Leidos, Inc. v. Matt Johnston / Midlab
Claim Number: FA2306002050010
Complainant is Leidos, Inc. (“Complainant”), represented by Kandis M. Koustenis of Bean Kinney & Korman, PC, Virginia, USA. Respondent is Matt Johnston / Midlab (“Respondent”), Tennessee, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <leidosgpt.com> (the “disputed domain name”), registered with Google LLC (the “Registrar”).
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Lynda M. Braun as Panelist.
Complainant submitted a Complaint to Forum electronically on June 21, 2023; Forum received payment on June 21, 2023.
On June 22, 2023, the Registrar confirmed by e-mail to Forum that the <leidosgpt.com> disputed domain name is registered with Google LLC and that Respondent is the current registrant of the name. The Registrar has verified that Respondent is bound by the Google 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 June 26, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 17, 2023 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@leidosgpt.com. Also on June 26, 2023, 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 letter Response was received on July 7, 2023.
On July 13, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Lynda M. Braun as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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 disputed domain name be transferred from Respondent to Complainant.
Preliminary Issue: Agreement to Transfer
In its Response letter, Respondent agreed to transfer the disputed domain name to Complainant. However, at the commencement of this proceeding, the Registrar placed a hold on Respondent’s account and thus, Respondent could not transfer the disputed domain name during the pendency of this proceeding.
In addition, Complainant has not agreed in its Complaint to the transfer of the disputed domain name without a decision on the merits by the Panel and the Panel finds that such approach is a way for a cybersquatter such as Respondent to avoid adverse findings against them. See Graebel Van Lines, Inc. v. Tex. Int’l Prop. Assocs., FA 1195954 (Forum July 17, 2008).
Thus, the Panel concludes that it will decide the case by conducting an analysis of the elements of the Policy as set forth below.
A. Complainant
Complainant is an American defense, aviation, information technology, and biomedical research company headquartered in Virginia, United States, that provides scientific, engineering, systems integration, and technical services.
Complainant registered several LEIDOS trademarks with the United States Patent and Trademark Office (“USPTO”) (e.g., United States Registration No. 4,937,101, registered on April 12, 2016, in international classes 37, 38, 39 and 41) (hereinafter collectively referred to as the “LEIDOS Mark”.
Complainant also owns the domain name <leidos.com>, which resolves to its official website at “www.leidos.com”.
Complainant claims that Respondent’s disputed domain name is confusingly similar to Complainant’s LEIDOS Mark as it wholly incorporates the LEIDOS Mark, followed by the letters “gpt”, an abbreviation for “generative pre-trained transformer”[i], and followed by the “.com” generic Top-Level-Domain (“gTLD”).
Complainant also contends that Respondent has no rights or legitimate interests in the disputed domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the LEIDOS Mark. Finally, Complainant contends that Respondent registered and is using the disputed domain name in bad faith because Respondent uses the disputed domain name passively.
B. Respondent
Respondent filed a letter Response to Complainant’s UDRP Complaint in the above referenced case, stating that it did not wish to dispute the allegations in the Complaint and agreed to transfer the disputed domain name to Complainant.
The Panel finds that Complainant has registered trademark rights in the LEIDOS Mark as described above. The Panel also finds that the disputed domain name is confusingly similar to Complainant’s LEIDOS Mark, that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that the disputed domain name was registered and is 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 that Complainant must prove each of the following three elements to obtain an order that a disputed domain name should be cancelled or transferred:
(1) the disputed 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 disputed domain name; and
(3) the disputed domain name has been registered and is being used in bad faith.
The Panel finds that Complainant has rights in the LEIDOS Mark through its registration with the USPTO (e.g., United States Registration No. 4,937,101, registered on April 12, 2016, in international classes 37, 38, 39 and 41). Registration of a trademark with the USPTO, is sufficient to establish rights in a mark under Policy paragraph 4(a)(i). See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish complainant’s rights in the HOME DEPOT mark).
The Panel also finds that Respondent’s disputed domain name is confusingly similar to the LEIDOS Mark under Policy paragraph 4(a)(i), as the disputed domain name incorporates the trademark in its entirety, followed by the abbreviation “gpt” (abbreviation for “generative pre-trained transformer”), and followed by the “.com” gTLD.
The addition of an abbreviation and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy paragraph 4(a)(i). See Dell Inc. v. pushpender chauhan, FA 1784548 (Forum June 11, 2018) (“Respondent merely adds the term ‘supports’ and a ‘.org’ gTLD to the DELL mark. Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy paragraph 4(a)(i).”).
Therefore, the Panel concludes that the disputed domain name is confusingly similar to Complainant’s LEIDOS Mark under Policy paragraph 4(a)(i).
Accordingly, the Panel finds that Policy paragraph 4(a)(i) has been established by Complainant.
The Panel finds that Respondent holds no rights or legitimate interests in the disputed domain name. Under the Policy, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Once such a prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the disputed domain name. See 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”).
Moreover, the Panel finds that Respondent is not commonly known by the disputed domain name or any name similar to it, nor has Complainant authorized, licensed or otherwise permitted Respondent to use its LEIDOS Mark in the disputed domain name. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. In addition, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use because Respondent uses the disputed domain name passively to resolve to a landing page with no substantive content that states “This site can’t be reached.” Such passive use permits the inference that Respondent lacks rights or legitimate interests in the disputed domain name. See Michelin North America, Inc. v. Energie Media Group, FA451882 (Forum Aug. 7, 2012) (inactive use or passive holding of a domain name permits the inference that respondent lacks rights or legitimate interests in the disputed domain name).
Further, Respondent registered the disputed domain name on April 27, 2023, long after Complainant registered the LEIDOS Mark with the USPTO and long after Complainant began using the LEIDOS Mark. Thus, it is likely that Respondent registered the disputed domain name with the intent to copy Complainant’s unique LEIDOS Mark.
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) has been established by Complainant.
The Panel finds that, based on the record, the Complainant has demonstrated the existence of Respondent’s bad faith registration and use pursuant to paragraph 4(b) of the Policy as described below.
First, the use of a disputed domain name to intentionally attempt to attract Internet users to a respondent’s website or online location by creating a likelihood of confusion or a false association with a complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or online location demonstrates registration and use in bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006).
Second, the unique nature of the LEIDOS Mark, which was registered and used by Complainant many years before Respondent’s registration of the disputed domain name, renders it wholly implausible that Respondent created the disputed domain name independently. Moreover, where a disputed domain name is so obviously connected with a well-known name, product or service, its use by someone with no connection to the name, product or service indicates opportunistic bad faith. Therefore, the Panel concludes that Respondent had actual knowledge of Complainant’s rights in the LEIDOS Mark, constituting bad faith under Policy paragraph 4(a)(iii). Prior knowledge of a complainant’s trademark before registering a domain name is sufficient to find bad faith under Policy paragraph 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (finding actual knowledge due to the domain name chosen and the use made of it).
Finally, the Panel concludes that Respondent registered and is using the disputed domain name in bad faith because the disputed domain name resolves to an inactive landing page with no substantive content. Failure to make active use of a disputed domain name is evidence of bad faith under Policy paragraph 4(a)(iii). See Marsh Supermarkets Company, LLC, formerly known as Marsh Supermarkets, Inc. v. Choi Sungyeon, FA1312001532854 (Forum Feb. 25, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <marshsupermarkets.com> domain name in bad faith pursuant to Policy ¶ 4(a)(iii) because Respondent has failed to make an active use of the disputed domain name.”).
Accordingly, the Panel finds that Policy ¶ 4(a)(iii) has been established by 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 <leidosgpt.com> disputed domain name be TRANSFERRED from Respondent to Complainant.
Lynda M. Braun, Panelist
Dated: July 17, 2023
[i] A generative pre-trained transformer is a model and prominent framework for generative artificial intelligence.
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