Lockheed Martin Corporation v. Matthew Robert Heitman
Claim Number: FA1801001767151
Complainant is Lockheed Martin Corporation (“Complainant”), represented by Sarah E Bro of McDermott Will & Emery LLP, USA. Respondent is Matthew Robert Heitman (“Respondent”), Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <f35drones.com>, registered with Domain.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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 16, 2018; the Forum received payment on January 16, 2018.
On January 16, 2018, Domain.com, LLC confirmed by e-mail to the Forum that the <f35drones.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.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 17, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 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@f35drones.com. Also on January 17, 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 9, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Lockeed Martin Corporation is a global security and aerospace company. Complainant uses the F-35 mark in connection with its products and services. Complainant claims rights in the mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 3,006,329 registered Oct. 11, 2005). Respondent’s <f35drones.com> domain name is confusingly similar to the F-35 mark, as it contains the mark in its entirety, merely removing the hyphen and adding the descriptive term “drones”, and the generic top level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not granted Respondent permission or license to use the F-35 mark for any purpose. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent is using the <f35drones.com> domain name to redirect internet users to a website featuring links to third-party websites. Respondent is not making an active use of the disputed domain name and uses the name to trade off of the reputation and goodwill associated with Complainant’s mark.
Respondent has registered and used the disputed domain name in bad faith. Respondent is attempting to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location of a product or service on Respondent’s website or location. In addition, Respondent has failed to make an active use of the <f35drones.com> domain name. Further, Respondent must have had actual knowledge of Complainant’s mark at the time it registered and subsequently used the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <f35drones.com> domain name.
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.”).
Complainant claims rights in the F-35 mark based upon its registration with the USPTO (e.g. Reg. No. 3,006,329 registered Oct. 11, 2005). Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the F-35 mark per Policy ¶ 4(a)(i).
Complainant asserts that <f35drones.com> is confusingly similar to the F-35 mark as it contains the mark in its entirety, merely removing the hyphen and adding the descriptive term “drones” as well as the gTLD “.com.” Panels have consistently found that slight differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark do not distinguish the domain name from the mark incorporated therein. See Traditional Medicinals, Inc. v. Flippa Chick, FA1006001328702 (Forum July 15, 2010) (“Respondent’s disputed domain name contains Complainant’s SMOOTH MOVE mark in its entirety after removing the space separating the terms of the mark, adds the descriptive terms “herbal tea” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of descriptive terms creates a confusing similarity between the disputed domain name and Complainant’s mark.”). Similarly, the addition of a gTLD is irrelevant in determining whether the disputed domain name is confusingly similar. 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). The Panel agrees with Complainant and finds that <f35drones.com> does not contain changes that would sufficiently distinguish it from the F-35 mark. The Panel finds the domain name is confusingly similar to Complainant’s mark.
Complainant has proved this element.
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 argues that Respondent has no rights or legitimate interests in <f35drones.com> as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the F-35 mark in any way. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). The WHOIS information of record identifies Respondent as “Matthew Robert Heitman.” Additionally, lack of evidence in the record to indicate that the respondent has 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 the disputed domain name. 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). The Panel finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues that Respondent’s lack of rights or legitimate interests in the disputed domain name is evinced by his failure to use the name to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to redirect Internet users to a website featuring links to third-party websites, some of which directly compete with Complainant’s business. Offering links to products in competition with Complainant can evince a failure to make a bona fide offering of goods or services or legitimate noncommercial or fair use. SeeVictoria’s Secret Stores Brand Management, Inc. v. Wireless Marketing Enterprises, LLC, FA 0805001191372 (Forum July 2, 2008) (inferring that the use of a domain name to display links to third-party websites which earn click-through fees is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy). Here, Complainant argues that Respondent is presumed to receive compensation from click-through links displayed on the <f35drones.com> website. Complainant provides screenshots of the resolving webpages for the disputed domain name, which links to 3rd party websites. The Panel agrees with Complainant that this use is not indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent fails to make a bona fide offering of goods or services as Respondent is using the infringing Domain Name to trade upon Complainant’s global reputation. Using a mark to trade off on the reputation of a complainant is not considered a bona fide offering of goods or services. See Bloomberg L.P v. Bloomberg Realty (India) Private Limited, (Forum May 30, 2012) FA 1204001439263 (Forum May 30, 2012) (“Use of a domain name which intentionally trade on the fame of another cannot constitute a bona fide offering of goods and services”). Complainant argues that Respondent has chosen the <f35drones.com> domain name to trade off of the reputation and goodwill associated with Complainant’s Mark, to cause confusion amongst Internet users and Complainant’s customers, and to prevent Complainant from owning the Domain Name. The Panel agrees with Complainant that Respondent registered the domain name for the purpose of trading off of Complainant’s reputation, failing to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).
Complainant contends Respondent’s failure to use the domain name to provide a bona fide offering of goods and services confirms that it does not have any rights or legitimate interests in the Domain Name. When the respondent is not using the 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 Lockheed Martin Corporation v. Lock Heed Martins / Lock Heed Martins- Transit, FA 1651715 (Forum Jan. 19, 2016) (ordering a transfer of <lockheedmartin-transit.com> and finding that “Respondent’s passing off behavior does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively,” because Respondent used the disputed domain name for an inactive page displaying a blog template along with Complainant’s registered trademarks.) Therefore, the Panel finds that Respondent does not have rights or legitimate interests in the domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant has proved this element.
Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark and rights therein. Actual knowledge may be proven through a totality of circumstances surrounding the registration of the disputed domain name. See Google Inc. v. Ahmed Humood, FA 1591796 (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 given the well-known status of Complainant’s F-35 mark, there is no reason for Respondent to have registered the <f35drones.com> domain name other than to trade off of the reputation and goodwill of Complainant’s mark. The Panel finds that Respondent had actual knowledge of Complainant’s rights in the F-35 mark when it registered the <f35drones.com> domain name, thereby supporting a finding of bad faith.
Complainant argues that Respondent has registered and uses the <f35drones.com> domain name 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 uses a confusingly similar domain name to resolve to a website featuring links to third-party websites that create revenue for the respondent. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)”). Here, Respondent creates a likelihood of confusion with Complainant and its trademarks by registering a domain that incorporates—in its entirety—Complainant’s F-35 mark, and merely removes the hyphen and adds the descriptive term “drone”. Respondent is presumed to be commercially benefiting from the multiple pay-per-click links posted on Respondent’s website. The Panel agrees with Complainant and finds that Respondent registered and uses the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant has proved this element.
DECISION
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <f35drones.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: February 12, 2018
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