Lockheed Martin Corporation v. Steven Lavine
Claim Number: FA1805001789580
Complainant is Lockheed Martin Corporation (“Complainant”), represented by Naresh Kilaru, of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, USA. Respondent is Steven Lavine (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <skunkworksfoundry.com> and <theskunkworksfoundry.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.
Jeffrey M. Samuels, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 31, 2018; the Forum received payment on May 31, 2018.
On May 31, 2018, NameCheap, Inc. confirmed by e-mail to the Forum that the <skunkworksfoundry.com> and <theskunkworksfoundry.com> domain names are registered with NameCheap, Inc. and that Respondent is the current registrant of the names. 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 June 1, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 16, 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@skunkworksfoundry.com, postmaster@theskunkworksfoundry.com. Also on June 1, 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.
A timely Response was received and determined to be complete on July 13, 2018.
A timely Additional Submission was submitted on behalf of Complainant on July 18, 2018.[i]
A timely Additional Submission was submitted by Respondent on July 23, 2018.[ii]
On July 17, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Jeffrey M. Samuels 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant Lockheed Martin Corporation is the world’s largest defense contractor. Over the years, Complainant’s advanced technology has produced, or been incorporated into, military aircraft, missiles, rockets, satellites and various NASA systems.
Complainant’s Skunk Works division was first conceived in 1943 to build America’s first jet fighter. Complainant owns a number of U.S. trademark registrations for the mark SKUNK WORKS, as used on or in connection with aircraft, cloth patches and other clothing, household goods, plastic bags, and computer hardware peripherals. Complainant also owns a large number of “skunk works” formative domain names.
Complainant alleges that the disputed domain names, skunkworksfoundry.com and theskunkworksfoundry.com, are confusingly similar to its SKUNK WORKS marks. Complainant notes that the disputed domain names incorporate the SKUNK WORKS marks in their entirety, adding only the generic/descriptive term “foundry” and, in one case, the word “the,” as well as the non-distinguishing gTLD “.com.”
Complainant further contends that Respondent has no rights or legitimate interests in the domain names. Complainant points out that the disputed domain names were registered on December 9, 2017, more than 70 years after Complainant acquired rights in the SKUNK WORKS mark, and that the domain names are used to redirect users to pay-per-click (PPC) websites showing links to products and services unrelated to that offered by Complainant. Complainant indicates that Respondent “undoubtedly” received “click-through” commissions from Internet users clicking on the ads displayed on the websites.
According to Complainant, Respondent’s use of the domain names for commercial PPC websites does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names. Moreover, Complainant alleges that Respondent is not, and has never been, commonly known by either of the disputed domain names.
With respect to the issue of “bad faith” registration and use, Complainant contends that Respondent registered and used the domain names to intentionally attract Internet users to its websites for commercial gain by creating a likelihood of confusion with Complainant’s SKUNK WORKS marks as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s websites, within the meaning of paragraph 4(b)(iv) of the Policy. Complainant also argues that Respondent, in registering at least two domain names that are confusingly similar to Complainant’s SKUNK WORKS marks, has engaged in a pattern of bad-faith registration and use, within the meaning of paragraph 4(b)(ii) of the Policy.
Complainant further relies on the fact that Respondent failed to respond to any of Complainant’s demand letters and used a privacy service to register the disputed domain names as evidence of the requisite bad faith.
Finally, Complainant asserts that Respondent “undoubtedly” knew of Complainant’s rights in the SKUNK WORKS marks prior to registering the disputed domain names, given the fame of such marks and the fact that the domain names incorporate the SKUNK WORKS mark in their entirety.
B. Respondent
In his Response, Respondent indicates that he is involved with a tech foundry in Manhattan. A foundry, Respondent explains, is a company that “founds” – starts and spins out – other companies. As of now, Respondent asserts, he has three companies – Transparensee, Enclosure.io, and PointsLocal.
According to Respondent, years ago, a client referred to Respondent as its own private “skunkworks.” Respondent states that he “had never heard the term `skunkworks’ before, and it stuck with us. Thereafter, we started referring to our talented, creative group as a `skunkworks’ that companies could hire to solve difficult problems.”
Respondent asserts that when he first heard the term “skunkworks,” he did not know it was associated with Complainant. Respondent maintains that he had heard the term used generically and thought it was a generic term that refers to a group of people who, in order to achieve unusual results, work on a project in a way that is outside the usual rules. According to Respondent, “[a]s an organization, we became familiar with the generic, descriptive term `skunkworks’ but not with the separate trademark `Skunk Works’. … [B]ecause we are a foundry with the characteristics of a skunkworks, we began to refer to ourselves as a `skunkworks’ or a `skunkworks foundry’ both internally and to clients.”
Respondent explains that, on July 22, 2015, he received a demand letter from Complainant’s counsel regarding the registration of the domain name NYskunkworks.com. Two days later, Respondent sought legal advice regarding the matter. Respondent’s attorney apparently advised Respondent that while the law was on his side and that the term “Skunk Works” was often used as a generic, descriptive term, a trademark fight with Lockheed Martin would be expensive. So advised, Respondent decided to brand himself as the “Visionary Foundry”, although “it has been – and remains – our intent to brand ourselves aggressively on the Web as a `skunkworks’ and a `skunkworks foundry’ as soon as we can afford to litigate this issue. We believe the term “skunkworks’ has become descriptive….”
Respondent contends he has legitimate interests in the disputed domain names. He indicates that by describing himself to clients as a “skunkworks” for years and registering domain names, including NYskunkworks and others, as early as 2015, he has shown demonstrable preparations to use the domain name with a bona fide offering of goods or services. Respondent also argues that he has referred to himself as “skunkworks” since at least 2015 and, thus, falls within paragraph 4(c)(ii) of the Policy. Regarding paragraph 4(c)(iii) of the Policy, Respondent maintains he is making legitimate use of the disputed domain names by using it descriptively, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark in issue.
With respect to the “bad faith” issue, Respondent points out he has never attempted to sell the disputed domain names. “We simply want to use the name. The only thing preventing us from doing so more widely is our concern over the cost of trademark litigation with Lockheed Martin.” Respondent also contends that the fact that “skunkworks” is widely seen as a descriptive term raises the bar necessary to show bad faith.
Respondent maintains that Complainant is a trademark bully and is guilty of reverse domain-name hijacking. To support such contention, Respondent points out that Complainant was strongly cautioned by the panelist in the case Lockheed Martin Corp. v. The Skunkworx Custom Cycle, WIPO Case D2004-0824, that its aggressive enforcement of its SKUNK WORKS marks “could very easily cross” the boundary between permissive aggressive enforcement and abuse of the administrative process. According to Respondent, Complainant knows or should know “that bad faith is unlikely to be involved in the vast majority of [cases involving its SKUNK WORKS marks], due to the descriptive and generic use of the term `skunkworks’.”
C. Additional Submissions
Respondent contends that Complainant minimizes or ignores the extent to which “skunkworks” has become generic. “As stated earlier herein, the fact that there is a clear and widely accepted generic usage of the term `skunkworks’ is highly relevant in establishing that this term has not been used in bad faith.”
With respect to the claim of reverse domain-name hijacking, Respondent asserts that “the realization that Lockheed Martin is overly-aggressive and bullying towards those who publicly use the term `skunkworks’ descriptively has prevented us from using the term more broadly. However, allowing a larger company to bully a smaller one, to intimidate them from using a term they’ve historically used to describe themselves for fear of the cost of potential litigation, and to then, for that reason, allow them to take a domain name that the smaller company has a legitimate interest in, is not the intended purpose of Forum domain-name arbitration.”
The Panel finds that: (1) each of the disputed domain names is confusingly similar to the SKUNK WORKS mark; (2) Respondent has no rights or legitimate interests in either of the disputed domain names; (3) the disputed domain names were not registered in bad faith; (4) Complainant has not engaged in reverse domain name hijacking.
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 finds that each of the disputed domain names is confusingly similar to the SKUNK WORKS mark. Each of the domain names incorporates in full the SKUNK WORKS mark, adding only non-distinctive terms. The addition of generic or descriptive terms and a gTLD to a complainant’s mark does not negate any confusing similarity between a disputed domain name and mark under paragraph 4(a)(i) of the Policy. See, e.g., Cargill, Inc. v. William M. Carpenter, FA 1665608 (Forum April 14, 2016) (“The Domain Name consists of the Complainant’s CARGILL mark, the generic term `global’ and the gTLD.com. Prior panels have found that adding a generic term does little to remove confusing similarity from a disputed mark.”)
The Panel further concludes that Complainant, through its long use and federal registrations for the SKUNK WORKS mark, has rights in such mark.
See Target Brands, Inc. v. jennifer beyer, FA 1738027 (Forum July 31, 2017) ("Complainant has rights in its TARGET service mark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the United States Patent and Trademark Office (“USPTO”).”)
Rights or Legitimate Interests
The Panel concludes that Complainant has sustained its burden of proving that Respondent has no rights or legitimate interests in the disputed domain names. The evidence establishes that the domain names in issue resolve to PPC sites. Such use does not constitute a bona fide offering of goods or services. See, e.g., Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum Aug. 20, 2015). While Respondent asserts he has shown demonstrable preparations to use the domain names with a bona fide offering of goods or services by describing his company as a “skunkworks” for many years, the Panel notes that “clear contemporaneous evidence of bona fide pre-complaint preparations” is necessary to support a claim under paragraph 4(b)(i) of the Policy and concludes that such evidence, as opposed to argument, is lacking in this case. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview”) ¶2.2.
There also is no evidence that Respondent is commonly known by either of the disputed domain names. To the contrary, Respondent indicates that he is currently branding himself as the “Visionary Foundry.”
Asserting that the term “skunk works” is commonly used as a generic term, Respondent argues that its use of the disputed domain names is a legitimate noncommercial or fair use under the Policy. However, as noted above, the disputed domain names are used in connection with PPC sites. While Respondent asserts he derives no revenue from such sites, such use clearly is commercial in nature insofar as such sites do no more than propose a commercial transaction. See Central Hudson Gas & Electric Corp. v. Public Service Commission, 447 U.S. 557 (1980).
Respondent’s use may not be considered “fair” either. This is not a situation where a domain name is being used to describe a particular good or service. Respondent is not using the domain names in a manner consistent with the dictionary definition of “skunk works.” Rather the domain names resolve to PPC sites that include links to such terms as coffee, foundry, home automation, squash and racketball equipment, hard rock & progressive, bodybuilding, cooking fats and oils, Symbian OS, vehicle wheels and tires, and casual games. Thus, it is clear that none of the links found on the sites refers or relates to the descriptive use of the term “skunk works.”
Whether Respondent registered and is using the disputed domain names in bad faith presents the more difficult issue for the Panel to resolve. The evidence establishes that the disputed domain names resolve to PPC links showing links to products or services unrelated to those offered by Complainant and which do not relate to the descriptive use of the term “skunk works.” Further, as determined above, the disputed domain names are confusingly similar to Complainant’s SKUNK WORKS mark. Even if the Panel was to accept Respondent’s assertion that he was not responsible for the content of the websites in issue, such fact does not absolve him of responsibility for their contents. See, e.g., Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315; Owens Corning v. NA, WIPO Case No. D2007-1143; McDonald's Corporation v. ZusCom, WIPO Case No. D2007-1353; Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912. The evidence also supports the determination that Respondent was aware of Complainant and of its SKUNK WORKS mark at the time he registered the disputed domain names.
On the other hand, the evidence supports Respondent’s assertion that the term “skunk works” has acquired a generic/descriptive meaning. The Urban Dictionary, for example, includes a definition for the term “skunkworks.” The term is defined as “a group of people who, in order to achieve unusual results, work on a project in a way that is outside the usual rules. A skunkworks is often a small team that assumes or is given responsibility for developing something in a short time with minimal management constraints.” Respondent asserts that his company is involved with helping clients find innovative solutions to their business problems and is using the term “skunkworks” to refer to “our talented, creative group … that companies could hire to solve difficult problems.” Respondent further maintains that he has refrained from branding his company with the term “skunkworks” because he is afraid of the cost of litigating a trademark dispute with Complainant. Respondent notes he was the subject of a demand letter from Complainant in connection with another domain name and sought legal advice as to the matter.
Upon consideration of the entire file in this case, and bearing in mind that Complainant bears the burden of proof on all the elements under the Policy, the Panel cannot conclude that the disputed domain names were registered in bad faith. Rather, on balance, the file supports a determination that Respondent registered the disputed domain names with the intent to capitalize on the generic/descriptive value of the term “skunkworks” to describe Respondent’s business, as opposed to any intent to trade on the goodwill associated with Complainant’s SKUNK WORKS mark or any intent to attract, for commercial gain, Internet users to the sites in issue by creating a likelihood of confusion. See Lockheed Martin Corp. v. Phoenix Rising, FA 1712701 (Forum March 7, 2017). Given the Panel’s determination on the issue of bad faith registration and use, there does not appear to be any basis to determine that Respondent, by registering the domain names, engaged in a pattern of conduct directed at preventing Complainant from reflecting its mark in a corresponding domain name, under paragraph 4(b)(ii) of the Policy.
While Respondent used a privacy service to register the domain names, such use does not always support a determination of bad faith. There are recognized legitimate uses of privacy and proxy registration services and this does not appear to be a case where the privacy service prevented Complainant from knowing the identity of the actual underlying registrant of a domain name. See WIPO Overview, ¶3.6.
Reverse Domain Name Hijacking
The Panel declines to enter a finding that Complainant engaged in reverse domain name hijacking. While the Panel finds that Complainant failed to satisfy its burden under the Policy, Complainant prevailed on the issues of confusing similarity and rights and legitimate interests and the issue of bad faith registration and use was not so clear cut as to support a determination that Complainant acted with the requisite bad faith. See ECG European City Guide v. Woodell, FA 183897 (Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”). The Panel cannot say that Complainant, in this case, has crossed the boundary between legitimate aggressive enforcement, on the one hand, and harassment and abuse of the administrative process, on the other hand.
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <skunkworksfoundry.com> and <theskunkworksfoundry.com> domain names REMAIN WITH Respondent.
Jeffrey M. Samuels, Panelist
Dated: July 30, 2018
[i] In an email dated July 23, 2018, Complainant’s counsel set forth additional argument regarding the issue of bad faith registration and use. As Complainant’s counsel notes, the Panel is not obligated under the Forum’s Supplemental Rules to consider such submission. See Supplemental Rule 7(e). The Panel chooses not to consider this submission in reaching its decision in this matter.
[ii] On July 26, 2018, Respondent submitted screenshots of the disputed websites and an email that responds to the arguments set forth in Complainant’s July 23rd submission. For the reason set forth above in connection with Complainant’s July 23rd submission, the Panel declines to consider the arguments and evidence submitted by Respondent in its July 26th submission.
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