Lockheed Martin Corporation v. Joseph Stopper
Complainant is Lockheed Martin Corporation (“Complainant”), represented by Lynne M. J. Boisineau of McDermott Will & Emery LLP, California, USA. Respondent is Joseph Stopper (“Respondent”), Connecticut, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lockheedaircraftcompany.com>, registered with GODADDY.COM, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 22, 2014; the National Arbitration Forum received payment on October 22, 2014.
On October 23, 2014, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <lockheedaircraftcompany.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 October 24, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 13, 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@lockheedaircraftcompany.com. Also on October 24, 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.
A timely Response was received and determined to be complete on November 13, 2014. A timely Additional Submission from Complainant was received on November 17, 2014.
On November 18, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant uses the LOCKHEED and LOCKHEED MARTIN marks to promote its aeronautics and aircraft design businesses, along with other defense systems. The LOCKHEED mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,627,156, registered Oct. 1, 2002). The LOCKHEED MARTIN mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,289,019 registered Oct. 26, 1999).
2. The <lockheedaircraftcompany.com> domain name, registered on July 28, 2014, is confusingly similar to Complainant’s LOCKHEED mark in that it adds the descriptive phrase “aircraft company” and the gTLD “.com.”
3. Respondent has no rights or legitimate interests in the <lockheedaircraftcompany.com> domain name. First, Respondent has never been known as the <lockheedaircraftcompany.com> domain name. Second, Respondent uses the <lockheedaircraftcompany.com> domain name for purposes of click-through style advertising only.
4. Respondent registered and is using the <lockheedaircraftcompany.com> domain name in bad faith. Respondent is allowing competing advertising to appear on the domain name’s website in a ploy to capitalize on a likelihood of Internet user’s confusion. Further, Respondent knew of Complainant’s rights in the LOCKHEED mark when registering the domain name.
B. Respondent
1. The resolving website will eventually be used to describe a history of Complainant’s earlier incarnation, the “Lockheed Aircraft Company.”
2. Respondent intends to use the domain name in good faith to promote an online web-museum detailing the history of Complainant’s predecessor entity. Respondent is acting in good faith despite the presence of hyperlinks, as Respondent earns no profit from any of these links.
C. Complainant’s Additional Submission
1. Respondent does not deny that he has never been known by the <lockheedaircraftcompany.com> domain name, nor has he suggested any acceptable defense for allowing the domain name to host hyperlink advertisements—the claim that Respondent might host some type of e-museum is vague and unsupported by evidence.
2. Even if Respondent were to host his planned “museum,” such a use would compete with a museum Complainant operates explaining its own history.
Complainant holds trademark rights for the LOCKHEED and LOCKHEED MARTIN marks. Respondent’s domain name is confusingly similar to Complainant’s LOCKHEED and LOCKHEED MARTIN marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <lockheedaircraftcompany.com> domain name, and that Respondent registered and uses the domain name 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.
Complainant uses the LOCKHEED and LOCKHEED MARTIN marks to promote its aeronautics and aircraft design businesses, along with other defense systems. The LOCKHEED mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,627,156, registered Oct. 1, 2002). The LOCKHEED MARTIN mark is registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 2,289,019 registered Oct. 26, 1999).
USPTO registrations are sufficient evidence of Policy ¶ 4(a)(i) rights in a trademark. W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010).
Complainant argues that the <lockheedaircraftcompany.com> domain name is confusingly similar to the LOCKHEED mark in that it adds the descriptive phrase “aircraft company” and the gTLD “.com.” The addition of “aircraft company” to the mark enhances the confusing similarity as the phrase is fairly descriptive of the services offered by Complainant. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Furthermore, the gTLD “.com” does not distinguish the mark and is not relevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel concludes Respondent’s <lockheedaircraftcompany.com> domain name is confusingly similar to Complainant’s LOCKHEED mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has never been known as the <lockheedaircraftcompany.com> domain name. Respondent offers no evidence to the contrary. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant claims that Respondent uses the <lockheedaircraftcompany.com> domain name for purposes of click-through style advertising only. Indeed, the domain name does resolve to a parked website promoting various click-through hyperlinks many of which relate to the aircraft industry. This Panel agrees that despite Respondent’s alleged plan to use the domain name to resolve in the future to an “e-museum,” the only present use of the domain name for hyperlink advertising is not protected under either Policy ¶ 4(c)(i) as a bona fide offering, or under Policy ¶ 4(c)(iii) as a legitimate noncommercial or fair use. See, e.g., Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent is allowing advertising relating to the aircraft industry to appear on the domain name’s resolving website which likely results in Internet user’s confusion. Such a use is evidence of Policy ¶ 4(b)(iv) bad faith. See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name); see also Express Scripts, Inc. v. Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (finding that it makes no difference that a respondent contends that the advertisements in this case were “generated by the parking company,” the respondent still registered and used the disputed domain name in bad faith).
Complainant further claims that Respondent knew of Complainant’s rights in the LOCKHEED mark when registering the domain name. Indeed, Respondent acknowledges that he knew of the LOCKHEED mark prior to registration. Thus, Complainant has satisfied the actual knowledge requirement of Policy ¶ 4(a)(iii). 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”).
The Panel finds 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 <lockheedaircraftcompany.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: November 24, 2014
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