Lockheed Martin Corporation v. mail mail
Claim Number: FA1707001739473
Complainant is Lockheed Martin Corporation (“Complainant”), represented by Sarah E Bro of McDermott Will & Emery LLP, California, USA. Respondent is mail mail (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lm-corporation.com>, registered with Google Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 11, 2017; the Forum received payment on July 11, 2017.
On July 13, 2017, Google Inc. confirmed by e-mail to the Forum that the <lm-corporation.com> domain name is registered with Google Inc. and that Respondent is the current registrant of the name. Google Inc. has verified that Respondent is bound by the Google 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 July 14, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 3, 2017 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@lm-corporation.com. Also on July 14, 2017, 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 August 7, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
1. This Complaint is based on Complainant’s common law rights in the mark LM, and in the name LM Corporation, as an abbreviation of Complainant’s corporate name, Lockheed Martin Corporation. Complainant also owns numerous trademark applications and registrations for formative versions of the LM trademark (“Complainant’s Marks” or “Marks”).
2. Complainant is a global security and aerospace company that employs approximately 98,000 people worldwide and is principally engaged in the research, design, development, manufacture, integration and sustainment of advanced technology systems, products and services. Complainant owns multiple trademark applications and registrations 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.
3. Complainant is number 60 on the 2016 listing of U.S. Fortune 500 companies, and number 197 on the 2016 Fortune Global 500 list.
4. Complainant’s Marks are famous for use in connection with aerospace, aeronautics, electronic systems, energy, integrated systems and solutions, and space systems, as well as a wide variety of goods and services related thereto.
5. Complainant has registered its LM- formative trademarks in a variety of countries, as well as the United States Patent and Trademark Office.
6. Complainant enjoys strong worldwide rights in, and recognition of, its Marks and its corporate name. Complainant’s common law rights in the LM trademark date back to as early as 1995, when Complainant became “Lockheed Martin Corporation” after the merger of Martin Marietta and Lockheed Corporation.
7. Complainant’s LM designation is used to communicate a shortened version of the “Lockheed Martin” name to customers, vendors, suppliers, contractors, and employees, and comprises Complainant’s “@lmco.com” corporate email address for all employees. Acronymfinder.com lists “Lockheed Martin” as one of the top references for the “LM” acronym in the category of Military & Government.
8. Materials demonstrating Complainant’s use of its “LM” Marks and its corporate name abbreviation are included with the Complaint.
9. Complainant also owns, directly or beneficially, over 130 domain names containing the LM mark.
Factual and Legal Grounds on Which the Complaint is Made
A. The LM-Corporation.com Domain Name is Confusingly Similar to Complainant’s Marks [Rule 3(b)(ix)(1)]
10. The Domain Name is confusingly similar to Complainant’s valuable LM trademark, as well as Complainant’s full corporate name, Lockheed Martin Corporation. The incorporation of the LM trademark in the Domain Name appears to be an attempt to create a likelihood of confusion with Complainant’s Marks as to the source, sponsorship or affiliation, or endorsement of Respondent’s website, as well as with regard to communications sent by Respondent from the “@LM-Corporation.com” email address. Respondent’s Domain Name is likely to mislead and divert web users trying to locate legitimate information about Complainant.
11. Respondent’s Domain Name, LM-Corporation.com, incorporates and contains Complainant’s LM mark, and then merely adds a hyphen and the word “Corporation,” which appears to be a reference to Complainant’s full entity name, Lockheed Martin Corporation. See Scott B. Spriggs, Esq./ Kinkle, Rodiger and Spriggs v. Craig Ivicevic / IO-Technology, FA1404001555883 (Forum Jun. 5, 2014) (stating that an abbreviation of a complainant’s mark for a domain name does not differentiate it from the complainant’s mark, and finding that “…the Domain Name is confusingly similar to the Complainant’s corporate name, Kinkle, Rodiger and Spriggs Professional Corporation, and the KRS initials by which it is also known, and that Complainant has substantial and demonstrated rights in that name and those initials.”).
12. Respondent’s registered Domain Name is virtually identical to and is confusingly similar to Complainant’s LM mark, as well as its Lockheed Martin Corporation name, and is likely to mislead, deceive and cause mistake as to the source, sponsorship, affiliation or endorsement of the Domain Name.
13. By merely adding the descriptive word “Corporation” to Complainant’s famous LM mark and well-known acronym, Respondent does nothing to prevent a likelihood of confusion with Complainant’s Marks, and Respondent’s Domain Name is likely to misleadingly attract current and potential customers of Complainant. In addition, Internet users are likely to be confused by the similarities between Complainant and the Domain Name, and are likely to believe that the latter is affiliated with Complainant, particularly since Complainant’s full name is Lockheed Martin Corporation.
14. Moreover, Respondent’s registration and use of the Domain Name has already caused at least one known instance of consumer confusion when Respondent used an “@LM- Corporation.com” email address to pose as Complainant and to attempt to submit a bid in connection with a government Defense Logistics Agency contract.
15. Finally, the addition of the generic top-level domain (“gTLD”) “.com” cannot distinguish the disputed Domain Name from Complainant’s Marks. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis). See also Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).
B. Respondent Has No Rights or Legitimate Interests in the Domain Name [Rule 3(b)(ix)(2)]
16. Complainant is entitled to a presumption of ownership, validity, and the exclusive right to use its Marks in connection with the goods and services named in its registration certificates. 15 U.S.C. §1057(b).
17. Complainant’s Marks have acquired distinctiveness through Complainant’s substantial, continuous, and exclusive use of the Marks in connection with Complainant’s goods and services, and as an abbreviation for Complainant’s corporate name.
18. Respondent is neither affiliated with, nor has it been licensed or permitted to use Complainant’s Marks or any domain names incorporating the Marks. Under the Policy, Paragraph 4(a)(ii), a statement that Respondent is not licensed or otherwise authorized to use the disputed domain name constitutes prima facie proof for Complainant that Respondent lacks any rights or legitimate interests in the Domain Name. See CareerBuilder, LLC v. Stephen Baker, (WIPO Case No. D2005-0251 May 6, 2005); See also Lockheed Martin Corporation v. Zhichao Yang, FA1701001714221 (Forum February 28, 2017) (“Lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name.”).
19. Respondent is not making a legitimate noncommercial fair use of the Domain Name. See Policy, Paragraph 4(c)(iii). Rather, Respondent is not actively using the Domain Name at this time. Prior panels have found that the inactive holding of a disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶4(c)(i) or Policy ¶4(c)(iii) where it failed to make any active use of the domain name).
20. Respondent’s failure to use the Domain Name to provide a bona fide offering of goods and services confirms that it does not have a right or legitimate interest in the Domain Name, particularly since Complainant has proven its rights in the Marks at issue. See Kate Spade, LLC v. Darmstadter Designs, D2001-1384 (WIPO January 3, 2002) (finding when a mark is proven, the burden then shifts to the domain holder to prove a right or legitimate interest. And the panel noted that non-use of the domain name for three years supported a finding of a lack of right or legitimate interest); see also Lockheed Martin Corporation v. Armando Castorena FA1702001717508 (Forum March 17, 2017) (finding that “Respondent’s non-use of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). Thus, Respondent has not used the Domain Name in connection with a bona fide offering of goods or services.
21. On information and belief, Respondent is not commonly known by the Domain Name, either as a business, individual, or other organization. See Policy ¶4(c)(ii); see also Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy 4(c)(ii) does not apply). However, as noted above, Complainant is commonly known by the Domain Name, as Complainant uses the LM trademark and its entity name is Lockheed Martin Corporation.
22. Complainant notes that Respondent has owned the Domain Name for nearly two months, and has failed to make any developments or “demonstrable preparations” to use the Domain Name with a bona fide offering of goods or services. See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Forum Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint). In fact, Respondent’s only known use of the domain name has been to set up a fraudulent email address in order to falsely pose as Complainant in order to bid on sole sourced government Defense Logistics Agency Contracts. A copy of a “DIBBS Submitted Quote Summary,” listing Complainant’s (redacted) Commercial and Government Entity (CAGE) code that was stolen from Complainant, and showing that the quote was submitted by an individual with an email address tied to the Domain Name at issue, namely, “quotes@lm-corporation.com”. In addition, a letter from the U.S. Defense Logistics Agency reports that it has “noticed anomalies in the System for Award Management (SAM) and Defense Logistics Service DLIS) registrations,” utilizing a CAGE code that belongs to Lockheed Martin Corporation. See Lockheed Martin Corporation v. OFFICE ROLLS, FA1512001651015 (Forum December 30, 2015) (Ordering transfer of <lockheedmartcorp.com> to Lockheed Martin Corporation after determining that the “sole” use of the domain name was for a “fraudulent scheme aimed at Complainant's vendors.”).
23. On information and belief, Respondent registered and/or acquired the Domain Name on May 16, 2017, as can be seen from the date that the domain name record was created. Accordingly, Respondent registered the Domain Name more than twenty-two (22) years after Complainant began using its LM mark. Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; and, (3) the respondent is not commonly known by the domain name in question).
24. Respondent is not making a legitimate noncommercial or fair use of the Domain Name, and it appears that Respondent has chosen the LM-Corporation.com domain to fraudulently pose as Complainant in order to obtain valuable and highly sensitive government contracts, to trade off of the reputation and goodwill associated with Complainant’s Marks, and to misleadingly divert Internet traffic from Complainant’s website. See Policy 4(c)(iii).
C. The Domain Name Was Registered and is Being Used in Bad Faith [ Rule 3(b)(ix)(3)]
25. Complainant learned of Respondent’s fraudulent use of the Domain Name in May and June 2017 when Complainant received notifications from the U.S. Defense Logistics Agency reporting that it had received a suspicious bid response from a person posing as “Matthew Colran” of Lockheed Martin, and using an email address which does not originate from Lockheed Martin Corporation, namely, “quotes@lm-corporation.com”. Complainant notes that all official Lockheed Martin email addresses use “@lmco.com.” Moreover, Complainant has confirmed that it is not aware of any employees by the name of Matthew Colran.
26. In addition to the fraudulent activities perpetrated by Respondent, there is now a serious risk that Respondent could also intercept e-mails erroneously addressed to “@lm- corporation.com”. The security risk caused by Respondent’s registration and use of the Domain Name is even more significant in this case because Complainant is a provider of goods and services to defense and civil government customers, and the significant potential for serious harm that could be caused by the existence of this Domain Name and the chance for Respondent to intercept mis-addressed e-mails, and/or to use the Domain Name to further pose as a Lockheed Martin employee to perpetrate fraudulent activities and government contracting scams, or to otherwise impersonate Complainant is great. Thus, there is clear evidence that the Domain Name has been registered and used in bad faith and can cause significant disruption to Complainant’s business, and is also a security threat that may tarnish Complainant’s reputation and the goodwill associated with Complainant’s Marks. See Lockheed Martin Corporation v. Sayed Rakibul Alam / CTGHOSTBD.COM, FA1403001550121 (Forum May 5, 2014) (“Panels have found that attempting to pass off as a complainant is demonstrative of bad faith.); see also Lockheed Martin Corporation v. OFFICE ROLLS, supra, (holding that “Respondent's registration of a domain name obviously intended to create confusion with Complainant, together with its use of that domain name in connection with a fraudulent scheme involving email messages attempting to defraud Complainant or its vendors by exploiting that confusion, is indicative of bad faith under paragraph 4(b)(iv)… The Panel finds that the disputed domain name was registered and has been used in bad faith.”)
27. In addition, numerous UDRP panels have found that a failure to attempt to develop or use a domain name which contains an established trademark is further evidence of bad faith registration pursuant to Policy ¶4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA893427 (Forum Feb. 28, 2007) (finding that a respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Caravan Club v. Mrgsale, FA95314 (Forum Aug. 30, 2000) (finding that a respondent made no use of a domain name or its resolving website, and that such a failure to make an active use of the domain name permits an inference of registration and use in bad faith); and Morgan Stanley v. cui liyan, FA1206001449767, (Forum August 7, 2012) (stating “Respondents bad faith is further demonstrated by the lack of content associated with the <morganstanleywealthmanagement.net> domain name. The screenshots provided by Complainant show that when attempting to visit the <morganstanleywealthmanagement.net> domain name, the following language is displayed: ‘Sorry ‘www.morganstanleywealthmanagement.net’ does not exist or is not available.’ Thus the Panel finds that Respondent’s registration and non-use of the <morganstanleywealthmanagement.net> domain name are a product of bad faith under Policy ¶4(a)(iii)”). See also Tumblr, Inc. v. Viet Blogs, FA1401001539462 (Forum February 12, 2014) and Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”). Similar to the above-referenced cases, Respondent’s failure to use the Domain Name is evidence of bad faith registration and use of the Domain Name.
28. Given the well-known status of Complainant’s Marks and Complainant’s corporate name, there is no reason for Respondent to have registered the Domain Name other than to trade off of the reputation and goodwill of Complainant’s Marks, and to perpetrate fraudulent activities. See Charles Jorden Holding AG v. AAIM, D2000- 0403 (WIPO, June 27, 2000) (finding that the domain name in question is “so obviously connected with the Complainant and its products that its very use by someone with no connection with Complainant suggests opportunistic bad faith.”); See also Lockheed Martin Corporation v. Armando Castorena, supra, (holding that “…in light of the fame and notoriety of Complainant's LOCKHEED MARTIN mark, it is inconceivable that Respondent could have registered the disputed domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel agrees and finds that Respondent knew of Complainant and its rights to the LOCKHEED MARTIN mark when registering <lockheedmartinco.org>, and thus registered in bad faith under Policy ¶4(a)(iii).”).
29. In addition, Respondent’s registration of the Domain Name violates the Anticybersquatting Consumer Protection Act, 15 U.S.C. §43(d), et seq.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 (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 registered the LM-XPRESS mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,224,034, registered Feb. 16, 1999). Complainant also holds trademark rights through variety registrations of other variations of the LM mark, including the LMCO mark, registered with the Canadian Intellectual Property Office (“CIPO”) (e.g. Reg. No. TMA512415, registered May 28, 1999). Registration with the USPTO and/or CIPO (or any other governmental authority for that matter) suffices to demonstrate rights in a mark under Policy ¶4(a)(i), even if Respondent is located in another country. See Glashütter Uhrenbetrieb GmbH v. li zilin / QQ869292929, FA 1575562 (Forum September 23, 2014) (holding, “Trademark registrations with a governmental authority are sufficient to prove rights in a mark pursuant to Policy ¶4(a)(i)”). Complainant has established rights in the LM-XPRESS, LMCO, and other variations of the LM mark for the purposes of Policy ¶4(a)(i).
Complainant claims common law rights in the LM trademark dating back to as early as 1995, when Complainant became “Lockheed Martin Corporation” after the merger of Martin Marietta and Lockheed Corporation. Policy ¶4(a)(i) does not require a complainant to own a trademark registration if it can demonstrate established common law rights in the mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Complainant has operated under the LM mark, along with variations of the LM mark, for more than twenty years prior to Respondent’s registration of the disputed domain name. Complainant has engaged in business and sufficiently established a secondary meaning in the LM mark. Therefore, Complainant holds common law rights in the LM mark for the purposes of Policy ¶4(a)(i).
Complainant claims Respondent’s <lm-corporation.com> domain name is confusingly similar to Complainant’s mark because it contains Complainant’s LM mark in its entirety, and then merely adds a hyphen and the word “corporation,” which appears to reference Complainant’s full corporate name, along with the gTLD “.com.” It should be noted Complainant uses the LMCO.COM domain name for email (which is a registered trademark in Canada, as noted above). Similar minor changes in a mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶4(a)(i) confusingly similar analysis.”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See CDW Computer Ctrs., Inc. v. The Joy Co., FA 114463 (Forum July 25, 2002) (finding that the addition of the ccTLD “.us” is inconsequential and does not defeat a claim of confusing similarity). The <lm-corporation.com> domain name is confusingly similar to the LM and LMCO marks under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent has no rights or legitimate interests in the <lm-corporation.com> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS initial information was privacy protected. The WHOIS information revealed after this Proceeding commenced identifies “mail mail” as the registrant. Absent information in the record to the contrary, the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the domain name. No evidence exists to show Respondent has ever been legitimately known by the LM marks. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. In fact, Respondent impersonates Complainant. Respondent is clearly not commonly known by the <lm-corporation.com> domain name under Policy ¶4(c)(ii).
Complainant claims Respondent uses the <lm-corporation.com> domain name to capitalize on the goodwill associated with Complainant’s marks, and does so only to redirect users to a website that lacks any content. Using a confusingly similar domain name to capitalize on the fame of that mark, and failing to make active use of a confusingly similar domain name, can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶4(c)(iii).”); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii).”). While Respondent does not use the disputed domain to host a web site, there is no requirement Respondent do so. There are many different types of use. Respondent appears to only use the domain name to receive emails from victims of fraud (presumably to impersonate Complainant to assure them they are not victims and to send the money anyway). Respondent has failed to provide a bona fide offering of goods or services under Policy ¶4(c)(i), or a legitimate noncommercial or fair use under Policy ¶4(c)(iii).
Complainant claims Respondent does not use the <lm-corporation.com> domain name for any legitimate purpose because Respondent uses it to fraudulently obtain valuable and highly sensitive government contracts. Using a confusingly similar domain name to fraudulently obtain information or money fails to constitute a bona fide offering of goods or services or legitimate noncommercial or fair use. See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum February 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶4(a)(ii).”). Complainant provides a screenshot of a fraudulent contract application Respondent apparently submitted with the governmental agency “DIBBS” using the disputed domain name. Respondent has failed to provide a bona fide offering of goods or services under Policy ¶4(c)(i), or a legitimate noncommercial or fair use per Policy ¶4(c)(iii).
Respondent registered the domain name using a privacy service. This means Respondent has done nothing to publicly associate itself with the disputed domain name. Therefore, Respondent has not acquired any rights simply by registering the domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
The examples of bad faith set forth in paragraph 4(b) of the Policy are not exhaustive. See, e.g., Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant seeks to profit from and exploit the trademark of another. See, e.g., Match.com, LP v. BillZag and NWLAWS.ORG, D2004-0230 (WIPO June 2, 2004). While Complainant has not made any arguments that would fit within the bounds of Policy ¶4(b) elements, the Panel will consider Respondent’s actions under a nonexclusive penumbra inquiry of Policy ¶4(a)(iii).
Complainant claims Respondent uses the <lm-corporation.com> domain name to fraudulently obtain valuable and highly sensitive government contracts. Using a confusingly similar domain name to phish for information (and fraudulently obtain money) is evidence of bad faith registration and use within the meaning of Policy ¶4(a)(iii). See Klabzuba Oil & Gas, Inc. v. LAKHPAT SINGH BHANDARI, FA1506001625750 (Forum July 17, 2015) (“Respondent uses the <klabzuba-oilgas.com> domain to engage in phishing, which means Respondent registered and uses the domain name in bad faith under Policy ¶4(a)(iii).”). Respondent placed a bid to obtain information (and money) from a governmental agency under the guise of the disputed domain name (clearly trying to impersonate Complainant). Respondent has registered and used the domain name in bad faith within the meaning of Policy ¶4(a)(iii).
Complainant claims Respondent inactively holds the domain name because Respondent fails to use the disputed domain name for any purpose. Inactively holding a confusingly similar domain name can evince bad faith registration and use under Policy ¶4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii).”). In this case, the domain name is only being used to perpetrate a fraudulent scheme (which is the same thing as not being used at all, in this Panel’s view). The domain name does not host a web site. When a user tries to access the domain name with a browser, the error message “This site can’t be reached” appears. The domain name merely serves as a portal to receive emails from the gullible. That is not a legitimate purpose. Respondent registered and uses the <lm-corporation.com> domain name in bad faith.
Complainant claims Respondent had actual knowledge of Complainant’s LM marks. This seems clear because Respondent submitted a bid in Complainant’ name using the similar looking domain name email address to assuage the gullible who might follow up. Respondent had actual knowledge of Complainant's rights in the mark prior to registering and while using the disputed domain name. Actual knowledge adequately proves bad faith under Policy ¶4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Respondent had actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶4(a)(iii).
Respondent registered the domain name using a privacy service. In the commercial context, this creates a rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut that presumption. Even if the domain name was not registered using a privacy service, clearly Respondent did not provide accurate registration information as required by ICANN (which also raises the rebuttable presumption). Therefore, the Panel is willing to find bad faith registration and use on this ground alone.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <lm-corporation.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Wednesday, August 9, 2017
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