DECISION

Lockheed Martin Corporation v. Randy Roberson

Claim Number: FA0409000323762

PARTIES

Complainant is Lockheed Martin Corporation (“Complainant”), represented by Susan Okin Goldsmith, of Duane Morris LLP, 100 College Road West, Suite 100, Princeton, NJ 08540.  Respondent is Randy Roberson (“Respondent”), 3709 W. Griflow St., Tampa, FL 33629.

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <skunkwerxmotorsports.us>, registered with Register.com.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 3, 2004; the Forum received a hard copy of the Complaint on September 7, 2004.

On September 7, 2004, Register.com confirmed by e-mail to the Forum that the domain name <skunkwerxmotorsports.us> is registered with Register.com and that Respondent is the current registrant of the name.  Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

On September 8, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 28, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On October 5, 2004, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.

Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

            A. Complainant makes the following assertions:

1. Respondent’s <skunkwerxmotorsports.us> domain name is confusingly similar to Complainant’s SKUNK WORKS mark.

2.  Respondent does not have any rights or legitimate interests in the <skunkwerxmotorsports.us> domain name.

3. Respondent registered and/or used the <skunkwerxmotorsports.us> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant holds several registrations with the U.S. Patent and Trademark Office (“USPTO”) for the SKUNK WORKS mark, including Reg. Nos. 1,161,482 and 2,488,844 (registered on July 14, 1981 and September 11, 2001 respectively). 

Respondent registered the <skunkwerxmotorsports.us> domain name on April 23, 2003.  Prior to receiving a cease and desist letter from Complainant, the domain name resolved to a commercial website related to motor sports.  Following the cease and desist letter, Respondent agreed to discontinue using the domain name and transfer the registration to Complainant.  Respondent’s domain name is no longer active but has not been transferred to Complainant.

DISCUSSION

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.”

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to Paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to Paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

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

(3) the domain name has been registered or is being used in bad faith.

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

Identical and/or Confusingly Similar

Complainant has established rights in the SKUNK WORKS mark through registration with the USPTO.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that UDRP Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

Respondent’s <skunkwerxmotorsports.us> domain name is confusingly similar to Complainant’s SKUNK WORKS mark because the “skunkwerx” portion of the disputed domain name is phonetically similar to Complainant’s mark.  Furthermore, the mere addition of the generic words “motor” and “sports” is insufficient to distinguish the domain name from Complainant’s mark.  See Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the UDRP); see also Am. Online, Inc. v. Peppler, FA 103437 (Nat. Arb. Forum Feb. 22, 2002) (finding the word “quest” and “crest” to be similar in sound and, thus, that Respondent’s <mapcrest.com> domain name and Complainant’s MAP QUEST mark are confusingly similar); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights).

Moreover, the addition of the country-code “.us” is insufficient to distinguish the domain name from Complainant’s mark.  See Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that since the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name, the <tropar.us> domain name is identical to Complainant’s TROPAR mark); see also Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant)

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Due to Respondent’s failure to contest the allegations of the Complaint, the Panel may conclude that Respondent lacks rights or legitimate interests in the <skunkwerxmotorsports.us> domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality, Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Furthermore, due to Respondent’s failure to respond, the Panel may accept all reasonable assertions and inferences in the Complaint as true.  See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

In addition, the record fails to establish that Respondent is commonly known by the <skunkwerxmotorsports.us> domain name.  Respondent was not licensed or authorized to register or use domain names that incorporate Complainant’s mark.  Also, Respondent is not an owner or beneficiary of a trademark or service mark that is identical to the domain name.  Therefore, the Panel concludes that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).  See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name); see also Tercent, Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that UDRP ¶ 4(c)(ii) does not apply).

Complainant asserts that the <skunkwerxmotorsports.us> domain name was used for commercial use prior to the date that the cease and desist letter was sent to Respondent.  The Panel accepts this assertion as true.  Respondent’s domain name is confusingly similar to Complainant’s mark and was used to take advantage of the goodwill associated with the mark.  Respondent’s commercial use of the misleading domain name did not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv).  See MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant’s mark by redirecting Internet traffic to its own website); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum March 17, 2003) (finding that Respondent’s diversionary use of Complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent’s <skunkwerxmotorsports.us> domain name is confusingly similar to Complainant’s mark and was used to generate commercial gain for Respondent by resolving to a commercial website related to motor sports.  Respondent’s commercial use of the misleading domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to UDRP ¶ 4(b)(iv) through Respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using Complainant’s famous marks and likeness); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to UDRP ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied. 

DECISION

Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <skunkwerxmotorsports.us> domain name be TRANSFERRED from Respondent to Complainant.

Tyrus R. Atkinson, Jr.,  Panelist

Dated: October 19, 2004

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