Lockheed Martin Corporation v. toyosei maruyama
Claim Number: FA1505001620489
Complainant is Lockheed Martin Corporation (“Complainant”), represented by Lynne M. J. Boisineau of McDermott Will & Emery LLP, California, USA. Respondent is toyosei maruyama (“Respondent”), Japan.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <skunkwork.asia>, <skunkwork.click>, <skunkworks.click>, <skunkwork.club>, <skunkwork.link>, <skunkworks.link>, <skunkwork.xyz>, <skunkworks.xyz>, <skunkwork.mobi>, <skunkwork.red>, and <skunkworks.red>, registered with Gmo Internet, Inc. D/B/A Onamae.Com, Gmo Internet, Inc. D/B/A Onamae.Com (R110-Lrms).
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 Forum electronically on May 20, 2015; the Forum received payment on May 20, 2015. The Complaint was received in both Japanese and English.
On June 1, 2015, Gmo Internet, Inc. D/B/A Onamae.Com, Gmo Internet, Inc. D/B/A Onamae.Com (R110-Lrms) confirmed by e-mail to the Forum that the <skunkwork.asia>, <skunkwork.click>, <skunkworks.click>, <skunkwork.club>, <skunkwork.link>, <skunkworks.link>, <skunkwork.xyz>, <skunkworks.xyz>, <skunkwork.mobi>, <skunkwork.red>, <skunkworks.red> domain names are registered with Gmo Internet, Inc. D/B/A Onamae.Com, Gmo Internet, Inc. D/B/A Onamae.Com (R110-Lrms) and that Respondent is the current registrant of the names. Gmo Internet, Inc. D/B/A Onamae.Com, Gmo Internet, Inc. D/B/A Onamae.Com (R110-Lrms) has verified that Respondent is bound by the Gmo Internet, Inc. D/B/A Onamae.Com, Gmo Internet, Inc. D/B/A Onamae.Com (R110-Lrms) 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 4, 2015, the Forum served the Japanese Complaint and all Annexes, including a Japanese language Written Notice of the Complaint, setting a deadline of June 24, 2015 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@skunkwork.asia, postmaster@skunkwork.click, postmaster@skunkworks.click, postmaster@skunkwork.club, postmaster@skunkwork.link, postmaster@skunkworks.link, postmaster@skunkwork.xyz, postmaster@skunkworks.xyz, postmaster@skunkwork.mobi, postmaster@skunkwork.red, postmaster@skunkworks.red. Also on June 4, 2015, the Japanese language 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 June 30, 2105, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Policy ¶4(a)(i)
a. Complainant has rights in the SKUNK WORKS mark through its registration with the Japan Patent Office (“JPO”) (Reg. No. 4,438,310, registered on December 8, 2000).
b. Respondent’s <skunkworks.click>, <skunkworks.link>, <skunkworks.xyz> and <skunkworks.red> domain names are identical to Complainant’s SKUNK WORKS mark because they are differentiated by only the removal of the space between the words of the mark and the addition of various top-level domains (“TLDs”). Respondent’s <skunkwork.asia>, <skunkwork.click>, <skunkwork.club>, <skunkwork.link>, <skunkwork.xyz>, <skunkwork.mobi> and <skunkwork.red> domain names are confusingly similar to Complainant’s SKUNK WORKS mark because they are differentiated by only the removal of the space between the words of the mark and the letter “s,” and the addition of various TLDs.
2. Policy ¶4(a)(ii)
a. Respondent is not commonly known by the disputed domain names as the WHOIS information lists “toyosei maruyama” as Registrant. Respondent has not submitted any further evidence to indicate being commonly known by the disputed domain name. Moreover, Respondent is not authorized to use Complainant’s SKUNK WORKS mark.
b. Respondent fails to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent’s use of the disputed domain names constitutes an inactive holding.
3. Policy ¶4(a)(iii)
a. Respondent has demonstrated a pattern of bad faith registration.
b. Respondent registered the domain names with constructive or actual knowledge in Complainant’s rights in the SKUNK WORKS mark.
c. Respondent’s use of the disputed domain names is an inactive holding done in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant claims the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant claims all of the disputed domain names have “Toyosei Maruyama” listed as registrant, except for <skunkwork.mobi>, <skunkwork.red> and <skunkworks.red>. However, these domain names were registered on the same date at the other eight domain names, they are parked by the same registrar and they display the same parked pages. Complainant contends “Toyosei Maruyama” is the underlying registrant of these domain names, as well. Once the WHOIS privacy settings were dropped, the registrants for even these domain names appear to be the same person.
This Panel is convinced and finds Respondent is a single person under the Rules.
Pursuant to Rule 11(a), the Panel determines the language requirement has been satisfied through the Japanese language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
(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 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 must prove the following three elements to obtain an order cancelling 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 uses the SKUNK WORKS mark in conjunction with providing goods and services related to manufacture, design, research, and consulting and advisory services with respect to commercial and military aircraft equipment. Complainant has rights in the SKUNK WORKS mark through its registration with the Japan Patent Office (“JPO”) (Reg. No. 4,438,310, registered on December 8, 2000), inter alia. Registration with a government trademark office (such as the JPO) suffices to demonstrate rights in a mark under Policy ¶4(a)(i). See Moroccanoil, Inc. v. Alter, FA 1355353 (Nat. Arb. Forum Dec. 7, 2010) (finding that a trademark registration with the JPO, among others, was sufficient for complainant to establish rights in its mark under Policy ¶4(a)(i)). This Panel finds Complainant has rights in the SKUNK WORKS mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <skunkworks.click>, <skunkworks.link>, <skunkworks.xyz> and <skunkworks.red> domain names are identical to Complainant’s SKUNK WORKS mark because they are differentiated by only the removal of the space between the words of the mark and the addition of various TLDs. Complainant claims Respondent’s <skunkwork.asia>, <skunkwork.click>, <skunkwork.club>, <skunkwork.link>, <skunkwork.xyz>, <skunkwork.mobi> and <skunkwork.red> domain names are confusingly similar to Complainant’s SKUNK WORKS mark because they are differentiated by only the removal of the space between the words of the mark, the removal of the letter “s,” and the addition of various TLDs. Altering a mark by removing spaces (which are prohibited characters in a domain name) and adding a TLD (which are required in a domain name) creates a confusingly similar domain name. See Hannover Ruckversicherungs-AG v. Ryu, FA 102724 (Nat. Arb. Forum Jan. 7, 2001) (finding <hannoverre.com> to be identical to HANNOVER RE, “as spaces are impermissible in domain names and a generic top-level domain such as ‘.com’ or ‘.net’ is required in domain names”). Simply removing the letter “s” from a mark in the creation of a domain name still creates a confusingly similar domain name. See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it). This Panel finds Respondent’s <skunkworks.click>, <skunkworks.link>, <skunkworks.xyz>, and <skunkworks.red> domain names are identical to Complainant’s SKUNK WORKS mark and Respondent’s <skunkwork.asia>, <skunkwork.click>, <skunkwork.club>, <skunkwork.link>, <skunkwork.xyz>, <skunkwork.mobi>, and <skunkwork.red> domain names are confusingly similar to Complainant’s SKUNK WORKS 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 is not commonly known as the disputed domain names. The WHOIS information lists “toyosei maruyama” as Registrant. There is no obvious connection between Respondent’s name and the domain names. Respondent has failed to provide any evidence to indicate it is commonly known by the domain names. Respondent is not authorized to use Complainant’s mark and Respondent does not dispute this. Under such circumstances, it seems clear Respondent is not commonly known by any of the domain names under Policy ¶4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). This Panel finds Respondent is not commonly known by the disputed domain names under Policy ¶4(c)(ii).
Complainant claims Respondent doesn’t use the disputed domain names to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use because each resolving website contains an inactive page. Failing to use a disputed domain name is sufficient to show there is no bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(i) and Policy ¶4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)). Respondent failed to use the disputed domain names to provide a bona fide offering of goods or services or legitimate and noncommercial fair use pursuant to Policy ¶4(c)(i) and Policy ¶4(c)(iii).
Respondent used a privacy service to register <skunkwork.mobi>, <skunkwork.red> and <skunkworks.red>. This means Respondent cannot acquire any rights by registering these domain names because Respondent did not publicly associate itself with the domain names.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has demonstrated a pattern of bad faith registrations because of Respondent’s registration of these eleven domain names. This Panel disagrees because Complainant has not been prevented from reflecting its mark in a domain name under Policy ¶4(b)(ii).
Complainant claims Respondent registered the disputed domain names with actual knowledge of Complainant’s rights in the SKUNK WORKS mark. There is no doubt the SKUNK WORKS mark is world famous, even if only to fans of the U-2, SR-71 and YF-12. Complainant has developed a reputation and goodwill associated with the SKUNK WORKS mark due its long history of use. Respondent was informed of Complainant’s rights in the mark at the time Respondent registered the domain names with the TLDs “.click,” “.club,” “.link,” “.red,” and “.xyz” because the SKUNK WORKS mark was registered with the Trademark Clearinghouse. This Panel is convinced Respondent actually knew about Complainant’s mark before registering the domain names. See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). Respondent registered the disputed domain names in bad faith under Policy ¶4(a)(iii).
Complainant claims Respondent’s current use of the disputed domain names constitutes an inactive holding, which shows bad faith. Respondent has never made an active use of the disputed domain names because each resolving website is parking page, containing nothing except information about the registration service used. Generally speaking, failing to make an active use of a domain name to shows bad faith in use and registration Policy ¶4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶4(a)(iii) of the Policy). Respondent has offered no explanation. Respondent registered and uses the disputed domain names in bad faith under Policy ¶4(a)(iii).
Respondent used a privacy service to register the <skunkwork.mobi>, <skunkwork.red> and <skunkworks.red> domain names. In a commercial context, this raises the rebuttable presumption of bad faith registration and use. Respondent has done nothing to rebut that presumption. For that reason alone, it clear Respondent acted in bad faith regarding the <skunkwork.mobi>, <skunkwork.red> and <skunkworks.red> domain names.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <skunkwork.asia>, <skunkwork.click>, <skunkworks.click>, <skunkwork.club>, <skunkwork.link>, <skunkworks.link>, <skunkwork.xyz>, <skunkworks.xyz>, <skunkwork.mobi>, <skunkwork.red>, <skunkworks.red> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, July 7, 2015
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