Lockheed Martin Corporation v.
International Fund Processing a/k/a Mark Duff
Claim Number: FA0508000531611
PARTIES
Complainant
is Lockheed Martin Corporation (“Complainant”),
represented by Susan Okin Goldsmith, of Duane Morris LLP,
240 Princeton Avenue, Suite 150, Hamilton, NJ 08619. Respondent is International
Fund Processing a/k/a Mark Duff (“Respondent”), represented by Mark C. Del Bianco, 3929 Washington Street, Kensington, MD
20895.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <rumfordskunkworks.com>,
registered with Network Solutions, Inc.
PANEL
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.
Joel
Grossman as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
4, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 8, 2005.
On
August 5, 2005, Network Solutions, Inc. confirmed by e-mail to the National
Arbitration Forum that the <rumfordskunkworks.com>
domain name is registered with Network Solutions, Inc. and that the Respondent
is the current registrant of the name. Network
Solutions, Inc. has verified that Respondent is bound by the Network Solutions,
Inc. registration agreement and has thereby agreed to resolve domain-name
disputes brought by third parties in accordance with ICANN’s Uniform Domain
Name Dispute Resolution Policy (the “Policy”).
On
August 15, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of September
6, 2005 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@rumfordskunkworks.com by e-mail.
A
timely Response was received and determined to be complete on September 9, 2005.
On
September 13, 2005, Complainant submitted a Reply to Response.
On September 20, 2005, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Joel Grossman as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant
is the owner of a famous mark, SKUNK WORKS. This mark has been in use by
Complainant since the mid-1940s, and a myriad of magazine and newspaper
articles, as well as books, have been written referencing this mark in relation
to Complainant. Additionally, Complainant has more than 100 domain names
incorporating this mark. Complainant contends that Respondent’s domain name is
either identical or confusingly similar to its mark. Additionally, Complainant
asserts that Respondent has no rights or legitimate interests in the mark.
Complainant notes that Respondent has never used its domain name in any
business venture, and only hopes to do so. The domain name is not currently in
use, and is merely “parked” at Network Solutions. The <rumfordskunkworks.com>
domain name has no connection whatsoever to Respondent’s business, which is
called Barnett Shea Ventures. Finally, Complainant asserts that the domain name
was registered and used in bad faith since (1) it clearly incorporates
Complainant’s trademark, and (2) Respondent has offered to sell the name to
Complainant for $500,000. Complainant asserts that the offer supports a bad
faith finding as it appears that the domain name was registered “primarily for
the purpose of selling [the name] … to Complainant.”
B.
Respondent
Respondent
denies all of Complainant’s assertions. First, Respondent asserts that the term
“skunk works” has a popular meaning unrelated to Complainant, and that in fact
it originated in the “Lil Abner” comic strip. Further, Respondent argues that
even if the term “skunk works” standing alone might be viewed as a reference to
Complainant’s operations, the addition of the word “Rumford” before the words
“skunk works” in the domain name removes any possible similarity or confusion.
Respondent also denies that it has no legitimate interest in the name. It
asserts that the name would be a humorous or irreverent name for a financial
business, and therefore might draw customers. It asserts that any other name
would not be as successful. Finally,
Respondent denies that it registered the name in bad faith, with the intention
of selling it to Complainant. In fact, argues Respondent, it had no such
thought until it was contacted by Complainant in connection with this
proceeding. Moreover, Respondent asserts that its “offer” to purchase the name
was not serious, and was meant as a response to what it deems abusive behavior
by Complainant.
FINDINGS
The Panel finds (1) that the <rumfordskunkworks.com>
domain name is confusingly similar to Complainant’s registered SKUNK WORKS
mark;
(2) that Respondent has no rights or
legitimate interest in the domain name; and
(3) that the domain name was registered
and is being used in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a
trademark or service mark in which the Complainant has rights;
(2)
the
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.
The Panel notes that this is hardly the
first time that Complainant has challenged another party’s incorporation of its
mark in a domain name. No fewer than twelve decisions have been issued, and
Complainant has prevailed in ten of the twelve. All twelve prior panels,
including the two panels which declined to rule for Complainant, agreed that
there is confusing similarity between the domain names they reviewed and
Complainant’s mark. In this case, the Panel agrees that given the unique nature
of the term “skunk works,” it is axiomatic that the public would be confused by
a name incorporating this mark. An additional word or words will not diminish
the confusion. Thus earlier panels have found confusing similarity in domain
names such as <skunkworksentertainment.com> and
<skunkwerxmotorsports.com>. See Lockheed Martin Corp v.
Interstreamer.com, D2003-0836 (WIPO Dec. 1, 2004); Lockheed Martin Corp.
v. SkunkWerx Motorsports, D2004-0705 (WIPO Nov. 23, 2004). In the
instant case, the Panel concludes, as did the earlier panels, that the addition
of a word, in this case the word “rumford,” does not eliminate the confusion,
and the domain name is confusingly similar to Complainant’s mark.
Once the Complainant makes out a prima
facie case in support of its position, the burden shifts to Respondent to show
that it has rights or legitimate interests in the domain name. See Do
the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000).
Here, Respondent has not shown any use or legitimate interest in the domain
name. It asserts that it wanted to acquire the name for further use, but has no
history of using the name, or anything like the name. Merely “parking” the domain name is not enough of a use to meet
Respondent’s burden. See, Hewlett-Packard Co. v. Rayne, FA 101465 (Nat.
Arb. Forum Dec. 17, 2001). Respondent has never been known by the domain name.
The Panel notes that Respondent’s business name, Barnett Shea Ventures, has
nothing whatsoever in common with the domain name. Respondent has completely
failed to meet its burden of showing that it has any rights or legitimate
interests in the domain name.
One of the classic examples of bad faith
registration is registration for the purpose of selling the domain name to
Complainant. In this case, in a letter dated July 29, 2005 (attached to Complaint at Appendix 10)
Respondent offered to sell the name to Complainant for $500,000. Although
Respondent now claims that this offer was in response to Complainant’s
allegedly “abusive” behavior and was not meant to be taken seriously, the
letter itself suggests otherwise. In its final sentence the letter states, in
part, “[T]his is an amicable and general offer, made with goodwill, and with
tremendous respect to the original mavericks that created Lockheed Martin . . .
.” Thus, the letter expressly states, in respectful tones, that the offer is
serious. Respondent’s post facto denial that this was a serious offer is
not credited by the Panel. As stated in CBS Broad., Inc. v. Saidi, D2000-0243
(WIPO June 2, 2000) “[A]n offer to sell the domain name for valuable
consideration in excess of the documented out-of-pocket costs directly related
to the domain name is not only evidence of, but conclusively establishes that,
the domain name has been registered and is being used in bad faith. Policy,
par. 4(b) (i).” See also Cream Pie
Club v. Halford, FA 95235 (Nat. Arb. Forum Aug. 17, 2000), in which
bad faith was found where respondent offered to sell its domain name to
complainant for $125,000. The Panel also notes that the domain name was
registered in March 2005, many years after the mark was registered and became
famous. Respondent does not and cannot contend that it was unaware of the mark
at the time of the registration. As stated in another case finding bad faith
registration involving Complainant’s mark: “Respondent was on notice of
Complainant’s trademark rights when it registered the domain name …” Lockheed
Martin Corp. v. Skunk Works Aviation, D2004-0823 (WIPO Dec. 9,
2004). Given the lack of any use of the domain name by Respondent, its
knowledge of the mark, and its offer to sell the domain name to Complainant as
soon as Complainant contacted Respondent, the Panel finds that the domain name
was registered and is being used in bad faith.
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 <rumfordskunkworks.com>
domain name be TRANSFERRED from Respondent to Complainant.
Joel Grossman, Panelist
Dated: September 26, 2005
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