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Lockheed Martin Corporation v. Skunk Wrx LLC [2004] GENDND 1122 (17 August 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lockheed Martin Corporation v. Skunk Wrx LLC

Case No. D2004-0431

1. The Parties

The Complainant is Lockheed Martin Corporation of Bethesda, Maryland, United States of America represented by Duane Morris LLP of Princeton, New Jersey, United States of America.

The Respondent is Skunk Wrx LLC of Brooklyn Park, Minnesota, United States of America, represented by Peter J. Ims of Minneapolis, Minnesota, United States of America.

2. The Domain Name and Registrar

The disputed domain name <skunkwrx.net> (the “Domain Name”) is registered with TLDs, Inc. dba SRSplus.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 11, 2004. On June 11, 2004, the Center transmitted by email to SRSplus a request for registrar verification in connection with the domain name at issue. On June 18, 2004, SRSplus transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that 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 June 29, 2004. In accordance with the Rules, Paragraph 5(a), the due date for Response was July 19, 2004. The Response was filed with the Center on July 19, 2004.

The Center appointed Richard W. Page as the sole panelist in this matter on August 4, 2004. 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 is the owner of the registered trademarks SKUNK WORKS and related designs (the “Trademark”). The Trademark has been in continuous use by Complainant and its predecessor Lockheed Corporation since the mid-1940’s. The Trademark indicates the place of creation of several well-known aircraft including the U-2, SR-71, F-117 Nighthawk and others. The Complainant’s laboratory and the products of that laboratory have been the subject of several books, articles and television programs. The Trademark is the subject of numerous registrations with the United States Patent and Trademark Office (“USPTO”) which are listed in the Complaint, together with a description of numerous international trademark registrations. The registrations include a listing on the Office for Harmonization of the Internal Market (“OHIM”). The Complainant has registered approximately 89 domain names using the phrase “SKUNK WORKS” or variations of that phrase.

Respondent registered <skunkwrx.net> on or about October 26, 2002. The website came online on December 30, 2002. At this time, Complainant had used the Trademark for decades and had registered trademarks in the United States, the European Community. Respondent’s website offered motorcycle parts and gear and featured an upcoming race known as International Six Day Enduro Race - ISDE Poland 2004 scheduled September 13-14, 2004.

5. Parties’ Contentions

i. Complainant contends that it has registrations of the trademark SKUNK WORKS, that its trademark registrations are valid and subsisting, and that they serve as prima facie evidence of its ownership and the validity of the Trademark. 15 U.S.C. § 1115.

ii. Complainant argues that the Domain Name is confusingly similar to the Trademark, pursuant to Paragraph 4(a)(i) of the Policy, because it is phonetically identical to the Trademark. Complainant cites Lockheed Martin Corp. v. Reid Harward, WIPO Case No. D2000-0799 (November 1, 2000) in which <skunkworx.net> was found to be phonetically similar to the Trademark.

iii. Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.

Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the Domain Name in connection with the bona fide offering of goods or services. Complainant alleges that Respondent had constructive knowledge of the Trademark and therefore any offering of goods and services using the Trademark cannot be bona fide.

Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(ii) because it is not commonly known under the Domain Name. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the Trademark in a domain name or in any other manner.

Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue.

iv. Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of Paragraph 4(a)(iii).

Complainant alleges that Respondent had constructive knowledge of the Trademark because of the OHIM registration. Complainant further alleges that it sent a cease and desist letter which was ignored. Under these circumstances, Complainant argues that Respondent’s registration and use of the Domain Name must be found to be in bad faith.

B. Respondent’s contentions

i. Respondent does not dispute that the Complainant has registrations of the Trademark.

ii. Respondent asserts that the Domain Name is not confusingly similar to the Trademark because the pronunciation of the phrase “wrx” is not supported by competent evidence and is not necessarily confusingly similar to the phrase “works.”

iii. Respondent asserts that it has rights to or legitimate interests in the Domain Name because it sold motorcycle parts, gear and accessories to the public for one and a half years before being notified by Complainant’s cease and desist letter. Respondent has entered a team in ISDE racing events with a blue helmet with two white stripes which is reminiscent of a skunk. The “skunk helmet” became synonymous with the United States team. The “wks” was added to give the impression that the website offered “works” parts for sale. Respondent argues that this is a distinctive line of commerce from anything offered by Complainant. Respondent is selling goods intended for the United States market and not for Poland, which is merely the location of the upcoming ISDE.

iv. Respondent denies that it registered or used the Domain Name in bad faith. With regard to Paragraph 4(b), which suggests four types of evidence of bad faith registration, Respondent argues as follows:

Respondent alleges that it conducted a search of applicable databases and was advised by counsel that there was no conflict with the lines of commerce in which Complainant conducts its business. Respondent argues that its receipt of this legal opinion demonstrates that Respondent was not acting in bad faith. Respondent asserts that motorcycle parts, gear and accessories are not in competition with Complainant. Respondent asserts that it is not selling vehicles.

Respondent claims that there is no showing of bad faith based on Paragraph 4(b)(i) because it did not offer or intend to sell the Domain Name to the Complainant or to others.

Respondent argues that Paragraph 4(b)(ii) does not apply because the registration of the Domain Name does not prevent the Complainant from reflecting the Trademark in a corresponding domain name. It also has not engaged in a pattern of registering domain names to prevent the trademark owner from reflecting the mark in a corresponding domain name.

Respondent further argues that Respondent and Complainant are not business competitors and thus, there is no evidence of bad faith based on Paragraph 4(b)(iii).

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”

Because both the Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie, WIPO Case No. D2000-1772 (April 10, 2001).

Enforceable Trademark Rights

There is no conflict in the evidence that Complainant has numerous registrations of the Trademark SKUNK WORKS. Respondent has not contested the assertions by Complainant that it has valid registrations of the Trademark. Therefore, the Panel finds that Complainant, for purposes of this proceeding, has enforceable rights in the Trademark.

Complainant further contends that the Domain Name is confusingly similar to the Trademark pursuant to the Policy, Paragraph 4(a)(i). The issue present here is whether the phrase “wrx” is the phonetic equivalent of the phrase “works.” The Panel finds that the phrases are phonetically equivalent. Therefore, the Panel finds that the Domain Name is confusingly similar to the SKUNK WORKS Trademark pursuant to the Policy, Paragraph 4(a)(i).

Rights or Legitimate Interests

Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy, Paragraph 4(a)(ii).

Paragraph 4(a)(ii) requires the Complainant to prove that the Respondent has no rights to or legitimate interests in the Domain Name. Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000).

Respondent has no relationship with or permission from Complainant for the use of the SKUNK WORKS Trademark.

The Policy, Paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Domain Name:

(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] 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.

The Complainant alleges that Respondent had constructive notice of the Trademark and proceeded to register the Domain Name, thus precluding the offering of bona fide goods and services. Respondent states it conducted a search. The logical inference from this evidence is that Respondent had actual knowledge of the existence of the Trademark when it registered the Domain Name and initiated its website. Therefore, the Panel finds that there could be no bona fide offering of goods and services.

The Complainant alleges that the Respondent has never been commonly known as “Skunk Works.” Respondent explains that its racing teams have the nickname “Skunk Helmets.” This nickname is not sufficiently similar to “Skunk Works” to conclude that Respondent has been commonly known by the Domain Name.

There appears to be no dispute that the Respondent is engaged in commercial activity and does not claim to be making a legitimate noncommercial use of the Domain Name.

The Panel finds that none of the elements for any of the nonexclusive methods provided for in the Policy, Paragraph 4(c) has been met. Therefore, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name pursuant to the Policy, Paragraph 4(a)(ii).

Bad Faith

Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy, Paragraph 4(a)(iii).

The Policy, Paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(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.

The only element which potentially applies is the Policy, Paragraph 4(b)(iv). Respondent has intentionally attempted to attract Internet users for commercial gain. Respondent asserts that it only offered motorcycle parts, accessories and gear for sale, constituting a line of commerce distinct from Complainant. Respondent specifically did not offer vehicles, which may have fallen into one of the classes for the registration of the Trademark. Therefore, Respondent asserts it created no likelihood of confusion.

The Panel notes that Complainant’s registrations are very broad and cover many classes of goods and services. The Panel further notes that Complainant has used the Trademark for many decades and has acquired common law rights, in addition to its registrations covering specific classes of goods and services. The registrations and common law rights are broad enough to cover motorcycle parts, accessories and gear. A consumer is not likely to read the offering of goods and services by Respondent to so narrowly as to distinguish between classes of goods and services. Therefore, the Panel finds that there is a likelihood of confusion with the Trademark and the source of the products.

The assertion that Respondent received a legal opinion that this was not an infringing use is not binding upon the Panel, nor does it save the Respondent from having created a likelihood of confusion. The Panel finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy, Paragraph 4(b)(iv).

7. Decision

The Panel concludes (a) that the Domain Name <skunkwrx.net> is confusingly similar to Complainant’s SKUNK WORKS Trademark, (b) that Respondent has no rights or legitimate interests in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name be transferred to Complainant.

Richard W. Page
Sole Panelist

Dated: August 17, 2004