Lockheed Martin Corporation v. WhoisGuard, Inc.
Claim Number: FA1609001695499
Complainant: Lockheed Martin Corporation of Bethesda, Maryland, United States of America.
Complainant Representative:
Complainant Representative: McDermott Will & Emery LLP of Irvine, California, United States of America.
Respondent: WhoisGuard, Inc. of Panama, International, PA.
REGISTRIES and REGISTRARS
Registries: United TLD Holdco Ltd.
Registrars: eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
Prathiba M. Singh, as Examiner.
Complainant submitted: September 26, 2016
Commencement: September 27, 2016
Default Date: October 12, 2016
Having reviewed the communications records, the Examiner finds that the 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.
The Complainant in the Complainant claims to be the owner of the trademark LOCKHEED MARTIN. In support of it’s contention, the Complainant has annexed the USPTO Registration certificate for the trade mark LOCKHEED MARTIN in the name of the Complainant (Reg. No. 2,762,006 registered Sep 9, 2003) for Shirts, tops, tee shirts, sweat shirts, jackets, hats and caps in Class 25 (US CLS 22 and 39).
A perusal of the Complainant’s website reveals that over one hundred years ago in 1912, Glenn L. Martin established the Glenn L. Martin Company in Los Angeles, California. He started the company after building his first plane in a rented church, where he took a leap of faith on his risky but innovative new aircraft design at the urging of none other than Orville Wright. Four months later and four hundred miles away, on December 19, 1912, Allan and Malcolm Lockheed founded the Alco Hydro-Aeroplane Company, later renamed the Lockheed Aircraft Company. Talented mechanics, they set up shop out of a garage, constructing seaplanes.
The Complainant’s website reveals that Lockheed Martin is a global security and aerospace company that employs approximately 98,000 people worldwide and is principally engaged in the research, design, development, manufacture, integration and sustainment of advanced technology systems, products and services. As a global security, innovation, and aerospace company, the majority of Lockheed Martin's business is with the U.S. Department of Defense and U.S. federal government agencies. In addition, Sikorsky (a Lockheed Martin Company) provides military and rotary-wing aircraft to all five branches of the U.S. armed forces along with military services and commercial operators in 40 nations. The remaining portion of Lockheed Martin's business is comprised of international government and commercial sales of products, services and platforms. Lockheed Martin's operating units are organized into broad business areas such as Aeronautics, Missiles and Fire Control, Rotary and Mission Systems and Space Systems.
GROUNDS OF COMPLAINT:
The Complainant has made out the following grounds on which the Complainant is entitled to relief (URS Proc. 1.2.6)
1. The registered domain name(s) is/are identical or confusingly similar to a word or mark [URS 1.2.6.1]: for which the Complainant holds a valid national or regional registration and that is in current use;
2. Registrant has no legitimate right or interest to the domain name [URS 1.2.6.2]
3. The domain name(s) was registered and is being used in bad faith [URS 1.2.6.3] such as:
[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. The 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 the Registrant has engaged in a pattern of such conduct Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor 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.
The Complainant pleads that the:
1. Complainant is entitled to a presumption of ownership, validity, and the exclusive right to use its LOCKHEED MARTIN trademark (“Mark”) in connection with the goods and services named in its numerous registration certificates, including the registration record submitted in this matter. 15 U.S.C. §1057(b).
2. Complainant’s LOCKHEED MARTIN trademark is not comprised of a descriptive word in which the Respondent might have an interest.
The Complainant relies upon an Administrative Panel decision Lockheed Martin Corp. v. Ning Ye, WIPO Case No. D2000-1733 (May 17, 2001) that found that Complainant’s LOCKHEED mark is an “invented term,” and that LOCKHEED MARTIN “is an arbitrary mark” that is “highly distinctive,” increasing “the likelihood of Internet user confusion involving Complainant’s mark and the disputed domain name.”
3. Respondent is neither affiliated with nor has it been licensed or permitted to use the Complainant’s Mark or any domain names incorporating the Mark. The Respondent is not commonly known by the Domain Name.
4. After discovering Respondent’s registration and use of the LockheedMartin.ninja
domain name (“Domain Name”), the Complainant’s counsel sent a demand letter to the Respondent on August 10, 2016, requesting a transfer of the Domain Name based on the Complainant’s rights in the LOCKHEED MARTIN trademark. Complainant’s counsel did not receive any response and sent a second demand letter to Respondent on August 31, 2016. Complainant states that it’s counsel has still not received a response to either letter regarding the Respondent’s unauthorized use and registration of the Domain Name.
5. The Respondent has not engaged in demonstrable preparations to use the Domain Name with a bona fide offering of goods or services.
6. The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. The Respondent uses the Domain Name to host a webpage providing click-through links to redirect users to sponsored websites, some of which purport to relate to the Complainant and its Mark and redirect to the website(s) of Complainant’s competitors.
7. In this instance, Respondent’s use of the Domain Name to redirect Internet users to
sponsored links that generate revenue for Respondent constitutes bad faith use and registration of the Domain Name under URS Policy 5.9.2 because
(a) the Domain Name contains Complainant’s famous LOCKHEED MARTIN trademark (5.9.2.1.);
(b) when selected, certain sponsored advertising links direct to Complainant’s partners, competitors, and/or relevant consumers such as Boeing, Raytheon, etc. (5.9.2.2.); and (c) Respondent is ultimately responsible for the content appearing in connection with the Domain Name (5.9.2.3).
8. There is clear evidence that Registrant has registered and used the Domain Name in bad faith to intentionally attract, Internet users to the Domain Name, for commercial gain, by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of the Domain Name and the sponsored third-party links that are accessible through the Domain Name. Respondent’s continued use and registration of the Domain Name will cause significant disruption to Complainant’s business.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
“1.2.6.1. that the registered domain name is identical or confusingly similar to a word mark: (i) for which the Complainant holds a valid national or regional registration and this 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.
a. Use can be shown by demonstrating the evidence of use – which can be a declaration and one specimen of current use in commerce
-Was submitted to, and validated by, the Trademark Clearinghouse.
b.Proof of use may also be submitted directly with the URS complaint
And
1.2.6.2 that the Registrant has no legitimate right or interest to the domain name; and
1.2.6.3 that the domain was registered and is being used in bad faith.”
The three elements are addressed by the Panel below:
1. Identical or Confusingly Similar:
The Complainant has been in existence for over a hundred years. The Name of the Company and the mark registered by it is a composition of the names of its founders.
In Marc J Randazza v. Reverend Crystal Cox, Eliot Bernstein Case No. D 2012-1525 WIPO Administrative Panel Decision, it was held that the disputed domain names marcjohnrandazza.com, marcjrandazza.com etc were registered by the Respondent each of which incorporated the Complainant’s personal name or surname –all of which were identical to the corresponding one’s of the Complainant’s RANDAZZA marks certainly denied the Complainant the right to reflect any of those marks in a domain name and the marks were all ordered to be transferred to the Complainant.
The Complainant in the Complainant claims to be the owner of the trademark LOCKHEED MARTIN. In support of it’s contention, the Complainant has annexed the USPTO Registration certificate for the trade mark LOCKHEED MARTIN in the name of the Complainant (Reg. No. 2,762,006 registered Sep 9, 2003) for Shirts, tops, tee shirts, sweat shirts, jackets, hats and caps in Class 25 (US CLS 22 and 39). Further, the registration has been renewed.
The Complainant’s LOCKHEED MARTIN trademark is not comprised of a descriptive word in which the Respondent might have an interest.
The Complainant also relies upon an Administrative Panel decision Lockheed Martin Corp. v. Ning Ye, WIPO Case No. D2000-1733 (May 17, 2001) that found that Complainant’s LOCKHEED mark is an “invented term,” and that LOCKHEED MARTIN “is an arbitrary mark” that is “highly distinctive,” increasing “the likelihood of Internet user confusion involving Complainant’s mark and the disputed domain name.”
The Complainant has established that it is a global security, innovation and aerospace with its principal business with the US Department of Defense and US federal government agencies and also supplies to the US armed forces along with military services and commercial operators in 40 nations.
The Respondent has registered the domain name in dispute, lockheedmartin.ninja
thus wholly incorporating the trademark “LOCKHEEDMARTIN” of the Complainant, which is found to sufficiently establish identity/confusing similarity. The addition of the extension .ninja does not in any manner obviate the complete identity in the trade mark and the domain name. In fact the purpose of .ninja extension domain names is to signify some speciality or skill and hence the same is generic of the said series of domains. Hence the prominent or essential feature of the respondent’s domain name is LOCKHEED MARTIN, which is a trade mark of the Complainant.
There is thus complete identity between the Complainant’s mark and the Respondent’s domain name.
2.No Rights or Legitimate Interests:
The Respondent has registered a domain name containing the Complainant’s registered trademark “LOCKHEEDMARTIN”. The Complainant has the USPTO Registration certificate for the trade mark LOCKHEED MARTIN in the name of the Complainant (Reg. No. 2,762,006) since 2003.
The Complainant has also been using the trademark for a long time. The Complainant has stated that the Respondent is neither affiliated to nor has been licensed or permitted to use the Complainant’s mark or any domain names incorporating the mark. The Respondent is not commonly known by the Domain name.
The Complainant has stated that the Respondent is not engaged in demonstrable preparations to use the Domain name with a bona fide offering of goods or services.
The Respondent is not making a legitimate noncommercial or fair use of the Domain Name. The Respondent uses the Domain Name to host a webpage providing click-through links to redirect users to sponsored websites, some of which purport to relate to the Complainant and its Mark and redirect to the website(s) of Complainant’s competitor.
As the Respondent has defaulted, the Respondent has not proved its rights or legitimate interests in the trademark. The Complainant has proved that the Respondent has no right or legitimate interests in the domain name.
3.Domain is Registered and Used in Bad Faith:
The Respondent registered the domain name < lockheedmartin.ninja>.
URS 1.2.6.3 elaborates on the circumstances that entail bad faith registration and use, which is reproduced below:
“1.2.6.3. ….
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 the 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 website 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 website or location or of a product or service on that website or location.”
It has already been established by the Complainant that the trademark “LOCKHEED MARTIN” is not comprised of descriptive words in which the Respondent might have an interest. The Complainant relies upon an Administrative Panel decision Lockheed Martin Corp. v. Ning Ye, WIPO Case No. D2000-1733 (May 17, 2001) that found that Complainant’s LOCKHEED mark is an “invented term,” and that LOCKHEED MARTIN “is an arbitrary mark” that is “highly distinctive,” increasing “the likelihood of Internet user confusion involving Complainant’s mark and the disputed domain name.”
A search shows that the Registrant Organisation is WhoisGuard,Inc of the domain name lockheedmartin.ninja A search of the who.is website gives Registrar info as follows:
Name: ENom Inc.
Whois Server:whois.enom.com
Status :clientTransferProhibited
The Complainant has pleaded that the Respondent is not making a legitimate noncommercial or fair use of the Domain Name and that the Respondent uses the Domain Name to host a webpage providing click-through links to redirect users to sponsored websites, some of which purport to relate to the Complainant and its mark and redirect to the website(s) of Complainant’s competitors.
The Complainant has stated that the Respondent’s use of the Domain Name to redirect Internet users to sponsored links that generate revenue for Respondent constitutes bad faith use and registration of the Domain Name under URS Policy 5.9.2 because
(a) the Domain Name contains Complainant’s famous LOCKHEED MARTIN trademark (5.9.2.1.);
(b) when selected, certain sponsored advertising links direct to Complainant’s partners, competitors, and/or relevant consumers such as Boeing, Raytheon, etc. (5.9.2.2.);
And
(c) Respondent is ultimately responsible for the content appearing in connection with the domain Name (5.9.2.3)
There is clear evidence that Registrant has registered and used the Domain Name in bad faith to intentionally attract, internet users to the Domain Name, for commercial gain, by creating a likelihood of confusion with Complainant’s Mark as to the source, sponsorship, affiliation, or endorsement of the Domain Name and the sponsored third-party links that are accessible through the Domain Name.
Respondent’s continued use and registration of the Domain Name will cause significant disruption to Complainant’s business.
As the Respondent has defaulted, the Examiner has based the above findings on the averments made by the Complainant, evidence provided by the Complainant and some facts that are in public knowledge.
The Complainant has proved that the Domain name has been registered and been used in bad Faith.
After reviewing the Complainant’s submissions, the Examiner determines that
the 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.
<lockheedmartin.ninja>
A search of the who.is website for the said domain nameshows the status as client TransferProhibited.
Prathiba M. Singh, Examiner
Dated: October 16, 2016
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