Lockheed Martin Corporation v. Yu Tian / Xu Tian
Claim Number: FA1803001778422
Complainant is Lockheed Martin Corporation (“Complainant”), represented by Sarah E Bro of McDermott Will & Emery LLP, California, USA. Respondent is Yu Tian / Xu Tian (“Respondent”), Cambodia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lockheedmartinblockchain.com>, <lockheedmartincryptocurrency.com>, and <lockheedmartincryptocurrencies.com>, registered with GoDaddy.com, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 22, 2018; the Forum received payment on March 23, 2018.
On March 26, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <lockheedmartinblockchain.com>, <lockheedmartincryptocurrency.com>, and <lockheedmartincryptocurrencies.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 March 30, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 19, 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@lockheedmartinblockchain.com, postmaster@lockheedmartincryptocurrency.com, postmaster@lockheedmartincryptocurrencies.com. Also on March 30, 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 April 24, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 names be transferred from Respondent to Complainant.
A. Complainant
The Trademarks and Service Marks Upon Which the Complaint is Based
1. This Complaint is based on Complainant’s common law rights in, and numerous trademark registrations for, the trademarks LOCKHEED, LOCKHEED MARTIN, and the design mark variants of same (“Complainant’s Marks” or “Marks”).
2. Complainant is a global security and aerospace company that employs approximately 100,000 people worldwide and is principally engaged in the research, design, development, manufacture, integration and sustainment of advanced technology systems, products and services. Complainant owns multiple trademark applications and registrations for goods and services in the fields of aerospace, aeronautics and aircraft, electronic systems, information and technology services, engineering services, integrated systems and solutions, and space systems, as well as a wide variety of goods and services related thereto. In addition, on April 27, 2017, Complainant announced its collaboration with cyber-centric small businesses to augment its cyber capabilities. As a result of this effort, Complainant became the first U.S. defense contractor to incorporate blockchain technology into its developmental processes. Complainant has attached a schedule of its global trademark applications and registrations, as well as copies of its United States Certificates of Registration.
3. Complainant enjoys strong worldwide rights in, and recognition of, its Marks. Complainant, through its predecessor-in-interest, Lockheed Aircraft Company, has used the LOCKHEED mark since as early as 1926. The first U.S. trademark registration for the LOCKHEED mark dates back to 1934. Complainant’s common law rights in the LOCKHEED MARTIN trademark date back to as early as 1995, when Complainant became “Lockheed Martin Corporation” after the merger of Martin Marietta and Lockheed Corporation. The first U.S. trademark registration for the LOCKHEED MARTIN mark dates back to 1996. Complainant has developed substantial goodwill in its name, Lockheed Martin Corporation, and its LOCKHEED and LOCKHEED MARTIN trademarks, as well as its official domain names, lockheedmartin.com and lockheed.com.
4. Complainant is number 56 on the 2017 listing of U.S. Fortune 500 companies and number 178 on the 2017 Fortune Global 500 list.
5. Complainant’s Marks are famous for use in connection with 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.
6. Complainant also licenses its Marks to third parties for use on various clothing goods, toys and novelty items, and office and home goods. Through the licensing and sale of such products, the Marks have acquired even further fame and distinctiveness amongst general consumers, reaching well beyond Complainant’s government and defense customers.
7. An Internet news search for “Lockheed Martin” on March 19, 2018 found over 620,000 articles mentioning Complainant. As a result of such widespread, continuous, and prominent use, Complainant’s Marks have acquired significant goodwill, wide public recognition, and international fame as a means by which the public identifies Complainant’s goods and related services.
8. Complainant also owns, directly or beneficially, over 590 domain names containing LOCKHEED, LOCKHEED MARTIN, or formative spelling variations of the Marks. Complainant owns many of the domains by virtue of transfers ordered in domain dispute resolution proceedings.
Factual and Legal Grounds on Which the Complaint is Made
A. The Domain Names are Confusingly Similar to Complainant’s Marks and Official Domains
[Rule 3(b)(ix)(1)]
9. The Domain Names are nearly identical to and are confusingly similar to Complainant’s business name (i.e., Lockheed Martin Corporation), its valuable LOCKHEED and LOCKHEED MARTIN trademarks, as well as Complainant’s official domains, lockheedmartin.com and lockheed.com. Complainant registered and has used the domain name, lockheed.com since 1987 and lockheedmartin.com since 1996.
10. Respondent’s Domain Names, LockheedMartinBlockChain.com, LockheedMartinCryptocurrency.com, and LockheedMartinCryptocurrencies.com, incorporate and contain Complainant’s identical trademarks LOCKHEED and LOCKHEED MARTIN.
11. Respondent’s Domain Names are identical to and is confusingly similar to Complainant’s LOCKHEED and LOCKHEED MARTIN trademarks and the lockheedmartin.com domain. The incorporation of Complainant’s famous Marks into the Domain Names appears to be an attempt to create a likelihood of confusion with Complainant’s Marks as to the source, sponsorship or affiliation, or endorsement of Respondent’s website. As such, Respondent’s Domain Names are likely to mislead and divert web users trying to locate legitimate information about Complainant’s business and related goods and services, and/or Complainant’s own websites.
12. In addition to the use of the famous LOCKHEED MARTIN trademark in the Domain Names, the domains include the term “blockchain,” “cryptocurrency,” or “cryptocurrencies,” which arguably create a direct reference to Complainant’s cyber capabilities and recent blockchain technology integration. Panels have held that the addition of generic terms (such as “blockchain,” “cryptocurrency,” or “cryptocurrencies”) or a string of random characters to a trademark in a domain name fails to negate confusing similarity – especially when those generic terms are obviously related to the complaint’s business. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); Bittrex, Inc. v. rubex money, FA1765736 (Forum, Mar. 12, 2018) (finding confusing similarity where the disputed domain name “merely adds the generic or descriptive term ‘crypto’ and the gTLD ‘.com’” to the identical mark of the complainant); Netflix, Inc. v. Irpan Panjul / 3corp.inc, FA1741976 (Forum, Aug. 22, 2017) (“The addition of terms which are related to Complainant or its goods and services supports a finding of confusing similarity. Accordingly the addition of this generic abbreviation ‘tv’ meaning television does not serve to distinguish the Domain Name from Complainant’s NETFLIX mark especially bearing in mind that Complainant’s business includes distribution of television content” [emphasis added]); see also See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶4(a)(i).”); see also Lockheed Martin Corporation v. Stefan Willis, FA 1765340 (Forum, February 5, 2018) (Finding the lockheed-aegis-engineering.com domain name confusingly similar to the LOCKHEED mark, stating “[c]onfusing 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.”).
13. By merely adding the word “blockchain,” “cryptocurrency,” or “cryptocurrencies” to Complainant’s famous LOCKHEED MARTIN trademark (or misspellings of the trademark), Respondent does nothing to prevent a likelihood of confusion with Complainant’s Marks, and Respondent’s Domain Names are likely to misleadingly attract current and potential customers of Complainant. In addition, Internet users are likely to be confused by the similarities between Complainant and the Domain Names, and are likely to believe that the latter are affiliated with Complainant. See Microsoft Corporation. v. lin zong xing, FA1725147 (Forum, May 20, 2017) (finding confusing similarity between the trademark MICROSOFT and the “microsoftbaas.com” domain name at issue, stating the addition of the characters “‘baas’ (which is an acronym for Blockchain as a Service)” are “insufficient to negate the confusing similarity between Respondent’s domain names and Complainant’s famous trademarks.”).
14. Finally, the addition of the “.com” generic top-level domain (“gTLD”) cannot distinguish the disputed Domain Names from Complainant’s Marks. See 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 Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”). Internet users are likely to be confused by the similarities between lockheedmartin.com and LockheedMartinBlockChain.com, LockheedMartinCryptocurrency.com, and LockheedMartinCryptocurrencies.com, and are likely to believe that the latter are affiliated with Complainant’s business and related LOCKHEED MARTIN-branded goods and services.
B. Respondent Has No Rights or Legitimate Interest in the Domain Names [Rule 3(b)(ix)(2)]
15. Complainant is entitled to a presumption of ownership, validity, and the exclusive right to use its Marks in connection with the goods and services named in its registration certificates. 15 U.S.C. §1057(b).
16. Complainant’s Marks are not descriptive words in which the Respondent might have an interest. In fact, an Administrative Panel has found that Complainant’s LOCKHEED mark is an “invented term,” and that LOCKHEED MARTIN “is an arbitrary mark” that is “highly distinctive,” thus increasing “the likelihood of Internet user confusion involving Complainant’s mark and the disputed domain name.” See Lockheed Martin Corp. v. Ning Ye, WIPO Case No. D2000-1733 (May 17, 2001).
17. Complainant’s Marks have acquired distinctiveness through Complainant’s substantial, continuous, and exclusive use of the Marks in connection with Complainant’s goods and services.
18. Respondent is neither affiliated with, nor has it been licensed or permitted to use Complainant’s Marks or any domain names incorporating the Marks. Under the Policy, Paragraph 4(a)(ii), a statement that the Respondent is not licensed or otherwise authorized to use the disputed domain names constitutes prima facie proof for the Complainant that the Respondent lacks any rights or legitimate interests in the Domain Names. See CareerBuilder, LLC v. Stephen Baker, WIPO Case No. D2005-0251 (May 6, 2005); see also Lockheed Martin Corporation v. Zhichao Yang, FA1714221 (Forum February 28, 2017) (“Lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed domain name.”).
19. On information and belief, Respondent is not commonly known by the Domain Names, either as a business, individual, or other organization. See Policy ¶4(c)(ii); see also Tercent Inc. v. Lee Yi, FA 139720 (Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy 4(c)(ii) does not apply). However, as noted above, Complainant is commonly known by the Domain Names, as Complainant’s entity name is Lockheed Martin Corporation
20. Respondent is not making legitimate noncommercial fair use of the Domain Names. See Policy, Paragraph 4(c)(iii). Rather, Respondent is not using the Domain Names LockheedMartinCryptocurrency.com and LockheedMartinCryptocurrencies.com for any purpose other than to display sponsored pay-per-click links and advertisements. The Respondent is also not using the Domain Name LockheedMartinBlockChain.com because the website displays the message: “website coming soon! Please check back soon to see if the site is available.” Prior panels have found that the inactive holding of a disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶4(c)(i) or Policy ¶4(c)(iii) where it failed to make any active use of the domain name); see also Amazon Technologies, Inc. v. Zhang Biao Cao / Cao Zhang Biao / Zhang Biao / Cao Zhangbiao / Wang Li Hong / Li Hui, FA 1758917 (December 20, 2017) (“In fact, failure to develop the sites demonstrates a lack of genuine interest in the domain names.”).
21. Respondent’s failure to use the Domain Names to provide a bona fide offering of goods and services confirms that it does not have a right or legitimate interest in the Domain Names, particularly since Complainant has proven its rights in the Marks at issue. See Kate Spade, LLC v. Darmstadter Designs, D2001-1384 (WIPO January 3, 2002) (finding when rights in a mark are proven, the burden then shifts to the domain holder to prove a right or legitimate interest. And the panel noted that non-use of the domain name for three years supported a finding of a lack of right or legitimate interest); see also Lockheed Martin Corporation v. Armando Castorena FA1717508 (Forum March 17, 2017) (finding that “Respondent’s non-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) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”). Thus, Respondent has not used the Domain Names in connection with a bona fide offering of goods or services. See Policy ¶4(c)(i).
22. Complainant notes that Respondent has owned the Domain Names for almost three (3) months, and has failed to make any developments or “demonstrable preparations” to use the Domain Names with a bona fide offering of goods or services. Using a confusingly similar domain name to capitalize on the fame of that mark, and failing to make active use of a confusingly similar domain name, can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Forum Apr. 12, 2007) (finding that the respondent lacked rights or legitimate interests in a confusingly similar domain name that it had not made demonstrable preparations to use since its registration seven months prior to the complaint); see also 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).”).
23. On information and belief, Respondent registered and/or acquired the Domain Names on January 14, 2018, as can be seen from the date that the domain name records were created. Accordingly, Respondent registered the Domain Names more than ninety (90) years after Complainant began using its LOCKHEED mark, and thirty (30) years after Complainant had registered the domain name lockheed.com. Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
24. Respondent’s use of the Domain Names LockheedMartinCryptocurrency.com and LockheedMartinCryptocurrencies.com to display click- through links or to redirect users to sponsored websites does not qualify as a bona fide offering of goods and services, and it is presumed that the registrant received compensation for each misdirected user. See, e.g. Victoria’s Secret Stores Brand Management, Inc. v. Wireless Marketing Enterprises, LLC, FA1191372 (Forum, Jul. 2, 2008) (inferring that the use of a domain name to display links to third-party websites which earn click-through fees is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy); see also Lockheed Martin Corporation v. Nate Morley, FA1695614 (Forum Nov. 3, 2016) (observing that the disputed domain name “…resolves to a webpage that states: ‘This Web page is parked for FREE, courtesy of GoDaddy.com’ and which carries various links names, for example, ‘Roofing Estimates’, ‘Watch Free Movies Now’ and ‘Get Google Chrome.’ Such use does not give rights or establish a legitimate interest in the domain. It is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.”).
25. Respondent’s use of the Domain Name LockheedMartinBlockChain.com also does not qualify as a bona fide offering of goods and services because the website is inactive. See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”).
26. Respondent’s activities constitute passing off, in that Respondent is trying to pass itself off as a Complainant, a company known around the world as a provider of goods and services in relation to advanced technology systems, products and services. Passing off has been consistently held to demonstrate a lack of legitimate interest under Policy ¶¶4(c)(i) and 4(c)(iii) of the UDRP.
27. Respondent is not making a legitimate noncommercial or fair use of the Domain Names, and it appears that Respondent has chosen the LockheedMartinBlockChain.com, LockheedMartinCryptocurrency.com, and LockheedMartinCryptocurrencies.com domains to trade off of the reputation and goodwill associated with Complainant’s Marks and to misleadingly divert Internet traffic from Complainant’s website(s). See Policy 4(c)(iii).
C. The Domain Names Were Registered and Are Being Used in Bad Faith [ Rule 3(b)(ix)(3)]
28. Once Complainant learned of Respondent’s registration of LockheedMartinBlockChain.com, LockheedMartinCryptocurrency.com, and LockheedMartinCryptocurrencies.com, Complainant’s counsel sent a demand letter via e-mail and Federal Express to Respondent on January 31, 2018, using the contact information listed in the WHOIS record for the Domain Names. To date, Complainant’s counsel has not received a response to the January 31 letter.
29. Respondent is neither affiliated with, nor has it been licensed or permitted to use Complainant’s Marks or any domain names incorporating the Marks.
30. Respondent’s use of the Domain Names LockheedMartinCryptocurrency.com and LockheedMartinCryptocurrencies.com to redirect Internet users to commercial websites through various sponsored click-through links indicates that Respondent registered the Domain Names with the intent to attract Internet users to its websites for commercial gain by creating a likelihood of confusion with Complainant’s Marks as to the source, sponsorship, affiliation or endorsement of Respondent’s websites. See Policy 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy 4(b)(iv).”); see also Caterpillar Inc. v. Jonathan Phillips FA0610000824404 (Forum Dec. 5, 2006) (“The Panel also finds Respondent’s diversionary use of the <caterpillarconstructionequipment.com> domain name for commercial gain violates Policy 4(b)(iv), by linking the domain name to a commercial links page and presumably earning click-through fees, Respondent is taking advantage of the confusing similarity between the disputed domain name and Complainant’s CATERPILLAR mark in order to profit from the goodwill associated with the mark”); see also Lockheed Martin Corporation v. Motor City Aviation / Todd Bates, FA1208001458944 (Forum Sept. 28, 2012) (“As the Panel agrees with Complainant and finds that Respondent commercially benefits from the hyperlinks and that it is attempting to create confusion, the Panel also finds that Respondent registered and uses the <mooneyskunkworks.com> and <motorcityskunkworks.com> domain names in bad faith according to Policy ¶4(b)(iv)”).
31. Respondent is not using the multiple LockheedMartinBlockChain.com, LockheedMartinCryptocurrency.com, and LockheedMartinCryptocurrencies.com domain names for any legitimate, bona fide purpose, and thereby has registered the Domain Names in bad faith, as it is preventing Complainant from reflecting its Mark in corresponding domain names, and preventing Complainant from keeping its Mark from being used in a confusingly similar manner by a third-party. See SIGARMS v. Sigsauer Dot com, FA1024240 (Forum August 9, 2007) (finding that multiple registrations of domain names incorporating the same mark create a presumption of a pattern of conduct preventing Complainant from reflecting its mark in the corresponding domain names, and the Panel found this to be evidence of bad faith registration and use pursuant to Policy ¶4(b)(ii)); see also Richard Starkey v LOVEARTH.net, FA 97089 (Nat. Arb. Forum June 4, 2001) (finding bad faith in the respondent’s registration of multiple domain names similar to the complainant’s trademark, presuming a pattern of conduct to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name); see also Nabisco Brands Co. v. Patron Group, Inc., D2000-0032 (WIPO Feb. 23, 2000) (holding that registration of numerous domain names is one factor in determining registration and use in bad faith). Here, Respondent’s registration of the three (3) Domain Names is clear evidence of bad faith registration.
32. In addition, the Domain Name LockheedMartinBlockChain.com resolves to an inactive website with no demonstrable preparations for use. Numerous UDRP panels have found that a failure to attempt to develop or use a domain name which contains an established trademark is further evidence of bad faith registration and use pursuant to Policy ¶4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA893427 (Forum Feb. 28, 2007) (finding that a respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); see also Caravan Club v. Mrgsale, FA95314 (Forum Aug. 30, 2000) (finding that a respondent made no use of a domain name or its resolving website, and that such a failure to make an active use of the domain name permits an inference of registration and use in bad faith. See also Tumblr, Inc. v. Viet Blogs, FA1539462 (Forum February 12, 2014) and 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.”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”). Similar to the above-referenced cases, Respondent’s failure to use the Domain Names is evidence of bad faith registration and use of the Domain Names.
33. Given the well-known status of Complainant’s Marks, Complainant’s recent blockchain technology integration, and Complainant’s ownership of the domains lockheed.com and lockheedmartin.com, there is no reason for Respondent to have registered the Domain Names other than to trade off of the reputation and goodwill of Complainant’s Marks. See Charles Jorden Holding AG v. AAIM, D2000-0403 (WIPO, June 27, 2000) (finding that the domain name in question is “so obviously connected with the Complainant and its products that its very use by someone with no connection with Complainant suggests opportunistic bad faith.”); See also Lockheed Martin Corporation v. Armando Castorena, supra, (holding that “…in light of the fame and notoriety of Complainant's LOCKHEED MARTIN mark, it is inconceivable that Respondent could have registered the disputed domain names without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel agrees and finds that Respondent knew of Complainant and its rights to the LOCKHEED MARTIN mark when registering <lockheedmartinco.org>, and thus registered in bad faith under Policy ¶4(a)(iii).”).
34. In addition, Respondent’s registration of the Domain Names violates the Anticybersquatting Consumer Protection Act, 15 U.S.C. §43(d), et seq.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are 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 names; and
(3) the domain names have been registered and are being used in bad faith.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
Complainant claims rights in the LOCKHEED MARTIN mark based upon its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,002,037, registered Dec. 10, 1996). Registration with a governmental trademark agency, such as the USPTO, is sufficient to prove Policy ¶4(a)(i) rights in a mark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶4(a)(i)). Complainant has rights in the LOCKHEED MARTIN mark under Policy ¶4(a)(i).
Complainant claims the <lockheedmartinblockchain.com>, <lockheedmartincryptocurrency.com>, and <lockheedmartincryptocurrencies.com> domain names are nearly identical or confusingly similar to the LOCKHEED MARTIN mark because they contain Complainant’s mark in its entirety and add the descriptive terms “blockchain,” “cryptocurrency,” or “cryptocurrencies,” as well as the gTLD “.com.” Slight differences between domain names and registered marks, such as the addition of descriptive terms in connection with the mark, do not adequately distinguish the domain name from the incorporated mark. See Bittrex, Inc. v. rubex money, FA1765736 (Forum, Mar. 12, 2018) (finding confusing similarity where the disputed domain name “merely adds the generic or descriptive term ‘crypto’ and the gTLD ‘.com’” to the identical mark of the complainant). A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See 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). The disputed domain names do not contain sufficient changes to sufficiently distinguish them from the LOCKHEED MARTIN mark.
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant claims Respondent has no rights or legitimate interests in the <lockheedmartinblockchain.com>, <lockheedmartincryptocurrency.com>, and <lockheedmartincryptocurrencies.com> domain names because Respondent is not commonly known by the domain names, nor has Complainant authorized Respondent to use the LOCKHEED MARTIN mark in any way. Absent information in the record to the contrary (and there is none in this case), the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain names. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). The current WHOIS information of record identifies Respondent as “Yu Tian / Xu Tian.” There is no obvious relationship to the disputed domain names. There is no evidence in the record to indicate Respondent has been authorized to register a domain name using Complainant’s mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Respondent has not been commonly known by the disputed domain names under Policy ¶4(c)(ii).
Complainant claims Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <lockheedmartincryptocurrency.com> and <lockheedmartincryptocurrencies.com> domain names. Respondent is using the disputed domain names to display sponsored pay-per-click links and advertisements. Using disputed domain names to post commercial websites links and subject Internet users to advertisements is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of confusingly similar domain names. 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 domains display links to various services such as “Bit Queen” and “Pit Coin.” Respondent does not have rights or legitimate interests in the <lockheedmartincryptocurrency.com> and <lockheedmartincryptocurrencies.com> domain names under Policy ¶¶4(c)(i) or (iii).
Complainant claims Respondent’s lack of rights or legitimate interests in the <lockheedmartinblockchain.com> domain name is evidenced by its failure to use the domain name since it was registered. When the respondent is not using a confusingly similar domain name in connection with an active website, the Panel may find the respondent is not using that domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) or (iii). See Kohler Co. v xi long chen, FA 1737910 (Forum Aug. 4, 2017) (”Respondent has not made a bona fide offering of goods or services, or a legitimate non-commercial or fair use of the domain. Respondent’s <kohler-corporation.com> resolves to an inactive webpage displaying the message “website coming soon!”). The resolving webpage displays the message “website coming soon! Please check back soon to see if the site is available.” Respondent does not use the domain name in connection with an active website, failing to confer rights or legitimate interests in the domain names under Policy ¶¶4(c)(i) or (iii).
Complainant claims Respondent attempts to pass itself off as Complainant to divert Internet users to Respondent’s website. The demonstrates Respondent is not using the domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) or (iii). Using a domain name to pass off as a complainant does not confer rights or legitimate interests under Policy ¶4(c)(i) or (iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)). Respondent only used the distinctive LOCKHEED MARTIN mark in the domain name to capitalize on Complainant’s goodwill associated with the mark. Respondent’s registration and use of the domain names incorporating the LOCKHEED MARTIN mark demonstrates Respondent’s lack of rights and legitimate interests in the names under Policy ¶¶4(c)(i) and (iii).
Respondent registered the disputed domain names using a WHOIS privacy service. This means Respondent has done nothing to publicly associate itself with the disputed domain names. Therefore, Respondent cannot acquire any rights in the domain names merely by registering them.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and uses the disputed domain names in bad faith because Respondent is engaging in a pattern of bad faith registration under Policy ¶4(b)(ii). This Panel would disagree. Complainant has not been prevented from reflecting its mark in a domain name. Respondent’s registration of the three confusingly similar domain names is NOT evidence of bad faith registration under Policy ¶4(b)(ii).
Complainant claims Respondent registered and uses the <lockheedmartincryptocurrency.com> and <lockheedmartincryptocurrencies.com> domain names in bad faith because Respondent is attempting to attract, for commercial gain, Internet users to Respondent’s own website by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the content thereon. Bad faith under Policy ¶4(b)(iv) can be found where a respondent uses a disputed domain name to host click through links and advertisements. See 3M Company v. Nguyen Hoang Son / Bussiness and Marketing, FA1408001575815 (Forum Sept. 18, 2014) (finding that the respondent’s use of the disputed domain name to host sponsored advertisements for Amazon, through which the respondent presumably profited, indicated that the respondent had used the disputed domain name in bad faith pursuant to Policy ¶4(b)(iv)). Complainant provided screenshots of the resolving webpages associated with Respondent’s <lockheedmartincryptocurrency.com> and <lockheedmartincryptocurrencies.com> domain names, which contain links to services such as “Currency ICO” and “Bitcoin Currency.” Respondent’s use of the two domain names indicates it registered and uses the names in bad faith pursuant to Policy ¶4(b)(iv).
Complainant claims Respondent registered and uses the <lockheedmartinblockchain.com> domain name in bad faith because it resolves to an inactive website. Bad faith under Policy ¶4(a)(iii) can be found where a respondent does not make an active use of a domain name. See 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).”). While it is possible to use a domain name in another way (such as an email server or an ecommerce backend, none of which Respondent claims), the most common use is to resolve to an active website. That did not happen in this case. While the alternative uses are harder to prove, Respondent does not claim them. Respondent’s inactive holding of the domain name indicates it registered and uses the name in bad faith under Policy ¶4(a)(iii).
Respondent registered all of the disputed domain names using a WHOIS privacy service. In the commercial context, this raises the rebuttable presumption Respondent registered and uses the domain names in bad faith. Respondent has done nothing to rebut this presumption.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <lockheedmartinblockchain.com>, <lockheedmartincryptocurrency.com>, and <lockheedmartincryptocurrencies.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, April 24, 2018
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