Leidos, Inc. v. Ramona Mason
Claim Number: FA2108001959358
Complainant is Leidos, Inc. (“Complainant”), represented by Kandis M. Koustenis of Bean, Kinney & Korman P.C., Virginia, USA. Respondent is Ramona Mason (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <leidoss.org>, registered with GoDaddy.com, LLC.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 13, 2021; the Forum received payment on August 13, 2021.
On August 13, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <leidoss.org> 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 17, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 7, 2021 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@leidoss.org. Also on August 17, 2021, 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 10, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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 asserts trademark rights in LEIDOS and submits that the disputed domain name is confusingly similar to its registered trademark. Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Further, Complainant alleges bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a defense, aviation, information technology and biomedical research company doing business under the trademark LEIDOS which is registered with the United States Patent and Trademark Office (“USPTO”) as Reg. No. 4,937,101, from April 12, 2016;
2. there is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or register any domain name incorporating that trademark; and
3. the disputed domain name was registered on July 19, 2021 and has not been used.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights[i]. Complainant provides evidence of its USPTO registration for the trademark LEIDOS and so the Panel finds that Complainant has rights in that trademark.
The domain name takes the trademark to which it merely adds an additional letter “s” and the “.org” gTLD. Neither of those additions carry any distinctive value and the trademark remains the recognizable part of the disputed domain name. The Panel finds the disputed domain name to be confusingly similar to the trademark for the purposes of paragraph 4(a)(i) of the Policy[ii].
Accordingly, Complainant has satisfied the first element of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved, based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(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 non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests[iii].
The publicly available WhoIs information shows the name of the domain name registrant as “Ramona Mason”. Neither that name, nor nothing else, suggests that Respondent might be known by the disputed domain name, nor is there evidence Respondent has trademark rights of its own.
There is nothing to show that the domain name has been used in any way in connection with a bona fide offering of goods and services, or for a legitimate noncommercial or fair use. The Panel finds that Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name.[iv]
The onus shifts to Respondent to establish a legitimate interest and, absent a Response, that prima facie case is not rebutted. The Panel finds that Respondent has no rights or interests and so finds that Complainant has satisfied this second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered and used in bad faith.
Guidance is found in paragraph 4(b) of the Policy which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.
The Panel finds registration and use in bad faith, as separate matters and independently of those four scenarios. The Complaint states that “LEIDOS is an arbitrary term that has no meaning outside of its use as a means to identify Complainant as a source of certain products and services.” That appears to be correct. The Panel referred to Complainant’s website where it is said that:
“After months of scrutiny and discussion all the way up to the board of directors, the company selected Leidos (clipped from the word kaleidoscope), a coined term intended to express its ability to solve difficult problems by applying different perspectives and unlocking new insight.”
The renaming some six years ago was of a company already of gigantic proportions in its industries. Currently, its annual trading figures are in the tens of billions of (US) dollars. This points to a level of notoriety of Complainant at least in the United States where Respondent is located. The Panel concludes that actual knowledge of the trademark by Respondent may reasonably be inferred.[v] There is no obvious meaning of the term “leidoss” which might explain Respondent’s actions and, absent a Response, the Panel has not been presented with any reason for adoption of Complainant’s mark. Taken as a whole, the evidence justifies the Panel’s finding of registration in bad faith.[vi]
This leaves to be considered use in bad faith where there is no use. The Panel refers to the reasoning first laid out in the case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The panelist there posed the question: “what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith?”, concluding that “the question can only be answered in respect of the particular facts of a specific case”, whereafter he paid regard to circumstances showing that (i) the complainant’s trademark was widely known, (ii) the respondent had provided no evidence of any actual or contemplated good faith use by it of the domain name, (iii) the respondent has taken active steps to conceal its identity and had provided false contact details, and (iv) it was not possible to conceive of any plausible use of the domain name by the respondent that would not be illegitimate in the sense of infringing complainant’s rights.
The circumstances here are enough in this Panel’s assessment to draw a finding of passive holding and “use” in bad faith. The Panel has taken account of the fact that the domain name has, in commercial terms, barely been registered (July 2021) but as was noted by the panel in Phat Fashions, LLC v. Kruger, FA 96193 (Forum Dec. 29, 2000), “it makes no sense whatever to wait until [the respondent] actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”.
The Panel finds that Complainant has satisfied the third and final element of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <leidoss.org> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Date: September 13, 2021
[i] See, for example, State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”)
[ii] See, for example, LodgeWorks Partners, L.P. v. Isaac Goldstein / POSTE RESTANTE, FA 1717300 (Forum Apr. 5, 2017) (“The Panel agrees; Respondent’s <archerhotels.com> is confusingly similar to complainant’s ARCHER HOTEL mark.”); AltaVista Company v. Astavista.com, FA 95251 (Forum Aug. 17, 2000) finding altaivsta.com and astavista.com confusingly similar to ALTAVISTA.
[iii] See, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
[iv] See, for example, Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”); Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“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).”).
[v] See, for example, AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”).
[vi] See, for example, Neuberger Berman, Inc., No. D2000-0323 (WIPO Nov. 2, 2000) weighing the uniqueness of the trademark, and the likelihood of Respondent coming up with the domain name independently, in finding bad faith.
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