DECISION

 

Leidos, Inc. v. Fatihia Bakari

Claim Number: FA2504002150776

 

PARTIES

Complainant is Leidos, Inc. ("Complainant"), represented by Kandis M. Koustenis of Bean Kinney & Korman, PC, Virginia, USA. Respondent is Fatihia Bakari ("Respondent"), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <leidos.shop>, registered with NameCheap, Inc.

 

PANEL

The undersigned certifies that she has acted independently and impartially and to the best of her knowledge, she has no known conflict in serving as Panelist in this proceeding.

 

 Carol Stoner, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on April 15, 2025; Forum received payment on April 15, 2025.

 

On April 16, 2025, NameCheap, Inc. confirmed by e-mail to Forum that the <leidos.shop> 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's 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 April 18, 2025, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 8, 2025 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@leidos.shop. Also on April 18, 2025, 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 April 21, 2025.

 

Complainant submitted three Additional Submissions to Forum on April 29, 2025. These Additional Submissions were in compliance with Supplemental Rule 7.

 

On April 22, 2025, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Carol Stoner, Esq., 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  (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.

 

RELIEF SOUGHT

Complainant requests that the domain name <leidos.shop>, be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUES: CONSENT TO TRANSFER

Respondent has put forth mixed messages re: her consent to transfer.

        

On April 18, 2025, the date on which Respondent received Complaint, Respondent emailed Forum, and copied Complainant, with the following message:  

 

"I purchase domains in the aftermarket and resell on Afternic. I will therefore, delete it on this Afternic website, where I floated it immediately."

 

On April 19, 2025, Complainant emailed Respondent, saying that Respondent cannot delete domain name, without first requesting a transfer authorization order and removing any locks on the transfer. Complainant also stated to Respondent, that this proceeding would continue until the transfer was completed.  

 

On April 21, 2025, Respondent stated four times in her Response, that she was ready and willing to transfer the disputed domain name to Complainant. Yet, in the Remedy Section of her Response, She states that, "The Respondent respectfully requests that the Administrative Panel denies the remedy requested by the Complainant."

 

On April 29, 2025, Complainant emailed Forum that Respondent (Ms. Bakari) has not responded to her correspondence re: implementing a transfer with her.

 

Panel synthesizes Respondent's messages regarding her purported transfer of the disputed domain name as a varying declaration. While she repeatedly expressed a willingness to transfer, both via email and in her Response, she did not act with the same degree of willingness regarding the implementation of the transfer, despite specific instructions by the Complainant.

 

Furthermore, Respondent's Response contradicts her consent by her clear request in Remedy Section of Response, in which she invokes the Panel to deny the remedy requested by Complainant.

 

As a result, Panel is not solely charged with a clear duty to actuate an identical request to transfer, by both Complainant and Respondent. Furthermore, Respondent's consent to transfer has the appearance of a cybersquatter who seeks to duck an adverse finding against her.  Therefore, Panel will proceed to analyze the case, under the elements of the UDRP. See State Farm Mutual Automobile Insurance Company v. David Espinoza, FA 1958096 (Forum Aug. 31, 2021) ("Respondent claims that it attempted to "unlock" the disputed domain names so that Complainant could "claim" them. The Panel does not consider that a consent to transfer the disputed domain names to Complainant. The Panel also notes that the "consent-to-transfer" approach is one way for cybersquatters to avoid adverse findings against them. The Panel will decide this case on the merits.").

 

PARTIES' CONTENTIONS

A. Complainant

Complainant alleges in its Complaint, that the United States registrations for the LEIDOS Mark are valid and subsisting. Complainant has offered goods and services under the LEIDOS Mark since September 27, 2013, and now offers such services and related goods and services under the LEIDOS Mark across a variety of industry sectors and throughout the world. Copies of the United States Patent and Trademark Office (USPTO) records and Certificate of Registrations for the above registrations are attached as Exhibit 3.

 

The LEIDOS mark has received federal trademark registrations for: computer programs and software; aircraft repair and maintenance; communication services; ground and air traffic control; educational services; management consulting; computer education training and research services.

 

Complainant also owns the <leidos.com> domain name, among other authorized domain names incorporating the LEIDOS Mark. Complainant says that it uses its authorized domain names to point to websites providing information externally to Complainant's customers and internally to Complainant's employees.

 

Complainant states in its Complaint, that it has prominently and extensively used, promoted, and advertised the Mark and domain names incorporating the Mark, including <leidos.com>, for well over ten years. By virtue of these efforts, the LEIDOS Mark and domain names have become well recognized by consumers as exclusively designating Complainant as the source of the goods and services offered under the LEIDOS Mark and domain names. Accordingly, the LEIDOS Mark and domain names are extremely valuable to Complainant.

 

Complainant alleges that the Domain Name is a complete and exact reproduction of Complainant's LEIDOS Mark, and merely adds the ".shop" generic top-level domain ("gTLD"). The mere addition of ".shop" as a gTLD does not serve to distinguish the Domain Name from Complainant's Mark and domain names.

 

Complainant alleges that Respondent registered the Domain Name on March 1, 2025, long after Complainant registered the LEIDOS Mark with the USPTO and long after Complainant began using the LEIDOS Mark. LEIDOS is an arbitrary term with no meaning, other than to identify Complainant as the exclusive source of certain products and services.

 

Complainant contends that it has used the LEIDOS Mark, which is well known to consumers, in association with its goods and services for more than ten years. Therefore, it is most likely that Respondent chose this Domain Name with the intention of imitating Complainant's well-known LEIDOS Mark.

 

Complainant alleges that Respondent is not commonly known by this domain name; Respondent never sought nor received permission to use the LEIDOS mark; and Respondent has not used the domain name in connection with a bona fide offering of goods or services.

 

Complainant alleges that it is appropriate to infer Respondent's prior knowledge of Complainant and its rights in the LEIDOS Mark because Respondent registered the Domain Name more than a decade after the LEIDOS Mark was registered with the USPTO; and the LEIDOS Mark is an arbitrary term used solely to identify Complainant as the exclusive source of certain products and services.

 

Complainant lastly alleges that passive holding of a domain name is evidence that Respondent is acting in bad faith.

 

B. Respondent

In her April 21, 2025 Response, Respondent makes the following contentions:

"I am willing to engage NAMECHEAP to delete the domain from my portfolio since I have not used it anywhere. I bought purposely to resell."

 

"I am ready to transfer the domain without any conditions."

 

"I am ready to transfer the domain through NAMECHEAP to the claimants."

 

"I am ready to transfer the domain."

 

And further, Respondent stated in Remedy Section of her Response that,

 

"The Respondent respectfully requests that the Administrative Panel denies the remedy requested by the Complainant."

 

C. Additional Submissions

Complainant submitted three Additional Submissions to Forum. These Additional Submissions, (originally in the form of emails), contained the following content:

 

On April 19, 2025, Complainant emailed Respondent, saying that Respondent cannot delete domain name, without first requesting a transfer authorization order and removing any locks on the transfer. Complainant also stated to Respondent, that this proceeding would continue until the transfer was completed.

 

On April 29, 2025, Complainant further stated to Respondent, that if Respondent provided to Complainant the authorization code for transfer and removed all locks, that Complaint would be withdrawn. However, Complaint would proceed, until the transfer was complete.

 

On April 29, 2025, Complainant emailed Forum and copied the Respondent, stating as follows:

 

"Ms. Bakari, (Respondent) has not responded to my correspondence re: implementing a transfer with her."

 

FINDINGS

(1)       the domain name <leidos.shop>, 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.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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.

 

Identical and/or Confusingly Similar

Complainant's Exhibits constitute credible evidence that Complainant owns numerous trademarks and servicemarks, which are registered on both the national and international level.

 

The LEIDOS trademarks referenced in this Complaint are registered with the United States Patent and Trademark Office (USPTO) in 2017 and 2018. Panel rules that these incontestable registrations for LEIDOS marks on the  Principle Register constitute conclusive evidence of the validity of the LEIDIOS marks and Complainant's exclusive rights to use the LEIDOS mark throughout the United States. 15 U.S.C. §1115(b).

 

This Panel rules that registration with the United States Patent and Trademark Office ("USPTO") suffices to establish rights in a mark under Policy ¶ 4(a)(i). See DIRECTTV, LLC V. The Pearline Group, FA 12818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTTV demonstrates its rights in such mark for the purposes of ¶ 4(a)(i)"). Therefore, this Panel concludes that Complainant has rights in the above cited LEIDO marks under Policy ¶ 4(a)(i).

 

The addition of a generic top-level domain (such as, .net., .org or .shop, etc.) fails to sufficiently distinguish a domain name from a mark per Policy ¶ 4(a)(i). Respondent's addition of ".shop" to Leidos does not negate that Respondent's domain name is identical to Complainant's LEIDOS marks. Therefore, this Panel rules that the <leidos.shop> domain name is confusingly similar to Complainant's marks. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA0153545 (Forum May 27, 2003) ("the addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar because top level domains are a required element of every domain name").

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1Corp., FA 7680200 (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 and 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").

 

Respondent's only evidence that Respondent has any rights or a legitimate interest in the domain name of <leidos.shop> is her self-reporting that she bought the domain name for purpose of resale. Further, she relayed a mixed message in her Response regarding her willingness to transfer the domain name. That is, Respondent stated in her Response of April 21, 2025 that, "I am willing to engage NAMECHEAP to delete the domain from my portfolio since I have not used it anywhere. I bought purposely to resell."  Yet in the Remedy portion of her Response, she asks the Panel to deny the request of Complainant to transfer the mark. See Land O' Lakes Inc. v. Offbeat Media Inc., FA 96451 (Forum Feb. 23, 2001) ("Respondent has shown a willingness to transfer the domain name to the Complainant, which implies that the Respondent has no rights or legitimate interests in the domain name.").

 

Based on the currently available WHOIS information, Respondent is not commonly known by the Domain Name, <leidos.shop>.  And Respondent only registered the Domain Name on March 1, 2025, per Exhibit 2, long after Complainant registered the LEIDOS Marks with the USPTO in 2017 and 2018, and long after Complainant began using the LEIDOS Mark in 2013.

 

Complainant has never licensed and/or otherwise authorized Respondent to use the LEIDOS marks. Further, Respondent has never sought or received permission to use the LEIDOS Mark. See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the domain name and never sought permission to use  Complainant's mark.)

 

Respondent is not using the Domain Name in connection with a bona fide offering of goods or services. Rather, the Domain Name is "parked" with GoDaddy.com and states "This domain is registered, but may still be available" providing internet users the option to click on a hyperlink button titled "Get this domain." See Complainant's Exhibit 4. Such use is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the Domain Name under UDRP Policy ¶¶ 4(c)(i) and 4(c)(iii). See Leidos, Inc. v. Kimberly Trapani / kimbertrap, FA2503002145251(Forum Apr. 9, 2025) (holding that respondent's inactive use of a "parked" website at confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use  under Policy ¶ 4(c)(iii)).

 

Respondent is ultimately responsible for the website content, even on a supposedly parked site, as the Respondent is the owner of the disputed domain name. See Gold Medal Travel Grp. plc v. Kruzicevic, D2007-1902 (WIPO Mar. 12, 2008) (where disputed domain name is parked "the Registrant is responsible for the content of the material appearing on the webpage associated with the domain name in dispute.)

 

Panel rules that the totality of Complainant's evidence, as described above, constitutes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name of <leidos.shop>.  Panel therefore concludes, that Respondent has not shouldered its shifted burden to show that Respondent, does indeed, have rights or legitimate interests, so as to satisfy the tenets of Policy ¶ 4(c)(i).

 

Registration and Use in Bad Faith

LEIDOS is a "fanciful"  or "made-up" word, with no meaning other than to identify Complainant as the exclusive source of certain products and services.

 

So it is highly unlikely that Respondent independently composed this wordmark. It is more likely that Respondent chose this mark because it has been well-known to consumers for over ten years. Therefore, Panel may justly infer that Respondent chose the <leidos.shop> domain name because of its well-known status, with the intention of imitating Complainant's well-known LEIDOS Mark, which is an indication of bad faith registration, as set forth in Policy ¶ 4(b). 

 

Respondent, in her Response, does not question or counter the specific allegations of Complainant. She merely repetitively (four times) offers to transfer the disputed domain name to Complainant. And then contradicts her repeated offers to transfer, in the Remedy portion of her Response. Panel views this near-willingness to transfer rights as a strong indication of bad faith registration and use. See Global Media Group, Ltd. v. Kruzicevic, FA 96558 (Forum Mar. 7, 2001) ("Respondent's failure to respond to Complainant's specific allegations and his willingness to transfer the domain name in compliance with Complainant's request for relief, supports the contention that the domain name was filed and used in bad faith.").

 

Respondent states in her Response that, "I bought purposely to resell." This purpose is evidenced in Complainant's Exhibit 4, which is a screenshot of Respondent's website showing a button to "get this domain." As a result, this Panel concludes that Respondent registered and used the disputed domain in bad faith under Policy ¶ 4(b)(i)."). See Boston Trust Walden Company v. Thomas Farese / Boston Investments, FA 1979428 (Forum Mar. 16, 2022) ("The Panel recalls Complainant's screenshot of the disputed domain name's resolving website, which features a prompt to "get this domain"…. Therefore, the Panel agrees and finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(i).)"

 

This Panel has therefore concluded, that Respondent has both registered and used the LEIDOS marks in bad faith, under Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <leidos.shop> domain name be TRANSFERRED from Respondent to Complainant. 

 

 

 

 

Carol Stoner, Esq., Panelist

Dated: May 6, 2025