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Lockheed Martin Corporation v. Allen Jarosz [2005] GENDND 796 (10 May 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Lockheed Martin Corporation v. Allen Jarosz

Case No. D2005-0361

1. The Parties

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

The Respondent is Allen Jarosz, Milan, Illinois, United States of America.

2. The Domain Name and Registrar

The disputed domain name <skunkworkstractor.com> is registered with Wild West Domains, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2005. On April 8, 2005, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On April 8, 2005, Wild West Domains, Inc. 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 April 19, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 9, 2005. The Response was filed with the Center on April 23, 2005.

The Center appointed Sandra Franklin as the sole panelist in this matter on May 2, 2005. 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.

On May 3, 2005, the Complainant asked for permission to make a Supplemental filing, claiming unanticipated arguments were made by Respondent. Respondent objected to the request in writing, primarily on the grounds of the cost to respond. The Panel declined to accept Supplemental filings.

4. Factual Background

Complainant, Lockheed Martin Corporation, is the owner of the registered trademark SKUNK WORKS in 11 classes, including many international registrations. The mark SKUNK WORKS is well known world-wide and has been deemed famous by 11 previous UDRP panels. Use of the mark dates back to the 1940’s and Complainant’s SKUNK WORKS division and its products and services have been the subject of numerous books, articles and television programs.

5. Parties’ Contentions

A. Complainant makes the following assertions:

1. Respondent’s <skunkworkstractor.com> domain name is identical or confusingly similar to Complainant’s SKUNK WORKS mark.

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

3. Respondent registered and used the <skunkworkstractor.com> domain name in bad faith.

B. Respondent contends that because Complainant has not applied for a U.S. trademark registration of SKUNK WORKS in International Class 12, Respondent should be able to keep the domain name <skunkworkstractor.com> or sell it.

6. Discussion and Findings

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

(i) the domain name registered by Respondent is 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 name; and

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

A. Identical or Confusingly Similar

Complainant has established its rights in the SKUNK WORKS mark through widespread registration, long-standing commercial use, and the notoriety of Complainant’s SKUNK WORKS division products and services. The registrations and commercial use cover an extremely broad range of goods and services, including (as a small sample) manufacturing vehicles, design and testing of new products for others, and engineering services related to aircraft. Complainant actively licenses its mark in even more classes.

Respondent’s <skunkworkstractor.com> domain name is confusingly similar to Complainant’s mark because the disputed domain name fully incorporates Complainant’s mark and merely adds the generic word “tractor”. Internet users are highly likely to mistakenly assume that Respondent’s disputed domain name is associated with Complainant. This principle is firmly settled in UDRP precedent. See, for example, Google, Inc. v. Freije, FA 102609 (Nat. Arb. Forum, January 11, 2002) finding the addition of the generic word “sex” to the GOOGLE mark in a domain name was confusingly similar to complainant’s mark. The addition of a generic top-level domain to the end of the domain name has also routinely been held to not prevent a finding of confusing similarity to complainant’s mark. See Rollerblade, Inc. v. McCrady, WIPO Case No. D2000-0429 (June 25, 2000), finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.

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

B. Rights or Legitimate Interests

Respondent offered no evidence whatsoever of a bona fide offering of goods or services under the disputed domain name, pursuant to Policy paragraph 4(c)(i). Indeed, the only content under the domain name thus far is an offer to sell the domain name. The fact that Respondent offered to sell the domain name registrations to Complainant is evidence that Respondent lacks rights and legitimate interests in the disputed domain names pursuant to Policy paragraph 4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum, March 4, 2003), stating that “Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”

Respondent is not commonly known by the domain name under Policy paragraph 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., WIPO Case No. D2000-0020 ( March 14, 2000), finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name. Respondent is clearly not authorized or licensed to use Complainant’s mark for any purpose. Respondent is not making a legitimate noncommercial or fair use of the domain name pursuant to Policy paragraph 4(c)(iii). Thus, the Panel finds that Respondent lacks rights and legitimate interests in the domain name and Policy paragraph 4(a)(ii) has been satisfied.

C. Registered and Used in Bad Faith

The fact that Respondent offered to sell the domain name registration to Complainant is evidence that Respondent registered and used the domain name in bad faith pursuant to Policy paragraph 4(b)(i). Complainant offered to reimburse Respondent for the costs of the domain name registration, which Respondent called “ridiculous”. See Nabisco Brands Company v. Patron Group Inc., WIPO Case No. D2000-0032 (February 23, 2000), finding that Respondent registered and used the domain names to profit where Respondent offered to sell the domain names for $2,300 per name; see also Matmut v. Paul Tweed, WIPO Case No. D2000-1183 ( November 27, 2000), finding bad faith under Policy paragraph 4(b)(i) where Respondent stated in communication with Complainant, “if you are interested in buying this domain name, we would be ready to sell it for $10,000”.

Respondent has not used the domain name for any purpose other than to offer to sell it. Furthermore, any probable use of the domain name would almost certainly be in violation of Complaint’s rights. Thus, the Panel finds that Respondent registered and used the domain names in bad faith pursuant to Policy paragraph 4(a)(iii). See Alitalia –Linee Aeree Italiane S.p.A v. Colour Digital, WIPO Case No. D2000-1260 (November 23, 2000), finding bad faith where respondent made no use of the domain name in question and there are no other indications that respondent could have registered and used the domain name in question for any non-infringing purpose; see also Phat Fashions v. Kruger, FA 96193 (Nat. Arb. Forum, December 29, 2000) finding bad faith under Policy paragraph 4(b)(iv) even though Respondent has not used the domain name because “It makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy”.

Respondent registered the disputed domain names with actual or constructive knowledge of Complainant’s rights in the marks due to Complainant’s registrations of the marks with the USPTO and with trademark authorities worldwide, as well as to the immense fame that Complainant’s marks have acquired. Therefore, the Panel finds that Respondent registered and used the domain names in bad faith pursuant to Policy paragraph 4(a)(iii). See Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum October 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”); See also Exxon Mobil Corporation v. Joseph Fisher, WIPO Case No. D2000-1412 ( December 18, 2000), finding that respondent had actual and constructive knowledge of complainant’s EXXON mark given the worldwide prominence of the mark and thus respondent registered the domain name in bad faith.

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

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 name <skunkworkstractor.com> be transferred to the Complainant.

Sandra Franklin
Sole Panelist

Dated: May 10, 2005