Lockheed Martin Corporation v. Donovan Reid
Claim Number: FA1807001798475
Complainant is Lockheed Martin Corporation (“Complainant”), represented by Naresh Kilaru of Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, USA. Respondent is Donovan Reid (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lockheedmartindrone.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Natalia Stetsenko as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 25, 2018; the Forum received payment on July 25, 2018.
On July 26, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <lockheedmartindrone.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 July 26, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 16, 2018 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@lockheedmartindrone.com. Also on July 26, 2018, 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 July 26, 2018 a joint Request to stay administrative proceedings was filed by Complainant, and the request granted by the Forum on the same date.
On July 27, 2018 a Request to lift stay was filed by Complainant and granted by the Forum.
A timely Response was received and determined to be complete on July 27, 2018.
An Additional Submission was filed by Complainant on August 1, 2018, which the Panel finds to be compliant with Supplemental Rule 7.
On August 2, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Natalia Stetsenko 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, Lockheed Martin Corporation, is the world’s largest defense contractor company. Complainant has rights in the LOCKHEED MARTIN mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,022,037, registered Dec. 10, 1996). See Compl. Ex. 9. Respondent’s <lockheedmartindrone.com> domain name is confusingly similar to the LOCKHEED MARTIN mark because it incorporates Complainant’s mark in its entirety, differing only in the addition of the descriptive/generic term “drone” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <lockheedmartindrone.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the LOCKHEED MARTIN mark. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to host a commercial pay-per-click website featuring sponsored-link advertisements directly related to Complainant’s business.
Respondent registered and is using the <lockheedmartindrone.com> domain name in bad faith. Respondent has listed the disputed domain name for sale at a price in excess of its out-of-pocket costs directly related to the domain name. Respondent’s use of the domain disrupts Complainant’s business because it the resolving webpage feature sponsored-link advertisements for services which directly compete with Complainant’s. Further, Respondent intentionally attempts to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s LOCKHEED MARTIN mark as to the source, sponsorship, affiliation, and endorsement of Respondent’s website. Respondent has failed to make any legitimate use of the disputed domain name during the two-and-a-half months it has owned it. Finally, Respondent had actual knowledge of Complainant’s rights in the LOCKHEED MARTIN mark at the time it registered the disputed domain name.
B. Respondent
The domain name in question was created in memory and based on the names of historical persons of Allan Lockheed and Glenn Martin, to which Complainant has no legal rights, and linked to the generic word “drone”, to which the Complainant has no legal rights. Respondent has not received any monies whatsoever arising from any use of the domain name in question.
Respondent did not register or use the disputed domain name in bad faith. Respondent’s mere registration of a domain name incorporating the names of historical and/or famous corporate persons with a generic term does not constitute bad faith. Respondent has in no way used the disputed domain name to harm, limit, confuse, or effect any other action adverse to Complainant. Complainant is engaging in reverse domain name hijacking.
C. Additional Submissions
Respondent did not register a domain name using the names “Allan Lockheed” or “Glenn Martin,” but rather the corporate name and famous registered trademark LOCKHEED MARTIN. The addition of generic term „drone” to the trademark does not sufficiently distinguish a domain name to eliminate confusion, particularly where the generic terms relate to the goods or services offered under that trademark.
Combined with his admission that he registered the Domain Name with Lockheed Martin’s founders in mind, Respondent’s statements demonstrate an intent to capitalize on Lockheed Martin’s work in drone technology.
Respondent tried to sell the Domain Name to Complainant. In response to Respondent’s consent to transfer, Complainant’s attorneys drafted a joint request to stay the case, which Respondent signed, and the NAF granted. Complainant’s attorneys then drafted a letter agreement offering to withdraw the UDRP complaint with prejudice in exchange for Respondent’s transfer of the Domain Name. Respondent rejected the draft saying that it is not acceptable. Unsatisfied, Respondent demanded $1,000 for the Domain Name.
Respondent’s claim not to be seeking to make money is not credible, as Respondent could not have paid more than $20 dollars to register the Domain Name, and thus demonstrates that the main reason he registered the Domain Name was to sell it to Complainant “for valuable consideration in excess of [his] documented out-of-pocket costs directly related to the domain name.”
Respondent’s failure to sign the settlement document after proposing settlement suggests his offer to transfer the Domain Name was a mere ruse designed to dismiss the UDRP proceeding.
Complainant is the world’s largest defense contractor and a global security and aerospace company that employs approximately 100,000 people worldwide and maintains over 590 facilities in all 50 states throughout the United States, as well as international business locations in 52 nations and territories. See Ex. 3
Complainant’s origins date back over a century, during which time it became one of the largest aerospace, defense, and technology companies in the world.
See Ex. 3 (detailed historical information about the company and its involvement in aerospace innovation and many of the most famous and iconic moments in aviation history is presented on screenshots from <lockheedmartin.com>).
Today, the majority of Lockheed Martin’s business is with the U.S. Department of Defense and U.S. federal government agencies, but its business also encompasses commercial, as well as international government sales of products, services, and platforms. See Ex. 3 at 2 (screenshots from <lockheedmartin.com>); see also Ex. 4 (2018 Fact Sheet).
Complainant’s work encompasses, inter alia, the development of drone technology. Complainant’s drones serve military, commercial, and civil customers and have multiple applications, including firefighting, search and rescue, and inspections of commercial, agricultural, and industrial systems. See Ex. 5.
Complainant’s <lockheedmartin.com> domain name was registered on October 12, 1996 (see Ex. 6 (WHOIS for <lockheedmartin.com>)), and the associated website has advertised Lockheed Martin’s products and services since that time. See Ex. 7 (historical screenshots for <lockheedmartin.com>).
The numbers of online users following the Lockheed Martin products and services is demonstrated by the numbers of followers on social media. Lockheed Martin’s official Facebook page has over 545,000 followers, its LinkedIn page has over 627,000 followers, and its YouTube video channel has over 120,000 subscribers and over 52 million views. See Ex. 8.
Complainant is the holder of the following U.S. trademark registrations for the LOCKHEED and LOCKHEED MARTIN marks:
1. Registration No. 2022037 for the mark LOCKHEED MARTIN, filed Dec. 18, 1995, issued Dec. 10, 1996, registered for the services in International Class 42 (asserting a first use date of Mar. 1995);
2. Registration No. 2627156 for the mark LOCKHEED, filed Dec. 15, 1999, issued Oct. 1, 2002 registered for the goods in International Class 28 (asserting a first-use date of Dec. 2, 1992);
3. Registration No. 2788896 for the mark LOCKHEED MARTIN, filed Dec. 11, 2002, issued Dec. 2, 2003, covering goods in International Class 9 (asserting a first-use date of Apr. 30, 1996);
4. Registration No. 2788897 for the mark LOCKHEED MARTIN, filed Dec. 11, 2002, issued Dec. 2, 2003, covering goods in International Class 12 (asserting a first-use date of Apr. 30, 1996). See Ex. 9 (copies of the registration certificates issued by the USPTO).
Respondent registered the disputed domain name on April 27, 2018. (See Ex. 11) that resolves to a commercial pay-per-click website featuring sponsored-link advertisements that feature Complainant’s trademarks or that directly relate to Complainant’s business (e.g., “Lockheed Martin,” “Drone Aircrafts,” “Drone Defense Systems,” etc. See Ex. 10). The domain name is also on sale for $199. See Ex. 11.
Respondent’s own statements confirm the Domain Name was registered to target Lockheed Martin’s business because on the day the Complaint was served on Respondent emailed Complainant’s attorneys, stating: “I had registered several domains on my thesis that the drone space would be significant going forward.” See Ex. A to Complainant’s Additional Submission.
Respondent tried to sell the Domain Name to Complainant after the complaint was served on him. In Respondent’s July 26, 2018 email, Respondent claimed: “I am happy to settle the matter and transfer the domain. Please advise.” See Ex. A to Complainant’s Additional Submission.
Complainant’s attorneys drafted a letter agreement offering to withdraw the UDRP complaint with prejudice in exchange for Respondent’s transfer of the domain name. See Ex. B to Complainant’s Additional Submission. In response to the letter with the attached agreement, Respondent stated: “There is no consideration for the transfer so this is not acceptable.” (email of July 27, 2018 at 3:09 PM)) See Ex. A to Complainant’s Additional Submission. Respondent demanded $1,000 for the domain name, stating: “I am not seeking to make money but this has taken my time.” (email of July 27, 2018 at 3:43 PM) See Ex. A to Complainant’s Additional Submission.
Panel Note: Consent to Transfer
The Forum was copied on email sent from Respondent to Complainant on July 26, 2018, where Respondent purports to consent to the transfer of the disputed <lockheedmartindrone.com> domain name. The Panel is under no obligation to acknowledge any such documents.
Moreover, further evidence provided in Complainant’s Additional Submission show that Respondent’s equivocal consent to transfer was a strategic move designed to dismiss the UDRP proceeding.
Given these circumstances and Respondent’s attempt to sell the domain resulting in Complainant’s request to lift the stay of proceeding, this Panel proceeds to a substantive decision on the merits.
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.
Complainant established its rights in the LOCKHEED MARTIN mark based on common law rights deriving from extensive and continuous use. Moreover, Complainant asserts its rights in the LOCKHEED MARTIN mark based on its Federal registrations with the USPTO. See Compl., Ex. 9.
Registration of a mark with a trademark authority, such as the USPTO, is sufficient to establish rights in the mark per Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
It is therefore found the Complainant has established rights in the LOCKHEED MARTIN mark under the Policy ¶ 4(a)(i).
Respondent’s <lockheedmartindrone.com> domain name is confusingly similar to the LOCKHEED MARTIN mark as it incorporates the mark in its entirety, adding a generic term, particularly the term that refers to the goods offered by Complainant under this trademark, and a gTLD to make it resolve. Previous Panels have held that addition of a generic term and a gTLD to a complainant’s mark may be insufficient to differentiate the domain name from the mark for the purposes of Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).).
The Panel therefore finds the <lockheedmartindrone.com> domain name to be confusingly similar to the LOCKHEED MARTIN mark per Policy ¶ 4(a)(i).
Complainant contends that Respondent is not commonly known by the disputed domain name. Absent information in the record of the case to suggest otherwise, the provided WHOIS information, which lists “Donovan Reid” as the registrant (See Compl., Ex. 11), supports finding that Respondent is not commonly known by the disputed domain name. See 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)).
Furthermore, Complainant contends that it did not authorize Respondent to use the mark or register a domain name incorporating Complainant’s marks. Therefore, Respondent has never been legitimately known by Complainant’s marks. In past decisions, Panels found these assertions as evidence of lacking rights or 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).
Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Furthermore, the way Respondent uses the domain name does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use.
Complainant provided a screenshot of the website to which the disputed domain name resolves, showing that the website is being used to obtain click-through revenue by linking to third party websites. See Compl. Ex. 10. Use of a domain name to host a page featuring third party links is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) and (iii)). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”).
The Panel finds that Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain.
Respondent’s arguments that he has not received any money arising from the use of the domain name does not count as proof of non-commercial fair use because Respondent could not be unaware of the nature of the pay-per-click service as a source of indirect revenue. The nature of the links featured on the website to which the disputed domain name resolves demonstrates that Respondent has clearly attempted to exploit the Complainant’s goodwill. According to the WIPO Overview 3.0 ¶ 2.9, „applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users”.
This Panel therefore finds that Respondent does not have rights or legitimate interests in the <lockheedmartindrone.com> domain name per Policy ¶ 4(a)(ii).
Moreover, Respondent tried to sell the Domain Name to Complainant after the Complaint was served on him. In the outcome of short negotiation over a letter agreement, Respondent demanded $1,000 for the domain name, stating: “I am not seeking to make money but this has taken my time.” See Ex. A to Complainant’s Additional Submission. Such Respondent’s demand is evidence that the reason he registered the domain name was to sell it “for valuable consideration in excess of [his] documented out-of-pocket costs directly related to the domain name.”
Complainant further contends that Respondent’s registration and use of the <lockheedmartindrone.com> domain name disrupts Complainant’s business because the resolving webpage features sponsored-link advertisements for directly competing services (See Compl. Ex. 10. featuring a screenshot of the domain name’s resolving webpage hosting links to Complainant’s competitors). Previous Panel have found a respondent’s hosting of links to a complainant’s competitors to constitute both bad faith registration and use per Policy ¶ 4(b)(iii). See Lenovo (Beijing) Limited Corporation China v. jeonggon seo, FA1411001591638 (Forum Jan. 16, 2015) (finding that where the complainant operated in the computer industry and the respondent used the disputed domain name to offer competing computer related links, the respondent was disrupting the complainant’s business offerings in violation of Policy ¶ 4(b)(iii)).
Complainant also asserts that Respondent’s bad faith is indicated by its use of the <lockheedmartindrone.com> domain name to link to third party websites in an attempt to gain commercially by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website (See Compl. Ex. 10). The general consensus among Panels is that use of a domain name to resolve to a page of third-party links can demonstrate a respondent’s bad faith per Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479 (Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website which resolved from the disputed domain name).
Complainant further asserts that Respondent’s failure to put the <lockheedmartindrone.com> domain name to active use is evidence of its bad faith. Inactive holding of a domain name can be evidence of bad faith under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”).
Finally, the Panel agrees that Respondent had actual knowledge of the mark given its long standing use and federal registrations of the LOCKHEED MARTIN mark. Moreover, Respondent’s own statements confirmed by evidence provided in Compl. Add. Subm. Ex. A show that the domain name was registered to target Lockheed Martin’s business (on the day the Complaint was served, Respondent emailed Complainant’s attorneys, stating: “I had registered several domains on my thesis that the drone space would be significant going forward.” See Compl. Add. Subm. Ex. A).
Previous Panels have generally found that while constructive notice of a complainant’s mark is insufficient for a finding of bad faith, actual knowledge of a complainant’s rights in a mark is sufficient. 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.”).
Furthermore, the LOCKHEED MARTIN mark was famous among general public at the time when the disputed domain name was registered. At least one Administrative Panel has found that Complainant’s LOCKHEED MARTIN mark “is an arbitrary mark” that is “highly distinctive,” thus increasing “the likelihood of Internet confusion involving Complainant’s mark and the disputed domain name.” See Lockheed Martin Corp. v. Ning Ye, WIPO Case No. D2000-1733 (May 17, 2001). Previous panels found bad faith in cases where Complainant’s name was famous or Respondent had knowledge of the mark. See Cho Yong Pil v. Sinwoo Yoon , WIPO Case No. D2000-0310 (WIPO, June 19, 2000) (The Panel determines that the Respondent has registered the domain name in bad faith because the Complaint’s name was famous at the time of registration of the domain name…).
The Panel therefore finds that Respondent has registered and is using the disputed domain name in bad faith. Therefore, the requirements of Policy ¶ 4(a)(iii) have been satisfied.
Reverse Domain Name Hijacking
Given that Complainant has satisfied all of the elements of Policy ¶ 4(a), the Panel finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lockheedmartindrone.com> domain name be TRANSFERRED from Respondent to Complainant.
Natalia Stetsenko, Panelist
Dated: August 16, 2018
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