DECISION

 

Lockheed Martin Corporation v. Lawrence Silverman c/o Lawrence Silverman

Claim Number: FA1708001745907

PARTIES

Complainant is Lockheed Martin Corporation (“Complainant”), represented by Sarah E Bro of McDermott Will & Emery LLP, USA.  Respondent is Lawrence Silverman c/o Lawrence Silverman (“Respondent”), Pennsylvania, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <skunkworks.rocks>, registered with GoDaddy.com, LLC.

 

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 August 23, 2017; the Forum received payment on August 23, 2017.

 

On August 24, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <skunkworks.rocks> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.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 August 25, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 14, 2017 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@skunkworks.rocks.  Also on August 25, 2017, 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 September 19, 2017, 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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant offers a wide range of services and products pertaining to the manufacturing and productions of commercial and military aircrafts. Complainant holds numerous common law and trademark registrations of the SKUNK WORKS mark, particularly with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,652,258 registered Nov. 19, 2002). See Compl., at Attached Ex. D. Respondent’s <skunkworks.rocks> is nearly identical to Complainant’s mark because it incorporates the entire mark and merely adds a “.rocks” generic top level domain (“gTLD”).

2.    Respondent has no right or legitimate interest in the disputed domain name. Respondent is not commonly known by the disputed domain name. Respondent has not made a bona fide offering of goods or services nor has a legitimate noncommercial or fair use of the disputed domain name. Rather, Respondent has used the domain name to promote other commercial websites via click-through links which erroneously appear to be related to Complainant. See Compl., at Attached Ex. B.

3.    Respondent registered and is using the disputed domain name in bad faith. Respondent has refused to reply to Complainant’s cease and desist letter. Respondent’s site redirects users, searching for Complainant’s site, to third-party commercial links and advertisements and Respondent profited through a pay-per-click scheme.

 

B.   Respondent

1.    Respondent did not submit a Response.

 

FINDINGS

1.    Respondent’s <skunkworks.rocks> domain name is confusingly similar to Complainant’s SKUNK WORKS mark.

2.    Respondent does not have any rights or legitimate interests in the

<skunkworks.rocks> domain name.

3.    Respondent registered or used the <skunkworks.rocks> domain name 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

Complainant offers a wide range of services and products pertaining to the manufacturing and production of commercial and military aircrafts. Complainant holds numerous common law and trademark registrations of the SKUNK WORKS mark, particularly with the USPTO (e.g., Reg. No. 2,652,258 registered Nov. 19, 2002). See Compl., Attached as Ex. D. The general consensus among Panels is that USPTO registrations are sufficient to show rights in a mark.  See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark).  Therefore, the Panel concludes that Complainant’s registration with USPTO is sufficient to show rights in the SKUNK WORKS mark.

 

Complainant asserts Respondent’s <skunkworks.rocks> is nearly identical to the SKUNK WORKS mark. Complainant argues that the disputed domain name fully incorporates the mark and merely adds the “.rocks” gTLD in an attempt to create a distinction. The Panel agrees that this attempt to differentiate the mark and the disputed domain name is insufficient under the Policy. See Tupelo Honey Hospitality Corporation v. King, Reggie, FA 1732247 (Forum July 19, 2017)

(“Addition of a gTLD is irrelevant where a mark has been fully incorporated into a domain name and the gTLD is the sole difference.”); see also Coachella Music Festival, LLC v. john zugec / visualad design group inc., FA1700289 (Forum Dec. 1, 2016) (stating, “To the extent that [gTLDs] are considered at all it is to be noted that ‘.rocks’ only serves to increase the likelihood of confusion.”). Therefore, the Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

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), 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 (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 (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 first asserts Respondent is not commonly known by the disputed domain name. WHOIS identified Respondent as “Lawrence Silverman” which bears no resemblance to the disputed domain name. The Panel finds that Respondent failed to demonstrate a right to the disputed domain name with regards to the WHOIS registration. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). The Panel finds Complainant has satisfied Policy ¶ 4(c)(ii).

 

Next, Complainant asserts Respondent has no bona fide offer of goods or services nor a legitimate or fair use of the disputed domain name. Complainant argues Respondent registered to profit off the goodwill of the SKUNK WORKS mark by creating a pay-per-click scheme to redirect confused users to third-party websites. See Compl., Attached as Ex. B. Such use may evince no rights or legitimate interests. See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”). The Panel finds this kind of behavior—evidenced in Exhibit B—does not make for a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

            Complainant asserts Respondent’s site resolves to host a number of third party links and advertisements. Complainant argues web users would click on links and advertisements featured on Respondent’s site and would redirect them to their third party websites. See Compl., Attached as Ex. B.  Complainant alleges a pay-per-click scheme existed and Respondent profited from user clicks, which constitutes bad faith. The Panel determines that this behavior to utilize a well-known mark in order to profit from clicks constitutes bad faith. See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting) The Panel finds Complainant has satisfied Policy [¶ 4(b)(iv).

 

Next, Complainant asserts Respondent’s failure to respond to a cease and desist letter constitutes bad faith under the Policy. Complainant argues Respondent failed to respond on one occasion and then spoke with Complainant, indicating Respondent was in the process of hiring counsel. Respondent has since failed to communicate with Complainant. The Panel considers this lack of communication to constitute Respondent’s bad faith. See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). In fact, Complainant notes Respondent filed a U.S. trademark application for a mark that appears to relate to the Domain Name, SKUNKWORKS.ROCKS (serial number 86/876,741), under the name Lawrence Silverman, DBA Hortapharm, and claiming an intention to use the mark in U.S. commerce under Section 1(B) of the Trademark Act. However, Respondent filed this intent to use application exactly one day after receiving the demand letter. Complainant asserts that Respondent clearly filed the application with full knowledge of Complainant’s ownership of the SKUNK WORKS mark, further demonstrating Respondent’s bad faith. Therefore, the Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

Complainant asserts that, due to its extensive list of trademark registrations, Respondent must have had constructive knowledge of Complainant's rights in the SKUNK WORKS mark when Respondent registered the disputed domain name. Complainant further argues that the application for trademark protection filed by Respondent after correspondence with Complainant indicates actual knowledge. The Panel disregards Complainant's arguments concerning constructive knowledge as constructive knowledge is not enough evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel agrees with Complainant regarding Respondent's actual knowledge, however, and conclude that Respondent registered the <skunkworks.rocks> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use 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 <skunkworks.rocks> domain name be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  October 3, 2017