DECISION
Lockheed Martin Corporation v. Ptah Thothmes
Claim Number: FA1801001767117
PARTIES
Complainant is Lockheed Martin Corporation (“Complainant”), represented by Sarah E Bro of McDermott Will & Emery LLP, California, USA. Respondent is Ptah Thothmes (“Respondent”), Missouri, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <f16fighting.com>, <f35lighting2.com> and <yf22raptor.com>, registered with Namecheap, Inc..
PANEL
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.
John J. Upchurch as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on January 16, 2018; the Forum received payment on January 16, 2018.
On January 16, 2018 and January 19, 2018, Namecheap, Inc. confirmed by e-mail to the Forum that the <f16fighting.com>, <f35lighting2.com> and <yf22raptor.com> domain names are registered with Namecheap, Inc. and that Respondent is the current registrant of the names. Namecheap, Inc. has verified that Respondent is bound by the Namecheap, 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 January 24, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 13, 2018 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@f16fighting.com, postmaster@f35lighting2.com, postmaster@yf22raptor.com. Also on January 24, 2018, 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 15, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from Respondent to Complainant.
PARTIES' CONTENTIONS
1. Complainant, Lockheed Martin Corporation, manufactures fighter planes that are used by military customers around the globe. Complainant uses its F-16, F-16 FIGHTING FALCON, F-22, F-22 RAPTOR, and F-35 LIGHTNING II marks to promote its products and services related to Complainant’s world-famous military aircraft, as well as related aircraft repair and maintenance services, and related promotional goods. Complainant established rights in the F-16, F-16 FIGHTING FALCON, F-22, and F-35 LIGHTNING II marks through registration with the United States Patent and Trademark Office (“USPTO”) (e.g. F-16 – Reg. No. 2,225,628, registered Feb. 23, 1999; F-16 FIGHTING FALCON – Reg. No. 2,225,653, registered Feb. 23, 1999; F-22 – Reg. No. 2,898,221, registered Oct. 26, 2004; F-35 LIGHTNING II – Reg. No. 3,908,276, registered Jan. 18, 2011). See Compl. Ex. D. Complainant established rights in its F-22 RAPTOR mark through registration with the Japan Patent Office (“JPO”) (e.g., Reg. No. 5029723, registered Mar. 2, 2007). Id. Respondent’s <f16fighting.com> domain name is identical or confusingly similar to Complainant’s F-16 FIGHTING FALCON mark because it contains a portion of Complainant’s mark, eliminates the hyphen, and appends the generic top-level domain (“gTLD”) “.com.” Respondent’s <f35lighting2.com> domain name is confusingly similar to Complainant’s F-35 LIGHTNING mark because it merely appends the “.com” gTLD to a typo-squatted, modified, and misspelled version of Complainant’s mark. Lastly, Respondent’s <yf22raptor.com> is confusingly similar to Complainant’s mark because it adds the letter “Y” and the gTLD “.com” to a non-hyphenated version of Complainant’s F-22 RAPTOR mark.
2. Respondent does not have rights or legitimate interests in the disputed domain names. Complainant has not licensed or otherwise authorized Respondent to use its marks in any fashion. Respondent is not commonly known by any of the disputed domain names as the WHOIS information of record lists “Ptah Thothmes” as the registrant. See Amend. Compl. Ex. A. Respondent is not using the domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent originally used the domain names to pass off as Complainant and resolve to webpages featuring click-through hyperlinks. Currently, Respondent has not made any demonstrable preparations to use the domain names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as the domain names now resolve to inactive websites.
3. Respondent registered and used the domain names in bad faith. Respondent uses the domain names to create a likelihood of confusion with Complainant’s marks for Respondent’s financial gain. Further, Respondent failed to actively use the domain names for over 10 months. Finally, due to the fame of Complainant’s F-16, F-22, and F-35 military aircraft, Respondent must have registered the domain names with actual knowledge of Complainant’s rights in the marks.
1. Respondent did not submit a Response.
FINDINGS
1. Respondent’s <f16fighting.com>, <f35lighting2.com> and <yf22raptor.com> domain names are confusingly similar to Complainant’s F-16, F-16 FIGHTING FALCON, F-22, F-22 RAPTOR, and F-35 LIGHTNING II marks.
2. Respondent does not have any rights or legitimate interests in the <f16fighting.com>, <f35lighting2.com> and <yf22raptor.com> domain names.
3. Respondent registered or used the <f16fighting.com>, <f35lighting2.com> and <yf22raptor.com> domain names in bad faith.
DISCUSSION
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 (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.”).
Identical and/or Confusingly Similar
Next, Complainant argues that Respondent’s <f16fighting.com> domain name is identical or confusingly similar to Complainant’s F-16 FIGHTING FALCON mark because it contains a portion of Complainant’s mark, eliminates the hyphen, and appends the gTLD “.com.” The elimination of a hyphen and addition of a gTLD does not negate confusing similarity between a mark and a domain name. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Additionally, Complainant argues that Respondent’s <f35lighting2.com> domain name is confusingly similar to Complainant’s F-35 LIGHTNING mark because it merely appends the “.com” gTLD to a misspelled version of Complainant’s mark that eliminates the hyphen and the letter “N” and replaces the roman numeral “II” with the number “2” and that Respondent’s <yf22raptor.com> is confusingly similar to Complainant’s mark because it adds the letter “Y” and the gTLD “.com” to a non-hyphenated version of Complainant’s F-22 RAPTOR mark. The elimination or addition of a letter or number does not negate confusingly similarity. See Myspace, Inc. v. Kang, FA 672160 (Forum Jun. 19, 2006) (finding that the <myspce.com> domain name was confusingly similar to the complainant’s MYSPACE mark and the slight difference in spelling did not reduce the confusing similarity); see also Twentieth Century Fox Film Corporation v Domain Admin / PrivacyProtect.org / Denis Ferulev, FA 1652313 (Forum Jan. 19, 2016) (“Complainant notes that the domain name contains the recognised acronym for its FAMILY GUY mark, along with the number ‘24’ … the Panel finds that the <fg24.biz> domain name is confusingly similar to the FAMILY GUY mark under Policy ¶ 4(a)(i).”). The Panel agrees with Complainant and finds that the <f16fighting.com>, <f35lighting2.com>, and <yf22raptor.com> domain names to be confusingly similar to Complainant’s F-16, F-16 FIGHTING FALCON, F-22, F-22 RAPTOR, and F-35 LIGHTNING II marks.
Rights or Legitimate Interests
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant alleges that Respondent does not have rights or legitimate interests in the disputed domain names. Complainant claims it has not licensed or otherwise authorized Respondent to use its F-16, F-22, or F-35 marks in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent is presumed to lack rights and legitimate interests in the domain names. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for each of the disputed domain names lists “Ptah Thothmes” as the registrant. See Amend. Compl. Ex. A. Therefore, the Panel concludes that Respondent is not commonly known by any of the domain names.
Next, Complainant alleges that Respondent is not using the domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant contends that Respondent originally used the domain names to pass off as Complainant and resolve to webpages featuring click-through hyperlinks. Use of a domain name to resolve to websites featuring unrelated pay-per-click hyperlinks may not be considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”). Complainant argues that screenshots of the disputed domain names’ resolving websites indicate that the sites previously featured links that were unrelated to Complainant’s business, such as “Outdoor Wall Lighting,” “Lighting Fixtures,” and “Modern Bathroom Lighting.” See Compl. Ex. B. Therefore, the Panel finds that Respondent used the domain names to resolve to websites featuring unrelated click-through hyperlinks and that Respondent failed to use the domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use.
Complainant contends that Respondent has made no demonstrable preparations to use the disputed domain names since they were registered. When the respondent is not using a disputed domain name in connection with an active website, the Panel may find that the respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). Complainant contends Respondent has owned the domain names for over 10 months, and has failed to make any active use of the websites. See Compl. Ex. B. Therefore, the Panel agrees and finds that Respondent does not have rights or legitimate interests in the domain names per Policy ¶¶ 4(c)(i) or (iii).
Registration and Use in Bad Faith
Complainant argues that Respondent has registered and uses the <f16fighting.com>, <f35lighting2.com> and <yf22raptor.com> domain names in bad faith because Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶ 4(b)(iv) can be found where a respondent is commercially benefits from the hyperlinks and that it is attempting to create confusion. See V Capital One Financial Corp. v. DN Manager / Whois-Privacy.Net Ltd, FA1504001615034 (Forum Jun. 4, 2015) (holding that the respondent’s use of the <capitaloneonebank.com> domain name to display links to the complainant’s competitors, such as Bank of America, Visa, Chase and American Express constituted bad faith pursuant to Policy ¶ 4(b)(iv)). Complainant contends Respondent’s original use of the domain names to redirect Internet users to commercial websites through various sponsored click-through links indicates that Respondent registered the domain names with the intent to attract Internet users to its websites for commercial gain by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of Respondent’s websites. See Compl. Ex. B. The Panel agrees with Complainant and find that Respondent’s use and registration of the domain names indicates bad faith.
Further, Complainant argues that Respondent fails to make an active use of the disputed domain names. Bad faith under Policy ¶ 4(a)(iii) can be found where a respondent does not make an active use of a domain name. 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).”). Complainant contends the domain names do not resolve to active websites and have not for the ten (10) months since Respondent registered them. See Compl. Ex. A, B. The Panel agrees with Complainant and find that Respondent’s inactive holding of the domain names indicate it registered and uses the names in bad faith.
Finally, Complainant argues that due to the fame and notoriety of its marks, there is no reason for Respondent to have registered the disputed domain name other than to trade off the reputation and goodwill of the mark and to perpetrate fraudulent activities. A respondent’s actual knowledge of a mark may be proven through a totality of circumstances surrounding the registration of the disputed domain name. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). Complainant asserts that it is number 56 on the listing of U.S. Fortune 500 companies and that its marks are famous to countless customers around the world. See Compl. Exs. E–F. Therefore, the Panel agrees that Respondent had actual knowledge of Complainant’s rights in the F-16, F-22 and F-35 marks when it registered the <f16fighting.com>, <f35lighting2.com> and <yf22raptor.com> domain names, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <f16fighting.com>, <f35lighting2.com> and <yf22raptor.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: February 28, 2018
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