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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Lockheed Martin Corporation v. Lynn Dixon

Case No. D2005-0045

 

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 Lynn Dixon, Benton, Tennessee, United States of America.

 

2. The Domain Name and Registrar

The disputed domain name <theskunkwerx.com> (the “Domain Name”) is registered with Go Daddy Software.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 13, 2005. On January 14, 2005, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the Domain Name. On January 15, 2005, Go Daddy Software 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 January 18, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was February 7, 2005. The Center had received an email message from the Respondent on January 14, 2005, that was a reply to the Acknowledgement of Receipt of Complaint that the Center sent. This communication included arguments in response to the Complaint. On January 18, 2005, the Center sent an email message to the Respondent stating that the proceeding had not yet commenced and that the Respondent would receive instructions as to how to respond to the Complaint. No further Response was received from the Respondent prior to the due date for the Response. Accordingly, the Center notified the Respondent of his/her default on February 11, 2005. On February 12, 2005, the Respondent sent an email message to the Center explaining that s/he believed that s/he had already sent a response in the message s/he sent on January 14, 2005 (which s/he reattached), and offering to settle the matter by putting a link to Complainant’s website on the Respondent’s home page.

The Center appointed Michelle Brownlee as the sole panelist in this matter on February 22, 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.

 

4. Factual Background

Complainant is the owner of trademark registrations in the U.S. and other jurisdictions for the mark SKUNK WORKS in connection with engineering technical consulting and advisory services with respect to designing building, equipping and testing commercial and military aircraft and related equipment, product design, testing and manufacturing services, and various other goods.

 

5. Parties’ Contentions

A. Complainant

Complainant, and its predecessor in interest, Lockheed Corporation, have been using the SKUNK WORKS service mark since 1943. Complainant owns numerous domain names that include the words “skunk works,” or variant spellings thereof. Many of these have been transferred to Complainant in UDRP proceedings. Complainant submits as evidence of the fame of its mark printouts from Amazon.com showing books about Lockheed Martin that use the term “Skunk Works” in the title and articles from well-known publications such as The Miami Herald and Fortune that discuss the fame of Lockheed Martin’s Skunk Works.

Complainant argues that the Domain Name is confusingly similar to its SKUNK WORKS trademark, because it is a misspelling and adds the non-distinctive term “the.” Complainant also argues that the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered in bad faith.

B. Respondent

Although Respondent did not submit a formal Response to the Complaint, the Panel will consider the arguments made in Respondent’s email communications of January 14, 2005 and February 12, 2005. Respondent argues that the Domain Name is not confusingly similar to Complainant’s trademark. The Respondent also argues that the Domain Name was not registered and used in bad faith as s/he never offered it for sale and never intends to offer it for sale. Respondent also argues that her/his website is not causing confusion with Complainant’s website, as s/he is unaware of any users that arrived at her/his site by mistake while trying to get to Complainant’s site. Finally, the Respondent argues that the term “skunk works” is a generic term, noting that the term is defined in the dictionary as “a group that is bound together by a common goal, (one that is usually kept secret).” Respondent contends that the Domain Name is an appropriate name for her/his website because her/his website deals with custom cars, her/his shop needs to keep secrets in order to win car shows.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:

(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(2) the respondent has no rights or legitimate interests in respect of the domain name; and

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

A. Identical or Confusingly Similar

The Panel finds that the second level of the Domain Name is confusingly similar to Complainant’s SKUNK WORKS trademark. The addition of the word “the” and the variant spelling “werx” do not change this conclusion. The Domain Name is extremely similar to the trademark in sight, sound and meaning.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides that a respondent can demonstrate a legitimate interest in a domain name by demonstrating one of the following facts:

(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name; or

(iii) the respondent is 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 at issue

Respondent argues that s/he is making legitimate use of the Domain Name in that the term “skunk works” is a term that is defined in the dictionary as “a group that is bound together by a common goal (one that usually is kept secret).”¹ Respondent argues that “since my website deals with custom cars, one of the best defenses we have at winning car shows are the secrets we keep at the shop. Hence I came up with www.theskunkwerx.com.”

A printout of the Respondent’s website was provided as Annex 9 to the Complaint. This printout opens with a page that says “Welcome to the Skunkwerx” and what appears to be the home page has “The SkunkWerx” written in large letters at the top of the page. Email correspondence from the Respondent to Complainant’s counsel states that Respondent posted her/his website within three days after registering the domain name. Complainant does not dispute this statement.

Complainant argues that the Respondent is not commonly known by the Domain Name and that the Respondent is not making any legitimate non-commercial or fair use of the Domain Name. Complainant has not directly addressed the possibility that the Respondent has rights pursuant to Paragraph 4(c)(i), that is, that Respondent used the Domain Name in connection with a bona fide offering of services prior to receiving notice of the dispute. Complainant admits that the Respondent is using the Domain Name in connection with “an active commercial site.”

Complainant cites from the case Lockheed Martin Corp. v. Interstreamer (WIPO Case No. D2004-0690) to make the argument that use of the term “skunk works” in a domain name cannot be bona fide use because the term is its trademark.² However, this argument is specious, because it presumes that the only reason anyone would use the term is for its trademark significance. If the term in question also has a generic or descriptive meaning, then someone may legitimately use it in a way that is consistent with that meaning. For example, while APPLE is undoubtedly a famous mark for computers, it does not follow that someone who owns an apple orchard does not have a legitimate interest in the use of the word “apple” as part of an Internet domain name to be used with his business. In this case, the Respondent had already set up a website using the Domain Name before he received notice of the dispute, and he has provided a plausible explanation for his use of the term “skunkworks” consistent with a generic meaning that can be found in dictionary definitions. For a case with a similar factual background, see Lockheed Martin Corp. v. The Skunkworx Custom Cycle (WIPO Case No. D2004-0824) (finding legitimate interest in use of <skunkworxcc.com> by motorcycle customization and detailing shop).

However, given the finding by the Panel under the third element of this decision, the Panel does not make a conclusion under this element.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent has registered or acquired the domain name 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 documented out-of-pocket costs directly related to the domain name; or

(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

Although the Complaint does not say so explicitly, Complainant’s apparent argument is that Respondent’s registration and use of the Domain Name violates Paragraph 4(b)(iv). Complainant argues that Respondent was on notice of Complainant’s trademark rights, yet proceeded to use the Domain Name in connection with a commercial site. Complainant makes arguments that purchasers are likely to be confused, but offers no real evidence to support them.

Complainant also suggests the possibility of bad faith pursuant to Paragraph 4(b)(i). In support of this argument, Complainant points to email correspondence from Respondent in response to Complainant’s cease and desist request in which Respondent stated: “I have made a personal financial contribution to register this domain, and you must understand why I cant just ‘give it up.’” However, this is not sufficient to show that Respondent’s primary purpose in acquiring the domain name was to sell it. Respondent’s statement was made in response to Complainant’s demand that Respondent assign the domain to Complainant. (Complainant did not offer to pay anything for such assignment.) Viewing this statement in context, it appears that Respondent was just reacting to Complainant’s demand, not trying to extract money. Respondent says in the same message that he does not want to sell the Domain Name at any price, and reiterates his intention to keep the Domain Name in a subsequent message.

The enumerated list of bad faith factors is not exclusive. Other circumstances can indicate bad faith. See Playboy Int’l v. SAND WebNames – For Sale (WIPO Case No. D2001-0094, April 3, 2001); General Electric Co. v. Fisher Zvieli a/k/a Zvieli Fisher, (WIPO Case No. D2000-0377, July 15, 2000). However, in this case, Complainant has not provided the Panel with any alternative bad faith evidence. Considering that at least one other party in addition to Respondent uses the term “skunkworks” in connection with a related business, see Lockheed Martin Corp. v. The Skunkworx Custom Cycle, supra, this case looks less like a true case of bad faith cyberpiracy and more like a case of a legitimate trademark dispute that is better left to a court litigation.³ While Complainant might ultimately be able to prove a case of trademark infringement or dilution in court, it has not provided enough evidence of bad faith to carry its burden to persuade the Panel by a preponderance of the evidence that bad faith registration and use has occurred.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.

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Michelle Brownlee
Sole Panelist

Date: March 11, 2005

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¹ Respondent did not submit a copy of the dictionary definition to which s/he was referring, but a search of dictionary.com returned the following definition, which was taken from The American Heritage Dictionary of the English Language, Fourth Edition: “A small, loosely structured corporate research and development unit or subsidiary formed to foster innovation.” The definition listed the following etymology of the term: “After Big Barnsmell's Skonk Works, where the bootleg Kickapoo Joy Juice was brewed, in the comic strip Li'l Abner by Al Capp.”
In email correspondence with counsel for Complainant attached as Annex 10 to the Complaint, Respondent also refers to a similar definition found on whatis.com, which the Panel confirmed is as Respondent represented it:
A skunkworks is a group of people who, in order to achieve unusual results, work on a project in a way that is outside the usual rules. A skunkworks is often a small team that assumes or is given responsibility for developing something in a short time with minimal management constraints. Typically, a skunkworks has a small number of members in order to reduce communications overhead. A skunkworks is sometimes used to spearhead a product design that thereafter will be developed according to the usual process. A skunkworks project may be secret”.
The name is taken from the moonshine factory in Al Capp's cartoon, "Lil' Abner." http://whatis.techtarget.com/definition/0,289893,sid9_gci214112,00.html

² The Interstreamer case was case in which the Respondent defaulted, and the issue of bona fide use of the term “skunk works” was not raised. Moreover, the domain names at issue in that dispute did not resolve to active web sites.

³ The ICANN Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy (“Second Staff Report”) Paragraph 4.1.c (October 24, 1999) states that the Policy “calls for administrative resolution for only a small, special class of disputes,” namely, “abusive registrations,” i.e., cases of cybersquatting and cyberpiracy. The Second Staff Report further states:
Except in cases involving "abusive registrations" made with bad-faith intent to profit commercially from others' trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties) and calls for registrars not to disturb a registration until those courts decide. The adopted policy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of "abusive registrations." Thus, the fact that the policy's administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger's trademark) is a feature of the policy, not a flaw. The policy relegates all "legitimate" disputes--such as those where both disputants had longstanding trademark rights in the name when it was registered as a domain name--to the courts; only cases of abusive registrations are intended to be subject to the streamlined administrative dispute-resolution procedure.
Second Staff Report ¶ 4.1.c.