use is a defense offered to trademark infringement under considerable limitations under U.S. law. This doctrine was explained in Brothers Records, Inc. v. Allen Jardine et. al., 318 F.3rd 900 (9th Cir. 2003) where the U.S. Federal Court of Appeals for the 9th Circuit stated: "The nominative fair use analysis is appropriate where a defendant has used the plaintiff's mark to describe the plaintiff's product, even if the defendant's ultimate goal is to describe his own product" (at 1152). Appellant did not submit this was his intent. To the contrary, Appellant provided he intends to use the disputed domain names to offer them for use by the Respondent free of charge. Appellant stated in its submissions that it obtained the disputed domain names because the Respondent is a larger company which people may wish to contact by email (Statement of Laporta, at p. 6), that when a company such as the Respondent joins the Appellant’s service they will receive a free, web-based interface to view the records of their incoming and outgoing emails. (Id. at p. 7.) Moreover, Appellant stated that "[it] needs the domain name as the vehicle for sending emails to LockheedMartin for example." (Id.) Thus, Appellant registered the disputed domain names so they can offer them for use back to the Respondent. This stands contrary to the third factor of the nominative fair use defense that requires the "lack of anything that suggests sponsorship or endorsement – [which] is merely the other side of the likelihood-of-confusion coin." Jardine, at at 908, n. 5. Offering email service under the disputed domain names may cause likelihood of confusion. The Appellant bears the burden to show that the use of the disputed domain names do not cause likelihood of confusion. The Appellant did not bring forth any evidence showing the intended use will avoid likelihood of confusion.
While there is undisputed evidence showing that Appellant intended to monetize the free email service -- see Deutsche Lufthansa AG v. yoyo.email et al., FA 1552833 (Nat. Arb. Forum June 18, 2014) (evidence of Respondent’s intent to use the free email service to receive money from advertising and social media); c.f. Stuart Weitzman IP, LLC v. yoyo.email et al. FA 1554808 (Nat. Arb. Forum, URS Appeal Determination, June 24, 2014) (no record evidence of Respondent’s intent to monetize the free email service) -- Appellant argued that these statements were made in error and that it should not be faulted for a "tiny error" (Appeal Submission, at p. A). Appellant's Appeal submissions, however, did include some discussion, as to how, Appellant plans to recoup its business costs associated with the Yoyo.email service. The Panel notes that offering a service free of charge does not necessarily bring such service under the coverage of URS 5.7.3. The Panel below stated and we agree that there is an intent by the Appellant to somehow commercialize the system they created, also using the disputed domain names. Appellant states clearly that it has made substantial investments in its own system and it is evident that it will also use the disputed domain names to recoup these costs. Indeed, Appellant stated: “The Respondent is a business and like all businesses, needs to make a return on its investment… so, naturally there will be some commercialization of the Yoyo website but it will never be directly related to the domain name use.” Thus, Appellant argument under URS 5.7.3 fails.
Having reviewed the record, we agree with the Respondent that the Appellant has not made any demonstrable preparations to use the domain names for a bona fide offering of goods or services under URS 5.7.1. The fact that the Appellant acquired the disputed domain names, hired staff for his Yoyo.email project and performed other business activities relating to its Yoyo business, do not show demonstrable preparation to use the domain names for a bona fide offering of goods or services. (Appellant Submission, at p. 12.) Furthermore, the record does not include any evidence showing that the Appellant is using the disputed domain names under URS 5.7.3. Granted, the Appellant submitted it has an intent to use the disputed domain names, but that is insufficient as URS 5.7.3 requires actual use.
We therefore find that the Appellant does not have legitimate right or interest in the disputed domain names.
REGISTRATION AND USE IN BAD FAITH
Appellant argues that it registered and is making bona fide use of the disputed domain names. Appellant submitted that it intends to offer a "courier service" and therefore no Internet user would ever see the disputed domain names. (Appellant submissions, pp 6-7.) If no Internet user will ever see the disputed domain names, it is questioned, why Appellant registered the disputed domain names at all. If the registration of the disputed domain names was made to block the Respondent from registering, then Respondent is correct that the registration and use of the disputed domain names was in bad faith. See URS 1.2.6.3 (b), especially having regard to the fact that Appellant registered multiple company names such as the Respondent's.
The Appellant agrees that the Respondent is a large company, and it is evident from the Appellant’s submissions that Appellant was thoroughly familiar with the Respondent before acquiring the disputed domain names. Appellant admitted in not so many words that it registered the disputed domain names because the Respondent is a large company to which it intends to offer a service associated with recorded emails.
We agree with Appellant that the mere holding of large portfolios of domain names would not, of itself, constitute an indicia of bad faith. However, in this case, Appellant registered the <lockheed.email> and <lockheedmartin.email> domain names, along with many other domain names of large companies, in order to prevent Complainant and other trademark owners from reflecting their marks in corresponding domain names, under the .email domain. Respondent has engaged in a pattern of such registrations. Such circumstances are clear indication of bad faith registration and use.
Moreover, we agree that the Complainant has satisfied URS 1.2.6.3 (b) since the record shows that the Respondent must have known of the Complainant's well-known mark when registering the domain names and when using the websites under the domain names as parking websites.
Finally, the panel notes that Appellant has prevailed in another URS appeal determination, Stuart Weitzman IP, LLC v. yoyo.email et al., NAF Claim No. 1554808, regarding the domain name <stuartweitzman.email>. And, the panel notes Appellant’s argument that “[t]he very fact that Examiners opinions differ and conclusions divided in itself suggests things are not ‘clear and convincing’.” However, the appeal determination in the <stuartweitzman.email> proceeding contains minimal discussion of the facts and indeed notes that “there is no record evidence of Respondent’s intent to monetize the free email service.” Here, however, the record is clear, as discussed above, that Appellant intends to monetize its service using the disputed domain name.
We therefore find that the Appellant registered and used the disputed domain names in bad faith.
After reviewing the parties’ submissions, the Panel determines that
Respondent has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Panel hereby Orders the following domain names be SUSPENDED for the duration of the registration: <lockheed.email> and <lockheedmartin.email>
The Panel further finds the Complaint was not brought in an abuse of the administrative proceeding or with material falsehoods.
Jonathan Agmon, Panelist (Chair)
Douglas M. Isenberg, as Appeal Panelist
Terry Peppard, as Appeal Panelist
August 6, 2014
k:\misrad\od platnm clients\documents\6174\6174_6\3.doc
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