Leidos, Inc. v. Gabriel Joseph / Clearer Technology
Claim Number: FA2207002005102
Complainant is Leidos, Inc. (“Complainant”), represented by Malcolm W. Thomas of Bean, Kinney & Korman, United States of America (“US”). Respondent is Gabriel Joseph / Clearer Technology (“Respondent”), represented by Carter B. Cole of ENVISAGE LAW, US.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <leidosemployees.com> (the “Domain Name”), registered with Name.com, Inc..
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.
Clive Elliott Q.C. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 21, 2022; the Forum received payment on July 21, 2022.
On July 21, 2022, Name.com, Inc. confirmed by e-mail to the Forum that the Domain Name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 25, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 19, 2022 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@leidosemployees.com. Also on July 25, 2022, 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 August 19, 2022.
On August 24, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Clive Elliott Q.C. as Panelist.
On August 29, 2022, the Forum received an additional submission on behalf of Complainant.
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.
Complainant requests that the Domain Name be transferred from Respondent to Complainant.
A. Complainant
Complainant is an American defence, aviation, information technology, and biomedical research company, with its headquarters in Reston, Virginia, US.
Complainant is the owner of the trade mark LEIDOS (“Complainant’s Mark”) in the following US registrations:
|
Mark |
Registration No |
Registration Date |
Classes |
|
|
4937101 |
April 12, 2016 |
35, 41, 42 |
|
5257665 |
August 1, 2017 |
37, 38, 39, 41 |
|
|
5475704 |
May 22, 2018 |
9 |
Complainant advises it has offered goods and services under Complainant’s Mark since September 27, 2013, across a variety of industry sectors.
Complainant also owns the <leidos.com> domain name, among other authorized domain names incorporating Complainant’s Mark. Complainant uses its authorized domain names to point to websites providing information externally to Complainant’s customers and internally to Complainant’s employees.
Complainant states that it has prominently and extensively used, promoted, and advertised Complainant’s Mark and domain names incorporating Complainant’s Mark for over five years, and that by virtue of this, Complainant’s Mark has become well recognised by consumers as exclusively designating Complainant as the source of the goods and services offered under Complainant’s Mark and domain names.
According to the publicly available WhoIs the Domain Name was registered on June 10, 2022. Complainant advises that the Domain Name currently redirects internet users to pages featuring third-party links to other service providers.
Complainant contends that the Domain Name is confusingly similar to Complainant’s Mark as it is an exact reproduction with the addition of the generic term “employees”.
Complainant asserts that Respondent is not a licensee of Complainant, nor is Respondent authorized to use Complainant’s Mark for any purpose. Further, Complainant contends that Respondent is not commonly known as “Leidos”. Complainant states that Complainant’s Mark “LEIDOS” is a unique and arbitrary word, and as such believes it unlikely that Respondent would have devised the name on its own.
Complainant submits that Respondent has registered and is using the Domain Name in bad faith to profit from and exploit Complainant’s Mark.
B. Respondent
Respondent states that it registered the Domain Name in the US using Complainant’s business name plus the dictionary word “employees” for the purpose of commenting on the corresponding policies of the business and to inform and elicit information regarding employment discrimination, and to enquire if employees of certain companies were interested in forming a union as allowed under the National Labor Relations Act.
Respondent submits that registration and use of the Domain Name is a fair use and a legitimate and protected free speech practice on the internet of commenting on the social policy of businesses and seeking information regarding businesses operating in the US.
Respondent asserts that it has used Complainant’s Mark only so far as necessary to identify the subject of and target audience for the websites.
Respondent denies the allegation that its use of Complainant’s Mark in the Domain Name may cause confusion and points out that the current landing page of the Domain Name conspicuously states “THIS WEBSITE IS NOT ASSOCIATED WITH NOR ENDORSED BY LEIDOS”. Respondent goes on to state that the landing page for the Domain Name does not look like Complainant’s webpage <leidos.com> nor does it incorporate Complainant’s logo, type font or colour scheme. Respondent states that the landing page is not designed to confuse consumers into believing that it is sponsored by Complainant.
Respondent states that it makes a legitimate, genuine and noncommercial use of the Domain Name as a site to provide information and genuinely critique Complainant’s social activism, and as such a criticism site like this is protected by the First Amendment and Lanham Act when they are used noncommercially and for genuine purposes.
Respondent denies the allegations that it intends to tarnish the trade mark or service mark, and contends that whilst critical of Complainant, Respondent’s right to free speech should be protected with regards to the Domain Name.
Respondent also denies the allegation that the Domain Name was linked to a parked website with click-through revenue links. Respondent advises that the linking page was not a page created by Respondent, but rather the default landing page of the Registrar, and Respondent has derived no revenues from the landing page. Respondent advises that it replaced the parked website and within ten days posted the current landing page. Respondent further contends that it cannot exercise its free speech right to make this information available without referring to Complainant by its trade marked name but submits that its purposes are legitimate and a fair use of the Domain Name.
C. Complainant’s Additional Submission
Complainant points out that Respondent does not rebut Complainant’s contention of bad faith registration, fair use, nor legitimate interest in the Domain Name.
Complainant claims that Complainant’s Mark is clearly recognizable with the Domain Name and the addition of the generic term “employees” enhances the confusing similarity because as Complainant is a large company it would be plausible for it to have an employees’ site and use a domain name which reflects that. Moreover, the addition of the term “employees” to Complainant’s Mark triggers an inference of affiliation with Complainant. Complainant underlines the fact that Respondent has not disputed this, but instead has admittedly chosen the Domain Name to reference Complainant to attract Complainant’s employees.
Complainant emphasizes that at the time of filing of the Complainant, Respondent’s alleged website offering fair use commentary did not exist, but instead resolved to a parked page redirecting internet uses to pages featuring third-party links to other service providers, and that a disclaimer was added to the Domain Name after this Complaint was filed.
Complainant asserts that only after commencement of these proceedings did Respondent make use of the Domain Name by adding a commentary to the website, which Complainant submits does not constitute legitimate non commercial or fair use because it disparages and tarnishes Complainant’s reputation by alleging that Complainant “suppresses, persecutes and silences its employees that have a faith in God and support traditional family values” and rejects “religious objections and opinions”. Complainant points out that Respondent is misleading internet users to believe an affiliation of sponsorship of the Domain Name by Complainant only to disparage and misstate Complainant’s policies once the user views the website content.
For the reasons set out below the complaint is denied.
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 asserts rights in the LEIDOS mark based upon the registration of the mark with the USPTO (e.g., Reg. No. 5,257,665 registered August 1, 2017). See Compl. Ex. 3. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy ¶ 4(a)(i). Since Complainant provides evidence of registration of the LEIDOS mark with the USPTO, the Panel finds that Complainant has rights in the mark under Policy 4(a)(i).
Complainant argues that the Domain Name is identical or confusingly similar to Complainant’s LEIDOS mark. The Domain Name contains the LEIDOS mark in its entirety while adding in the term “employees” and the “.com” gTLD. The addition of the term “employees” does nothing to reduce the confusing similarity of the Domain Name with Complainant’s Mark, at least in terms of the first element of the Policy. Accordingly, the Panel finds that the Domain Name is confusingly similar to Complainant’s Mark per Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Respondent contends that it has rights and legitimate interests in the Domain Name because Respondent uses the Domain Name as a criticism website, and that this is a legitimate noncommercial use. Previous UDRP panels have found that use of a disputed domain name in conjunction with a website that offers criticism of a complainant can be a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Capgemini North America, Inc. v Randel Tomina, FA 1658191 (Forum Apr. 11, 2016) (“UDRP panels have repeatedly stated that a U.S.-based website engaged in noncommercial criticism of a U.S.-based trademark owner’s activities enjoys First Amendment protection, even if the domain name incorporates the complainant’s trademark.”).
The central question in this case is whether Respondent’s website has the appearance of being a genuine criticism site. Resp. Ex. A. displays an extract from Respondent’s website. It is apparent that the website purports to inform internet users and Complainant’s employees about Complainant’s social policies, prominently posing the question: “Do you believe that Leidos suppresses, persecutes and silences its employees that that (sic) have a faith in God and support traditional family values?” In addition, as noted above, across the top of the page is the following disclaimer “THIS WEBSITE IS NOT ASSOCIATED WITH NOR ENDORSED BY LEIDOS”.
While the disclaimer is not as prominent as the depiction of the Domain Name it is presented across the top of the page and in capitals. This makes it hard to miss.
In the Panel’s view it is reasonably apparent that the website is critical of Complainant, and it presents a very different view to the one espoused by Complainant. However, Respondent does make it reasonably clear that it is not associated with or endorsed by Complainant.
Further, Respondent’s argument that it did not add parked content to the resolving webpage and did not derive revenue from pay-per-click hyperlinks and replaced it with the current webpage in a timely fashion, while it created its website content, appears to be a reasonable one under the circumstances. That is in the context of a criticism site displaying what otherwise appears to be prima facie noncommercial and not misleading or false content.
For these reasons the second element of the Policy is not made out pursuant to Policy ¶ 4(a)(ii).
Having concluded that Respondent has rights or legitimate interests in the Domain Name the Panel is satisfied that Respondent did not register or use the Domain Name in bad faith pursuant to Policy ¶ 4(a)(iii). See Sheet Labels, Inc. v. Harnett, Andy, FA 1701423 (Forum Jan. 4, 2017) (finding that because the respondent had rights and legitimate interests in the disputed domain name, its registration of the name was not in bad faith).
In terms of any potential initial interest confusion, the Panel applies the reasoning from Legal & Gen. Group Plc v. Image Plus, D2002-1019 (WIPO Dec. 30, 2002) (finding initial interest confusion was displaced by the criticism content at the respondent's website and that such a "low level of confusion is . . . a price worth paying to preserve the free exchange of ideas via the Internet").
Here, it appears that Respondent is using the Domain Name to host a noncommercial critical website, and while one might question the content of the website it does purport to inform Complainant’s employees of what Respondent alleges are their rights.
For these reasons the Panel finds that Respondent did not register and use the Domain Name in bad faith per Policy ¶ 4(a)(iii).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <leidosemployees.com> Domain Name REMAIN WITH Respondent.
Clive Elliott Q.C., Panelist
Dated: September 8, 2022
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