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Lockheed Martin Corporation v. Ning Ye [2001] GENDND 971 (17 May 2001)

World Intellectual Property Organization

The Complainant is Lockheed Martin Corporation, a corporation organized in the State of Maryland, United States of America (USA), with place of business in Bethesda, Maryland, USA.

The Respondent is Ning Ye, with an address in Washington, D.C., USA.

The disputed domain name is <lockheedmartin.org>.

The registrar of the disputed domain name is Network Solutions, Inc., with business address in Herndon, Virginia, USA.

The essential procedural history of the administrative proceeding is as follows:

(a) Complainant initiated the proceeding by the filing of a complaint via e-mail received by the WIPO Arbitration and Mediation Center ("the Center") on December 13, 2000, and by courier mail received by the Center on December 14, 2000. Complainant paid the requisite filing fees. On December 19, 2000), the Center transmitted a Request for Registrar Verification to the registrar, Network Solutions, Inc. (with the Registrar’s Response received by the Center on December 20, 2000).

(b) On December 28, 2000, the Center transmitted notification of the complaint and commencement of the proceeding to Respondent via e-mail, telefax and courier mail.

(c) On January 16, 2001, Respondent’s response was received via e-mail by the Center, and on January 22, 2001, Respondent’s response was received via courier mail by the Center. Respondent also transmitted his response to Complainant.

(d) By letter of April 10, 2001, Complainant transmitted to the Center and Respondent a supplemental notice attaching a declaration by its counsel concerning conduct by Respondent occurring subsequent to the filing of its complaint, accompanied by a request to the Panel to consider such supplemental notice.

(e) On April 30, 2001, the Center notified Complainant and Respondent of the appointment of Frederick Abbott, Donald Jamieson and Mark Partridge as the Administrative Panel in this matter. Each of the aforesaid panelists had provided to the Center an executed Statement of Acceptance and Declaration of Impartiality and Independence. The Center notified the Panel that, absent exceptional circumstances, it would be required to forward its decision to the Center by May 14, 2001. On April 30, 2001, the Panel received an electronic file in this matter by e-mail from the Center. The Panel subsequently received a hard copy of the file in this matter by courier mail from the Center.

(f) By e-mail of May 13, 2001 (with hard copy by mail), Respondent transmitted to the Center, the Panel and Complainant a response to the supplemental notice and declaration submitted by Complainant.

The Panel has not received any requests from Complainant or Respondent regarding further submissions, waivers or extensions of deadlines, and the Panel has not found it necessary to request any further information from the parties. The proceedings have been conducted in English.

Complainant has registered the word service mark "LOCKHEED MARTIN" on the Principal Register of the United States Patent and Trademark Office (USPTO), reg. no. 2,022,037, dated December 10, 1996. Such registration is in International Class (IC) 42, covering "new product research and development, design and testing for new product development, all relating to aerospace, aeronautics systems and vehicles, electronic systems, information systems, energy systems, materials technology, and environmental enhancement." The aforesaid USPTO service mark registration claims a date of first use in commerce of March 1995. Complainant has registered a combination design and word service mark for "LOCKHEED MARTIN" on the Principal Register of the USPTO, reg. no. 2,022,038, dated December 10, 1996, covering the same services as the word-only service mark, and claiming the same date of first use in commerce. The aforesaid service marks are valid and subsisting. Complaint, para. 12 & Annex 3.

Complainant has also registered a combination design and word trademark for "LOCKHEED MARTIN" on the Principal Register of the USPTO, reg. no. 2,289,109 dated October 26, 1999 (in IC 25, covering "T-Shirts and Caps"), reg. no. 2,289,019, dated October 26, 1999 (in IC’s 8, 14, 16, 18, 20 and 25), covering various merchandise), and reg. no. 2,289,018, dated October 26, 1999 (in IC’s 18, 21, 24 and 28, covering various merchandise). Id.

The term "LOCKHEED" was invented by Complainant (or its predecessor) (id., para.12).

The mark "LOCKHEED MARTIN" was created following the merger of Lockheed Corporation and Martin Marietta in 1995. Lockheed Corporation was incorporated in 1932 (id.).

Complainant has registered the domain name <lockheedmartin.com> and maintains an active commercial website at the Internet address <www.lockheedmartin.com> (Panel visit of May 11, 2001).

Complainant uses the "LOCKHEED MARTIN" mark in connection with sales in the United States and other countries of goods, including military equipment, and services (Panel visit to <www.lockheedmartin.com>, May 11, 2001).

According to the Network Solutions’ verification response, Respondent is the listed registrant of the disputed domain name <lockheedmartin.org>. A Network Solutions WHOIS database printout of December 12, 2000, indicates that the record for the disputed domain name was created on January 16, 2000, and was last updated on January 16, 2000. Complaint, Annex 1.

Respondent has used the disputed domain name in connection with a website containing content and links of various kinds. This content included advertisement for back issues of two newspapers on CD-ROM with request for a donation. The content also included a "Heroes List". Links were included to traditional Chinese newspapers and electronic magazines, to direct or indirect "discussion, literature and discovery" (including topics relating to sex), and to commercial tourism service providers. Respondent’s website contained several commercial advertisements, including for a car rental company, and for companies offering domain name registration services. Complaint, para. 12 and Annex 7, Declaration of Juann Wen, signed and dated December 6, 2000, at Los Angeles, California.

Respondent is a U.S. citizen, born in the People’s Republic of China. He is a leader of a non-governmental organization, the Free China Movement, that actively opposes the present government of China. The Free China Movement maintains a website at Internet address <www.freechina.net>. Deposition of Ye Ning, dated November 9, 2000, taken in connection with Lockheed Martin Corporation v. Network Solutions, Inc., Case No. 4:00-CV-0405-A, filed April 20, 2000, Federal District Court, N.D. Texas, Complaint, Annex 4.

Respondent asserts that the <www.lockheedmartin.org> website is occasionally used by the Free China Movement to "send uncensored, non-commercial information (with no charge) to millions of slaves behind communist iron curtain, in order to speed up the total collapse of the world’s most dangerous evil empire" (Response, para. V).

According to Complainant, following initiation of this proceeding, Respondent contacted Complainant’s counsel by telephone and requested a "token payment" for transfer of the disputed domain name. In response to Complainant’s query as to the amount Respondent would consider appropriate as a token payment, Respondent indicated $9,900. Complainant rejected this offer, and counter-offered to pay Respondent his out-of-pocket expenses in connection with registration. Respondent rejected Complainant’s counter-offer. Declaration of Jonathan A. Land, counsel for Complainant, April 10, 2001, filed in connection with this proceeding.

According to Respondent, while he initiated the telephone conversation with Complainant’s counsel referred to in the preceding paragraph, he did so for the purposes of settling this dispute. Upon Complainant’s request regarding a specific grounds for settlement and transfer of the disputed domain name, Respondent suggested that not more than $10,000 be contributed confidentially by Complainant to a non-profit charity designated by Respondent. Respondent also referred to an alleged collective resignation of a first arbitration panel appointed in this proceeding, "probably concerning sensitive political and moral aspects involved in the deep nature of this case." E-mail from Ning Ye to the Center, Panel and Complainant of May 13, 2001.

Upon query from this Panel, the Center advised that no prior administrative panel had been appointed in this matter, nor had any such panel collectively resigned. E-mail from Presiding Panelist to the Center of May 13, 2001, and e-mail from the Center to Presiding Panelist of May 14, 2001.

The Service Agreement in effect between Respondent and Network Solutions subjects Respondent to Network Solutions’ dispute settlement policy, the Uniform Domain Name Dispute Resolution Policy, as adopted by ICANN on August 26, 1999, and with implementing documents approved by ICANN on October 24, 1999. The Uniform Domain Name Dispute Resolution Policy (the "Policy") requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration (Policy, paragraph 4(a)).

Complainant asserts that it is the holder of valid and subsisting trademark and service mark registrations for "LOCKHEED MARTIN" (see Factual Background, supra). Complainant indicates that the disputed domain name, <lockheedmartin.org>, is identical or confusingly similar to its "LOCKHEED MARTIN" mark.

Complainant states that Respondent is not commonly known by the "LOCKHEED MARTIN" name, and has not been authorized to use that mark for any purpose.

Respondent has asserted in deposition testimony in another action that he registered the name <lockheedmartin.org> without knowledge of Complainant’s mark. Respondent indicated that the name "martin" was based on the last name of an office acquaintance, and that the term "lockheed" was chosen after Respondent was unable to register any domain name using the term "lucky" or a variation thereof. Respondent first asserted that the name "Lockheed" was taken from a book of American baby names. Complainant asserts and has submitted numerous domain name-availability search page printouts indicating that the domain name <luckymartin.com> and variations thereof are not presently registered.

Complainant asserts that Respondent’s <www.lockheedmartin.org> website is used for commercial purposes.

Complainant asserts that Respondent’s use of its mark in connection with disseminating "anti-Chinese messages and sexually explicit content constitutes tarnishment of Complainant’s mark."

Complainant states that Respondent’s use of its mark to bypass Chinese government "firewalls" with anti-government messages could damage commercial relations between Complainant and China. Complainant suggests that such activity constitutes tarnishment of its mark, and that such tarnishment may be grounds for a finding of bad faith under the Policy.

Complainant requests that the Panel direct the registrar to transfer the disputed domain name to it.

Respondent asserts that this dispute concerns subject matter that is beyond the jurisdiction of the Panel. Respondent claims that his use of the disputed domain name to maintain a website critical of the government of the People’s Republic of China raises a political question that is outside the scope of the Panel’s authority. Respondent indicates that this proceeding involves due process, equal protection and takings issues for which this proceeding is not the proper forum.

Respondent argues that this proceeding is taking place in an inconvenient forum, which should instead be either Maryland or Washington, D.C.

Respondent asserts that the disputed domain name is not confusingly similar to Complainant’s mark because of the use of the generic top-level domain name (gTLD) ".org". Respondent asserts that the gTLD ".org" is used almost exclusively by not-for-profit organizations. Since Complainant is not involved in not-for-profit activities, Respondent’s use of the disputed domain name could not confuse Internet users.

Respondent states that Complainant has misrepresented his deposition testimony regarding the creation of the disputed domain name, and that his reference to "lucky" having been previously registered as a domain name was not to be understood in connection with "martin", but rather in respect to "lucky" and its variations standing alone. Statements or implications that are inconsistent with this may have resulted from innocent misstatement.

Respondent indicates that although the disputed domain name may have been chosen to bypass a Chinese government firewall, it was not chosen with the purpose of tarnishing Complainant’s mark. Respondent viewed the disputed domain name as a generic or neutral name that might thereby bypass a firewall.

Respondent indicates that Complainant’s citation of myriad instances of press reports using its mark and name does not prove that Respondent was aware of that mark since statistical probability cannot be used to prove intention or bad faith.

Respondent asserts that the Free China Movement and VIP Reference (another anti-Chinese government website) serve the noble cause of freedom, and that even if the <www.lockheed.org> website contains remotely commercial material, and links to commercial sites, "that does not change the nature and quality of the website as a not-for-profit, public service information center."

Respondent claims that sexually explicit links on its <www.lockheed.org> website "reflects a good appetite of a sexually thirsty person getting used to living in the paradise of communist Puritanism, even though it could be dry and boring if it is labelled as ‘literature’." Respondent views Complainant’s attacks on this sex-related content as consistent with the Chinese government’s program to suppress the free flow of information.

Respondent asserts that a finding by the Panel against him would constitute a violation of international human rights standards because it would derail his humanitarian vision.

The Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999 (with implementing documents approved on October 24, 1999), is addressed to resolving disputes concerning allegations of abusive domain name registration. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.

It is essential to dispute resolution proceedings that fundamental due process requirements be met. Such requirements include that a respondent has notice of proceedings that may substantially affect its rights. The Policy, and the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), establish procedures intended to assure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., paragraph 2(a), Rules).

In this proceeding, Respondent has furnished a detailed response to the complaint in a timely manner. There is no issue as to whether Respondent received adequate notice of these proceedings.

Respondent asserts that the subject matter of this dispute is outside the jurisdiction of the Panel because it involves a "political question". Respondent appears to argue that because he is involved in disseminating information critical of the Chinese government, a determination that he has abusively registered and used the disputed domain name would suppress his political activities by depriving him of a public forum. By depriving Respondent of a forum to express his views, the Panel would limit his political activities, and thereby impermissibly intervene in the political arena.

The Panel does not accept Respondent’s view regarding its jurisdiction to decide this dispute. The issue at stake in this proceeding is not whether Respondent is entitled to engage in political activities or disseminate political speech. Respondent clearly is entitled to undertake such activities. The issue is whether Respondent is entitled to use Complainant’s trademark and service mark as the principal identifier of the location or address of his activities, whether political or commercial. The fact that Respondent is entitled to express his political views does not translate into a right to use the trademark or service mark of another person without legal constraint.

In the U.S. legal system, the "political question" doctrine is used in connection with disputes that involve the distribution of competences among branches of government.(Footnote 1) A federal court may dismiss a cause of action because it considers the subject matter should appropriately be addressed by the executive or legislative branch of government, and not by the judicial branch. From a juridical standpoint, private causes of action are not deemed to involve non-justiciable "political questions" because a determination will have effects in the political sphere.

The Panel notes that many cases decided under the Policy have involved a tension between the interests of an individual in speech or expression and the interests of a trademark holder in the protection of commercial interests. In making determinations under the Policy, panels are expressly called upon to evaluate claims of legitimate interests of domain name registrants in the non-commercial or fair use of names (Policy, para. 4(c)(iii)).

The Panel finds that the subject matter of this dispute is within the scope of its jurisdiction under the Policy.

Respondent has also argued that this determination is taking place in an inconvenient forum. The Panel notes that Respondent accepted this forum in registering the disputed domain name. Moreover, since this proceeding, as all proceedings under the Policy, is conducted without an in-person hearing (save in exceptional circumstances), the Panel can detect no undue inconvenience suffered by the Respondent as a consequence of the use of this forum. The Panel rejects Respondent’s objection to the forum for this proceeding.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are that:

(i) Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) Respondent’s domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

Complainant has demonstrated rights in the trademark and service mark "LOCKHEED MARTIN" through registration at the U.S. PTO, establishing a presumption of rights in the mark, and by use in commerce. Complainant’s registration of its mark substantially preceded Respondent’s registration of the disputed domain name.

Respondent has conceded that the disputed domain name <lockheedmartin.org> is identical to Complainant’s mark, with the exception of Respondent’s addition of the gTLD ".org". Respondent argues that the gTLD ".org" is used almost exclusively by not-for-profit businesses, and as such Internet users would not confuse a domain name using the ".org" gTLD with Complainant and its products and services.

The gTLD’s ".com", ".net" and ".org" identify open domains that are not restricted by the nature of the activity undertaken on a website identified by those names. The ".org" gTLD identifier is as susceptible to use by a commercial enterprise as is ".com", and commercial enterprises often register domain names in all three open domains.

An Internet user viewing the domain name <lockheedmartin.org>, or the URL <www.lockheedmartin.org>, is likely to assume that Complainant is the sponsor of or affiliated with a website identified by that name.

"LOCKHEED" is an invented term. "LOCKHEED MARTIN" is an arbitrary mark. It is highly distinctive. This heightens the likelihood of Internet user confusion involving Complainant’s mark and the disputed domain name. Internet users are more likely to draw a connection between a highly distinctive name and an enterprise than they are to draw a connection between a descriptive name and an enterprise.

The Panel finds that the disputed domain name is identical to Complainant’s trademark and service mark. Complainant has thus established the first of the three elements necessary to a finding that Respondent has engaged in abusive domain name registration.

The second element of a claim of abusive domain name registration is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

"Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii)

(i) before any notice to you of the dispute, your 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 or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial 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." (Policy, paragraph 4(c))."

Respondent claims that he has not used the disputed domain name to offer goods or services. Respondent has not suggested that he was commonly known by the disputed domain name.

Respondent asserts that he is making legitimate noncommercial use of the disputed domain name. This claim appears to have three prongs. The first claim is that by using a "neutral" or "generic" name Respondent may be aided in penetrating a Chinese government "firewall" intended to suppress free expression.

Respondent expressly denies that he knew of Complainant’s mark. He is not, therefore, claiming that he used Complainant’s mark in his domain name because he thought the Chinese authorities might not take notice of or suppress a website identified by that name because it is associated with a well-known U.S.-based commercial enterprise.

As the Panel has already noted, the term "LOCKHEED MARTIN" is highly distinctive. It is not "generic" or "neutral" in the sense of employing words commonly used to identify a thing. The Panel does not accept Respondent’s assertion that "LOCKHEED MARTIN" was chosen because it is "generic" or "neutral", and might thereby aid in bypassing a government firewall.

The second prong of Respondent’s claim is that his use of the disputed domain name is legitimate noncommercial use because he is not undertaking commercial activities on his website.

The Panel does not accept this assertion. There are commercial activities taking place on and in connection with Respondent’s website. There are advertisements for several commercial enterprises directly on the website, and there are a number of links to commercial businesses, including businesses providing tourism services. There is no reason offered as to why Complainant’s mark should be used by Respondent in connection with these commercial activities.

The third prong of Respondent’s claim is that his use of Complainant’s mark is effectively immunized from scrutiny because he is criticizing the government of the People’s Republic of China.

The Policy allows for the legitimate noncommercial use of a mark as an exception to the exclusive rights of a trademark holder. However, the use of another person’s mark in a domain name is not protected from scrutiny simply because the user of the mark is criticizing a government, however noble or well intentioned that criticism may be.

There is no suggested correlation between Respondent’s use of Complainant’s mark and criticism of the PRC government. It is an asserted random use of Complainant’s mark combined with commercial activity. The Panel does not consider this activity immune from scrutiny merely because Respondent asserts that his objectives are politically laudable.

The Panel finds that Respondent does not have rights or legitimate interests in the disputed domain name. Thus, Complainant has established the second element necessary to prevail on its claim that Respondent has engaged in abusive domain name registration.

The Policy indicates that certain circumstances may, "in particular but without limitation," be evidence of bad faith (Policy, para. 4(b)). Among these circumstances are: (1) that the domain name has been registered or acquired by a respondent "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 [respondent’s] documented out-of-pocket costs directly related to the domain name" (id., para. 4(b)(i)), and (2) that a respondent "by using the domain name, … [has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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 [respondent’s] web site or location of a product or service on [its] web site or location" (id., para. 4(b)(iv)).

The Panel has determined that the disputed domain name is identical to Complainant’s mark, and that Respondent is using the name in connection with a website that promotes commercial activity. Given the highly distinctive character of Complainant’s mark, the Panel considers that Respondent intentionally adopted the mark in his domain name to attract Internet users to his website for purposes of commercial gain by creating a likelihood of confusion as to Complainant’s sponsorship of or affiliation with his website. Respondent’s motives may indeed have been mixed. That is, Respondent may also have intended to broaden his political message by using Complainant’s mark. Nonetheless, he has evidenced the conduct that constitutes bad faith under the terms of the Policy.

Complainant and Respondent have submitted documents to the Panel indicating that after the commencement of this proceeding, Respondent contacted Complainant’s counsel by telephone concerning terms upon which it might be resolved. The Panel has reviewed these documents. Complainant and Respondent differ as to the substance of the conversation between them. In light of the Panel’s finding that Respondent has used Complainant’s mark to attract Internet users to his website for commercial gain, the Panel need not make any finding or determination regarding this additional set of circumstances.

Complainant has established the third and final element necessary for a finding that the Respondent has engaged in abusive domain name registration and use.

The Panel will therefore request the registrar to transfer the domain name <lockheedmartin.org> to the Complainant.

Based on its finding that the Respondent, Ning Ye, has engaged in abusive registration and use of the domain name <lockheedmartin.org> within the meaning of paragraph 4(a) of the Policy, the Panel orders that the domain name <lockheedmartin.org> be transferred to the Complainant, Lockheed Martin Corporation.

Frederick M. Abbott
Presiding Panelist

D. Donald Jamieson
Panelist

Mark Partridge
Panelist

Footnotes: