WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Lockheed Martin Corporation v. NBPro Hosting
Case No. D2003-0859
1. The Parties
The Complainant is Lockheed Martin Corporation, Bethesda, Maryland, United States of America, represented by Duane Morris LLP, United States of America.
The Respondent is NBPro Hosting, Santa Ana Heights, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with Tucows.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 29, 2003. On October 30, 2003, the Center transmitted by e-mail to Tucows a request for registrar verification in connection with the domain name at issue. On October 30, 2003, Tucows transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact (Richard Culbertson, identified in the Complaint as a Respondent, is the administrative contact for Respondent NBPro Hosting). In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on November 5, 2003. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 6, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was November 26, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent�s default on November 28, 2003.
A communication was received from a Mr. Randy Culbertson on November 29, 2003, stating that Richard Culbertson was deceased and offering assistance. On December 1, 2003, the Center notified Mr. Randy Culbertson (using his e-mail address and the other e-mail addresses for Respondent) that communications should be forwarded to Richard Culbertson�s estate or persons taking care of Richard Culbertson�s business. Further communications between the Center and Mr. Randy Culbertson failed to elicit a substantive response from Respondent.
The Center appointed Bruce E. O'Connor as the Sole Panelist in this matter on December 4, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Given the default of Respondent, the Panel is entitled to and does draw the inference from that default that all facts alleged in the Complaint are true. See paragraph 14(b) of the Policy.
Complainant owns numerous U.S. and international trademark registrations and applications for the trademark SKUNK WORKS, as well as numerous top-level domain names incorporating the trademark SKUNK WORKS (and variant spellings of and word combinations including the trademark SKUNK WORKS). Complainant also owns numerous U.S. and international trademark registrations and applications for a trademark including a stylized depiction of a skunk (the "SKUNK LOGO"). The noted registrations and applications include U.S. registrations which protect the marks SKUNK WORKS and SKUNK LOGO for "games, playthings and sporting articles, namely, scale model and miniature replicate airplanes, stuffed toy animals, flying toss discs and yo-yos," which registrations predate the registration by Respondent of the domain name in dispute on August 2, 2003.
Complainant alleges, but does not substantiate, that the trademark SKUNK WORKS and SKUNK LOGO have been in continuous use by Complainant and its predecessor since the mid-1940s; the marks are famous; the marks represent the good will of Complainant associated with the birthplace of the U-2® high-altitude plane, the SR-71® high-speed jet, the F-117® NIGHTHAWK® fighter jet, and many other famous aircraft; the 'mark' has been used to identify the source of other technical services and many products; a laboratory operated by Complainant using the mark SKUNK WORKS has been the subject of countless books, articles and television programs; Complainant licenses many companies to use its name and its valuable trademarks in selling model airplanes of various types, as well as other goods; such licensees are not permitted to use Complainant's trademarks in their domain names. These allegations are without substantiation. As a consequence, any arguments advanced by Complainant and based upon these allegations, have been given no consideration.
On October 14, 2003, the domain name in dispute was being employed in the URL "www." which displayed the term "SkunkworksRC.com" and the term "SkunkworksRC" as trade names and service marks. Also appearing at various pages on that website were depictions of a skunk (the "Skunk Logo") practically identical to Complainant's SKUNK LOGO, except for being reversed and holding what appears to be a "remote control" unit. The products being offered for sale at the website constitute model airplanes particularly adapted for remote control.
At some unspecified date, Complainant notified Respondent that Respondent's ownership and use of the domain name in dispute, and its use of the terms "SkunkworksRC.com" and "SkunkworksRC," and Respondent's use of its Skunk Logo, infringed various rights of Complainant. Complainant has not favored the Panel with any details of the type, date, manner, or mode of its communication with Respondent. Subsequent to that notification, the website operated at "www." was modified to remove the Skunk Logo, to post a copy of Complainant's communication, and to include a disclaimer. Complainant has not favored the Panel with further details concerning the revisions to the website at "www.." The Panel takes notice that, as of December 4, 2003, the website at "www." includes no depiction of a Skunk Logo, but continues to use the terms "SkunkworksRC.com" and "SkunkworksRC" as trade names and service marks. The current website also includes the following disclaimer: "This site is in no way connected with Lockheed Martin."
5. Parties' Contentions
A. Complainant
Complainant contends that the domain name in dispute is identical or substantially similar to Complainant's trademark SKUNK WORKS, being distinguished only by addition of the letters "RC" at the end of that trademark.
Complainant contends that Respondent has no rights or legitimate interest in respect of the domain name in dispute. In this regard, Complainant points out that:
Complainant is entitled to a presumption of ownership, validity, and the exclusive right to use the trademark SKUNK WORKS in connection with the goods for which that trademark has been registered; prior to notice of the dispute, Respondent offered for sale model airplanes and model airplane kits, using Complainant's trademarks SKUNK WORKS and SKUNK LOGO; Respondent registered the domain name in dispute after registration by Complainant of the trademark SKUNK WORKS for goods being sold using the domain name in dispute; Respondent has not been commonly known by the domain name in dispute; Respondent has not been authorized to register or use the domain name in dispute; Respondent is not making a legitimate non-commercial or fair use of the domain name in dispute, and has used the domain name in dispute for commercial gain, misleadingly to divert consumers and/or to tarnish the trademark SKUNK WORKS.
Complainant contends that Respondent registered and is using the domain name in dispute in bad faith. In this regard, Complainant points out that:
Commercial use of the domain name in dispute to sell model aircraft is an infringement of Complainant's rights in its trademark SKUNK WORKS, whose registration serves as constructive notice of a claim of ownership of that trademark; use of a registered mark in a domain name in competition with the owner of the mark establishes a lack of good faith; the addition of the letters "RC" to the trademark SKUNK WORKS does not give a commercial impression different from the trademark SKUNK WORKS by itself; Respondent's use of a Skunk Logo similar to Complainant's trademark SKUNK LOGO further illustrates an improper connection between the goods offered on the website using the domain name in dispute, and the goods of Complainant; Respondent intentionally attempted to attract for commercial gain, Internet users to the website at "www.," by creating a likelihood of confusion with the trademarks of Complainant as to the source, sponsorship, affiliation, or endorsement of that website or of the products or services offered on that website; Complainant's valuable good will and reputation are at the Respondent's mercy because of the likelihood of confusion; Complainant has suffered and will continue to suffer damage to its business reputation and good will, and the loss of sales and profits that Complainant would have made, but for Respondent's acts; Complainant will continue to be irreparably harmed by the continued confusion and deception of consumers resulting from Respondent's use of the trademark SKUNK WORKS; Respondent's use of the domain name in dispute constitutes a false designation of origin which is as a consequence likely to divert purchasers away from Complainant; Respondent's use of a disclaimer is ineffective to forestall a finding of bad faith registration or use.
B. Respondent
The Respondent did not reply to Complainant's contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states that the domain name can be transferred when Complainant has established the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(ii) that Respondent has no rights or legitimate interests in the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Panel finds that Complainant has established its rights in the trademark SKUNK WORKS.
The Panel also finds that the domain name in dispute is confusingly similar to the trademark SKUNK WORKS. The Panel takes notice that "RC" is a well-recognized abbreviation for "remote control." See Webster's Third New International Dictionary, Unabridged (1993). The addition of the generic term "RC" to the trademark SKUNK WORKS does not avoid confusion. See Nimlok Company v. Chris Griffin, WIPO Case No. D2003-0168, and the cases cited therein; Lockheed Martin Corp. v. Reid Harward, WIPO Case No. D2000-0799.
The Panel finds that Complainant has met its burden of proof under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy lists three circumstances in particular, without limitation, that demonstrate rights or legitimate interest of a domain name registrant to a domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice of the dispute, the Respondent's use of, or demonstrable preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or
(ii) the Respondent, as an individual, business, or other organization, has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or
(iii) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Regarding the circumstances of paragraph 4(c)(i) of the Policy, the date upon which Respondent was notified of the dispute and the date upon which Respondent began use of the domain name in dispute do not appear from the record. It does appear, however, that Respondent began use of the domain name in dispute prior to notice of the dispute, because Complainant's communication as to the dispute recognized use of the domain name in dispute in the operation of the website "www.." The Panel's inquiry turns as to whether the offering of goods or services by or under the authority of Respondent at the website "www." was bona fide. The Panel notes that the goods offered and sold at the website "www." fall within the scope of the goods covered by Complainant's U.S. trademark registration for the trademark SKUNK WORKS. It is well-settled that the use of another's trademark to sell competitive goods and services is an act of trademark infringement, and cannot under any circumstances be considered to be a bona fide offering of goods and services. See Ciba Specialty Chemicals Holding, Inc. v. G, WIPO Case No. D2003-0717. Accordingly, the circumstances of paragraph 4(c)(i) are not found.
Regarding paragraph 4(c)(ii), there is no evidence in the record that Respondent, as an individual, business, or other organization, has ever been known by the domain name in dispute. Accordingly, the circumstances of paragraph 4(c)(ii) are not found.
Regarding paragraph 4(c)(iii), the Respondent is engaged in a commercial use of the domain name in dispute. The issue thus revolves around whether or not Respondent is engaged in "fair use" of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Fair use has been found in circumstances where the domain name in dispute was being used in a descriptive sense to inform the public of a fact. For example, in NCAA v. Randy Pitkin, et al., WIPO Case No. D2000-0903, the domain name in dispute constituted various trademarks of the Complainant plus the descriptive terms "seats" and "tickets," which domain names were being used to direct consumers to websites at which those consumers could purchase tickets to events denominated by the trademarks. Further, the websites operating using the domain names in dispute also included disclaimers of affiliation with the Complainant, as here. But, it cannot be fair use where there is no legitimate connection between the Respondent and its use of the domain name in dispute, and the Complainant and its trademarks. The products offered and sold at the website "www." are neither products of Complainant nor authorized by Complainant. Even if such use were "fair use," the business being operated at the website "www." is clearly and unquestionably with intent for commercial gain, as discussed in more detail in the following section of this Decision dealing with bad faith. See Six Continents Hotels, Inc. v. Georgetown Inc., WIPO Case No. D2003-0214.
Accordingly, the circumstances of paragraph 4(c)(iii) of the Policy are not found.
The Panel finds that Complainant has met its burden of proof under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists four circumstances in particular, without limitation, that demonstrate evidence of the registration and use of a domain name in bad faith. The circumstances of paragraph 4(b)(iv) appear to be pertinent:
(iv) By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.
The Panel finds that these circumstances are fairly met by the evidence of record. In this regard, the Panel notes that the domain name in dispute incorporates the entirety of Complainant's trademark SKUNK WORKS, and that the products offered and sold at the website "www." come within the scope of the goods protected by Complainant's trademark registration for SKUNK WORKS. Likelihood of confusion is, as previously stated, a necessary consequence of the trademark infringement engaged in by or under authority of Respondent at the website "www.."
Trademark infringement, however, is but one factor in the determination of bad faith under the Policy. What is also required is a finding of intentional acts that attract, for commercial gain, Internet users to a website employing the domain name in dispute. The intentional nature of Respondent's acts is apparent from the previous use, at the website "www.," of a Skunk Logo that is quite similar to the trademark SKUNK LOGO of Complainant. The Panel also is struck by the previous and continued use of the terms "SkunkworksRC.com" and "SkunkworksRC" as trade names and service marks at that website, all in connection with the offering and sale of goods within the scope of Complainant's trademark registrations for SKUNK WORKS and the SKUNK LOGO. Given this evidence, there is no way that Respondent could contend that its use of the domain name in dispute was not an intentional act to profit from the good will and reputation of Complainant.
Use of a disclaimer, of any connection with Complainant, on the website "www." is not sufficient to avoid a finding of bad faith. See Arthur Guinness Son & Co. (Dublin) Limited. v. Dejan Macesic, WIPO Case No. D2000-1698. As has been pointed out in a number of previous decisions, the use of a disclaimer at a website using the domain name in dispute is usually too little, too late. It is only by unauthorized use of the trademark SKUNK WORKS that a consumer is brought to the website "www." at which the disclaimer appears. See Dr. Ing. h.c. F. Porsche AG v. Sabatino Andreoni, WIPO Case No. D2003-0224; ISL Worldwide and the Federal Internationale de Football Assoc. v. Western States Ticket Service, WIPO Case No. D2001-0070; and Pliva, Inc. v. Eric Kaiser, WIPO Case No. D2003-0316.
The Panel finds that Complainant has met its burden of proof under paragraph 4(a)(iii) of the Policy.
7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to Complainant.
Bruce E. O'Connor
Sole Panelist
Dated: December 18, 2003
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