Lockheed Martin Corporation v. Shirley T. Barnes / malca-mit
Claim Number: FA1703001723479
Complainant is Lockheed Martin Corporation (“Complainant”), represented by Sarah E Bro of McDermott Will & Emery LLP, California, USA. Respondent is Shirley T. Barnes / malca-mit (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lockheedmartin-corp.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits here as Panelist.
Complainant submitted a Complaint to the Forum electronically March 24, 2017; the Forum received payment March 24, 2017.
On March 25, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <lockheedmartin-corp.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 27, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 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@lockheedmartin-corp.com. Also on March 27, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 25, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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.
Complainant’s Allegations in this Proceeding:
Complainant registered its LOCKHEED MARTIN mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,022,037, registered Dec. 10, 1996), and has rights in the mark under Policy ¶ 4(a)(i). See Compl., at Attached Ex. D, p.15. Complainant owns some 490 domain names that include the LOCKHEED or LOCKHEED MARTIN mark, and therefore has common law rights in the mark. Respondent’s <lockheedmartin-corp.com> name is confusingly similar to Complainant’s mark because it fully incorporates the LOCKHEED MARTIN mark and merely eliminates the space, and appends a hyphen, the generic term “corp” and the generic top-level domain (“gTLD”) “.com”.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant did not license or otherwise authorize Respondent to use its mark in any way and Respondent is not commonly known by the disputed domain name. See Compl., at Attached Ex. 1 (WHOIS information). Respondent also has not made a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the domain name because the resolving website is inactive.
Respondent registered and is using and/or passively holding the <lockheedmartin-corp.com> domain name in bad faith under Policy ¶ 4(a)(iii). Respondent is attempting to attract Internet traffic and benefit from the goodwill of the LOCKHEED MARTIN mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by using Complainant’s mark. Further, Respondent is using the disputed domain name to engage in fraudulent behavior. Finally, Respondent had actual and constructive knowledge of Complainant’s rights in the LOCKHEED MARTIN mark at the time of registration.
Respondent’s Contentions in Response in this Proceeding:
Respondent did not submit a response. The Panel notes that Respondent registered the disputed domain name January 28, 2017, more than twenty (20) years after Complainant’s legal rights are shown and more than ninety-three years since Complainant’s “first use”.
Complainant established long-term common law and legal rights in its protected mark.
Respondent used in its entirety that protected mark in registering a
confusingly similar domain name without right to do so.
Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark.
Respondent registered and either used fraudulently the disputed domain name to phish for information and money or otherwise held it passively without making a bona fide use or showing intent to do so.
Respondent acted in bad faith in registering and either using fraudulently or passively holding a disputed domain name containing in its entirety Complainant’s protected mark.
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 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.
Given 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 will draw such inferences as the Panel 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 (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.”).
Identical or Confusingly Similar:
Complainant registered its LOCKHEED MARTIN mark with the USPTO (Reg. No. 2,022,037, registered Dec. 10, 1996). A USPTO registration confers legal and protected rights in a mark. T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). Thus, the Panel finds that Complainant has legal rights in the LOCKHEED MARTIN mark under a Policy ¶ 4(a)(i) analysis.
Further, Complainant has used the domain name <lockheedmartin.com> as its homepage since 1996 and obtained some 420 domain names relating to the LOCKHEED MARTIN name and therefore established common law rights in the name as well through use. See Compl., at Attached Ex. G. Complainants establish common law rights by providing evidence of length of use in the mark and through media recognition. Gordon & Rees LLP v. Peter Smith, FA 1618345 (Forum June 14, 2015) (finding that Complainant’s evidence is sufficient to establish secondary meaning, and thus Complainant holds common law rights in the GORDON & REES mark pursuant to Policy ¶ 4(a)(i) because “Complainant has provided evidence of its first use of the GORDON & REES mark for the purpose of practicing law beginning in Sept. 1974. Complainant has also provided evidence of media and consumer recognition, and business filings in several states in the United States.”). Use of a domain name can also evidence common law rights in the terms of the domain name. See Nat’l Ass’n of Prof’l Baseball Leagues v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (finding that the complainant had provided evidence that it had valuable goodwill in the <minorleaguebaseball.com> domain name, establishing common law rights in the MINOR LEAGUE BASEBALL mark). Here, Complainant asserts it has notoriously and publicly owned and used the domain name <lockheedmartin.com> since 1996 and had a first use in commerce in 1934. Therefore, the Panel finds that Complainant has legal and common law rights to the domain name <lockheedmartin.com>.
Next, Complainant argues that Respondent’s <lockheedmartin-corp.com> domain name is confusingly similar to Complainant’s mark because it fully incorporates the LOCKHEED MARTIN mark and merely eliminates the space and appends a hyphen followed by the generic term “CORP” and the gTLD “.com”. Firstly, elimination of a space in a mark and addition of a gTLD is not sufficiently distinguishing to overcome confusing similarity. See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (concluding that “Panels have consistently held that the addition of a gTLD does not distinguish a domain name from a mark, and that the removal of spaces between words of a mark is irrelevant.”). Secondly, the addition of a generic term does not change a domain name’s confusing similarity to a mark. See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity). Lastly, the addition of a hyphen is not sufficiently distinguishing. See Health Devices Corp. v. Aspen S T C, FA 158254 (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).”). Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark.
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a domain name that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
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), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant claims it has not licensed or otherwise authorized Respondent to use its LOCKHEED MARTIN mark in any way. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name. State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The Panel notes that the disputed domain name’s WHOIS information lists “SHIRLEY T. BARNES” as the registrant. Therefore, the Panel finds that Respondent is not commonly known by the <lockheedmartin-corp.com> name.
Complainant next contends that Respondent has not made any bona fide offering of goods or services or any legitimate noncommercial or fair use because Respondent’s resolving website is inactive. George Weston Bakeries Inc. v. McBroom, FA 933276 (Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name). The Complainant included a screenshot of the resolving webpage for Respondent’s domain name which displays an error page that reads “THIS SITE CANNOT BE REACHED”. Compl., at Attached Ex. B. The Panel finds that Respondent’s domain name resolves to an inactive website and therefore Respondent has not made any bona fide offering of goods or services or any legitimate noncommerical or fair use under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
Further, Complainant alleges that Respondent is using an email address ending in the disputed domain name to pass itself off as an affiliate of Complainant to fraudulently acquire money and goods. Such use is not a bona fide offering of goods or services or any legitimate noncommercial or fair use. See Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”). The Panel notes that Complainant included an email sent from Respondent falsely representing itself as “Morris Fillon”, a fictional employee of Complainant, to a third party. See Compl., at Attached Ex I. As such, the Panel finds as a result of this evidence that Respondent has not made a bona fide offering of goods under Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark in its entirety; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant alleges that Respondent has been engaging in fraud by passing itself off as an affiliate of Lockheed Martin in emails sent to third parties, presumably for commercial gain. Such use is evidence of bad faith. See Qatalyst Partners LP v. Devimore, FA 1393436 (Forum July 13, 2011) (finding that using the disputed domain name as an e-mail address to pass itself off as the complainant in a phishing scheme is evidence of bad faith registration and use). Therefore, the Panel finds that Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iv).
Complainant also contends that in light of the fame and notoriety of Complainant's LOCKHEED MARTIN mark, it is inconceivable that Respondent could have registered the <lockheedmartin-corp.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. Arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). However, actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name is adequate evidence to support findings of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). A respondent has actual knowledge of a complainant’s rights in a mark when Complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant’s LOCKHEED MARTIN mark created significant goodwill and consumer recognition around the world during long-time use and the name has been in use by Complainant since as early as 1934. See Compl. at Attached Ex. D. Further the fraudulent use Respondent makes of it in creating a fictional employee of Complainant in order to reach out to unsuspecting Internet users to phish for goods and money is evidence of bad faith use as well. Therefore, due to the fame of Complainant’s mark and the use made of it, the Panel finds that Respondent had actual knowledge of Complainant’s rights when Respondent registered a domain name containing and confusingly similar to Complainant’s protected mark.
Moreover, Complainant alleges that Respondent failed to make active bona fide use of the domain name’s resolving website. Respondent has not submitted a response or any assertion that the domain name will be used. Failure to make active use also supports findings of bad faith under Policy ¶ 4(a)(iii). See Hewlett-Packard Co. v. Martineau, FA 95359 (Forum Aug. 30, 2000) (“Respondent’s failure to submit an assertion of good faith intent to use the domain name, in addition to the passive holding of the domain name, reveal that Respondent registered and uses the domain name in bad faith.”). Therefore, the Panel finds that Respondent acted in bad faith.
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent acted in bad faith in registering and either using the domain name fraudulently to phish for goods and money or holding it passively as to any bona fide use; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lockheedmartin-corp.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 10, 2017
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