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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Lockheed Martin Corporation v Novita Ltd [2007] DRS 4194 (30 May 2007) URL: http://www.bailii.org/uk/cases/DRS/2007/4194.html Cite as: [2007] DRS 4194 |
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Nominet UK Dispute Resolution Service
DRS Number 04194
LOCKHEED MARTIN CORPORATION v. NOVITA LIMITED
Decision of Appeal Panel
1. Parties
Appellant: Lockheed Martin Corporation
Country: USA
Respondent: Novita Limited
Country: Great Britain
2. Disputed Domain Name
The domain name in dispute is: skunkworks-uk.co.uk
3. Procedural Background
On 8 November 2006 the Appellant filed a Complaint under the Dispute Resolution Procedure ("the DRS") of Nominet UK ("Nominet UK").
On 4 December 2006 the Respondent filed a Response.
On 14 December 2006 the Claimant filed a Reply.
On 22 January 2007 David Blunt QC was notified that he was appointed as Expert
to determine the dispute with effect on 25 January 2007.
On 2 February 2007 the Expert made his decision finding that the Domain Name in
the hands of the Respondent, is not an Abusive Registration and refusing the
Appellant's application to have the Domain Name transferred.
On 22 February 2007 Nominet UK received notice of intention to appeal from the Appellant.
On 15 March 2007 the Notice of Appeal was lodged with Nominet UK and a copy of the Notice of Appeal was sent to the Respondent on 16 March 2007.
On 29 March 2007 the time for submission an Appeal Response was extended.
On 10 April 2007 the Appeal Response was lodged with Nominet UK.
On 13 April 2007, following conflicts checks James Bridgeman was appointed as Chair of the Appeal Panel and Antony Gold and Simon Chapman were appointed members of the Appeal Panel.
The Appellant is the owner of numerous trade mark registrations for the SKUNK WORKS mark and is also the owner nearly two hundred domain names that incorporate the SKUNK WORKS mark or a phonetic variant of the mark.
The Appellant is the owner of CTM registration No. 1560663 SKUNK WORKS and CTM registration No. 1541424 SKUNK WORKS.
The Appellant's predecessor in interest is the registered owner of UK Trade Mark registration no. 2022075, but the trade mark registration is in the process of being transferred to the Appellant.
The Respondent was incorporated in 2005.
The Domain Name was registered by the Respondent on 20 July 2005.
Appellant's Case as set out in the Complaint
The Complaint alleges that the domain name in dispute is identical to the Appellant's trade mark and is an Abusive Registration in the hands of the Respondent and requests that the domain name in dispute be transferred to the Appellant.
The SKUNK WORKS mark has been in continuous use by the Appellant and its predecessor in interest, Lockheed Corporation, since the mid 1940s.
The Appellant refers to its Rights in the above registered trade marks and has furnished a list of registered marks and copies of registration certificates issued by the United States Patent and Trademark Office in respect of its SKUNK WORKS trade mark.
The Appellant claims common law rights in the SKUNK WORKS mark. The Appellant submits that its SKUNK WORKS trade mark has achieved a famous status.
The SKUNK WORKS mark represents the goodwill of the Appellant 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. In addition, the mark has been used to identify the source of other technical services and many products. The Appellant's SKUNK WORKS division and the goods and services produced therein have been the subject of numerous books, articles and television programmes, including the books Skunk Works, by Ben R Rich and Leo Janos (Little, Brown & Co., 1996); Lockheed Martin's Skunk Works, by Jay Miller (Specialty Press, 1996); and Lockheed Secret Projects: Inside the Skunk Works, by Dennis Jenkins (MBI, 2001).
Each of the books is in print and is currently available through Amazon.com. The Appellant furnished an intentionally limited list of references to its SKUNK WORKS mark in popular sources operating mainly outside the field of aviation and aeronautics dating from 1985 to the recent past, including an October 4, 2004 obituary of the late Willis M. Hawkins, designer of the C-130 HERCULES transport plane published in the Miami Herald that refers to "Lockheed's famous 'Skunk Works' operation."; Fortune magazine's June 28, 2004 issue containing an article by Stuart F. Brown, Mine's Faster Than Yours; Planemakers are trying to hatch an aircraft that no mogul could do without that refers to the "fabled Lockheed Martin Skunk Works."; an undated article, The Secret CIA UFO Files, available in the Science section of the Popular Mechanics website that speaks of a mock-up of an aircraft which "was trucked from the famous Lockheed Skunk Works, in Palmdale, California, to Groom Lake, Nevada."
The Complaint argues that the Appellant's SKUNK WORKS mark has status as a well-known mark under the definition at Part 1, Article 2 of the WIPO Paris Union Joint Recommendation Concerning Provisions on the Protection of Well-Known Marks. Among other things, this mark has been recognized by numerous third parties as being closely associated with the Appellant, it has been used and registered over a wide geographic area, and efforts to enforce the mark have been successful in numerous prior UDRP Panel decisions.
The Complaint further submits that that the Appellant has engaged in licensing others to use its mark on products other than those for which registration has been obtained.
Furthermore, the Appellant owns, directly or beneficially, a large number of domain names incorporating the mark SKUNK WORKS or spelling variants, including all of the nearly two hundred domain names listed in an annex to the Complaint. Many have been ordered transferred in domain name dispute resolution proceedings, with the most recent having been ordered transfer by decision dated April 10, 2006.
The Appellant refers to a number of UDRP decisions where the Appellants rights had been accepted by administrative panels in particular: Lockheed Martin Corp –v- Skunk Wrx LLC WIPO Case D2004-043 (August 17 2004); Lockheed Martin Corp. v. Deborah Teramani, WIPO Case No. D2004-0836 (December 1, 2004)
The Appellant submits that in the hands of the Respondent the domain name in dispute is an Abusive Registration as defined in paragraph 1 of the Policy, because the Respondent has no legitimate business under the domain name. The domain name in dispute was registered or otherwise acquired in a manner which, at the time when the registration was made, was unfairly detrimental to the Appellant's rights. The Appellant further submits that the Respondent's primary purpose in registering the domain names falls within paragraphs 3a. i. B and C of the Policy.
The Appellant further submits that the Respondent registered the domain name long after the Appellant had established its rights in the SKUNK WORKS mark. Disregarding the generic .co.uk suffix and the -uk element, the domain name is identical and confusingly similar to the Appellant's trading name and trade marks.
The existence of this domain name not only acts as a potential block in registration against the name in which the Appellant has a legitimate and valid right in the United Kingdom but also is designed to confuse internet users. The Appellant contends that the registration and use of the domain name not only blocks the Appellant from registering the domain name itself, but also takes an unfair advantage of the Appellant's rights and is unfairly detrimental to those rights. It is possible that an advantage is being made by way of a commercial gain.
Moreover, the Appellant asserts that the Respondent's use of the domain name is manifestly in bad faith. The Respondent's use of the domain name in connection with the sale and offering of products that are completely unrelated to those of the Appellant dilutes the strength of the Appellant's SKUNK WORKS trade mark by blurring the reputation that Appellant has built up around it. The blurring of a trade mark is actionable under the UK Trade Marks Act 1994 under the provision of Sections 5(3) and 10(3) of the Act. The Respondent has no rights or legitimate interests with respect to the domain name.
The domain name in dispute resolves to a website for "SKUNKWORKS EUROPE" an on-line retail store offering technological products including LCD related equipment. There are also two postal addresses on the website, one of which is in Hampshire in the England and the other in Western Australia. The Respondent is not authorised or licensed to use the Appellant's name or trade mark and is not using the mark in connection with a bona fide offering of goods or services. The Respondent therefore has no rights or legitimate interests in the name.
Prospective purchasers are likely to be confused when they search the Internet for services and products provided by the Appellant itself or licensed by Appellant and find the Respondents website. They are likely to assume that there is a connection to the owner of the famous mark when seeing it used in combination with a two-letter suffix denoting the United Kingdom.
The Respondent's registration and use ofputs the valuable good will associated with the Appellant's mark at risk. It constitutes a false designation of origin, likely to deceive prospective purchasers and others into believing that Respondent's website is in some way connected with the Appellant and SKUNK WORKS ® brand products and services, and as a consequence is likely to divert purchasers and potential licensees of the mark away from Appellant. Furthermore, it may dilute the distinctive character of the famous mark by tarnishing and blurring the good will that the Appellant and its predecessors have cultivated for decades.
Respondent's Case as set out in the Response
The Respondent rejects the claim that it is the owner of an Abusive Registration for the domain name in dispute. There is a business relationship between the Respondent and an Australian company The Novita Group Pty Ltd, (hereinafter "the Australian Company").
The Respondent states that the Australian Company has granted to the Respondent the exclusive right of marketing and re-sale of a range of flat screen mounting solutions that carry the Australian trade mark, SKUNKWORKS, Australian Trademark number: 1066571 – in classes 20, 38 and 41.
These exclusive rights include links and referrals from the Australian website at the www.skunkworks.com.au address, which has been in constant operation, as has the company, since the registration of the Australian ccTLD domain name on 4 December 2003.
The Respondent submits that that after only four years of use by the Australian Company the SKUNKWORKS trade mark has achieved greater renown and recognition than the Appellants trade mark amongst the Internet community within the UK and Australia than the Appellant's trade mark. In support of this assertion the Respondent provides details of the hits on various browser searches.
The Respondent argues, citation various dictionaries and articles that the term "skunk works" has become a common English term and it has acquired a generic meaning, that describes "a typically small and loosely structured group of people who research and develop a project for the sake of innovation. The term typically is used in regard to technology projects".
The Respondent has traced the genesis of the term back to its earliest in Al Capp's comic strip which depicted the Skonk Works, i.e., the Kickapoo Joy Juice bootleg brewing operation. This explanation of the origin of the term is acknowledged by the Appellant inter alia on its website at the www.lockheedmartin.com address.
Since the term 'skunkworks' is a generic term with substantial third-party use, the Respondent submits that no one will associate the term with the Appellant's activities and consequently no user / customer confusion would arise by virtue of the Respondent using the term or its phonetic equivalent as its domain name.
Furthermore, the Respondent states that it is using the term in a manner to describe the innovative development and marketing of its metal bracket products, which is entirely consistent with its generic meaning, hence further precluding any confusion arising. Thus the Respondent contends that, in the absence of proving that any such confusion will arise, the Appellant simply fails to make its argument.
The Respondent argues that the Appellant has failed to show that the Respondent lacks any legitimate rights in or legitimate interests to the use of the "skunkworks" name. The Respondent has developed considerable notoriety for its use of the "skunkworks" name within its industry, as signified by various awards and the customer / industry recognition it has received, for example at the Australian and UK trade shows it has exhibited at, the media attention it has achieved, and the many industry functions it has been invited to attend. A recent award winning submission to the Australian Marketing Institute award for Best New Brand, was entitled Skunkworks: What Kind of Name is That?
The Respondent submits that the title was indicative of the challenges faced in establishing SKUNKWORKS as a new brand and the award submission discussed the primary reason for this as being the lack of general awareness about the meaning of the name. It has been recognised by the prestigious UK Trade and Investment Awards and was recently mentioned in the Australian Financial Review for its efforts.
The Respondent has developed its own legitimate rights to use the generic term by offering bona fide products and services within its industry since 2003. The products and services offered via the domain are referred to positively in customer testimonials and in the press as being of exceptional quality and value for money.
The Respondent contends that it did not register the disputed domain name in bad faith. Specifically, the Respondent states that:
a) it did not register the disputed domain name with any intention of attracting Internet users to its website by creating a likelihood of confusion with the Appellant's mark as to the source, sponsorship, affiliation or endorsement of the Respondent's website or services;
b) the parties are not competitors; and
c) the Respondent did not register its domain name in dispute primarily to disrupt the Appellant's business. When the Respondent chose the name 'skunkworks' to use in its trade name and domain names, dating back as far as 2003, the Respondent selected it for its generic meaning, knowing that it was a common descriptive term.
The Respondent applied the meaning very specifically to itself, believing it to be in keeping with its small team of hard working individuals who had put together a new technology-based enterprise that was founded entirely on the resources and innovation of its team members. The Respondent's actions were therefore consistent with its belief and understanding that the term 'skunkworks' is common and available for use in its generic sense. This tends to negate any constructive notice which the Respondent might have had concerning the Appellant's registered marks.
Since the registration of the Australian domain name in 2003 and the UK domain name in 2005, the Respondent has invested considerable resources, monetary and other, to develop its SKUNKWORKS websites and market its SKUNKWORKS range of goods. It has therefore developed considerable good will in its name and mark and gained notoriety in its industry. All of this activity has gone on, in good faith and without any action from the Appellant resulting in this business becoming the primary source of income for the Respondent's team members. Hence, transferring the disputed domain name now – given the extended inaction by the Appellant and the investment made by the Respondent – would adversely affect and irreparably prejudice the Respondent to its detriment.
The Respondent submits that the Appellant has made no assessment of the legitimate use of the SKUNKWORKS name by the Respondent, nor the fact that the Respondent's business is completely different and was not set up to compete with the Appellant.
Furthermore, voluntary 'cease and desist' demands by the Appellant prior to this Complaint amount to instances of a wealthy corporation using threats and expense to usurp legitimate rights from a small business where the Appellant knew, or should have known, that the Respondent had legitimate rights in the disputed domain name and did not compete with the Appellant's business. Accordingly, the Respondent concludes that the Appellant, in bringing this action, has acted in bad faith, primarily to harass the Respondent and, as such, has abused the administrative process.
The Appellant has made numerous and not always successful attempts to block the use of the name SKUNKWORKS. The Respondent cites two particular instances: WIPO Case number D2005-0045 Lockheed Martin Corporation v. Lynn Dixon and WIPO Case number D2004-0824 Lockheed Martin v. The Skunkworx Custom Cycle.
In Lockheed Martin v. The Skunkworx Custom Cycle, the panel stated that upon careful reflection of the entire record, the panel was simply not persuaded that the Appellant's conduct, while quite aggressive, was sufficiently egregious. The panel declined the respondent's invitation to brand the Appellant guilty of domain name hijacking in that case. However, the panel strongly cautioned the Appellant that if it were to continue on that course, and in its manner of aggressively enforcing its "SKUNK WORKS" marks against other third-party domain name owners it could, "very easily cross that boundary."
The Appellant is continuing its contest and objections to the formal registration of the Australian trademark, 'Skunkworks' (Trademark number: 1066571 – in classes 20, 38 and 41) and the Respondent believes and submits that the Appellant is using the DRS in bad faith in order to further apply pressure to the Respondent via their licensor, the Australian Company.
Reply
In response to the arguments put forward by the Respondent, the Appellant replied stated that an Opposition has been filed to registration of this trade mark in Australia by the Australian Company. Accordingly, to date, neither the Respondent nor the Australian Company has acquired any registered rights in the trade mark SKUNKWORKS.
The results of an Internet search on Google are not conclusive evidence of renown, goodwill or reputation of a trade mark. Hits on the Internet search engine Google merely show that a number of meta-tags have been added to a key word to ensure that it appears high on the list of the search results. Additionally, it shows that the Respondent actively trades in the e-commerce barter system of getting sponsored or sponsorship links to other related sites. Furthermore, the results of the Internet search have been conducted after the complaint was filed against the domain name skunkworks-uk.co.uk, and do not show renown, goodwill or reputation prior to the filing of the complaint.
This action refers solely to the domain name skunkworks-uk.co.uk. An examination of the Respondent's trade mark rights, covering the United Kingdom, which are territorial, should be made in relation to the United Kingdom. Accordingly, any evidence filed which does not relate to the United Kingdom should not be taken into account in these proceedings.
The Respondent has made reference to a number of other domain names containing the trade mark SKUNK WORKS and references to other third party use. It is an unrealistic burden to place on the Appellant to register every variant of their trade mark as a domain name; the Appellant already owns more than two hundred such variants. It should be noted from the number of actions that the Appellant has already taken against third parties who have wrongly registered their trade mark as a domain name, that the Appellant is actively enforcing their trade mark rights.
The Appellant has an excellent record in achieving the transfer of a domain name containing the trade mark SKUNKWORKS back to its rightful owner; the Appellant has succeeded in 15 of 17 such actions it has brought. The most recent Panel decision was issued November 16, 2006 viz. Lockheed Martin Corp. v. UK Skunkworks Limited, NAF Case No. 812924).
Reference is made by the Respondent to the Appellant's history of domain name transfers and in particular, the Respondent cites two instances; WIPO Case No D2005-0045, Lockheed Martin v Lynn Dixon and WIPO Case No D2004-0824, Lockheed Martin v Skunkworx Custom Cycle. These are the only two decisions that did not result in orders of transfer in favour of the Appellant, whereas 15 complaints have been decided in favour of the Appellant.
The Respondent has made reference to the term "skunkworks" as a common English term and has alleged that it has a generic meaning. Firstly, the Appellant denies that the term is generic, relying on its trade mark registrations previously provided. Secondly, the Respondent obviously does not consider the term "skunkworks" to be a generic term, because its business associate, the Australian Company, has applied to register it as a trade mark before the Australian Trade Marks Registry. Further, the Respondent has indicated that they have been granted exclusive rights to the trade mark SKUNKWORKS. It is inconsistent for the Respondent to submit that the term is generic and also claim rights in the term as a trade mark used on goods, as it plainly is attempting to do.
Neither the Respondent nor its associated Australian Company are using the term in question in its allegedly generic or descriptive manner. SKUNKWORKS in all references provided by the Respondent is in respect of use as a trade mark on various goods including LCD wall brackets, LCD arms, plasma brackets, plasma arms, projectors, and CPU holders.
The Appellant asserts that it is the proprietor of the trade mark registrations previously outlined in this matter. These rights are valid and enforceable. While it is acknowledged that the term "skunkworks" can be found in some dictionaries, many other reference materials refer to the term as a mark of the Appellant. Furthermore, the mere fact that a word or term appears in a dictionary does not diminish the strength of the trade mark in relation to goods or services. Examples of words which are found in dictionaries and which also function as trade marks include: APPLE for computers; CANON for cameras; SHELL for oil and petroleum; PENGUIN for chocolate biscuits; MARS for confectionary; and GALAXY for confectionary. These are only some examples of words with dictionary definitions that also function as trade marks.
The Appellant refers to a printout from the website www.skunkworks-uk.co.uk printed on 17 August 2006 whereby at paragraph 2, the website states that "The Skunkworks brand has become well-known around the world as offering top quality products at prices the everyday consumer can afford. Now for the first time Skunkworks is available in the UK and Europe". The Appellant raised this matter as soon as the Appellant became aware that the Respondent had commenced trading in the UK. In fact, the "SKUNKWORKS brand" gained its cachet from decades of use by the Appellant, and the Respondent's use is nothing more than an attempt to trade off the Appellant's reputation.
The Respondent refers to the article How The Skunk Works® Got Its Name. This article contains the "®" symbol and states that "the once informal nickname is now the registered trade mark of [Lockheed Martin]: Skunk Works®." Thus, this article acknowledges the Appellant's rights in the trade mark.
5. The Expert's Decision
In his Decision, the full text of which is published by Nominet UK on its website at http://www.nominet.org.uk/digitalAssets/16916_skunkworks-uk.pdf the learned Expert found as a fact that the domain name in dispute was not registered in a manner which at the time when the registration took place was unfairly detrimental to the Rights of the Appellant; and the domain name in dispute has not been used in a manner which took unfair advantage of or was unfairly detrimental to the Rights of the Appellant.
The Expert decided that the domain name in dispute in the hands of the Respondent, is not an Abusive Registration and rejected the Appellant's application.
6. The Parties Submissions to the Appeal Panel
The Notice of Appeal
In its Notice of Appeal the Appellant relies to its rights in the abovementioned CTM and UK registered trade marks and submits that said registrations provide the Appellant with exclusive rights in this unique mark. The Expert correctly concluded that the Appellant has rights in the SKUNK WORKS mark but he gave insufficient weight to those rights and quite wrongly concluded that the mark "is a common English term" with "a generic meaning."
The Expert erred in failing to take account of the fact that there was no explanation given for the Respondent's selection of the trade mark SKUNK WORKS. There was no bona fide reason for the Respondent to choose the Appellant's well known and long registered trade mark for a UK domain name. The Respondent has not stated that it was unaware of the Appellant or its SKUNK WORKS mark. On the balance of probabilities, given the Appellants long public use and prior rights it is reasonable to conclude that the Respondent was aware of the Appellant and its SKUNK WORKS mark.
The Respondent was incorporated in May 2005 and registered the domain name in July 2005. There is no evidence of any third party use of the SKUNK WORKS mark in the United Kingdom in July 2005. There is no evidence of the date on which the Respondent commenced trading in the United Kingdom. The Expert attached undue weight to the Respondent's Rights.
The Expert wrongly held that the Complaint must fail because "the terms of paragraph 4aiA of the Policy are fulfilled" the domain name in dispute is not an Abusive Registration. The factors listed in the Policy are merely indicative considerations. The Expert attached excess significance to the question of "confusion". Unfair advantage and detriment can arise without confusion especially where a Appellant has sole and exclusive trade mark rights. The Expert wrongly concluded that because "blurring" is not one of the factors in paragraph 3 of the Policy, the Appellant should fail. The listing is non exhaustive and the decision in DRS 00193 harmankardon.co.uk demonstrates how blurring of a trade mark is one of the damaging uses to which a domain name may be put.
The Expert wrongly held that SKUNK WORKS is a common English term with a generic meaning. The Respondent uses the term in a trade mark sense and the Expert wrongly concluded that the mark SKUNK WORKS had ceased to refer to the Appellant.
The Expert took an inconsistent approach to evidence from outside of the United Kingdom. He attached little weight to the Appellant's rights arising from use and enforcement in the USA, while relying on evidence relating to American dictionaries, Australian Internet searches, and a global Google search for SKUNKWORKS UK.
Response to the Appellant's Appeal
In its Response to the Appellant's Appeal, the Respondent states that the domain name in dispute was chosen to mirror the brand name of the product and business name that had already been successfully trading in Australia since December 2003. When establishing its business, the Respondent undertook extensive searches of this generic and well-used term and determined that whilst relatively unknown in Australia and the UK, the definition was a perfect fit for the spirit engendered by its intended business. The Respondent also determined that extensive use has been,
and is currently being made of the term by others, particularly by corporations such as Compaq, Xerox and specifically IBM, who use the 'skunk works' term to describe its 'emerging business program'. The Respondent stipulates that this is typical of the term's widespread incorporation into general language and business practice. The Expert upheld that 'skunkworks' could be deemed a generic term because of the substantial third party use.
The Appellant claims "ownership" of the term due to its long standing association with the word, yet the Appellant did not create the term, nor does it now, nor has it ever, employed it in any product, service or commercial business that it is involved in. Its long standing association however has never been disputed nor diminished by the Respondent. The Respondent merely stipulates that the term has grown in popularity and usage that goes well beyond that made of it by the Appellant.
In terms of "fame and repute", Internet searches, show a weighted number of hits for the Respondent's business, Skunkworks, at a global level. Neither of the former
resulted in a positive link to any of the Appellant's near 200 websites, all of which appear to have the extensions .com, .net, biz, .info, .org, commonly referred to as 'generic top level domains'. Furthermore, there is no evidence of any domain names owned by the Appellant in any of the 240 country-code top level domains, such as .co.uk. In the UK, the result of a similar search nets 11 references to the Respondent, eight of them to the domain in question and a further three to www.skunkworks.com.au sites.
The Appellant scored 12 out of 100, with three referring to further litigation against other Respondents outside of the UK. In fact a greater number of results favoured websites with references to 'Bruce Dickinson', a rock and roll performer.
From the 12 references found for the Appellant, only two actually pointed to the
Appellant's corporate website (www.lockheedmartin.co.uk) in the UK. It follows that after only four years the name 'skunkworks' has achieved more renown and recognition, amongst the internet community, in the hands of the Respondent.
Addressing the question of similarity, the Respondent argued that it was evident in 2005, as it is today, that there were virtually no other products or brands that carried or carry, the SKUNKWORKS name and certainly none that conflicted with the Australian Company's core business. The Expert upheld that the Respondent did not register the Domain Name with any intention of attracting internet users to its website by creating a likelihood of confusion with the Appellant's mark nor did it register the domain name in dispute to disrupt the Appellant's business.
Furthermore, any confusion, given the limited scope of perception of the Appellant's business outside the USA and the business of the Respondent, would be likely to be short-lived and insignificant in effect.
The Expert also stated that it is plain that the parties are not competitors. The Expert further found that the Respondent has an entirely legitimate business in a particular niche within the online retail market. The Expert correctly concluded that there is no reason to doubt that this is the business it had in mind when registering the Domain Name.
Addressing the issue of whether the domain name in the hands of the Respondent is an Abusive Registration, the Respondent states that the basis of the Respondent's claim is that it has conducted a business ethically and in good faith in the UK since July 2005 and that the domain name in dispute is a vital part of the Respondent's business. Careful selection was made of the domain name and the name was chosen because of its definition.
When considering the arguments put forth by the Appellant about its "ownership", it should be noted that not only is "skunk works" a generic dictionary term, it has more importantly grown into the everyday vernacular use of business. The manner in which the Appellant has made use of the term over the years, in describing its centre for innovation, has also occurred within a number of other companies. Whilst the Appellant's usage and association may have occurred over a period of time, surely that does not automatically establish ownership of a term that was not even of the Appellant's own creation.
It would seem that the Appellant, and others, have made such good use of the term that the term has in fact, outgrown its early origins and become renowned in its own right, hence why it has become a dictionary defined term and is put to use in corporations around the globe.
The Expert found that the Respondent had substantiated its position as having obtained renown and notoriety within its industry and its own legitimate rights to use the generic term by offering bona fide products and services within the industry.
Sales of SKUNKWORKS products, via the Respondent's website commenced in July 2005, however awareness of the brand and the business name precede that date, as the Australian website attracted enquiries and sales from the United Kingdom from the time it was established in December 2003. A legitimate business and related sales and marketing activities had therefore already been established in the United Kingdom prior to registration of the Domain Name. Inherent in this ongoing process is therefore the establishment of renown and good will in Skunkworks business in the United Kingdom since December 2003.
As the Expert upheld, there is no evidence that the Respondent has gained commercially and thus been advantaged by the fact that SKUNK WORKS is a name or mark which the Appellant also uses.
The domain name in dispute represents a niche business that has no connection to the core activities of the Appellant's business. It has been established and upheld with integrity that in no way causes detriment to the Appellant or its business activities. As the Expert upheld, this is because of the fact that Skunkworks has achieved a cachet which is independent of the Appellant.
The Expert correctly went on to conclude that the Respondent has used the domain name in dispute in connection with a genuine offering of goods.
7. Discussion and Findings of the Appeal Panel
Paragraph 2(b) of the DRS Policy requires the Appellant to prove on the balance of probabilities that both elements of the test set out in paragraph 2(a) are present viz. that
i. the Appellant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and
ii. the Domain Name, in the hands of the Respondent, is an Abusive
Registration.
For the reasons set out in the Expert's decision, the Appeal Panel agreed with the conclusion of the Expert that the domain name in dispute is identical to a trademark in which the Appellant has Rights and the Appellant should succeed on the first element of the test.
Majority Decision on Abusive Registration
Difficulty arises however in relation to the application of the second element of the test and the Appeal Panel was unable to reach a unanimous decision as to whether the Respondent's registration of the domain name in dispute was an Abusive Registration.
The majority of the Appeal Panel take the view that the Appeal should be refused for the following reasons:-
The grounds of complaint relied upon by the Appellant are, in summary–
While the Appellant has rights arising from the CTM Registration, in its submissions, the Appellant relies upon the argument that its mark has such notoriety that any use being made of it would be abusive. This is a necessary argument because the use being made of the domain name is not such that without notoriety, the general public would be likely to associate the "offending" use with the Appellant, given the rather different goods/services being offered by the respective parties, or which are covered in the specification of the Appellant's registration.
If the Appellant can prove that its mark has notoriety, then they are more likely to be able to show that the use of their mark would be abusive use, given the broader likelihood of association with themselves. In addition and notwithstanding notoriety, if the Appellant can identify an abusive intention on the part of the Appellant to use a domain name that is associated with the Appellant, that may also be enough for a finding that the registration is abusive, insofar as if the Respondent was aware of the Appellant's rights at the time of registration, it might sufficient to give rise to a presumption that their was abusive intent.
The majority of the Panel is of the opinion that the Appellant has failed to show that the mark relied upon has notoriety in the United Kingdom. The position in the United States might be different, where the mark is more notorious, but that is not relevant to the determination of this dispute, a position that the Appellant itself adopts when encouraging the Panel to ignore the facts and circumstances applicable to Australia.
Furthermore, the majority of the Appeal Panel take the view that, on the evidence submitted, there is no grounds for asserting that there was an abusive intent by the Respondent when registering the domain name, and indeed there is no evidence to support the argument that the use of the domain name has led to the confusion or harm that is alleged by the Appellant. To the contrary, the evidence is that the domain name was not chosen for reasons associated with the Appellant or any notoriety that the mark may or may not enjoy whether in the UK or otherwise, but was on the basis of the descriptive nature of the words, and the majority of the Panel accept that the words "skunk works" have developed descriptive meaning.
For the reasons set out above the majority of the Appeal Panel believes that the Appeal should fail.
Dissenting Views of Chairman
The Chairman could not agree with the majority of the Appeal Panel on the issue of Abusive Registration.
The Chairman is conscious that the DRS must be distinguished from the UDRP and the test of "Abusive Registration" is distinct from the tests set out in paragraph 4(a) of the UDRP. That being said, the issues in the present case essentially come down to whether the Respondent is damaging or taking unfair advantage of the Appellants registered trade mark. In the view of the Chairman, the principles to be applied in cases where a registrant relies on the generic character of a dictionary word that is also the registered trade mark are well stated in the decision of the three member UDRP panel in National Trust for Historic Preservation v. Barry Preston, WIPO Case No. D2005-0424, (August 10, 2005) as follows:
"The Panel agrees with the Respondent that "historic hotels" is a common descriptive term when used in connection with information, products or services respecting such establishments. The record reflects several domain names other than the disputed domain name using the term in its descriptive sense. Even were the Panel to assume that the Complainant has or will establish trademark rights in this term, the Policy was not intended to permit a party who elects to register or use a common term as a trademark to bar others from using the common term in a domain name, unless it is clear that the use involved is seeking to capitalize on the goodwill created by the trademark owner. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
A number of Panels have concluded that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of a commonly used descriptive phrase, even where the domain name is confusingly similar to the registered mark of the complainant. See Private Media Group, Inc., Cinecraft Ltd. v. DHL Virtual Networks Inc., WIPO Case No. D2004-0843; T. Rowe Price Associates, Inc. v. J A Rich, WIPO Case No. D2001-1044; Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031; EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., WIPO Case No. D2000-0047. It is clear, however, that the respondent must be using the domain name not in the trademark sense but in the descriptive sense, to communicate some aspect of the services offered. Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031. And it is well settled that a bona fide offering of goods and services under paragraph 4(c)(i) is not possible under circumstances otherwise evidencing bad faith registration and use of the domain name. See, e.g., First American Funds, Inc. v. Ult.Search, Inc, WIPO Case No. D2000-1840 (for offering under paragraph 4(c)(i) to be considered bona fide, domain name use must be in good faith under paragraph 4(a)(iii))."
Applying those principles to the present case, the Chairman is of the view that the Respondent is using the term "skunkworks" in a trade mark sense. Insofar as the Respondent is using the phrase in a descriptive sense to communicate some aspect of the character of its goods, it can only intend to infer that the goods are designed in a unique way, and that in turn, must infer a connection with the modus operandi of the designers associated with the Appellant's business.
Furthermore, this is not a simple case of registration of a generic dictionary word. While there is evidence that the term "skunkworks" is a dictionary word, in the Chairman's view it is not in common usage in the United Kingdom. This is acknowledged by the Respondent. Insofar as the term is used as a known descriptive term, it carries an association with the modus operandi of the Appellant's design team.
The Respondent in casu had no rights in the words "skunk works" as a trade mark, service mark or domain name when it registered the domain name in 2005. Whatever rights the Australian Company may have had, there is no evidence that either the Respondent or the Australian Company had any acquired rights either at common law or by registration in the United Kingdom at the time that the domain name in dispute was registered. It is difficult to understand what rights in the United Kingdom the Australian Company may have purported to license to the Respondent. The Appellant on the other hand had both common law and registered trade mark rights in the United Kingdom at all material times.
The Respondent has stated that when establishing its business, the Respondent undertook extensive searches and determined that whilst relatively unknown in Australia and the United Kingdom, the definition was a perfect fit for the spirit engendered by its intended business.
In the view of the Chairman, if the Respondent undertook extensive searches it is inconceivable that it did not identify the Appellants Rights in the United Kingdom and other jurisdictions. It follows that it is most probable that the Respondent was aware of the fact that the Appellant had Rights in the mark SKUNK WORKS when the domain name in dispute was registered. The Respondent was most probably aware of the Appellant's opposition to the Australian trade mark registration. The Respondent was most probably also aware that the Appellant was the owner of a large portfolio of gTLD domain name registrations incorporating the words "skunk works" when the domain name in dispute was selected and registered. The Respondent was also most probably aware of numerous UDRP cases brought by the Appellant to defend its rights in the SKUNK WORKS trade marks.
The "spirit" to which the Respondent refers is in fact the goodwill of the Appellant. The term is either a common English word or it is not. If it is not generally known in the Australia and the United Kingdom then it is not likely to be seen as a generic word in either of those jurisdictions.
In the dissenting view of the Chairman the domain name in the hands of the Respondent is an Abusive Registration. The registration of the domain name and the maintenance of the registration by the Respondent for its own business purposes represents a continuing infringement of the Rights of the Appellant. There is an ongoing and serious risk that Internet traffic seeking the Appellants website by using the Appellant's registered trademark as a search catchword, will be misdirected to the Respondent's website.
Appeal Panel Decision
By a majority therefore the Panel finds that the Appellant has failed to establish that the domain name in dispute is an "Abusive Registration" and therefore the Appeal should be rejected and the decision of the Expert affirmed.
James Bridgeman
Chairman
Simon Chapman Antony Gold
30 May 2007
