Rocket Lab USA, Inc. v. RocketLab Inc.
Claim Number: FA2303002036243
Complainant is Rocket Lab USA, Inc. (“Complainant”), represented by Ronald H. Spuhler of McAndrews Held & Malloy Ltd., US. Respondent is RocketLab Inc. (“Respondent”), represented by Joerg Sosna, Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <rocketlab.com>, registered with GoDaddy.com, LLC.
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelists in this proceeding.
Luca Barbero, Chair
The Hon. Neil Anthony Brown KC, Panelist
Charles A. Kuechenmeister, Panelist
Complainant submitted a Complaint to Forum electronically on March 17, 2023; Forum received payment on March 17, 2023.
On March 20, 2023, GoDaddy.com, LLC confirmed by e-mail to Forum that the <rocketlab.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 March 23, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 8, 2023 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@rocketlab.com. Also on March 23, 2023, 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.
A timely Response was received and determined to be complete on May 8, 2023.
An Additional Submission was sent to the Forum by the Complainant on May 16, 2023, followed by a Respondent’s Additional Submission on May 21, 2023.
On May 19, 2023, pursuant to Respondent’s request to have the dispute decided by a three-member Panel, Forum appointed Luca Barbero as Chair, The Hon. Neil Anthony Brown KC as co-Panelist and Charles A. Kuechenmeister as co-Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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 <rocketlab.com> domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is an end-to-end space company founded in New Zealand in 2006, that manufactures spacecraft components and provides launch services for space vehicles.
By November 2009, it was the first private company in the Southern Hemisphere to reach space and in 2010, it was awarded a United States government contract to study space travel, which allowed it to contract for NASA resources such as personnel, facilities and equipment for commercial launch efforts.
In 2013, Complainant moved its headquarters from New Zealand to the United States and over the next several years, with help from investments by entities such as Callaghan Innovation and Lockheed Martin, its space business grew.
Complainant contends that the <rocketlab.com> domain name is identical to the ROCKET LAB mark in which Complainant has rights as it reproduces the trademark in its entirety with the mere addition of the generic Top-Level Domain (TLD) “.com”.
With reference to rights or legitimate interests in respect of the <rocketlab.com> domain name, Complainant states that Respondent is not commonly known by the <rocketlab.com> domain name and has never been authorized or licensed by Complainant to use the ROCKET LAB mark in any way.
In addition, Complainant submits that Respondent is not using, and has never used, the <rocketlab.com> domain name for any bona fide offering of goods or services or legitimate non-commercial or fair use, since the <rocketlab.com> domain name has not been used in connection with an active website.
With reference to the circumstances evidencing bad faith, the Complainant states that the Respondent “squatted on the domain at issue for twenty years, never using the domain for a legitimate purpose”. The Complainant also asserts that, during contacts between the parties prior to the filing of the Complaint, the Respondent mentioned to it that it had received an offer of $500,000 for the <rocketlab.com> domain name, suggesting that it would only consider an offer higher than the $500,000 previously offered.
Complainant further asserts that “Respondent’s failure to use the domain, followed by its attempt to create a bidding war between Complainant and its competitor are precisely the types of bad faith actions that the Policy seeks to prevent”.
B. Respondent
Respondent submits that its company Rocketlab Inc. was established in Canada in 2001, i.e. 17 years before Complainant obtained its first relevant trademark registration, and serves as an investment company to hold the investments of its founders, Andrew Sit (“Mr. Sit”), Suk Ho Emmy Choi (“Ms. Choi”) and others, to incubate startup and emerging companies and to develop various intellectual property assets.
Respondent states that, in 2003, Respondent’s company relocated to Hong Kong, in view of expanding its activities under the brand, business and trade name RocketLab with a broader focus also on the Asian market.
Respondent asserts that it has common law rights in the <rocketlab.com> domain name based on its continuous use of the sign that predates Complainant’s trademark. Respondent also contends that, since its first registration, the <rocketlab.com> domain name was, and continues to be, actively used by the Respondent for multiple commercial purposes, including for email correspondence related to bank and investment matters, as well as for government correspondence and registrations, regulatory related matters, and as a formal and ongoing legal notification method, which is aligned with Respondent and its founders’ business activities.
Moreover, Respondent highlights that Respondent’s business activities also include transactions such as legally binding contracts under the RocketLab name pertaining to its founders and their affiliated entities and submits that these and the above reasons are all good indicators of Respondent’s legitimate business activities.
Therefore, Respondent submits that it is commonly known by the designation RocketLab and that it is using the <rocketlab.com> domain name in connection with a bona fide offering of services.
In addition, Respondent emphasizes that, since the registration of the <rocketlab.com> domain name and in parallel with its legitimate and bona fide business activities, it also used the disputed domain name for private, non-commercial purposes, including (a) hosting the founders’ wedding website including invitations and RSVP functionality, and (b) a private photo repository documenting their subsequent life together, factors which would further reinforce the legitimacy of its RocketLab brand, Respondent’s fair use of the <rocketlab.com> domain name and its lack of bad faith in the use of the same.
With reference to the circumstances evidencing bad faith, Respondent argues that Respondent could not have registered the <rocketlab.com> domain name in bad faith in March 2000 because Complainant’s trademark rights did not accrue until much later.
On the contrary, Respondent emphasizes that Complainant should have been aware of the fact that the <rocketlab.com> domain name was not available at the time of registering its own company name and domain name but, in any case, chose to name its company "Rocket Lab USA" and registered the trademark ROCKET LAB, confusingly similar to Respondent’s common law trademark, in 2018.
Respondent further states that it did not register or acquire the <rocketlab.com> domain name primarily for the purpose of selling, renting, or otherwise transferring the <rocketlab.com> domain name registration to Complainant for valuable consideration in excess of out-of-pocket cost directly related to the <rocketlab.com> domain name.
In addition, Respondent submits that i) it did not register the <rocketlab.com> domain name in order to prevent Complainant from reflecting its mark and that Respondent has not engaged in a pattern of such conduct, ii) Respondent did not register the <rocketlab.com> domain name primarily for the purpose of disrupting the business of a competitor and iii) Respondent has not intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location by creating a likelihood of confusion with Complainant’s mark.
Respondent requests the Panel to consider denying the Complaint based on the equitable doctrine of laches, since Complainant claims that it started its business in New Zealand in 2006 and filed its trademark applications in the United States in 2016 but did not take any further action to obtain the domain name from Respondent until August 2022.
In this respect, Respondent states that i) the founder of virtually any business in the 21st century, and certainly the founder of what appears to be a high technology focused company like Complainant, would have checked whether a given domain name was available; and (ii) Complainant knowingly operated under a name and applied for a trademark for a name and mark that it knew was already in use and whose associated domain name had already been registered by another party and was in use. Respondent further states that transferring the domain name from it now would irreparably prejudice Respondent.
Respondent concludes that the Complaint was brought primarily to harass Respondent and that Complainant thus engaged in reverse domain-name hijacking, since the Complaint is not based on a legitimate concern nor legitimate grounds, but rather an attempt to circumvent the proper channels for acquiring the <rocketlab.com> domain name after Complainant failed to acquire it through legitimate means.
1. Complainant is a United States company, founded in New Zealand, that manufactures spacecraft components and provides launch services for space vehicles.
2. Complainant has provided evidence of ownership of the following trademark registrations for ROCKET LAB by virtue of its registration of those trademarks with the United States Patent and Trademark Office ( “USPTO”) and therefore its rights in those marks, namely:
- United States trademark registration No. 5526763 for ROCKET LAB (word mark), filed on March 21, 2017 and registered on July 31, 2018, in international class 39;
- United States trademark registration No. 5567327 for ROCKET LAB (word mark), filed on March 1, 2016 and registered on September 18, 2018, in international classes 7, 9 and 12;
- United States trademark registration No. 6031346 for ROCKET LAB (figurative mark), filed on October 16, 2017 and registered on April 14, 2020, in international classes 7, 12 and 42;
- United States trademark registration No. 6031671 for ROCKET LAB (figurative mark), filed on October 16, 2017 and registered on April 14, 2020, in international class 39;
- United States trademark registration No. 6182415 for ROCKET LAB (word mark), filed on October 11, 2017 and registered on October 27, 2020, in international class 25;
- United States trademark registration No. 6208263 for ROCKET LAB (word mark), filed on October 11, 2017 and registered on December 1, 2020, in international class 35.
4. The disputed domain name <rocketlab.com>, was registered by Respondent on March 16, 2000 and is pointed to a website with restricted access displaying the indication “ROCKETLAB THIS SITE IS FOR AUTHORIZED USE ONLY All access is logged”.
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.
PRELIMINARY PROCEDURAL ISSUE: ADDITIONAL SUBMISSIONS
Before ruling on the merits of the case, the Panel addresses the issue of the Parties’ Additional Submissions.
No provision concerning Additional Submissions is made in the ICANN Rules or the Forum’s Supplemental Rules, except at the request of the panel according to paragraph 12 of the ICANN Rules, which provides that the panel, in its sole discretion, may request any further statements or documents from the parties it may deem necessary to decide the case.
According to paragraph 10 of the Rules, the Panel has the authority to determine the admissibility, relevance, materiality and weight of the evidence, and also to conduct the proceedings with due expedition, ensuring that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.
Normally, additional submissions are generally discouraged - unless specifically requested by the panel - and the party submitting an unsolicited additional submission should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response.
Accordingly, UDRP panels generally accept additional submissions only when they provide material new evidence or a fair opportunity to respond to arguments that could not reasonably have been anticipated.
The Panel notes that both supplemental submissions are mostly re-arguing what the Parties already provided in their Complaint and in the Response and commenting on the other party’s allegations without adding any new circumstance which could be relevant to decide the merit of the case.
See YETI Coolers, LLC v. Ryley Lyon / Ditec Solutions LLC, FA 1675141 (Forum July 11, 2016) (“because the Complainant’s Additional Submission did not address any new legal principles or facts that could not have been anticipated in the Complaint, Panel disregards the Complainant’s Additional Submission”). Normally, a Panel would give a complainant the benefit of the doubt when the respondent asserts reverse domain name hijacking, but in this case the facts are such that Complainant should have anticipated such a claim and addressed these issues in its Complaint. Its Additional Submission did nothing but rehash the factual and legal assertions contained in its Complaint, without responding to Respondent’s evidence about its use of the domain name in connection with its business operations.
In view of the above and since neither Complainant nor Respondent have demonstrated the presence of any exceptional circumstance required for admitting any additional submissions, the Panel has decided not to consider the Parties’ Additional Submissions. Nevertheless, the Panel notes that, should the Panel have admitted such Additional Submissions, the outcome of the case would have been the same.
SUBSTANTIVE ISSUES
Complainant has provided evidence of ownership of the United States trademark registration Nos. 5526763, 5567327, 6182415 and 6208263 for the word mark ROCKET LAB. See Annexes C, D, G and H to the Complaint. Registration of a mark with the USPTO is a valid showing of rights in a mark under Policy 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy 4(a)(i).”).
Therefore, the Panel finds that Complainant has established its rights in the ROCKET LAB mark under Policy ¶ 4(a)(i).
The <rocketlab.com> domain name reproduces the ROCKET LAB mark without any alteration, merely adding the gTLD “.com”. The addition of a gTLD fails to distinguish a disputed domain name sufficiently from a mark according to Policy ¶ 4(a)(i). See Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Forum Oct. 17, 2007) (“[T]he inclusion of the generic top-level domain ‘.com’ is inconsequential to the Policy 4(a)(i) analysis, as a top-level domain is required of all domain names.”).
Therefore, the Panel finds that Complainant has proven that the disputed domain name is identical to a trademark in which Complainant has established rights under Policy ¶ 4(a)(i), namely each of the trademarks referred to above.
Complainant is required to make a prima facie case that Respondent lacks rights and legitimate interests in the <rocketlab.com> domain name under paragraph 4(a)(ii) of the Policy, then the burden shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case) and Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
In the case at hand, Complainant submits that Respondent lacks rights or legitimate interests in the <rocketlab.com> domain name since i) Respondent has in no way been authorized or licensed by Complainant to use the ROCKET LAB mark in any way, ii) Respondent is not commonly known by the <rocketlab.com> domain name and iii) by pointing the <rocketlab.com> domain name since the registration in 2000 to a website where no substantive content or information has been published, Respondent has failed to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate non-commercial or fair use.
However, Respondent submitted incorporation records, government and regulatory correspondence, bank account statements, and agreements entered into by Respondent’s affiliated Hong Kong company and other entities (see Annexes A through N) showing that i) its company RocketLab Inc. was incorporated in 2001 and Respondent traded under such company name over the years; ii) email addresses based on the <rocketlab.com> name have been indicated as contact address for the delivery of notices or communications in Agreements and Engagement Letters executed, well before Respondent had notice of the dispute, by Complainant’s Hong Kong affiliated company RocketLab.
On the basis of the documents submitted, the Panel finds that Respondent has demonstrated that it is commonly known by a name corresponding to the <rocketlab.com> domain name according to Policy ¶ 4(c)(ii). See Kryton Mktg. Div., Inc. v. Patton Gen. Contracting, FA 123868 (Forum Oct. 21, 2002) (holding that the respondent had rights and legitimate interests in the disputed domain name as it had been commonly known by the domain name and has been using the name "liquid siding" in marketing its goods and services since the 1990s).
Moreover, the Panel finds that Respondent’s use of the <rocketlab.com> domain name in connection with email addresses used for business purposes is sufficient to demonstrate Respondent’s use of the <rocketlab.com> domain name for a bona fide offering of goods or services according to Policy ¶ 4(c)(i). See Puky GmbH v. Agnello, D2001-1345 (WIPO Jan. 3, 2002) (holding that the respondent’s submission of an invoice demonstrating that the respondent has been planning to trade under the name PURKHON KI YADEN since at least as early as Jan. 28, 2000, was evidence that the respondent had rights or legitimate interests in the disputed domain name); see also Invicta Watch Co. of Am., Inc. v. Santana, FA 727672 (Forum Aug. 3, 2006) (“Moreover, Respondent used the domain name <invicta.com> for a significant period of time for business purposes, thus further highlighting his rights and legitimate interests in the title. Respondent alleges that at all times his business was entirely unrelated to that carried on by Complainant.”).
Therefore, the Panel finds that Complainant has failed to demonstrate that Respondent has no rights or legitimate interests in the disputed domain name, and that Respondent has demonstrated that it does have such rights and legitimate interest in the domain name, according to Policy ¶ 4(a)(ii).
Complainant is required, under Policy ¶ 4(a)(iii), to prove that Respondent registered and is using the <rocketlab.com> domain name in bad faith.
Respondent’s registration of the <rocketlab.com> domain name predates Complainant’s first trademark registration of the ROCKET LAB mark by eighteen years. Moreover, according to Complainant’s allegations, “Rocket Lab was founded in 2006 in New Zealand”, six years after the registration of the <rocketlab.com> domain name. Therefore, Respondent could not have been aware of Complainant at the time of registration, as the Complainant did not exist at that time.
See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017) (“Whatever the merits of Complainant’s arguments that Respondent is using the Domain Name in bad faith, those arguments are irrelevant, as a complainant must prove both bad faith registration and bad faith use in order to prevail.”); see also Faster Faster, Inc. DBA Alta Motors v. Jeongho Yoon c/o AltaMart, FA 1708272 (Forum Feb. 6, 2017) (“Respondent registered the domain name more than a decade before Complainant introduced the ALTA MOTORS mark in commerce. Respondent therefore could not have entertained bad faith intentions respecting the mark because it could not have contemplated Complainant’s then non-existent rights in [the mark] at the moment the domain name was registered.”).
Moreover, Respondent has demonstrated that the <rocketlab.com> domain name, despite being pointed to a website not displaying any substantive content publicly available, has been used for the creation of email addresses, which have been used for business purposes since many years before Respondent received notice of the present dispute. Furthermore, there is no evidence that Respondent ever targeted Complainant and its trademark in the use of the <rocketlab.com> domain name. See Vidiots Delight, Inc. v. Digitellum, Inc., D2000-1086 (WIPO Oct. 18, 2000) (finding no bad faith where the respondent was using the domain name in connection with its business even though no website was yet developed).
Respondent submitted that the Complaint should be based on the doctrine of laches, in view of Respondent’s delay in bringing the Complaint. The Panel finds that the doctrine of laches does not apply as a defense in a UDRP proceeding, and correspondingly choose to disregard Respondent’s assertions in this respect. See Hebrew Univ. of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO Oct. 7, 2002) (“The remedy available in an Administrative Proceeding under the Policy is not equitable. Accordingly, the defense of laches has no application.”)[i]. As mentioned above, Complainant has in any event failed to prove that Respondent registered and used the disputed domain name in bad faith.
Therefore, the Panel finds that Complaint also fails under Policy ¶ 4(a)(iii).
REVERSE DOMAIN NAME HIJACKING
Paragraph 15(e) of the Rules provides that, if “after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.
The Rules define Reverse Domain Name Hijacking as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.”
The Panel concludes that Complainant’s actions constitute Reverse Domain Name Hijacking for the following reasons:
i) Complainant, who is represented by a lawyer, should have appreciated the weakness of its case in view of the fact that the <rocketlab.com> domain name was registered long before Complainant acquired trademark rights in the ROCKET LAB mark and many years before Complainant was founded;
ii) the Complainant’s case appears to be based on the argument that Respondent’s failure to use the <rocketlab.com> domain name in connection with an active website amounts to bad faith. The Panel finds that Complainant should have contemplated that it could not succeed with such an argument since there is no evidence that Respondent ever targeted Complainant;
iii) Complainant should have known that Respondent’s use of the domain name for its email correspondence qualifies as using the domain name in connection with a bona fide offering of goods or services; and
iv) the circumstances of the case clearly show that the Complaint was filed as a “Plan B” after Complainant’s failure to purchase the disputed domain name from the Respondent.
Therefore, the Panel finds that Complainant has engaged in Reverse Domain Name Hijacking.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <rocketlab.com> domain name REMAIN WITH Respondent.
Luca Barbero, Chair
The Hon. Neil Anthony Brown KC, Co-Panelist
Charles A. Kuechenmeister, Co-Panelist
Dated: June 5, 2023
1. Panellist Brown’s view on this issue is that it is possible on an appropriate set of facts to make out the defence of laches and that, although they are not precedents, there are numerous UDRP decisions where that defence has been recognized and applied. In the present case, Complainant has not vigorously pursued its claimed rights to the domain name and there are indications in the record of the proceeding that it has unduly delayed the prosecution of those rights. Moreover, it is not correct to say as it was said in Hebrew Univ. of Jerusalem v. Alberta Hot Rods, (supra) that the remedies under the UDRP are “not equitable”. They are certainly not common law remedies, as monetary damages are not available under the UDRP. The remedies in UDRP proceedings are very much akin to two well-established equitable remedies, namely (a) an injunction to order the Respondent to relinquish the domain name and transfer it to the Complainant or an order for cancelation of the registration of the domain name and (b) restitution to the Complainant of the benefit of the domain name to which it claims it is entitled. Accordingly, if laches were the only issue in dispute in this proceeding, Panellist Brown would have held that the Complainant could not succeed because of its laches or delay in bringing and pursuing its claim. Moreover, despite the Respondent raising the issue of laches, the Complainant did not reply to it or explain the reasons for the delay, other than to say, under Reverse Domain Name Hijacking, that “As noted, the parties have been discussing this domain for quite some time, having exchanged multiple emails, participated in a call and now submitted briefs in this proceeding.” None of that is an excuse or explanation for why the Complainant has delayed bring its claim. Indeed, as the Respondent submitted in its Response,
“Since the date of creation of the Domain Name is a matter of public record in the WHOIS database, the Complainant knew full well that the Domain Name had already been registered by the Respondent at that early date, 16 March 2000, which is 18 years before the Complainant’s first trademark registration in the United States and 6 years before the Complainant’s start of business in New Zealand.”
There has therefore been a long and unexplained delay in the Complainant having pursued its claim for the domain name.
Laches is, however, not the only issue in this proceeding and it is not therefore necessary to make a finding on that issue. The Complainant has failed, not solely because of laches, but because it has fallen well short of the required proof of the more substantive and pivotal issues involved in the case.
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