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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