Lockheed Martin Corporation v. wolstenholme, Cynthia
Claim Number: FA1310001522289
Complainant is Lockheed Martin Corporation (“Complainant”), represented by Lynne M. J. Boisineau of McDermott Will & Emery LLP, California, USA. Respondent is wolstenholme, Cynthia (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <lockheedmartin-se.com> and <lockheedmartins.com>, registered with Namesecure Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 1, 2013; the National Arbitration Forum received payment on October 1, 2013.
On October 2, 2013, Namesecure Inc. confirmed by e-mail to the National Arbitration Forum that the <lockheedmartin-se.com> and <lockheedmartins.com> domain names are registered with Namesecure Inc. and that Respondent is the current registrant of the names. Namesecure Inc. has verified that Respondent is bound by the Namesecure 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 October 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 23, 2013 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@lockheedmartin-se.com, postmaster@lockheedmartins.com. Also on October 3, 2013, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 28, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant
1. This Amended Complaint is based on Complainant’s common law rights in, and numerous trademark registrations for, the trademarks LOCKHEED, LOCKHEED MARTIN, and the design mark variants of same (“Complainant’s Marks” or “Marks”). Complainant owns multiple trademark applications and registrations for goods and services in the fields of aerospace, aeronautics and aircraft, electronic systems, information and technology services, integrated systems and solutions, and space systems, as well as a wide variety of goods and services related thereto.
2. Complainant enjoys strong worldwide rights in, and recognition of, its Marks. Complainant, through its predecessor-in-interest, has used the LOCKHEED mark since as early as 1926. The first U.S. trademark registration for the LOCKHEED mark dates back to 1934, and the earliest trademark registrations for the LOCKHEED MARTIN mark date back to 1995. Complainant has developed substantial goodwill in its name, Lockheed Martin Corporation, and its LOCKHEED and LOCKHEED MARTIN trademarks, as well as its official domain names, lockheedmartin.com and lockheed.com.
3. Complainant’s Marks are famous for use in connection with aerospace, aeronautics and aircraft, electronic systems, information and technology services, integrated systems and solutions, and space systems, as well as a wide variety of goods and services related thereto. Complainant is also involved in licensing others to use its Marks on various clothing goods, toys and novelty items, and office and home goods. Through the licensing and sale of such products, the Marks have acquired even further fame and distinctiveness amongst general consumers, reaching well beyond Complainant’s government and defense customers.
4. Complainant’s worldwide fame is demonstrated by its number 59 ranking on the 2013 listing of U.S. Fortune 500 companies. And, an Internet news search for “LOCKHEED MARTIN” found approximately 30,800 results mentioning Complainant. As a result of such widespread, continuous, and prominent use, Complainant’s Marks have acquired significant goodwill, wide public recognition, and international fame as a means by which the public identifies Complainant’s goods and services.
5. Complainant also owns, directly or beneficially, over 380 domain names containing LOCKHEED, LOCKHEED MARTIN, or formative spelling variations of the Marks. Complainant owns many of the domains by virtue of transfers ordered in domain dispute resolution proceedings.
V. Factual and Legal Grounds on Which the Amended Complaint is Made
A. The LockheedMartin-Se.com and LockheedMartins.com Domain Names are Confusingly Similar to Complainant’s Marks and Official Domains [Rule 3(b)(ix)(1)]
6. The Domain Names are confusingly similar to Complainant’s valuable LOCKHEED and LOCKHEED MARTIN trademarks, as well as Complainant’s official domains, lockheedmartin.com and lockheed.com. Complainant registered and has used the domain name, lockheed.com since 1987, and lockheedmartin.com, since 1996. The incorporation of the famous LOCKHEED MARTIN trademark in the Domain Names appears to be an attempt to create a likelihood of confusion with Complainant’s Marks as to the source, sponsorship or affiliation, or endorsement of Respondent’s website. Respondent’s Domain Names are likely to mislead and divert web users trying to locate legitimate information about Complainant’s own website or Complainant’s goods and services.
7. Respondent’s Domain Names, LockheedMartin-Se.com and LockheedMartins.com, incorporate and contain Complainant’s identical trademark, LOCKHEED MARTIN, and then merely add “-se” and “s” to the trademark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).
8. Respondent’s registered Domain Names are virtually identical to and are confusingly similar to Complainant’s LOCKHEED MARTIN mark, and lockheedmartin.com domain, and are likely to mislead, deceive and cause mistake as to the source, sponsorship, affiliation or endorsement of the Domain Names.
9. By merely adding the letters “-se” and “s” to Complainant’s famous LOCKHEED MARTIN mark, Respondent does nothing to prevent a likelihood of confusion with Complainant’s Marks, and Respondent’s Domain Names are likely to misleadingly attract potential customers of Complainant. In addition, Internet users are likely to be confused by the similarities between Complainant and the Domain Names, and are likely to believe that the latter is affiliated with Complainant.
10. The issue of confusing similarity has been decided in the affirmative by all dispute resolution panels in all domain dispute resolution proceedings involving the Marks. In Lockheed Martin Corporation v. Jared Burnup, FA 1508768 (Nat. Arb. Forum August 13, 2013), the Panel stated that “…we conclude from a review of the record that the <lockheedmartinstock.com> domain name is confusingly similar to Complainant’s LOCKHEED MARTIN service mark. The domain name incorporates the mark in its entirety, with the space between the terms of the mark eliminated and the addition only of the generic term “stock,” which describes an aspect of Complainant’s corporate structure, and the generic top-level domain (“gTLD”) “.com”. These alterations of the mark, made in forming the domain name, do not save the domain name from the realm of confusing similarity under the standards of the Policy.” See also Asprey & Garrard Ltd v. Canlan Computing, D2000-1262 (WIPO Nov. 14, 2000) (finding that the domain name <asprey.com> is confusingly similar to the complainant’s ASPREY & GARRARD and MISS ASPREY marks). Here, Respondent’s use of the identical LOCKHEED MARTIN mark, and the mere addition of the letters “-se” and “s” demonstrates the confusing similarity of the Domain Names and Complainant’s Marks.
11. Finally, the addition of the .com gTLD to the Domain Names does not prevent a likelihood of confusion with Complainant’s Marks. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶4(a)(i) analysis).
B. Respondent Has No Rights or Legitimate Interests in the Domain Names [Rule 3(b)(ix)(2)]
12. Complainant is entitled to a presumption of ownership, validity, and the exclusive right to use its Marks in connection with the goods and services named in its registration certificates. 15 U.S.C. §1057(b).
13. Complainant’s Marks are not descriptive words in which the Respondent might have an interest. In fact, an Administrative Panel has found that Complainant’s LOCKHEED mark is an “invented term,” and that LOCKHEED MARTIN “is an arbitrary mark” that is “highly distinctive,” thus increasing “the likelihood of Internet user confusion involving Complainant’s mark and the disputed domain name.” Lockheed Martin Corporation v. Ning Ye, WIPO Case No. D2000-1733 (May 17, 2001) (Ordering the transfer of <lockheedmartin.org> to Lockheed Martin Corporation).
14. Complainant’s Marks have acquired distinctiveness through Complainant’s substantial, continuous, and exclusive use of the Marks in connection with Complainant’s goods and services.
15. Respondent is neither affiliated with, nor has it been licensed or permitted to use Complainant’s Marks or any domain names incorporating the Marks. Under the Policy (paragraph 4(a)(ii)), a statement that the Respondent is not licensed or otherwise authorized to use the disputed domain names constitutes prima facie proof for the Complainant that the Respondent lacks any rights or legitimate interests in the Domain Name. See CareerBuilder, LLC v. Stephen Baker, WIPO Case No. D2005-0251 (May 6, 2005).
16. Furthermore, Respondent is not using the Domain Names in connection with a bona fide offering of goods or services. See Policy, Paragraph 4(c)(i). Rather Respondent has failed to use the LockheedMartins.com domain name and has used the LockheedMartin-se.com domain name to redirect to Complainant’s official website, lockheedmartin.com.
17. Respondent’s parking of the LockheedMartins.com domain name with a “Under Construction” page via NameSecure does not qualify as a bona fide offering of goods and services. See Lockheed Martin Corporation v. Creative Edge Marketing, FA 1213718 (NAF August 12, 2008) (“This site content constitutes inactive holding of the domain name. Such inactive holding is neither a bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii)”).
18. Furthermore, Respondent’s use of LockheedMartin-se.com to redirect to Complainant’s official website in order to confuse consumers constitute passing off, in that Respondent is trying to pass herself off as Complainant. Passing off has been consistently held to demonstrate a lack of legitimate interest under Policy ¶¶4(c)(i) and 4(c)(iii) of the UDRP. See Digg Inc. v. Digg, Inc., FA 1220833 (Nat. Arb. Forum Oct. 9, 2008) (finding no legitimate interest in respondent’s use of the domain name <digg-inc.com> because it re-directed the domain name to a mirror image of complainant’s website, and attempted to pass itself off as complainant; and holding that such “actions do not constitute a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate or noncommercial or fair use under Policy ¶4(c)(iii).”).
19. On information and belief, Respondent is not commonly known by the Domain Names, either as a business, individual, or other organization. See Policy ¶4(c)(ii); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy 4(c)(ii) does not apply).
20. On information and belief, Respondent registered and/or acquired the Domain Names on July 9, 2013, as can be seen from the date that the domain name records were created. Accordingly, Respondent registered the Domain Names more than eighty-seven (87) years after Complainant began using its LOCKHEED mark, and eighteen (18) years after Complainant registered its LOCKHEED MARTIN mark. Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
C. The Domain Names Were Registered and Used in Bad Faith [Rule 3(b)(ix)(3)]
21. Once Complainant became aware of Respondent’s registration of the Domain Names, Complainant’s counsel sent a cease and desist letter to Respondent via e-mail and Federal Express on August 1, 2013.
22. Complainant’s counsel received no response to the cease and desist letter from Respondent by the requested deadline of August 30, 2013. Therefore, on September 4, 2013, Complainant’s counsel sent a second letter to Complainant via e-mail and Federal Express requesting a response by September 16, 2013. However, Complainant’s counsel did not receive any communication from Respondent by the newly requested deadline of September 16 , 2013 either.
23. As previously indicated, Respondent is using the LockheedMartin-Se.com domain name to redirect to Complainant’s official website, lockheedmartin.com, and the LockheedMartins.com domain name has been parked with an “Under Construction” page provided by NameSecure. Accordingly, Respondent is passively holding the Domain Names to cause consumer confusion and is preventing Complainant’s registration of the Domain Names. See Disney Enterprises, Inc. v. JalapenoWare LLC, FA 1302464 (Nat. Arb. Forum February 22, 2010) (ordering transfer of <diseny.com> and <dsiney.com> and finding that “[d]espite the fact that Respondent appears not to have put the disputed domain names to any active use, except to resolve to Complainant’s website, this Panel is satisfied that on the balance of probabilities the domain names were registered and are being used in order to take opportunistic and predatory advantage of Complainant’s reputation and goodwill in the DISNEY trademark. Since the decision in Telstra Corporation Limited v. Nuclear Marshmallows Case No. D2000-0003 (WIPO, February 18, 2000) it has been accepted that in certain circumstances passive holding of a domain name may be taken as evidence of bad faith registration and use.”).
24. Given the well-known status of Complainant’s Marks and Complainant’s ownership of the domains lockheed.com and lockheedmartin.com, there is no reason for Respondent to have registered the Domain Names other than to trade off of the reputation and goodwill of Complainant’s Marks and to pass herself off as Complainant. See Charles Jorden Holding AG v. AAIM, D2000-0403 (WIPO, June 27, 2000) (finding that the domain name in question is “so obviously connected with the Complainant and its products that its very use by someone with no connection with Complainant suggests opportunistic bad faith.”).
25. Respondent’s continued registration and use of the Domain Names constitutes bad faith due to her actual knowledge of Complainant’s trademark rights pursuant to her registration of the LockheedMartin-Se.com and LockheedMartins.com domains and her receipt of Complainant’s cease and desist letters. See Lockheed Martin Corporation v. Derek Bissen FA 1304001497401 (Nat. Arb. Forum June 7, 2013) (“Respondent had actual knowledge of Complainant’s rights in the LOCKHEED mark upon registration of the <lockheedemployeelending.com> domain name. Therefore, Respondent registered the <lockheedemployeelending.com> domain name in bad faith according to Policy ¶4(a)(iii).”). And at minimum, the existence of Complainant’s numerous trademark registrations charged Respondent with constructive knowledge of those registered marks. See 15 U.S.C. §1072; see also Microsoft Corp. v. Tumakov, WIPO Case No. D2002-1039 (December 19, 2002).
26. In addition, Respondent’s registration of the Domain Names violates the Anticybersquatting Consumer Protection Act, 15 U.S.C. §43(d), et seq.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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 <lockheedmartins.com> domain name but has rights regarding the <lockheedmartin-se.com> domain name; and
(3) the <lockheedmartin-se.com> domain name has NOT been registered and used in bad faith; but the <lockheedmartins.com> domain name has been 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 Complainant to prove the following three elements to obtain an order canceling or transferring a domain name:
(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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant claims its marks are famous for use in connection with aerospace, aeronautics and aircraft, electronic systems, information and technology services, integrated systems and solutions, and space systems, as well as a wide variety of goods and services related thereto. Complainant is ranked 59 on the 2013 listing of the U.S. Fortune 500 companies. Complainant registered the following trademarks with the United States Patent & Trademark Office (“USPTO”):
LOCKHEED
Reg. No. 2,627,156 registered October 1, 2002.
LOCKHEED MARTIN
Reg. No. 2,771,857 registered October 7, 2003.
Reg. No. 2,762,004 registered September 9, 2003.
Complainant owns the domain names <lockheedmartin.com> and <lockheed.com>. Providing evidence of a registration with the USPTO is sufficient to establish rights in a given mark under Policy ¶4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). The Panel therefore concludes Complainant has rights in the LOCKHEED and LOCKHEED MARTIN marks under Policy ¶4(a)(i).
Complainant claims Respondent’s <lockheedmartin-se.com> and <lockheedmartins.com> domain names are confusingly similar to Complainant’s LOCKHEED MARTIN mark under Policy ¶4(a)(i). Respondent’s <lockheedmartin-se.com> and <lockheedmartins.com> domain names both feature Complainant’s LOCKHEED MARTIN mark in its entirety with the addition of the gTLD “.com.” Respondent removes the space between the words of the LOCKHEED MARTIN mark in both the <lockheedmartin-se.com> and <lockheedmartins.com> domain names. Adding a gTLD and removing a space in a given mark is not normally sufficient to differentiate a disputed domain name from Complainant’s mark. See Countrywide Fin. Corp. v. Johnson & Sons Sys., FA 1073019 (Nat. Arb. Forum Oct. 24, 2007) (holding that the addition of the generic top-level domain (“gTLD”) “.com” was irrelevant); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶4(a)(i)). Respondent’s <lockheedmartin-se.com> domain name also contains the additional letters “se.” Respondent includes a hyphen between Complainant’s mark and the letters “se” in the <lockheedmartin-se.com> domain name. Respondent’s <lockheedmartins.com> domain name adds the additional letter “s” to Complainant’s LOCKHEED MARTIN trademark. Such modifications to Complainant’s mark do not sufficiently distinguish the <lockheedmartin-se.com> and <lockheedmartins.com> domain names from Complainant’s LOCKHEED MARTIN mark under Policy ¶4(a)(i). See Barnesandnoble.com LLC v. Your One Stop Web Shop, FA 670171 (Nat. Arb. Forum May 3, 2006) (finding that the additions of the letter “s” and generic top-level domains to the disputed <barnesandnobles.info> and <barnesandnobles.biz> domain names failed to avoid the confusing similarity between the domain names and the complainant’s BARNESANDNOBLE.COM mark pursuant to Policy ¶4(a)(i)); see also Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶4(a)(i).”). Respondent’s <lockheedmartin-se.com> and <lockheedmartins.com> domain names are confusingly similar to Complainant’s LOCKHEED MARTIN mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case 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 has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent has no rights or legitimate interests in the <lockheedmartin-se.com> and <lockheedmartins.com> domain names because Respondent is not commonly known by the domain names under Policy ¶4(c)(ii). Complainant’s marks are comprised of invented terms and arbitrary marks that are highly distinctive of Complainant and its business. Respondent is not affiliated with, or licensed by Complainant to use any of Complainant’s marks. Respondent created the disputed domain names on July 9, 2013 and the WHOIS information shows “wolstenholme, Cynthia” is the registrant of the disputed domain names. A respondent was not commonly known by a domain name where there was no indication on the record, including the WHOIS information, suggesting respondent was commonly known by the disputed domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question). Respondent is not commonly known by the disputed domain names under Policy ¶4(c)(ii).
Complainant claims Respondent has no rights or legitimate interests in the <lockheedmartin-se.com> domain name because Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain names under Policy ¶¶4(c)(i) or 4(c)(iii). Respondent uses the <lockheedmartin-se.com> domain name solely to redirect Internet users to Complainant’s official website. Respondent’s use of the <lockheedmartin-se.com> domain name to forward to Complainant’s official web site is a legitimate noncommercial or fair use of the domain name under Policy ¶¶4(c)(iii). Although Complainant claims Respondent’s use of the disputed domain name suggests Respondent is passing itself off as Complainant, this Panel does not accept this argument without any additional facts.
Complainant claims Respondent has no rights or legitimate interests in the <lockheedmartins.com> domain name because Respondent is not making and active use of the disputed domain name under Policy ¶¶4(c)(i) or (iii). Respondent uses the <lockheedmartins.com> domain name to resolve to a website featuring the message “This Site is Under Construction and Coming Soon.” Respondent’s conduct with regard to the <lockheedmartins.com> domain name indicates Respondent is inactively holding the <lockheedmartins.com> domain name. Failing to make an active use of a disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Household Int’l, Inc. v. Cyntom Enters., FA 95784 (Nat. Arb. Forum Nov. 7, 2000) (holding that the respondent’s “vague and unsupported assertion of ‘plans to sell household goods, supplies and appliances over the Internet’” was insufficient to be considered proof of a legitimate business plan). Inactively holding the <lockheedmartins.com> domain name and featuring only an “under construction” message on the resolving website does not convey rights or legitimate interests to Respondent under Policy ¶¶4(c)(i) or 4(c)(iii).
The Panel finds Policy ¶4(a)(ii) satisfied for the <lockheedmartins.com> domain name but not for the <lockheedmartin-se.com> domain name.
Complainant claims Respondent has registered and is using the disputed domain names in bad faith under Policy ¶4(b)(iv). Complainant claims Respondent registered the domain names to trade off the reputation and goodwill of Complainant’s marks and to pass itself off as Complainant. Bad faith use and registration under Policy ¶4(b)(iv) can be found when the domain name was obviously connected with a complainant’s famous mark, and thereby creating a likelihood of confusion benefitting respondent. See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith). However, Respondent’s actions with regard to either the <lockheedmartin-se.com> and <lockheedmartins.com> domain names do not necessarily amount to passing off. Consequently, the Panel will look beyond the circumstances listed in Policy ¶4(b), noting other circumstances may be evidence a domain name was registered and is being used in bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names.”).
Complainant claims Respondent is using the <lockheedmartin-se.com> domain name in bad faith under Policy ¶4(a)(iii). Respondent uses the <lockheedmartin-se.com> domain name solely to redirect to Complainant’s official website. This Panel does not believe such a registration and use amounts to bad faith. There is no proof Respondent acquired the disputed domain name for purposes of reselling it. Respondent did not acquire the disputed domain name to prevent Complainant from acquiring a domain name reflecting Complainant’s mark (Complainant already has such domains). There is no showing Respondent attracts internet users for commercial gain because it passes the users onto Complainant without compensation. In fact, Respondent’s actions seem to constitute a mitzvah. This Panel does not conclude Respondent registered and uses the <lockheedmartin-se.com> domain name in bad faith under Policy ¶4(a)(iii).
Complainant claims Respondent has registered and is using the <lockheedmartins.com> domain name in bad faith under Policy ¶4(a)(iii). Respondent uses the <lockheedmartins.com> domain name to resolve to a website featuring an “under construction” message. Bad faith can be found a respondent inactively holds a disputed domain name. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (holding that, despite the respondent’s decision to passively hold the disputed domain name, “Respondent has made its intention clear and the continuing threat hanging over the Complainant’s head constitutes bad faith use”). The Panel concludes Respondent registered and is using the <lockheedmartins.com> domain name in bad faith under Policy ¶4(a)(iii).
Respondent had actual notice of Complainant's rights in the LOCKHEED MARTIN and LOCKHEED marks prior to registration of the domain names because of Complainant's widespread use of the marks and its trademark registrations with the USPTO. Why would Respondent forward the <lockheedmartin-se.com> domain to Complainant otherwise? But there was no showing Respondent competes with Complainant as required under Policy ¶4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration). Therefore, there was no bad faith registration and use based solely upon Respondent’s actual knowledge of Complainant’s mark.
The Panel finds Policy ¶4(a)(iii) satisfied for the <lockheedmartins.com> domain name but not for the <lockheedmartin-se.com> domain name.
Having not established all three elements required under the ICANN Policy regarding <lockheedmartin-se.com>, the Panel concludes relief shall be DENIED.
Having established all three elements required under the ICANN Policy regarding <lockheedmartins.com>, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <lockheedmartin-se.com> domain name REMAIN WITH Respondent.
Accordingly, it is Ordered the <lockheedmartins.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Monday, November 4, 2013
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