Lockheed Martin Corporation v. Ning Ye

WIPO Arbitration and Mediation Center

ADMINISTRATIVE

PANEL DECISION

Lockheed

Martin Corporation v. Ning Ye

Case No.

D2000-1733

1. The Parties

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.

2. The Domain Name and

Registrar

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.

3. Procedural History

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.

4. Factual Background

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)).

5. Parties’ Contentions

A. Complainant

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.

B. Respondent

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.

6. Discussion and Findings

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.

7. Decision

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

Dated: May

17, 2001

Footnotes:

1. See, e.g., Baker v. Carr, 369 U.S. 186 (1962). As the U.S.

Supreme Court has stated: "Of course the mere fact that the suit seeks

protection of a political right does not mean it presents a political question."

(369 U.S., at 209) (back to text)

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