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Lockheed Martin Corporation v. NBPro Hosting

WIPO Case No. D2003-0859

Outcome
Transfer
Domain names
skunkworksrc.com
Complainant
Lockheed Martin Corporation (United States of America)
Respondent
NBPro Hosting (United States of America)
Panelist
Bruce E. O'Connor
Registrar
Tucows
Decided
18 Dec 2003
Response
The respondent did not reply
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2003/d2003-0859.html

WIPO

Arbitration and Mediation Center

ADMINISTRATIVE PANEL

DECISION

Lockheed Martin Corporation v. NBPro Hosting

Case No. D2003-0859

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 NBPro Hosting, Santa Ana Heights, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <skunkworksrc.com> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center")

on October 29, 2003. On October 30, 2003, the Center transmitted

by e-mail to Tucows a request for registrar verification in connection with

the domain name at issue. On October 30, 2003, Tucows transmitted

by e-mail to the Center its verification response confirming that the Respondent

is listed as the registrant and providing the contact details for the administrative

and technical contact (Richard Culbertson, identified in the Complaint

as a Respondent, is the administrative contact for Respondent NBPro Hosting).

In response to a notification by the Center that the Complaint was administratively

deficient, the Complainant filed an amendment to the Complaint on November 5, 2003.

The Center verified that the Complaint together with the amendment to 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 November 6, 2003.

In accordance with the Rules, paragraph 5(a), the due date for Response was

November 26, 2003. The Respondent did not submit any response. Accordingly,

the Center notified the Respondent’s default on November 28, 2003.

A communication was received from a Mr. Randy Culbertson on November 29, 2003,

stating that Richard Culbertson was deceased and offering assistance. On December 1, 2003,

the Center notified Mr. Randy Culbertson (using his e-mail address and

the other e-mail addresses for Respondent) that communications should be forwarded

to Richard Culbertson’s estate or persons taking care of Richard Culbertson’s

business. Further communications between the Center and Mr. Randy Culbertson

failed to elicit a substantive response from Respondent.

The Center appointed Bruce E. O'Connor as the Sole Panelist in this matter

on December 4, 2003. 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

Given the default of Respondent, the Panel is entitled to and does draw the

inference from that default that all facts alleged in the Complaint are true.

See paragraph 14(b) of the Policy.

Complainant owns numerous U.S. and international trademark registrations and

applications for the trademark SKUNK WORKS, as well as numerous top-level domain

names incorporating the trademark SKUNK WORKS (and variant spellings of and

word combinations including the trademark SKUNK WORKS). Complainant also owns

numerous U.S. and international trademark registrations and applications for

a trademark including a stylized depiction of a skunk (the "SKUNK LOGO"). The

noted registrations and applications include U.S. registrations which protect

the marks SKUNK WORKS and SKUNK LOGO for "games, playthings and sporting articles,

namely, scale model and miniature replicate airplanes, stuffed toy animals,

flying toss discs and yo-yos," which registrations predate the registration

by Respondent of the domain name in dispute on August 2, 2003.

Complainant alleges, but does not substantiate, that the trademark SKUNK WORKS

and SKUNK LOGO have been in continuous use by Complainant and its predecessor

since the mid-1940s; the marks are famous; the marks represent the good will

of Complainant associated with the birthplace of the U-2® high-altitude

plane, the SR-71® high-speed jet, the F-117® NIGHTHAWK® fighter

jet, and many other famous aircraft; the 'mark' has been used to identify the

source of other technical services and many products; a laboratory operated

by Complainant using the mark SKUNK WORKS has been the subject of countless

books, articles and television programs; Complainant licenses many companies

to use its name and its valuable trademarks in selling model airplanes of various

types, as well as other goods; such licensees are not permitted to use Complainant's

trademarks in their domain names. These allegations are without substantiation.

As a consequence, any arguments advanced by Complainant and based upon these

allegations, have been given no consideration.

On October 14, 2003, the domain name in dispute was being employed

in the URL "www.skunkworksrc.com" which displayed the term "SkunkworksRC.com"

and the term "SkunkworksRC" as trade names and service marks. Also appearing

at various pages on that website were depictions of a skunk (the "Skunk Logo")

practically identical to Complainant's SKUNK LOGO, except for being reversed

and holding what appears to be a "remote control" unit. The products being offered

for sale at the website constitute model airplanes particularly adapted for

remote control.

At some unspecified date, Complainant notified Respondent that Respondent's

ownership and use of the domain name in dispute, and its use of the terms "SkunkworksRC.com"

and "SkunkworksRC," and Respondent's use of its Skunk Logo, infringed various

rights of Complainant. Complainant has not favored the Panel with any details

of the type, date, manner, or mode of its communication with Respondent. Subsequent

to that notification, the website operated at "www.skunkworksrc.com" was modified

to remove the Skunk Logo, to post a copy of Complainant's communication, and

to include a disclaimer. Complainant has not favored the Panel with further

details concerning the revisions to the website at "www.skunkworksrc.com." The

Panel takes notice that, as of December 4, 2003, the website at "www.skunkworksrc.com"

includes no depiction of a Skunk Logo, but continues to use the terms "SkunkworksRC.com"

and "SkunkworksRC" as trade names and service marks. The current website also

includes the following disclaimer: "This site is in no way connected with Lockheed

Martin."

5. Parties' Contentions

A. Complainant

Complainant contends that the domain name in dispute is identical or substantially

similar to Complainant's trademark SKUNK WORKS, being distinguished only by

addition of the letters "RC" at the end of that trademark.

Complainant contends that Respondent has no rights or legitimate interest in

respect of the domain name in dispute. In this regard, Complainant points out

that:

Complainant is entitled to a presumption of ownership, validity, and the exclusive

right to use the trademark SKUNK WORKS in connection with the goods for which

that trademark has been registered; prior to notice of the dispute, Respondent

offered for sale model airplanes and model airplane kits, using Complainant's

trademarks SKUNK WORKS and SKUNK LOGO; Respondent registered the domain name

in dispute after registration by Complainant of the trademark SKUNK WORKS for

goods being sold using the domain name in dispute; Respondent has not been commonly

known by the domain name in dispute; Respondent has not been authorized to register

or use the domain name in dispute; Respondent is not making a legitimate non-commercial

or fair use of the domain name in dispute, and has used the domain name in dispute

for commercial gain, misleadingly to divert consumers and/or to tarnish the

trademark SKUNK WORKS.

Complainant contends that Respondent registered and is using the domain name

in dispute in bad faith. In this regard, Complainant points out that:

Commercial use of the domain name in dispute to sell model aircraft is an infringement

of Complainant's rights in its trademark SKUNK WORKS, whose registration serves

as constructive notice of a claim of ownership of that trademark; use of a registered

mark in a domain name in competition with the owner of the mark establishes

a lack of good faith; the addition of the letters "RC" to the trademark SKUNK

WORKS does not give a commercial impression different from the trademark SKUNK

WORKS by itself; Respondent's use of a Skunk Logo similar to Complainant's trademark

SKUNK LOGO further illustrates an improper connection between the goods offered

on the website using the domain name in dispute, and the goods of Complainant;

Respondent intentionally attempted to attract for commercial gain, Internet

users to the website at "www.skunkworksrc.com," by creating a likelihood of

confusion with the trademarks of Complainant as to the source, sponsorship,

affiliation, or endorsement of that website or of the products or services offered

on that website; Complainant's valuable good will and reputation are at the

Respondent's mercy because of the likelihood of confusion; Complainant has suffered

and will continue to suffer damage to its business reputation and good will,

and the loss of sales and profits that Complainant would have made, but for

Respondent's acts; Complainant will continue to be irreparably harmed by the

continued confusion and deception of consumers resulting from Respondent's use

of the trademark SKUNK WORKS; Respondent's use of the domain name in dispute

constitutes a false designation of origin which is as a consequence likely to

divert purchasers away from Complainant; Respondent's use of a disclaimer is

ineffective to forestall a finding of bad faith registration or use.

B. Respondent

The Respondent did not reply to Complainant's contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy states that the domain name can be transferred

when Complainant has established the following:

(i) that the domain name is identical or confusingly similar to a trademark

or service mark in which Complainant has rights;

(ii) that Respondent has no rights or legitimate interests in the domain name;

and

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

A. Identical or Confusingly Similar

The Panel finds that Complainant has established its rights in the trademark

SKUNK WORKS.

The Panel also finds that the domain name in dispute is confusingly similar

to the trademark SKUNK WORKS. The Panel takes notice that "RC" is a well-recognized

abbreviation for "remote control." See Webster's Third New International

Dictionary, Unabridged (1993). The addition of the generic term "RC"

to the trademark SKUNK WORKS does not avoid confusion. See Nimlok Company

v. Chris Griffin, WIPO Case No. D2003-0168,

and the cases cited therein; Lockheed Martin Corp. v. Reid Harward, WIPO

Case No. D2000-0799.

The Panel finds that Complainant has met its burden of proof under paragraph 4(a)(i)

of the Policy.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy lists three circumstances in particular,

without limitation, that demonstrate rights or legitimate interest of a domain

name registrant to a domain name, for the purposes of paragraph 4(a)(ii)

of the Policy:

(i) before any notice 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 and services; or

(ii) the Respondent, as an individual, business, or other organization, has

been commonly known by the domain name, even if no trademark or service mark

rights have been acquired; or

(iii) the Respondent is making a legitimate non-commercial 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.

Regarding the circumstances of paragraph 4(c)(i) of the Policy, the date

upon which Respondent was notified of the dispute and the date upon which Respondent

began use of the domain name in dispute do not appear from the record. It does

appear, however, that Respondent began use of the domain name in dispute prior

to notice of the dispute, because Complainant's communication as to the dispute

recognized use of the domain name in dispute in the operation of the website

"www.skunkworksrc.com." The Panel's inquiry turns as to whether the offering

of goods or services by or under the authority of Respondent at the website

"www.skunkworksrc.com" was bona fide. The Panel notes that the goods

offered and sold at the website "www.skunkworksrc.com" fall within the scope

of the goods covered by Complainant's U.S. trademark registration for the trademark

SKUNK WORKS. It is well-settled that the use of another's trademark to sell

competitive goods and services is an act of trademark infringement, and cannot

under any circumstances be considered to be a bona fide offering of goods and

services. See Ciba Specialty Chemicals Holding, Inc. v. Germciba.com,

WIPO Case No. D2003-0717. Accordingly, the

circumstances of paragraph 4(c)(i) are not found.

Regarding paragraph 4(c)(ii), there is no evidence in the record that

Respondent, as an individual, business, or other organization, has ever been

known by the domain name in dispute. Accordingly, the circumstances of paragraph 4(c)(ii)

are not found.

Regarding paragraph 4(c)(iii), the Respondent is engaged in a commercial

use of the domain name in dispute. The issue thus revolves around whether or

not Respondent is engaged in "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.

Fair use has been found in circumstances where the domain name in dispute was

being used in a descriptive sense to inform the public of a fact. For example,

in NCAA v. Randy Pitkin, et al., WIPO

Case No. D2000-0903, the domain name in dispute constituted various

trademarks of the Complainant plus the descriptive terms "seats" and "tickets,"

which domain names were being used to direct consumers to websites at which

those consumers could purchase tickets to events denominated by the trademarks.

Further, the websites operating using the domain names in dispute also included

disclaimers of affiliation with the Complainant, as here. But, it cannot be

fair use where there is no legitimate connection between the Respondent and

its use of the domain name in dispute, and the Complainant and its trademarks.

The products offered and sold at the website "www.skunkworksrc.com" are neither

products of Complainant nor authorized by Complainant. Even if such use were

"fair use," the business being operated at the website "www.skunkworksrc.com"

is clearly and unquestionably with intent for commercial gain, as discussed

in more detail in the following section of this Decision dealing with bad faith.

See Six Continents Hotels, Inc. v. Georgetown Inc., WIPO

Case No. D2003-0214.

Accordingly, the circumstances of paragraph 4(c)(iii) of the Policy are

not found.

The Panel finds that Complainant has met its burden of proof under paragraph 4(a)(ii)

of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four circumstances in particular, without

limitation, that demonstrate evidence of the registration and use of a domain

name in bad faith. The circumstances of paragraph 4(b)(iv) appear to be

pertinent:

(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 or service on your website or location.

The Panel finds that these circumstances are fairly met by the evidence of

record. In this regard, the Panel notes that the domain name in dispute incorporates

the entirety of Complainant's trademark SKUNK WORKS, and that the products offered

and sold at the website "www.skunkworksrc.com" come within the scope of the

goods protected by Complainant's trademark registration for SKUNK WORKS. Likelihood

of confusion is, as previously stated, a necessary consequence of the trademark

infringement engaged in by or under authority of Respondent at the website "www.skunkworksrc.com."

Trademark infringement, however, is but one factor in the determination of

bad faith under the Policy. What is also required is a finding of intentional

acts that attract, for commercial gain, Internet users to a website employing

the domain name in dispute. The intentional nature of Respondent's acts is apparent

from the previous use, at the website "www.skunkworksrc.com," of a Skunk Logo

that is quite similar to the trademark SKUNK LOGO of Complainant. The Panel

also is struck by the previous and continued use of the terms "SkunkworksRC.com"

and "SkunkworksRC" as trade names and service marks at that website, all in

connection with the offering and sale of goods within the scope of Complainant's

trademark registrations for SKUNK WORKS and the SKUNK LOGO. Given this evidence,

there is no way that Respondent could contend that its use of the domain name

in dispute was not an intentional act to profit from the good will and reputation

of Complainant.

Use of a disclaimer, of any connection with Complainant, on the website "www.skunkworksrc.com"

is not sufficient to avoid a finding of bad faith. See Arthur Guinness Son

& Co. (Dublin) Limited. v. Dejan Macesic, WIPO

Case No. D2000-1698. As has been pointed out in a number of previous

decisions, the use of a disclaimer at a website using the domain name in dispute

is usually too little, too late. It is only by unauthorized use of the trademark

SKUNK WORKS that a consumer is brought to the website "www.skunkworksrc.com"

at which the disclaimer appears. See Dr. Ing. h.c. F. Porsche AG v. Sabatino

Andreoni, WIPO Case No. D2003-0224; ISL

Worldwide and the Federal Internationale de Football Assoc. v. Western States

Ticket Service, WIPO Case No. D2001-0070;

and Pliva, Inc. v. Eric Kaiser, WIPO Case No. D2003-0316.

The Panel finds that Complainant has met its burden of proof under paragraph 4(a)(iii)

of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(a) of the Policy

and 15 of the Rules, the Panel orders that the domain name <skunkworksrc.com>

be transferred to Complainant.

Bruce E. O'Connor

Sole Panelist

Dated: December 18, 2003

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