Lockheed Martin Corporation v. yoyo.email et al.
Claim Number: FA1406001563665
Complainant: Lockheed Martin Corporation of Bethesda, Maryland, United States of America. Complainant Representative: McDermott Will & Emery LLP of Irvine, California, United States of America.
Respondent: yoyo.email of Dunsatble, International, GB.
yoyo.email of Dunsatble, International, United Kingdom.
yoyo.email of Dunsatble,, GB.
REGISTRIES and REGISTRARS
Registries: Spring Madison, LLC
Registrars: GoDaddy.com, 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 Examiner in this proceeding.
The Honorable Charles K. McCotter, Jr. (Ret.), as Examiner.
Complainant submitted: June 9, 2014
Commencement: June 10, 2014
Response Date: June 24, 2014
Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly
similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and
that is in current use; or(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the
URS complaint is filed.
[URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name.
[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad
faith.
a. Registrant has registered or acquired the domain name primarily for the
purpose of selling, renting or otherwise transferring the domain name
registration to the complainant who is the owner of the trademark or service
mark or to a competitor of that complainant, for valuable consideration in excess
of documented out-of pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the
trademark holder or service mark from reflecting the mark in a corresponding
domain name, provided that Registrant has engaged in a pattern of such
conduct; or
c. Registrant registered the domain name primarily for the purpose of
disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract
for commercial gain, Internet users to Registrant’s web site or other on-line
location, by creating a likelihood of confusion with the complainant’s mark as
to the source, sponsorship, affiliation, or endorsement of Registrant’s web
site or location or of a product or service on that web site or location.
FINDINGS OF FACT
Complainant is the owner of U.S. Trademark Registration Number 2627156 for the mark LOCKHEED, which was registered on October 1, 2002, and which is in current use. Complainant is the owner of U.S. Trademark Registration Number 2762006 for the mark LOCKHEED MARTIN, which was registered on September 9, 2003, and which is in current use.
Respondent contends that Complainant has not shown current use of the word marks. However, Complainant has provided two files with the extension “.smd” as evidence of current use. These are “signed mark data” files which contain encrypted data confirming that the word marks have been validated for proof of use.
Respondent contends that, in determining whether the domain names are identical, the generic top level domain “.email” should be considered as part of the domain names. Respondent also contends that the domain names are not confusingly similar to Complainant’s marks as the domain names will not be available to Internet users or to the public.
Complainant contends that Respondent is neither affiliated with, nor has it been licensed or permitted to use Complainant’s marks or any domains incorporating the marks. Complainant also contends that Respondent has not made any demonstrable preparations to use the disputed domain names.
Respondent contends that it has made demonstrable preparations to use the domain names for a bona fide offering of goods and services. Respondent is developing a new email directory and courier service that will record the sending and receipt of emails. Respondent acquired a series of domain names under the “.email” new gTLD as soon as domain names under that TLD became available for purchase. Respondent says that it is one of the world’s largest registrants of “.email.”
Respondent contends that its proposed use of the disputed domain names is a fair use, as it does not intend to use the domain names as trademarks, but as email addresses.
Although Respondent’s service will be free of charge, Respondent says that it intends to commercialize the system.
LEGAL FINDINGS AND CONCLUSIONS:
There are no genuine issues of material fact as to each of the three elements of the URS.
IDENTICAL OR CONFUSINGLY SIMILAR
The <lockheed.email> and <lockheedmartin.email> domain names are identical or confusingly similar to Complainant’s LOCKHEED and LOCKHEED MARTIN word marks, respectively, insofar as they incorporate the marks in their entirety.
RIGHTS OR LEGITIMATE INTERESTS
Although Respondent has made demonstrable preparations to use the domain names, the use is not for a bona fide offering of goods and services as Respondent’s commercial business uses Complainant’s word marks.
Respondent argues that its proposed email recorded delivery service is a fair use, since the service will be provided free. However, the undisputed record evidence shows Respondent’s intent to monetize the free email service. See Deutsche Lufthansa AG v. yoyo.email et al., FA 1552833 (Nat. Arb. Forum June 18, 2014)(evidence of Respondent’s intent to use the free email service to receive money from advertising and social media); but see Stuart Weitzman IP, LLC v. yoyo.email et al. FA 1554808 (Nat. Arb. Forum, URS Appeal Determination, June 24, 2014)(no record evidence of Respondent’s intent to monetize the free email service).
REGISTRATION AND USE IN BAD FAITH
Respondent registered the the <lockheed.email> and <lockheedmartin.email> domain names in order to prevent Complainant from reflecting the marks in corresponding domain names. Respondent has engaged in a pattern of such registrations.
Respondent has intentionally attempted to attract for commercial gain Internet users to the <lockheed.email> and <lockheedmartin.email> web sites by creating a likelihood of confusion with the LOCKHEED and LOCKHEEDMARTIN marks.
After reviewing the parties’ submissions, the Examiner determines that
Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
<lockheed.email>
<lockheedmartin.email>
The Examiner further finds the Complaint was not brought in an abuse of the administrative proceeding or with material falsehoods.
The Honorable Charles K. McCotter, Jr. (Ret.)
June 27, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page