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Lockheed Martin Corporation v. Allen Jarosz

WIPO Case No. D2005-0361

Outcome
Transfer
Domain names
skunkworkstractor.com
Complainant
Lockheed Martin Corporation (United States of America)
Complainant's counsel
Duane Morris LLP
Respondent
Allen Jarosz (United States of America)
Panelist
Sandra Franklin
Registrar
Wild West Domains, Inc.
Decided
10 May 2005
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2005/d2005-0361.html

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

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