Lockheed Martin Corporation v. Kim Murphy
Claim Number: FA1601001656562
Complainant is Lockheed Martin Corporation (“Complainant”), represented by Lynne M. J. Boisineau of McDermott Will & Emery LLP, California, USA. Respondent is Kim Murphy (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <skunkworkspb.com> and <skunkworkspb.net> ('the Domain Names') registered with GoDaddy.com, LLC.
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.
<<Dawn Osborne of Palmer Biggs Legal>> as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 14, 2016; the Forum received payment on January 14, 2016.
On January 15, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <skunkworkspb.com> and <skunkworkspb.net> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 January 15, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 4, 2016 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@skunkworkspb.com, postmaster@skunkworkspb.net. Also on January 15, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On February 5, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Dawn Osborne of Palmer Biggs Legal as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant has used the SKUNK WORKS mark since as early as 1945 and has trade mark registrations for that mark including in the USA where Respondent is based, such registrations dating back to 2001 for goods and services related to military aircraft. Complainant also licenses its mark for merchandise for general consumers including clothing, toys, office and home goods. Complainant and the goods provided under its mark have been the subject of books, articles and television programs and its mark has acquired significant goodwill and public recognition.
The Domain Names are confusingly similar to Complainant's valuable SKUNK WORKS trade mark as well as Complainant's domain name skunkworks.com, which it has owned since 1996. They incorporate Complainant's mark in its entirety and then merely add the letters 'PB' which does nothing to prevent the likelihood of confusion with Complainant's mark. Panels have held that the addition of generic terms or other characters fails to negate confusing similarity. The addition of the generic top level domains .com and .net and the removal of the space between SKUNK and WORKS cannot distinguish the Domain Names from Complainant's marks.
Complainant's SKUNK WORKS mark is not a generic or descriptive term in which Respondent might have an interest. Respondent is neither affiliated with, nor has it been licensed or permitted to use Complainant’s mark or any domain names containing this mark. Respondent is not using the Domain Names in connection with a bona fide offering of goods and services. Rather, it is using the Domain Names for web sites that promote other third party commercial web sites. It is assumed Respondent received compensation for each misdirected user. Respondent is not commonly known by the Domain Names. Respondent registered the Domain Names nearly 70 years after Complainant began using its skunkworks.com marks and 19 years after Complainant had registered the domain name skunkworks.com. Respondent is not making a legitimate non-commercial or fair use of the Domain Names and has chosen them to trade off the reputation and goodwill associated with Complainant's mark, to cause confusion amongst Internet users and to prevent Complainant from owning the Domain Names.
The Domain Names were registered on November 3, 2015 and point to pay-per-click links, which are not affiliated with Complainant's business.
Once Complainant learned of Respondent's registration of the Domain Names, Complainant’s counsel sent a cease and desist letter to Respondent. In response, Respondent sent an e-mail offering to sell the Domain Names for $20,000. This offer to sell the Domain Names in excess of Respondent's out of pocket costs in relation to the Domain Names is evidence of bad faith registration and use of the Domain Names.
In addition, Respondent is using the Domain Names to redirect Internet users to commercial web sites where Respondent provides various sponsored click-through links that direct to third-party commercial web sites and has not used them for any legitimate purpose. Thus, Respondent has registered the Domain Names with the intent to attract Internet users to its web site for commercial gain by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation or endorsement of Respondent’s websites, thereby diverting Internet traffic from Complainant's website to Respondent's web sites for commercial gain, which is bad faith registration and use under the Policy.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has used the SKUNK WORKS mark since as early as 1945 and has trade mark registrations for that mark recording that first use in commerce in the USA where Respondent is based, such registrations dating back to 2001 for goods and services related to military aircraft.
The Domain Names were registered on November 3, 2015 and point to pay per click links, which are not affiliated with Complainant's business.
Respondent has offered to sell the Domain Names to Complainant for $20,000.
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(f), 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.”).
Apart from the “.com” and “.net” suffixes, which are not taken into account for the purposes of the Policy, the Domain Names consist of Complainant's mark SKUNK WORKS and the letters “pb,” which do not serve to distinguish the Domain Names from Complainant’s mark. As such the Panelist finds that the Domain Names are confusingly similar to the SKUNK WORKS registered trademarks owned by Complainant and Complainant satisfies para 4(a)(i) of the Policy.
Respondent has not responded and given any reasons for its registration and use of the Domain Names. Respondent does not appear to be commonly known by the Domain Names. Complainant has not authorised the use of its mark and Respondent does not appear to be connected with Complainant in any way.
The Domain Names have been used to link to pay-per-click advertising for other third party commercial web sites. The Panel notes Compania Mexicana de Aviacion, SA de CV v Bigfoot Ventures LLC, FA 1195961(Nat. Arb. Forum July 14, 2008) (holding that the respondent had not demonstrated a bona fide offering of goods and services or a legitimate non-commercial or fair use where the web site resolving from the domain name displayed links to third party goods and services).
The Domain Names have also been offered for sale. Past panels have also concluded that an attempt by a respondent to sell a domain name for an amount in excess of out of pocket costs demonstrates a lack of rights and legitimate interests in the relevant domain name. See Reese v Morgan, FA 917029(Nat Arb Forum April 5, 2007) (finding that a respondent's willingness to sell a domain name for more than its out of pocket costs provided additional evidence that the respondent had no rights or legitimate interests in the contested domain name.)
The Panel thus concludes that there is no rights or legitimate interests in the Domain Names under para 4 (c)(i) or (iii) of the Policy.
Paragraph 4(b) of the Policy sets out four non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including
"circumstances indicating that [the Respondent has] registered or [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 [its] documented out-of-pocket costs directly related to the domain name;" (s4(b)(i)) and
“by using the domain name [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to [its] website or other on line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, affiliation or endorsement of [its] website or location or of a product or service on [its] website or location.” s4(b)(iv)
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <skunkworkspb.com> and <skunkworkspb.net> domain names be TRANSFERRED from Respondent to Complainant.
<<Dawn Osborne>>, Panelist
Dated: <<15 February 2016>>
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