Lockheed Martin Corporation v. Stefan Willis
Claim Number: FA1801001765340
Complainant is Lockheed Martin Corporation (“Complainant”), represented by Sarah E Bro of McDermott Will & Emery LLP, California, USA. Respondent is Stefan Willis (“Respondent”), United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lockheed-aegis-engineering.com>, registered with NameCheap, 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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on January 3, 2018; the Forum received payment on January 3, 2018.
On January 3, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <lockheed-aegis-engineering.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 January 10, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 30, 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@lockheed-aegis-engineering.com. Also on January 10, 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 2, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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 registered the LOCKHEED mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,627,156) on October 1, 2002. See Amended Complaint Exhibit D. Respondent’s <lockheed-aegis-engineering.com> domain name (the “Domain Name”) is confusingly similar to Complainant’s mark as it appends hyphens, the descriptive terms “aegis” and “engineering” and the “.com” generic top-level-domain (“gTLD”) to Complainant’s wholly incorporated mark. These changes are insufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i).
Respondent has no rights or legitimate interests in the Domain Name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Further, Respondent does not use the Domain Name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the resolving web site previously displayed pay-per-click advertising. Currently, it is inactive, containing only the words “This site can’t be reached.”
Respondent registered and uses the Domain Name in bad faith. The resolving web site formerly hosted pay-per-click advertising, and is currently inactive. Further, Respondent had actual knowledge of Complainant’s rights in the LOCKHEED mark when he registered the Domain Name on October 7, 2017.
B. Respondent
Respondent did not submit a Response in this proceeding.
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.
The Panel makes the findings and determinations set forth below with respect to the Domain Name.
In view of Respondent's failure to submit a response, the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representa-tions 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 has established its rights in the LOCKHEED marks based upon its registration thereof with the USPTO (Reg. No. 2,627,156) on October Oct. 1, 2002. See, Amended Complaint Exhibit D. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Further, Respondent’s Domain Name is confusingly similar to Complainant’s mark. It incorporates the mark in its entirety, adding hyphens, the descriptive terms “aegis” and “engineering” and the “.com” gTLD. These changes are not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶4(a)(i). YETI Coolers, LLC v. Randall Bearden, FA 16060016880755 (Forum Aug. 10, 2016) (finding that the words “powder coating” in the <yetipowdercoating.com> domain name are “merely explicative and directly refer to some of the services rendered by the Complainant” and, therefore, create an “irrefutable confusing similarity” to complainant’s YETI mark); 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); see also ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug, 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”). Confusing similarity is further demonstrated by the words “aegis” and “engineering,” which Respondent added to Complainant’s mark in the Domain Name. “Aegis” is the name of a combat system developed and sold by Complainant, and engineering is what Complainant does. See, Complaint Exhibit E.
Based upon the foregoing, the Panel finds that the Domain Name is confusingly similar to the LOCKHEED mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interest. If, though, the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0 at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Respondent is not commonly known by the Domain Name, (ii) Complainant has not authorized Respondent to use its LOCKHEED mark, and (iii) Respondent is not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because the resolving web site previously displayed pay-per-click (PPC) advertising and more recently is inactive. Neither of these uses qualifies as a bona fide offering of goods and services, or a legitimate noncommercial or fair use of a domain name. These allegations are supported by competent evidence. The WHOIS identifies “Stefan Willis” as the registrant of the Domain Name. See, Complaint Exhibit A. Respondent registered the Domain Name on October 7, 2017. (Ibid.) Further, Complainant states that it has never authorized Respondent to use its LOCKHEED mark in any domain name registration. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel.
Additionally, the Domain Name resolves to a web site which contains the message, “This site can’t be reached.” See, Complaint Exhibit B. Failure to make active use of a confusingly similar domain name is evidence of a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii)”). Respondent is not currently using the Domain Name to make a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii).
Nor did he do so before recently changing its use. Previously, the Domain Name resolved to a web site that displayed PPC advertising. Complaint Exhibit B is a screenshot of Respondent’s web site as of October 31, 2017. It is a classic PPC page displaying links which divert visitors to other websites which in some instances appear not to be associated with Complainant and, in other instances, may be owned by Complainant’s competitors. UDRP Panels have found that leading consumers who are searching for a particular business to other sites for PPC revenues is not a bona fide use. Health Level Seven International, Inc. v. McCarragher, Claim No. FA 1723981 (Forum 2017) (“Respondent’s domain name resolves to a page hosting pay-per-click advertising for Respondent’s commercial gain. The Panel therefore finds that Respondent has failed to use <hl7community.org> for a bona fide offering of goods or services, or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).”); Homer, TLC Inc. v. Lorna Kang, Claim No. FA573872 (Forum 2005) (“Respondent’s use of domain name that is identical to Complainant’s mark to divert Internet users to third-party websites for Respondent’s own commercial gain does not constitute a bona fide offering ... or a legitimate noncommercial or fair use ....”).
Complainant has made its prima facie case. On the evidence presented, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.
Exhibit B to the Complaint contains screen shots of the web site resolving from the Domain Name at two different times. One, which was posted as of December 20, 2017, shows only the words “This site can’t be reached.” This web site is clearly inactive. The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and using a domain name for an inactive web site has often been held to be evidence of bad faith under the Policy. Digi Int’l Inc. v. DDI Sys., FA 124506 (Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith), VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”), Wells Fargo & Co. v. WhoisGuard c/o WhoisGuard Protected, FA 1103650 (FORUM December 13,2007) (“The failure to make an active use of the disputed domain name also evidences bad faith registration and use under Policy ¶ 4(a)(iii)”).
The other screen shot, which shows the web site as of October 31, 2017, displays a list of links, including Lockheed Martin Corporation and Security Systems, apparently to other web sites. It is clear from this evidence that Respondent was intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's LOCKHEED mark as to the source, sponsorship, affiliation, or endorsement of Complainant. Respondent was obtaining commercial gain from its use of the Domain Name and its resolving web site. When a visitor to this web site clicked on one of the links which appear there, Respondent received compensation from the various website owners who received traffic forwarded from the site. Most likely, Respondent received compensation based upon the number of hits the web site owners get from being linked to its web site. See AllianceBernstein LP v. Texas International Property Associates - NA NA, Case No. D2008-1230 (WIPO, 2008), and Brownells, Inc. v. Texas International Property Associates, Case No. D2007-1211 (WIPO, 2007), (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain). Here, Respondent’s prior generation of click-through fees from its Domain Name resulted from pay-per-click links and alone constituted commercial gain. Furthermore, and similar to the facts in AllianceBernstein and Brownells, Respondent’s use of the Domain Name and its web site results in a commercial gain for others by forwarding visitors to third parties. Just as commercial gain was sought for the respondents in the abovementioned cases, commercial gain was sought by Respondent here for himself and the various website owners who are forwarded from the links at the Domain Name. There is no other rational explanation for Respondent having registered and maintained the Domain Name and resolving it to a PPC site with commercial links, some of which may relate directly to Complainant’s line of business. Respondent’s use of the Domain Name is commercial because the various companies who receive traffic forwarded from the web site benefit from the subsequent interest and purchases of those who visit the site. UDRP Panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. Focus Do It All Group v. Athanasios Sermbizis, Case No. D2000-0923 (WIPO,2000) (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial). Respondent’s prior use of the Domain Name in this manner places him squarely within the circumstances articulated in Policy ¶ 4(b)(iv).
Further, Respondent registered the Domain Name on October 17, 2017. See, WHOIS record, Complaint Exhibit B. Because of the long history and world-wide fame of the name LOCKHEED prior to the registration date, it is certain that Respondent had actual knowledge of Complainant’s mark when he registered the Domain Name. This has consistently been held to be evidence bad faith registration. Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name), Chevron Intellectual Property LLC v. Richard Bailey/Jacobs, FA 1588430 (Forum Dec. 9, 2014) (finding that respondent’s behavior of sending emails impersonating complainant demonstrated that the domain name was registered with complainant in mind), and Michelin North America, Inc. v. Innis, FA 1511296 (Forum Dec. 27, 2013) (holding that respondent’s registration of domain names that were confusingly similar to complainant’s famous marks evidenced that respondent had actual knowledge of complainant’s marks and rights and registered the domain names in bad faith under Policy ¶ 4(a)(iii)).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
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 <lockheed-aegis-engineering.com> domain name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: February 5, 2018
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