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Lockheed Martin Corporation v. Interstreamer.com [2004] GENDND 1369 (10 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lockheed Martin Corporation v. Interstreamer.com

Case No. D2004-0690

1. The Parties

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

The Respondent is Interstreamer.com, of Culver City, California United States of America.

2. The Domain Names and Registrar

The disputed domain names <skunkworksent.com> and <skunkworksentertainment.com> are registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 31, 2004. On August 31, 2004, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain names at issue. On September 2, 2004, Network Solutions, LLC 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 September 6, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 26, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 28, 2004.

The Center appointed William R. Towns as the Sole Panelist in this matter on October 6, 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

The Complainant is the owner of the trademark SKUNK WORKS. The Complainant has used the mark since the mid-1940’s, and during that time SKUNK WORKS has acquired a certain amount of celebrity. The Complainant has obtained multiple registrations for the mark in the United States, the first of these registrations occurring in 1981. The Complainant also has registered a substantial number of domain names incorporating the mark SKUNK WORKS or variations thereof.

The Respondent registered the domain names <skunkworksent.com> and <skunkworksentertainment.com> on or about May 14, 2004. The disputed domain names resolve to websites that currently are not active. In correspondence with the Complainant, the Respondent has taken seemingly inconsistent positions regarding the reasons for the registrations of the disputed domain names and whether they were acquired for commercial or non-commercial use.

5. Parties’ Contentions

A. Complainant

The Complainant asserts ownership rights in the registered trademark SKUNK WORKS, which Complainant alleges has been in continuous use by Complainant and its predecessor in interest since the mid-1940s. Complainant points to multiple registrations of the mark in the United States and elsewhere, the earliest of which registrations was obtained in 1981. In addition, Complainant contends that it is actively involved in licensing the mark for use by others, including licenses for consumer products such as video games and flight simulator software.

The Complainant maintains that SKUNK WORKS is a famous or well-known mark, representing the Complainant’s goodwill associated with the U-2® high-altitude plane, the SR-71® high-speed jet, the F-117® NIGHTHAWK® fighter jet, and many other famous aircraft. The Complainant asserts that its SKUNK WORKS laboratory and the goods and services produced there have been the subject of numerous books, articles and television programs. The Complainant also points to its ownership of a large number of domain names containing SKUNK WORKS or variants thereof.

The Complainant contends that the disputed domain names <skunkworksent.com> and <skunkworksentertainment.com> are confusingly similar to its SKUNK WORKS mark, and that the Respondent lacks any rights or legitimate interests in the disputed domain names. Further, the Complainant alleges that the Respondent registered and is using the disputed domain names in bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Scope of the Policy

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187. See Report of the WIPO Internet Domain Name Process pages 169 & 170. Rule 15(a) provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) 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

(ii) The Respondent has no rights or legitimate interests with respect to the domain name; and

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

Cancellation or transfer of the domain name are the sole remedies provided to the Complainant under the Policy, as set forth in Paragraph 4(i).

Paragraph 4(b) sets forth four situations under which the registration and use of a domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.

Paragraph 4(c) in turn identifies three means through which a Respondent may establish rights or legitimate interests in the domain name. While the ultimate burden of proof on the issue of legitimacy under Paragraph 4(a)(ii) remains with the Complainant, a number of panels have concluded that Paragraph 4(c) shifts the burden to the Respondent to come forward with evidence of a right or legitimate interest in the domain name, once the Complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No.D2000-0270.

B. Identical or Confusingly Similar

The Panel concludes that the disputed domain names are confusingly similar to Complainant’s SKUNK WORKS mark for purposes of Paragraph 4(a)(i) of the Policy. The Complainant clearly has established rights in the SKUNK WORKS mark, which is registered with the United States Patent and Trademark Office and thus is entitled to a presumption of validity. See EAuto, L.L.C. v. Triple S. Auto Parts, WIPO Case No. D2000-0047. Moreover, the Complainant has made a substantial showing that SKUNK WORKS is entitled to recognition as a famous or well-known mark, and the Panel so finds.

It is well established that the addition of a generic term to a trademark does not necessarily eliminate a likelihood of confusion, particularly where a domain name incorporates the mark in its entirety. Minnesota Mining and Manufacturing Company v. Mark Overbey, WIPO Case No. D2001-0727. See, e.g., Hang Seng Bank Limited v. Websen Inc., WIPO Case No. D2000-0651 (“credit” added to mark HANG SENG in <hangsengcredit.com>); Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“parts” added to mark OKIDATA in <okidataparts.com>). See also Wal-Mart Stores, Inc. v. MacLeod, WIPO Case No. D2000-0662 (first element of Policy is satisfied where domain name wholly incorporates Complainant’s mark).

Accordingly, the Panel finds that the domain name registered by the Respondent is confusingly similar to the Complainant’s SKUNK WORKS mark.

C. Rights or Legitimate Interests

The record reflects that the Complainant has not licensed or otherwise authorized the Respondent to use the SKUNK WORKS mark. Thus, the Respondent has registered the disputed domain names, which incorporate in their entirety the Complainant’s mark, even though the Respondent is not licensed or authorized to use the Complainant’s mark. Further, the record reflects that the Respondent has not been commonly known by the disputed domain names. Unless rebutted by other evidence, this suffices to make a prima facie showing for purposes of Paragraph 4(a)(ii) that the Respondent lacks rights or legitimate interests in the disputed domain names. See Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020.

Once a complainant makes a prima facie showing that a respondent lacks rights to the domain name at issue, the respondent must come forward with proof that it has some legitimate interest in the domain name to rebut this presumption. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Pursuant to Paragraph 4(c) of the Policy, the respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:

(i) before any notice to it 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 or services; or

(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is 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.

While the Respondent has not provided a reply to the Complainant’s contentions, the ultimate burden of proof on the legitimacy issue remains with the Complainant. Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270. Accordingly, the Panel considers it appropriate to examine the record in its entirety to determine whether any evidence exists supporting a claim by Respondent of rights or legitimate interests in the disputed domain name.

There is no evidence that the Respondent has been commonly known by the disputed domain names. To the contrary, the evidence of record indicates that Respondent has been known as “Interstreamer.com”. While the Respondent expressed in correspondence with the Complainant an intent to form a television production company named “Skunkworks Entertainment”, Paragraph 4(c)(ii) requires evidence that the Respondent had rights prior to and not merely following from the use of a domain name. Paule Ka v. Paula Korenek, WIPO Case No. D2003-0453. This is particularly so, where as here, the Respondent has adopted the Complainant’s long used, registered and well-known mark, giving rise to a question whether the disputed domain names were registered and are being used in good faith. See Palm, Inc. v. South China House of Technology Consultants Ltd., WIPO Case No. D2000-1492.

The circumstances at hand do not demonstrate the Respondent’s use, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. Even assuming the Respondent was contemplating a television production company named “Skunkworks Entertainment”, the Panel concludes that the Respondent sought to trade on the strength and reputation the Complainant’s SKUNK WORKS mark by adopting the Complainant’s mark in the disputed domain names. This does not constitute a bona fide use of the disputed domain names. As noted in Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492, when a domain name is so obviously connected with a Complainant and its products or services, its very use by a registrant with no connection to the Complainant suggests “opportunistic bad faith”.

Similarly, the circumstances do not establish that the Respondent has made any legitimate noncommercial or fair use of the disputed domain names. Even if the Respondent intended to make a noncommercial use of the disputed domain names, which is far from clear, the evidence shows that the Respondent was attempting to trade on the strength and reputation of the Complainant’s SKUNK WORKS mark, and to use the domain names to misleadingly divert and attract Internet users to the Respondent’s websites. See The Vanguard Group v. Dotsan, WIPO Case No. D2002-0585; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty. Ltd., WIPO Case No. D2001-0110. This is neither a legitimate nor fair use of the disputed domain names.

Accordingly, the Panel concludes that the Respondent has no rights or legitimate interests with respect to the disputed domain names.

D. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration or use of a domain name in bad faith:

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

(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct; or

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 the respondent’s website or location or of a product or service on its website or location.

The circumstances of this case do not bring it squarely within any of these four examples, but the Panel nonetheless finds from the particular facts of this case that the Respondent has registered and is using the disputed domain names in bad faith. As noted earlier, the Respondent’s registration and use of the disputed domain names, which incorporate the Complainant’s well-known mark, constitutes “opportunistic bad faith”. See Research In Motion Limited v. Dustin Picov, WIPO Case No. D2001-0492. The Panel also finds that the Respondent has engaged in a course of conduct intended to trade on the strength and reputation of the Complainant’s mark, and that the Respondent is intentionally using the disputed domain to misdirect Internet users seeking information about the Complainant to the Respondent’s websites. Even if those websites currently are inactive, the Panel still finds that the Respondent’s conduct under the circumstances of this case is sufficient to establish bad faith registration and use of the disputed domain names under Paragraph 4(a)(iii). See Rothschild Bank AG, et al. v. Rothchild Corporation et al., WIPO Case No. D2001-1112. See also The Vanguard Group v. Dotsan, WIPO Case No. D2002-0585; Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty. Ltd., WIPO Case No. D2001-0110.

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <skunkworksent.com> and <skunkworksentertainment.com> be transferred to the Complainant.

William R. Towns
Sole Panelist

Dated: October 10, 2004