Lockheed Martin Corporation v. Shen Zhong Chao
Claim Number: FA1511001649522
Complainant is Lockheed Martin Corporation (“Complainant”), represented by Lynne M. J. Boisineau of McDermott Will & Emery LLP, California, USA. Respondent is Shen Zhong Chao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sikorsky-lockheedmartin.com> and <sikorskylockheedmartin.com>, registered with HiChina Zhicheng Technology Limited.
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.
Ho Hyun Nahm, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 23, 2015; the Forum received payment on November 23, 2015. The Complaint was received in both Chinese and English.
On November 24, 2015, HiChina Zhicheng Technology Limited confirmed by e-mail to the Forum that the <sikorsky-lockheedmartin.com> and <sikorskylockheedmartin.com> domain names are registered with HiChina Zhicheng Technology Limited and that Respondent is the current registrant of the names. HiChina Zhicheng Technology Limited has verified that Respondent is bound by the HiChina Zhicheng Technology Limited 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 November 25, 2015, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of December 15, 2015 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@sikorsky-lockheedmartin.com, postmaster@sikorskylockheedmartin.com. Also on November 25, 2015, the Chinese language 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 December 23, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant has rights in the LOCKHEED MARTIN mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,022,037, registered on December 10, 1996). Respondent’s <sikorsky-lockheedmartin.com> and <sikorskylockheedmartin.com> domain names are confusingly similar to the LOCKHEED MARTIN mark because they contain the mark, less the space, along with the descriptive term “sikorsky,” a hyphen, and the generic top-level domain (“gTLD”) “.com.”
ii) Respondent is not commonly known by the <sikorsky-lockheedmartin.com> and <sikorskylockheedmartin.com> domain names because Respondent is not authorized to use Complainant’s mark. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving websites constitute inactive holdings.
iii) Respondent uses the <sikorsky-lockheedmartin.com> and <sikorskylockheedmartin.com> domain names in bad faith because they resolve to inactive websites. Respondent’s registration of the domains constituted opportunistic bad faith.
B. Respondent
Respondent has failed to submit a formal Response. The Panel notes that the <sikorsky-lockheedmartin.com> and <sikorskylockheedmartin.com> domain names were created on November 7, 2015.
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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(e), 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 (Nat. Arb. 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 LOCKHEED MARTIN mark through its registration with the USPTO (e.g., Reg. No. 2,022,037, registered on December 10, 1996). Complainant has provided this registration as Exhibit. As such, the Panel finds that Complainant has rights in the LOCKHEED MARTIN mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant argues that Respondent’s <sikorsky-lockheedmartin.com> and <sikorskylockheedmartin.com> domain names are confusingly similar to Complainant’s LOCKHEED MARTIN mark because they contain the mark, less the space, along with the term “sikorsky,” and the gTLD “.com.” The <sikorsky-lockheedmartin.com> domain name also differs in that it contains a hyphen. Complainant has provided documentation indicating having acquired the “Sikorsky Aircraft” company, and applications for trademark registrations including the term “Sikorsky.” The Panel finds that Complainant’s evidence shows that “sikorsky” is a term descriptive of the LOCKHEED MARTIN mark, and thus the Panel finds that Respondent’s <sikorsky-lockheedmartin.com> and <sikorskylockheedmartin.com> domain names are confusingly similar to Complainant’s LOCKHEED MARTIN mark pursuant to Policy ¶ 4(a)(i). See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also 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 Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. 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 (Nat. Arb. 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 contends that Respondent is not commonly known by the <sikorsky-lockheedmartin.com> and <sikorskylockheedmartin.com> domain names because Respondent is not authorized to use Complainant’s mark. The Panel notes that the WHOIS information lists “Shen Zhong Chao” as Registrant and that Respondent has failed to provide further evidence to indicate being commonly known by the domain names. As such, the Panel finds that Respondent is not commonly known by the <sikorsky-lockheedmartin.com> and <sikorskylockheedmartin.com> domain names under Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant claims that Respondent fails to use the <sikorsky-lockheedmartin.com> and <sikorskylockheedmartin.com> domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because the resolving websites constitute inactive holdings. Complainant has provided screenshots to demonstrate this use The Panel finds this evidence sufficient, and thus the Panel finds that Respondent fails to use the <sikorsky-lockheedmartin.com> and <sikorskylockheedmartin.com> domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant does not make any specific allegations of bad faith which are enumerated under Policy ¶ 4(b). However, the Policy has been found to be illustrative, rather than exclusive. See 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.”).
Complainant alleges that Respondent uses the <sikorsky-lockheedmartin.com> and <sikorskylockheedmartin.com> domain names in bad faith because they resolve to inactive websites. Complainant has provided screenshots to demonstrate this use.
The Panel agrees that the passive holding of a domain name does not necessarily circumvent a finding that the domain name is being used in bad faith within the requirements of paragraph 4(a)(iii) of the Policy. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (finding that in considering whether the passive holding of a domain name, following a bad faith registration of it, satisfies the requirements of paragraph 4(a)(iii), the panel must give close attention to all the circumstances of the respondent’s behavior, and a remedy can be obtained under the Policy only if those circumstances show that the respondent’s passive holding amounts to acting in bad faith.). See also DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
The particular circumstances of this case that the Panel has considered are: i) Complainant’s LOCKHEED MARTIN trademark has a good reputation and is widely known, as evidenced by the fact that Complainant had a long and well established reputation in connection with the provision of aerospace, aeronautics, 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 at the time of Respondent’s registration, and ii) Respondent has provided no evidence whatsoever of any actual or contemplated good faith use by it of the disputed domain names. As the Panel finds such a failure to make an active use here, the Panel finds that Respondent uses the domains in bad faith under Policy ¶ 4(a)(iii).
Complainant also argues that Respondent’s registration of the <sikorsky-lockheedmartin.com> and <sikorskylockheedmartin.com> domain names constitute opportunistic bad faith. Complainant has provided evidence of having acquired the “Sikorsky Aircraft” company and that such acquisition was made public on November 6, 2015. Complainant argues that because Respondent registered the disputed domains on November 7, 2015, such registration constitutes opportunistic bad faith. As the Panel finds this argument compelling, the Panel finds that Respondent registered the <sikorsky-lockheedmartin.com> and <sikorskylockheedmartin.com> domain names in bad faith. See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sikorsky-lockheedmartin.com> and <sikorskylockheedmartin.com> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: December 30, 2015
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