Lockheed Martin Corporation v. Phoenix Rising
Claim Number: FA1701001712701
Complainant is Lockheed Martin Corporation (“Complainant”), represented by Sarah E Bro of McDermott Will & Emery LLP, California, USA. Respondent is Phoenix Rising (“Respondent”), represented by Wendy Bias, Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <skunkworkseducation.com>, registered with NameSilo, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 16, 2017; the Forum received payment on January 16, 2017.
On January 20, 2017, NameSilo, LLC confirmed by e-mail to the Forum that the <skunkworkseducation.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 January 23, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 17, 2017 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@skunkworkseducation.com. Also on January 23, 2017, 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.
On February 22, 2017 Complainant’s Additional Submission was received in compliance with Supplemental Rule 7.
On February 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant has rights in the SKUNK WORKS trademark based on registration of the mark with the United States Patent and Trademark Office (“USPTO”) and various other trademark agencies throughout the world. Respondent’s domain name <skunkworkseducation.com> is confusingly similar to the SKUNK WORKS mark as the domain name incorporates the entire mark and merely adds the generic term “education” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been commonly known by the disputed domain name, been affiliated with Complainant, or been authorized to use the mark in any manner. Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use as the domain has not been used outside of resolving to a parked website.
Respondent has registered and is using the disputed domain name in bad faith. Respondent’s attempt to solicit offers for purchasing the domain name indicates bad faith under Policy ¶ (b)(i). Further, failure to use a disputed domain name in any manner evinces Respondent’s bad faith.
B. Respondent
Respondent contends as follows:
The SKUNK WORKS mark has been in the public domain since the 1960s and has a generic definition outside of association with Complainant.
Respondent has been commonly known by the disputed domain name. Respondent used the term “skunkworks” in its description of an educational model created to win a project to redesign high school curriculum for the 21st century. Respondent has used the “skunk works education” and received extensive press and social media coverage using the phrase.
Respondent was not aware that the resolving website included a menu button soliciting offers for the domain name. Respondent was not attempting to sell the domain name or make money through squatting on the domain name.
C. Additional Submissions
Complainant contends in its Additional Submission as follows:
Respondent makes numerous false and misleading assertions in its Response. Complainant has had rights in the SKUNK WORKS mark dating back to 1945 and Respondent’s assertion that the term “skunkworks” is in the public domain has no bearing on any findings under Policy ¶ 4(a)(i).
Respondent is responsible for the content that resolves from the disputed domain name. Since commencement of this proceeding the disputed domain name resolves to Respondent’s website at <risingaz.com> and has not been used in any manner. Further, Respondent has not shown demonstrable preparations to use the domain name.
Complainant has trademark rights in the SKUNK WORKS mark.
Respondent registered the at-issue domain name after Complainant acquired rights in SKUNK WORKS.
Respondent holds the at-issue domain name for future use regarding its activities concerning education methodology.
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.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant establishes its rights in the SKUNK WORKS mark through its registration of such mark with the United States Patent and Trademark Office as well as registration of such mark with other trademark registrars worldwide. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
Respondent’s <skunkworkseducation.com> domain name contains Complainant’s entire SKUNK WORKS mark with the generic term education added and the top-level domain name appended thereto. Notwithstanding the differences between the at-issue domain name and Complainant’s trademark, Respondent’s domain name is nevertheless confusingly similar to Complainant’s SKUNK WORKS mark under Policy ¶ 4(a)(i). ). See also Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)).; see also, Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis under Policy ¶ 4(a)(i)).
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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006).
Respondent is not authorized to use Complainant’s trademark in any capacity.
See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name). Therefore, Complainant has made a prima facie showing that Respondent lacks rights and interests in the at-issue domain name. Policy ¶ 4(c) enumerates circumstance, which if found, will demonstrate Respondent’s rights or interests in an at-issue domain name.
WHOIS information for the at-issue domain name lists “Phoenix Rising” as the domain name’s registrant. However, despite the domain name’s registration being in the name of Phoenix Rising, Respondent (Phoenix Rising) seems to claim it is nonetheless known by the <skunkworkseducation.com> domain name. Respondent states that it is known for “service design relating to the domain name in issue…” To support its position Respondent offers a rambling exhibit that comments, directly and by reference, on skunk works (skunkworks), skunkworks education and Phoenix Rising in various contexts. A review of the proffered exhibit shows that the exhibit wholly fails to support a conclusion that Respondent is commonly known by the <skunkworkseducation.com> domain name. Indeed, throughout the exhibit “skunkworks education” is used to describe a concept rather than serve as an alternate name for Respondent. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
With regard Policy ¶ 4(c)(i), there is no dispute that Respondent has not substantively used the domain name to support a business or otherwise. However, do Respondent’s musings about skunkworks education amount to “demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services?” If so, then pursuant to Policy ¶ 4(c)(i) Respondent shows rights and/or interests in the domain name. Respondent’s papers contain multiple unsworn statements about “skunkworks education” as a concept, but fail to show any real preparations in implementing any business or organization surrounding the term which might later be referenced by the domain name. In fact, Respondent grouses in its submissions that the reason the at-issue domain name has thus far remained unused is that Respondent relies on volunteers and thus moves very slowly. While this may explain why the domain name still does not address a substantive active website, it also cuts against any notion that demonstrable preparations were made in furtherance of later using the domain name. A mere stated intent to later use the domain name in one manner or another does not amount to making preparations for the purposes of Policy ¶ 4 (c)(1).
Since Policy ¶ 4(c)(iii) concerns “a legitimate noncommercial or fair use of the domain name” and the domain name has not yet been actively used except perhaps to address a third party parking page, it is inapplicable to the instant case.
While there are no Policy ¶ 4(c) factors at work, Respondent’s assertion that Complainant’s mark has a generic/descriptive aspect is relevant to Policy ¶ 4(a)(ii) analysis. According to Respondent the SKUNK WORKS mark, aside from being a trademark, describes certain methods that may be used in conjunction with a variety of goals without offending Complainant’s trademark rights. If so, Respondent may have a right to use its domain name in such context. However notwithstanding the foregoing discussion and in light of the Panel’s finding regarding Policy ¶ 4(a)(iii) bad faith discussed below, the Panel does not find it necessary to make a particular determination as to whether or not Respondent lacks rights and interests in the domain name under Policy ¶ 4(a)(ii).
Bad faith registration and use of the domain name may be established by finding one or more of the circumstances enumerated under Policy ¶ 4(b), or by finding circumstances, although outside the purview of Policy ¶ 4(b), nevertheless demonstrate Respondent’s bad faith.
First, Complainant contends that because there was an online “Submit Offer” link on a webpage addressed by the at-issue domain name, Respondent’s bad faith registration and use of the domain name is demonstrated under Policy ¶ 4(b)(i). Complainant used the aforementioned “Submit Offer” link to make an offer to purchase the domain name. Respondent failed to reply to Complainant’s offer. Respondent answers Complainant’s charge of offering to sell the domain name consistent with its failure to respond. Respondent claims it was unaware that domain name registrar NameSilo parked the at-issue domain name on a page containing a “Submit Offer” link. Respondent further claims it never had an interest in selling the domain name. Even if we hold Respondent to be ultimately responsible for NameSilo’s “Submit Offer” parking page, Respondent denies that the domain name has ever actually been available for sale. Further, domain name registrar NameSilo states in a letter to Respondent that the at-issue domain name was linked to NameSilo’s default holding page and the fact of the link “certainly does not mean that the domain name is actually for sale or has been knowingly offer for sale by a Registrant.” Therefore, the Panel cannot conclude that “the domain name was registered … primarily for the purpose of selling, renting, or otherwise transferring the domain name” under Policy ¶ 4(b)(i). Complainant makes no bad faith claims which are nominally based on paragraphs 4(b)(ii) – 4(b)(iv).
Next, Complainant points out that Respondent has held the domain name for over six (6) months but has not used it for any legitimate purpose. Complainant asserts that doing so shows Respondent’s bad faith. While panels have used the absence of a working website to imply a domain name holder’s bad faith, Respondent alternatively suggests that the lack of a website simply indicates that Respondent has not yet installed a website although it intends to in the future. Six months does not seem to be an unreasonable amount of time before publishing a website given the particulars of Respondent’s organization and in and of itself such delay is not an indication of Respondent’s bad faith.
Additionally, Complainant urges that there is no reason for Respondent to have registered the domain name other than to trade off Complainant’s goodwill and reputation. However, Respondent shows it registered <skunkworkseducation.com> for its descriptive value rather than to usurp the good will associated with Complainant’s trademark. There is simply no evidence of the later. While the Panel does not challenge the validity of Complainant’s well known mark, it is undeniable that the mark also has a generic usage apart from it trademark use. Respondent’s motivation in registering the domain name appears to have been to capitalize on this generic value to describe Respondent endeavors regarding education, and that alone.
Finally, in arguing that Respondent has acted in bad faith Complainant baldly states that the domain name violates the Anitcybersquatting Consumer Protection Act, 15 U.S.C. §43(d). Complainant’s claim is over broad and unsupported with specific evidence concerning how the Act has been violated. Moreover, for a claim to go forward under the ACPA that a domain name, as opposed to a person, is in violation of the Act requires procedural predicates which are not alleged by Complainant. The claim is thus given no weight under Policy ¶ 4(a)(iii).
Given the foregoing, Complainant fails to meet its burden to show that Respondent acted in bad faith in registering and using the <skunkworkseducation.com> domain name. See Societe des Produits Nestle S.A. v. Pro Fiducia Treuhand AG, D2001-0916 (WIPO Oct. 12, 2001) (finding that where the respondent has not attempted to sell the domain name for profit, has not engaged in a pattern of conduct depriving others of the ability to obtain domain names corresponding to their trademarks, is not a competitor of the complainant seeking to disrupt the complainant's business, and is not using the domain name to divert Internet users for commercial gain, lack of bona fide use on its own is insufficient to establish bad faith); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Forum Mar. 9, 2005) (finding that the complainant failed to establish that respondent registered and used the disputed domain name in bad faith because mere assertions of bad faith are insufficient for a complainant to establish UDRP ¶ 4(a)(iii)).
Respondent requests a finding of reverse domain name hijacking against Complainant. However, even though the Panel holds that Complainant fails to satisfy its burden under the Policy, a finding of reverse domain name hijacking does not necessarily follow. See ECG European City Guide v. Woodell, FA 183897 (Forum Oct. 14, 2003) (“Although the Panel has found that Complainant failed to satisfy its burden under the Policy, the Panel cannot conclude on that basis alone, that Complainant acted in bad faith.”). On the one hand, it appears that Complainant’s filing did not contain sufficient evidence to carry the day regarding Respondent’s bad faith. On the other hand, Complainant prevails under Policy ¶4(a)(i) and it is not at all apparent from the record that Complainant knew or should have known to a reasonable certainty that the Complaint would fail under either Policy ¶(a)(ii) or ¶(a)(iii). On balance the Panel finds that Complainant did not engage in reverse domain name hijacking. See Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy); see also Church in Houston v. Moran, D2001-0683 (WIPO Aug. 2, 2001) (noting that a finding of reverse domain name hijacking requires bad faith on the complainant’s part, which was not proven because the complainant did not know and should not have known that one of the three elements in Policy ¶ 4(a) was absent).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <skunkworkseducation.com> domain name remain with Respondent.
Paul M. DeCicco, Panelist
Dated: March 7, 2017
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