Lockheed Martin Corporation and Sikorsky Aircraft Corporation v. Super Privacy Service LTD c/o Dynadot
Claim Number: FA1908001859776
Complainant is Lockheed Martin Corporation and Sikorsky Aircraft Corporation (“Complainant”), represented by Naresh Kilaru of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington DC, USA. Respondent is Super Privacy Service LTD c/o Dynadot (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sikorskyalockheedmartin.com>, registered with Dynadot, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 28, 2019; the Forum received payment on August 28, 2019.
On August 28, 2019, Dynadot, LLC confirmed by e-mail to the Forum that the <sikorskyalockheedmartin.com> domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 29, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 18, 2019 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@sikorskyalockheedmartin.com. Also on August 29, 2019, 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 20, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.
PRELIMINARY ISSUE: MULTIPLE COMPLAINANTS
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
The two Complainants in this matter are SIKORSKY and LOCKHEED MARTIN. Complainant SIKORSKY is Complainant LOCKHEED MARTIN’s wholly owned subsidiary, and as such both Complainant’s are licensed to assert and use each other’s trademarks for purposes of the UDRP.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and it will therefore treat them all as a single entity in this proceeding. The proceeding may therefore go forward in its present form. Accordingly, the Complainants will be collectively referred to in this decision as “Complainant.”
A. Complainant
Complainant made the following contentions.
Complainant is the world’s largest defense contractor and a global security and aerospace company that employs approximately 100,000 people worldwide. Complainant has rights in the SIKORSKY A LOCKHEED MARTIN COMPANY mark through its registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 5,074,927, registered Nov 1. 2016). See Compl. Ex. 13. Respondent’s <sikorskyalockheedmartin.com> domain name is confusingly similar to Complainant’s SIKORSKY A LOCKHEED MARTIN COMPANY mark. Respondent incorporates Complainant’s mark and eliminates the spaces and the word “company” in addition to adding the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interest in the <sikorskyalockheedmartin.com> domain name as Respondent is not commonly known by the disputed domain name and Complainant has not authorized Respondent to use the mark. Respondent fails to make a bona fide offering of goods or services or a legitimate non-commercial or fair use. Instead, Respondent’s domain name resolves to a website that offers the domain name for sale.
Respondent registered and used the <sikorskyalockheedmartin.com> domain name in bad faith as Respondent lists the domain name for sale in prices in excess of out-of-pocket costs. Respondent had actual knowledge of Complainant’s rights in the SIKORSKY A LOCKHEED MARTIN COMPANY mark at the time of registration of the mark based on the fame and long-standing use of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
4. The domain name resolves to a website that offers the domain name for sale.
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.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the SIKORSKY A LOCKHEED MARTIN COMPANY mark through its registration with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Here, Complainant has provided the Panel with a copy of its USPTO registration for the SIKORSKY A LOCKHEED MARTIN COMPANY (Reg. No. 5,074,927, registered Nov 1. 2016). See Compl. Ex. 13. Therefore, the Panel finds that Complainant has shown rights in the SIKORSKY A LOCKHEED MARTIN COMPANY per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s SIKORSKY A LOCKHEED MARTIN COMPANY mark. Complainant argues that Respondent’s <sikorskyalockheedmartin.com> domain name is confusingly similar to Complainant’s SIKORSKY A LOCKHEED MARTIN COMPANY mark. The incorporation of a complainant’s mark while eliminating spaces and a single word in addition to adding a gTLD does not distinguish the domain name from the mark per Policy ¶ 4(a)(i). See VNY Model Management, Inc. v. Lisa Katz / Domain Protection LLC, FA 1625115 (Forum Aug. 17, 2015) (finding that Respondent’s <vnymodels.com> domain name is confusingly similar to the VNY MODEL MANAGEMENT mark under Policy ¶ 4(a)(i)). Here, Complainant argues that Respondent incorporates Complainant’s mark and eliminates the spaces and the word “company” in addition to adding the “.com” gTLD. Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that 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 it does have 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s SIKORSKY A LOCKHEED MARTIN COMPANY trademark and to use it in its domain name, omitting the word “COMPANY” that is part of the trademark but does not negate the confusing similarity with the trademark;
(b) Respondent registered the <sikorskyalockheedmartin.com> domain name on May 3, 2019;
(c) The domain name resolves to a website that offers the domain name for sale;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues Respondent lacks rights or legitimate interest in the <sikorskyalockheedmartin.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given authorization to use the principal portion of the SIKORSKY A LOCKHEED MARTIN COMPANY mark or register a domain name using Complainant’s mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name lists the registrant as “Super Privacy Service LTD c/o Dynadot” and there is no other evidence to suggest that Respondent was authorized to use the principal portion of the SIKORSKY A LOCKHEED MARTIN COMPANY mark or was commonly known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent fails to make a bona fide offering of goods or services or a legitimate non-commercial or fair use. Instead, Respondent’s <sikorskyalockheedmartin.com> domain name resolves to a website that offers the domain name for sale. Use of a disputed domain name to offer a domain name generally for sale and make no other active use may be held not to be a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See loanDepot.com, LLC v. sm goo, FA 1786848 (Forum June 12, 2018) (“Respondent has failed to make any active use of the <mellosolar.com> domain name since it was registered, with the exception that the domain name is employed by Respondent to solicit offers to purchase it. Such substantively inactive use is, in the circumstances described in the Complainant, neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy.”). Here, Complainant has provided a screenshot of Respondent’s domain name’s resolving webpage that shows that the domain name is for sale for $990.00 and showing no other active content. See Compl. Ex. 14. The Panel finds in all the circumstances including the matters referred to here that Respondent has failed to make a bona fide offering of goods or services or a legitimate non-commercial or fair use per Policy ¶¶ 4(c)(i) or (iii). In that regard, the Panel agrees with the submission of Complainant that “Given the highly distinctive nature of the SIKORSKY/LOCKHEED MARTIN Marks, as well as their world-wide fame, it is difficult to imagine any good-faith use to which the Domain Name might be put.”
As Complainant is required only to make out a prima facie case, the Panel finds that the foregoing matters go to make out that prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent registered and uses the <sikorskyalockheedmartin.com> domain name in bad faith as Respondent lists the domain name for sale in excess of out-of-pocket costs. Offering a disputed domain name for sale in excess of out-of-pocket costs may, depending on the circumstances, be evidence of bad faith per Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). Here, Complainant has provided a screenshot of Respondent’s domain name’s resolving webpage that shows that the domain name is for sale for $990.00. See Compl. Ex. 14. Therefore, the Panel finds, taking into account all the circumstances, that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(i).
Secondly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the SIKORSKY A LOCKHEED MARTIN COMPANY mark at the time of registration through the fame and long-standing use of the mark. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, actual knowledge of Complainant’s rights in the mark prior to registering the disputed domain name is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Use of a domain name that contains a famous and well-known mark or the principal portion of such a mark, may be evidence of actual knowledge of a complainant’s rights in the mark. See Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous). Here, Complainant has provided the Panel with its social media presence, news releases covering the company, Complainant’s own fact sheet, and historical screenshots from Complainant’s own website in demonstration of the fame of the mark. See Compl. Ex. 3, 4, 5, 6, 7, 9, 11, and 12. Therefore, the Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in the mark prior to registration which constitutes bad faith per Policy ¶ 4(a)(iii).
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the principal portion of the SIKORSKY A LOCKHEED MARTIN COMPANY mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sikorskyalockheedmartin.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 21, 2019
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