Complainant is General Dynamics Mission Systems, Inc., United States of America (“United States”), represented by Sperduto Thompson & Gassler PLC, United States.
Respondent is Keiron Tomasso, United States / Information Assurance Specialists, Inc., United States, represented by Volpe and Koenig P.C., United States. 2. The Domain Names and Registrar
The disputed domain names The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 27, 2019. On October 28, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 29, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on November 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 27, 2019. Upon request of Respondent, the due date for Response was extended to December 1, 2019, in accordance with the Rules, paragraph 5(b). The Response was filed with the Center on December 1, 2019. The Center appointed Robert A. Badgley as the sole panelist in this matter on December 12, 2019. 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 Complainant (“GDMS”) states that it is “among the world’s leading defense, national security, aerospace, and information technology companies”. Complainant alleges that its unregistered trademarks KG-175 and KG-175D “are all part of the family of GDMS products collectively known under the TACLANE registered mark”. The TACLANE mark was registered with the United States Patent and Trademark Office in September 2007. According to Complainant, its TACLANE and KG-175 marks “signify an ever-expanding portfolio of sophisticated GDMS High Assurance IP Encryptor (‘HAIPE’) network encryption products, including the following TACLANE models: Micro (KG-175D); NANO (KG-175N); FLEX (KG-175F); 1G (KG-175G); 10G (KG-175X); and, formerly, Classic and E100 (KG-175)”. These products are generally designed to secure through cryptographical means Top Secret and lesser-classified government information. Complainant states that “the designation ‘KG-175’ corresponds to a unique nomenclature recognized, issued, and registered by the [United States] National Security Agency (‘NSA’), and is synonymous with the GDMS family of HAIPE products”. According to this NSA nomenclature, “KG” signifies “Cryptographic Key Generation” and “KG-175” is the NSA-assigned title designated exclusively for Complainant’s HAIPE encryptor product line. Finally, a character after the KG-175 (e.g., KG-175D) represents “physically different products that functionally perform similar tasks, and is assigned exclusively to a single vendor” (in the example of KG-175D, to the vendor GDMS). According to Complainant, KG-175D is the NSA designation uniquely applicable to Complainant’s “Micro” encryption product. That NSA designation was conferred in 2006, and the NSA does not permit any other product to be identified as KG-175D. Complainant also asserts that “KG-175D and TACLANE-Micro are synonymous.” Complainant alleges further: “KG-175 has long been a distinctive identifier of GDMS’ goods and services in the national security marketplace such that GDMS has developed trademark rights in the unregistered mark ‘KG-175,’ and variants thereto, such as ‘KG-175D’. GDMS has been using the KG-175 nomenclature in the national security marketplace to sell its encryption products for over twenty years.” Annexed to the Complaint is a current screenshot of a page of Complainant’s website (located at “www.gd‑cs.com”), under the header “TACLANE Network Encryption,” which features various products, including one identified as “TACLANE-MICRO (KG-175D)”. The Panel notes that the historic web pages annexed to the Complaint, as old as May 29, 2000, routinely use the registered mark TACLANE to refer to and tout Complainant’s product line and its quality, and generally restricts “KG-175D” and other NSA designations to refer to a specific encryption product (and does so in tandem with the TACLANE mark). Complainant also annexes to the Complaint two December 12, 2001 articles in two industry publications. The articles appear to be the reproduction or summation of a General Dynamics press release. In any event, each of the articles contains the sentence: “The TACLANE KG-175 encrypts information transmitted over the Internet and other IP networks at a throughput of 10/100 Megabits per second (Mbps).” In the Complaint itself, Complainant omits the words “The TACLANE” at the beginning of the sentence. According to Complainant, “[t]hese industry publications constitute compelling evidence that the KG-175 mark has become a distinctive identifier that consumers exclusively associate with GDMS”. Complainant alleges that, on November 5, 2002, “GDMS issued a press release announcing the sale of its 10,000th TACLANE KG-175 unit”. The GDMA press release headline, however, read: “General Dynamics Delivers 10,000th TACLANE Encryptor”, but does not refer to the KG-175 model. By October 14, 2014, Complainant had sold its 100,000th TACLANE KG-175D encryption unit. Complainant issued a press release that day, the headline of which refers to “TACLANE-Micro” but not KG-175 or KG-175D. The designation “KG-175D” appears in a parenthetical in first sentence of the press release, immediately after the words “TACLANE® Micro.” The rest of the press release at least continues to use “TACLANE® Micro” to refer to the product in question. The Domain Name Respondent Keiron Tomasso is the owner of Information Assurance Specialists, Inc. (collectively “Respondent” or “IAS”). IAS manufactures and sells replacement power supplies, mounting solutions, and other “consumables”, for Complainant’s encryptor devices. According to the Response, IAS is not a competitor of Complainant; rather, Respondent’s products are merely “add-on products designed to work with the KG-175 models”. Respondent’s website currently states: “REPLACEMENT POWER SUPPLIES FOR GENERAL DYNAMICS KG-175 PRODUCTS IAS has developed replacement power supplies for General Dynamics’ KG-175 family of Type 1 HAIPE encryptors. We have fielded thousands of these Power Supply Units without a single failure to date. We keep them in stock and ready for immediate shipment. We currently make replacement power supplies for the following General Dynamics KG-175 Products: [the list includes the KG-175D]” Prior to the cease-and-desist letter discussed below, the website to which the Domain Names resolved featured the banner “KG-175 Knowledge Base” and the following “History”: “Welcome to KG-175.com, your source for important information regarding the KG-175 product family. The KG-175 Taclane product has been designed and produced by General Dynamics Corporation for over 2 decades. No other company has fielded more Type 1 HAIPE devices then General Dynamics, and the KG-175 is viewed as the flagship HAIPE product family in the market. Approx. 150,000 KG-175 devices have been fielded, and some even speculate that the number is even closer to 200,000. Models of the KG-175 include the Classic, A, B, D, G and the newest model being the FLEX. General Dynamics has also developed CHVP derivative products, known as the C100.” On May 24, 2018, Complainant’s counsel sent Respondent a cease-and-desist letter addressing alleged trademark infringement occurring on Respondent’s website. The letter did not address the Domain Names. Respondent’s counsel replied by letter dated July 10, 2018. Again, the Domain Names were not mentioned. The letters were more focused on the fact that Respondent was selling a product identified as the “IAS KG-175D Replacement Unit,” which was being marketed as an alternative to Complainant’s KG-175D encryptor. In the cease-and-desist letter, Complainant asserted that Respondent’s marketing of an “IAS KG-175D Replacement Unit” infringed on Complainant’s rights and created the false impression that Respondent was affiliated with Complainant. On March 28, 2019, Complainant’s counsel sent Respondent a cease‑and‑desist letter addressing, in addition to the “Replacement Unit” complaints, the alleged abusive registrations of the Domain Names by Respondent, at that time resolving to the “KG-175 Knowledge Base” websites. 5. Parties’ Contentions A. Complainant Complainant contends that it has satisfied all three elements required under the Policy for a transfer of the Domain Name. B. Respondent Respondent disputes Complainant’s contentions, arguing primarily that Complainant has failed to prove trademark rights in KG-175 and KG-175D. 6. Discussion and Findings Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy with respect to each of the Domain Names: (i) the Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and (ii) Respondent has no rights or legitimate interests in respect of the Domain Names; and (iii) the Domain Names have been registered and are being used in bad faith. A. Identical or Confusingly Similar The first question arising here is whether Complainant has established that it has trademark rights in KG-175 and KG-175D. The Panel acknowledges several intriguing arguments raised in the Response, but ultimately concludes that Complainant has carried its burden on this point. Complainant concedes that it has no registered trademark for KG-175 or KG-175D, but argues that it has acquired common law trademark rights in the NSA designation “KG-175”. In its press releases, Complainant relies heavily on TACLANE as a source identifier to distinguish its products from those made by other firms, but makes reference to KG-175 (or KG-175D) as well. The issue of unregistered trademark rights is taken up in section 1.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), which states in part: “The fact that a respondent is shown to have been targeting the complainant’s mark (e.g., based on the manner in which the related website is used) may support the complainant’s assertion that its mark has achieved significance as a source identifier.” This passage from WIPO Overview 3.0 seems particularly well suited to the instant case. There is no question that Respondent has registered three Domain Names containing KG-175 – a source identifier issued uniquely to Complainant to identify and distinguish a specific encryptor product made by Complainant, which Respondent itself acknowledges (calling it part of the “KG-175 family”) – to attract visitors to Respondent’s main website where Respondent sells accessories for the KG-175 or a purported substitute encryptor. Under the principles of the WIPO Overview 3.0 cited above, it seems difficult for Respondent, who itself has used the KG-175 source identifier to lure Internet traffic, to deny that KG-175 has acquired sufficient distinctiveness. Respondent asserts: “KG-175 is a short title issued by the U.S. government as a source identifier; as such, it has not acquired distinctiveness or established secondary meaning”. That is a non sequitur. The fact that the government has issued KG-175 as a “source identifier” to Complainant does not mean that KG-175 has not acquired distinctiveness. What is more important about this statement is Respondent’s own recognition that KG-175 is in fact a source identifier. It is, indeed, a source identifier for specific goods that Complainant is selling in the marketplace. It is, moreover, a source identifier issued solely to Complainant to identify and distinguish a particular type of encryptor device, made by Complainant and no one else. Trademarks are, at core, source identifiers for specific goods made by a specific company. Registered trademarks are government-issued certifications of a company’s source identifier for a product. The fact that KG-175 was granted to Complainant by the NSA, and did not spring from Complainant’s marketing department, should not be the fact on which this case turns. Rather, under a broader, more holistic approach implicitly sanctioned by certain passages of the WIPO Overview 3.0 and UDRP panel decisions reflecting such an approach, the circumstances of the particular case, including a respondent’s own conduct, should inform the question of trademark rights under the UDRP. This contextual approach is also reflected in many panels’ treatment of the other part of the first element under the UDRP, viz., whether the domain name is confusingly similar to the trademark. In this respect, section 1.7 of the WIPO Overview 3.0 states in relevant part: “In specific limited instances, while not a replacement as such for the typical side-by-side comparison [between the mark and the domain name], where a panel would benefit from affirmation as to confusing similarity with the complainant’s mark, the broader case context such as website content trading off the complainant’s reputation, or a pattern of multiple respondent domain names targeting the complainant’s mark within the same proceeding, may support a finding of confusing similarity.” Again, here we have Respondent registering three Domain Names incorporating KG-175 and using them to redirect to Respondent’s main website, where Respondent, for a time at least, sold the “IAS KG-175D Replacement Unit,” a product specifically marketed to consumers as an alternative to Complainant’s KG-175D product. (Respondent maintains that it is not a competitor of Complainant, and that it sells only products that are designed to work with, as add-ons, Complainant’s KG-175 product. This contention, however, is belied by the fact that, prior to the cease-and-desist correspondence discussed above, Respondent marketed at its website the “IAS KG-175D Replacement Unit”.) The Panel is unaware of any judicial or UDRP precedent regarding an NSA designation and trademark rights. To support its position that Complainant lacks trademark rights in KG-175, Respondent cites a prior decision under the UDRP, 01059 GmbH v. VARTEX Media Marketing GmbH/Stefan Heisig,WIPO Case No. D2004-0541. In that case, the complainant was a German telecommunication network operator. The complainant was assigned the interconnection operator prefix 01059 by the German Regulatory Authority. The respondent in that case was a telecom competitor of complainant, and had been assigned the prefix 01058 by the German Regulatory Authority. The respondent redirected the disputed domain name <01059.com> to its main website, located at “www.01058.com”. The 01059 GmbH panel denied the complaint, holding as follows: “The Complainant has not indicated that it has any trademark registration for the number 01059 nor has it provided evidence that it has unregistered trademark rights arising out of the use in commerce and the acquisition of secondary meaning of the number 01059 pursuant of Sec. 4 (2) German Trademark Act. The Complainant merely claims that it has registered and uses the number 01059 as part of its company name and that the number 01059 is protected as an “identification mark” pursuant to Sec. 5 of the German Trademark Act. Sec. 5 of the German Trademark Act defines the requirements for the protection of commercial designations but does not relate to trademarks or service marks. […] It is the clear language of the Policy that this administrative proceeding does only apply to disputes involving trademarks or service marks, but does not offer relief to holders of trade names, company names or any other commercial designations. As a result, in the event of abuse, holders of these rights are required to defend their legal rights through national judicial systems.” The Panel finds that the 01059 GmbH case represents a close interpretation of German trademark law as applied to an apparently limited record in that case, and is ultimately not as persuasive here as the consensus tenets of the WIPO Overview 3.0 discussed above. In sum, although this case presents a novel factual context, the Panel is persuaded that Respondent’s own conduct – registering three Domain Names incorporating KG-175 or KG-175D and redirecting them to Respondent’s website where products purporting to be replacements for the KG-175D product – establishes enough evidence that KG-175 and KG-175D have attained sufficient secondary meaning to constitute a common law trademark under the UDRP. The Panel also concludes that the Domain Names are confusingly similar to Complainant’s KG-175 and KG‑175D marks. The lack of hyphens in the Domain Names are of negligible importance, and the term “wiki” in the third Domain Name does not overcome the fact that the KG-175 mark is still recognizable within the Domain Names. Complainant has established Policy paragraph 4(a)(i). B. Rights or Legitimate Interests For each of the Domain Names, pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the Domain Names, among other circumstances, by showing any of the following elements: (i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the [Domain Names] or a name corresponding to the [Domain Names] in connection with a bona fide offering of goods or services; or (ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the [Domain Names], even if you have acquired no trademark or service mark rights; or (iii) you [Respondent] are making a legitimate noncommercial or fair use of the [Domain Names], without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. The Panel concludes that Respondent has no rights or legitimate interests in respect of the Domain Names. Much of the discussion in the previous section dealing with trademark rights applies to this element of the UDRP as well. As noted above, before the cease-and-desist letter, Respondent redirected the Domain Names to Respondent’s website, which featured the banner “KG-175 Knowledge Base” and stated, “Welcome to KG-175.com, your source for important information regarding the KG-175 product family”. This kind of greeting tends strongly to suggest to the consumer that the operator of the website is actually the purveyor of the KG-175 product, and not some unrelated manufacturer of KG-175 add-ons (and, indeed, a KG-175 “Replacement Unit”). In the Panel’s view, it appears from this record that Respondent was using the Domain Names to engender consumer confusion as to the source or sponsorship of the website, ultimately to increase its own product sales. Such conduct is not a bona fide offering of goods within the meaning of the above-quoted Policy paragraph 4(c)(i). Complainant has established Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith For each of the Domain Names, paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”: (i) circumstances indicating that Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out of pocket costs directly related to the Domain Names; or (ii) that Respondent has registered the Domain Names in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or (iii) that Respondent has registered the Domain Names primarily for the purpose of disrupting the business of a competitor; or (iv) that by using the Domain Names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location. The Panel concludes that Respondent has registered and used the Domain Names in bad faith under, at a minimum, the above-quoted Policy paragraph 4(b)(iv). When registering the Domain Names, Respondent plainly had in mind Complainant’s KG-175 and KG-175D source identifiers (Respondent disputes that these are trademarks but concedes that they are “source identifiers”). With respect to bad faith use under Policy paragraph 4(b)(iv), the Panel incorporates its discussion under the prior two elements. Complainant has established Policy paragraph 4(a)(iii). 7. Decision For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, Robert A. Badgley
Sole Panelist
Date: January 11, 2020
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