WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Lockheed Martin Corporation v. Dan Parisi

Case No. D2000-1015

 

1. The Parties

The Complainant is: Lockheed Martin Corporation, a Maryland, U.S.A.corporation with its principal place of business at 6801 Rockledge Drive, Bethesda, Maryland 20817. Complainant is represented by: David W. Quinto, Esq.; Quinn Emanuel Urquhart Oliver & Hedges, LLP, 865 Figueroa Street, 10th Floor, Los Angeles, California 90017.

The Respondent is: Dan Parisi, Post Office Box 1375, Secaucus, New Jersey 07094. Respondent is represented by: Michael A. Freeman, Esq.; 351 East 84th Street, no. 12C, New York, New York 10028.

 

2. The Domain Names and Registrar

The domain names in dispute are: <lockheedsucks.com> and <lockheedmartinsucks.com>. The registrar is Network Solutions Inc. (NSI), 505 Huntmar Park Drive, Herndon, Virginia 20170.

 

3. Procedural History

This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Centerís Supplemental Rules for Uniform Domain Name Dispute Resolution (the Center, the Supplemental Rules).

The Complaint was filed on August 14, 2000. Per the Rules Section 3(b)(iv), the Complainant requested a three (3) member panel. On August 21, 2000 the Center requested that the registrar, NSI, check and report back on the registrant for the domain names <lockheedsucks.com> and <lockheedmartinsucks.com>. On August 22, 2000, the registrar reported to the Center that the registrant was the Respondent, Dan Parisi.

On September 4, 2000 the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail, and this proceeding officially began.

Respondentís Response was received by the Center on September 27, 2000.

The third member of the Administrative Panel submitted a Declaration of Impartiality and Independence on January 5, 2001, and the Center proceeded to appoint the Panel on January 10, 2001.

This Decision originally was due by December 13, 2000, but one of the panelists had to withdraw and a new panelist had to be found and empaneled. Therefore, the Center established January 23, 2001 as the new due date for this Decision.

The Panel finds the Center has adhered to the Policy and the Rules in administering this proceeding.

 

4. Factual Background

Lockheed Martin Corporation was born of the 1995 merger of Lockheed and Martin Marietta Corporations, both of which at that time were large corporations with international reputations. Lockheed Martin Corporation is one of the worldís largest and best known aerospace, electronics and advanced materials manufacturers. The Complainant has been using the "Lockheed" name since the 1930ís, and the "Lockheed Martin" name since the 1995 merger.

Respondent registered the disputed domain names <lockheedsucks.com> and <lockheedmartinsucks.com> on October 7, 1998. Respondent uses these and other similar domain names to point to a web site where it offers visitors the opportunity to vent their views on Complainantís company, other companies, and well-known personalities.

On January 1, 1999 and on June 6, 2000, Complainant wrote formal "cease and desist" letters alleging trademark infringement and demanding that Respondent transfer the two disputed domain names to Complainant. In the face of Respondentís refusal, Complainant seeks to gain ownership of the disputed domain names through this ICANN proceeding.

 

5. The Partiesí Contentions

Complainantís Contentions:

(a) The domain names at issue and Lockheed Martinís marks are "confusingly similar" because the marks are contained within the domain names.

(b) Respondent has not been commonly known by the domain names and is not licensed or otherwise authorized by Lockheed Martin to use its marks for any purpose.

(c) Respondent registered the domain names on October 7, 1998, and has not used them in connection with a bona fide offering of goods or services to date.

(d) Respondent has not made a legitimate non-commercial or fair use of the domain names.

(e) None of the disputed domain names are being used. Instead, they are being held, presumably waiting for the mark owner to buy them at an inflated price or face the sale or transfer to a third party who may use the domain name in such a way as to tarnish the mark.

(f) Bad faith registration and use, even if there is no resale offer, may be found where, as here, the domain name is held passively with no obvious motive other than cyberpiracy.

Respondentís Contentions:

(a) The only use Respondent has ever made of the disputed names has been to link them to Respondentís <sucks.com> website, a free speech website where visitors can register their complaints about corporate America.

(b) Respondent makes no money from the disputed names and has never offered to sell the disputed names. Accordingly, Complainant cannot prove that Respondent lacks a legitimate interest in the disputed names or that he has engaged in bad faith.

(c) The disputed domain names are neither identical nor confusingly similar to Complainantís trademarks, since no one would reasonably believe that Complainant operates a website that appends the word "sucks" to its name and then uses it to criticize corporate America.

(d) Complainant cannot prove that Respondent lacks rights or legitimate interests in the disputed domain names as a result of Respondent having linked the disputed names to a free speech website.

(e) A website that functions for the exercise of free speech by its nature can not operate with bad faith intent. By submitting evidence that the disputed names were being used in connection with a free speech website, Respondent has effectively foreclosed Complainantís ability to prove bad faith.

(f) Contrary to Complainantís allegations, Respondent used the disputed names <lockheedsucks.com> and <lockheedmartinsucks.com> in 1999, along with other "-sucks" names, as links to the free speech website <sucks.com>.

(g) Complainantís speculation that Respondentís "presumed" intent is to sell the disputed names to Complainant is untrue because Respondent has no interest in selling the names.

(h) The ICANN decisions with which Complainant is trying to substantiate bad faith are easily distinguished because they all involved instances where the registrant did not use the disputed domain name and could not have put the name to a legitimate use. Here, however, Respondent has shown that he has a legitimate use for the disputed domain names, as links to his <sucks.com> free speech website.

 

6. Discussions and Findings

In order for Complainant to prevail and have the disputed domain names <lockheedsucks.com> and <lockheedmartinsucks.com> transferred to it, Complainant must prove the following (the Policy, para 4(a)(i-iii):

- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

- the Respondent has no rights or legitimate interests in respect of the domain name; and

- the domain name was registered and is being used in bad faith

Identical or Confusingly Similar

Complainant has produced exemplary copies of some of the trademarks it owns which are found in the disputed domain names <lockheedsucks.com.> and <lockheedmartinsucks.com>. For example, no. 2,289,109 registered on October 26, 1999 for t-shirts and caps in international class class 25; and no. 2,022,038 registered on December 10, 1996 for new aerospace and electronics products (Complaint Annex 3). These trademarks are registered on the principal register of the United States of America Patent and Trademark Office. The Panel is well satisfied that Complainant owns these trademarks.

As to Complainantís contention that the disputed domain names are "confusingly similar" to Complainantís trademarks within the meaning of the Policy, Complainant relies primarily on previous ICANN decisions that have found domain names that combine a trademark with the word "sucks" to be confusingly similar to the trademark. Diageo PLC v. Zuccarini, WIPO Case No. D2000-0996, Oct. 22, 2000 (guinness-sucks.com, guinness-really-sucks.com, and others); Wal-Mart Stores, Inc. v. MacLeod, WIPO Case No. D2000-0662, Sept. 19, 2000 (wal-martsucks.com); Cabelaís Inc. v. Cupcake Patrol, NAF Case No. FA95080, Aug. 29, 2000 (cabelassucks.com); Direct Line Group Ltd. v. Purge I.T., WIPO Case No. D2000-0583, Aug. 13, 2000 (directlinesucks.com); Dixons Group PLC v. Purge I.T., WIPO Case No. D2000-0584, Aug. 13, 2000 (dixonssucks.com); Freeserve PLC v. Purge I.T., WIPO Case No. D2000-0585, Aug. 13, 2000 (freeservesucks.com); National Westminster Bank PLC v. Purge I.T., WIPO Case No. D2000-0636, Aug. 13, 2000 (natwestsucks.com); Standard Chartered PLC v. Purge I.T., WIPO Case No. D2000-0681, Aug. 13, 2000 (standardcharteredsucks.com); Wal-Mart Stores, Inc. v. Walsucks, WIPO Case No. D2000-0477, July 20, 2000 (wal-martcanadasucks.com & others).

Only one ICANN decision to date has reached a contrary result, declining to find a "sucks" domain name confusingly similar to a trademark. Wal-Mart Stores, Inc. v. wallmartcanadasucks.com, WIPO Case No. 2000-1104, Nov. 23, 2000 (wallmartcanadasucks.com). The panelist in that case expressed skepticism whether a "sucks" domain name could ever be confusingly similar to a trademark, but stopped just short of advocating a per se privilege exempting all "sucks" domain names from transfer under the Policy.

A majority of this Panel agrees with the result reached by the panelist in the Wallmartcanadasucks.com case, and disagrees with the opposite view in the previously cited cases. Both common sense and a reading of the plain language of the Policy support the view that a domain name combining a trademark with the word "sucks" or other language clearly indicating that the domain name is not affiliated with the trademark owner cannot be considered confusingly similar to the trademark.

Although the Panelís conclusion comports with the plain language of the Policy, it is worth noting that United States federal courts have reached analogous conclusions in similar cases. Thus, in Bally Total Fitness v. Faber, 29 F. Supp.2d 1161 (C.D. Cal. 1998), the disputed domain name was <Ballysucks.com>. The well-known health club operator Ballyís, owner of the service mark of the same name, sued the defendant for service mark infringement based on defendantís registration of the domain name <Ballysucks.com>, which defendant used to voice complaints about Ballyís health club business. The court granted defendantís motion for summary judgment and dismissed the complaint because it found that Bally could not prove a likelihood of confusion with its trademark.

In reaching this conclusion, the court found, inter alia, there could be no confusion because the parties did not offer "related goods". This case fits our Case at hand in all essential respects. And it certainly is true that here, as in Ballyís, Complainantís products from aerospace to t-shirts are very different from Respondentís service of providing a forum for voicing criticism of Complainant and other prominent corporations.

Furthermore, there is at least one other federal case similar to Ballys and our Case that follow this same reasoning, viz., "sucks" appended to a famous trademark used as a domain name for websites used to discuss or criticize the business of the trademark owner results in a non-infringing and not confusingly similar use of the trademark. (re the domain name <Lucentsucks.com>, Lucent Technologies, Inc. v. Lucentsucks.com, 95 F. Supp. 2d 528, 535, E.D. Va. 2000).

In reaching this Decision, the Panel is mindful that the current nature of the internet is such that search engines may well pull in the disputed domain names when the searcher intends to find only Complainantís well-known company. However, the Panel believes that once the searcher sees <lockheedsucks.com> and <lockheedmartinsucks.com> listed among the websites for further search, she will be able readily to distinguish the Respondentís site for criticism from Complainantís sites for goods from aerospace to t-shirts.

Therefore, the Panel finds the Complainant has not shown that the disputed domain names <lockheedsucks.com> and <lockheedmartinsucks.com> are confusingly similar to Complainantís trademarks under the Policy.

In view of the fact that the Policy requires Complainant to prove every element of the Policy at 4 (a)(i-iii), the Panel finds it unnecessary to consider the partiesí proof and arguments on "legitimate rights and interests" and "bad faith" (the Policy 4 (a)(ii) and (iii)) in order to reach its Decision.

 

7. Decision

Based on the foregoing discussion, the Panel denies the Complaint under the Policy 4 (i) and the Rules 15. Complainant, Lockheed Martin Corporation, failed to show that the disputed domain names were confusingly similar to its trademarks. Therefore, the Panel orders that the disputed domain names <lockheedsucks.com> and <lockheedmartinsucks.com> remain registered in the name of the Respondent, Dan Parisi.

 


 

Dennis A Foster
Presiding Panelist

Prof. David E Sorkin
Panelist

Date: January 26, 2001

 


 

DISSENT

I respectfully dissent from the conclusion that a domain name combining a trademark with the word "sucks" cannot be considered as "confusingly similar" to the trademark under the Policy, paragraph 4(a)(i).

The implication of the majorityís conclusion is that in a situation where the registrantís motivation was not the exercise of free speech and criticism, but rather to sell the domain name back to the trademark holder for more than its out-of-pocket expenses, the lack of "confusing similarity" would prevent a finding that the Policy had been violated. Yet cases like this have been decided in favor of the trademark holder on a finding of bad faith registration and use. See, e.g., Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, No. D2000-0477 (WIPO July 20, 2000).

There the Panel stated that: "Internet users with search engine results listing Respondentís domains are likely to be puzzled or surprised by the coupling of Complainantís mark with the pejorative verb "sucks." Such users, including potential customers of Complainant, are not likely to conclude that Complainant is the sponsor of the identified websites. However, it is likely (given the relative ease by which websites can be entered) that such users will choose to visit the sites, if only to satisfy their curiosity. Respondent will have accomplished his objective of diverting potential customers of Complainant to his websites by the use of domain names that are similar to Complainantís trademark." P. 11.

The critical issue in the free speech cases is the intent of the registrant of the domain names. Was the registrantís intent to create an internet vehicle for the exercise of free speech and criticism. Or was the registrant guilty of registration and use in bad faith. The outcome requires each case to be considered on its own facts and precludes a per se conclusion that there can be no "confusing similarity" where "sucks" is added to the trademark.

 


 

David E. Wagoner
Panelist