Lockheed defeated in war over 'skunkworxcc.com'


In Lockheed Martin Corporation v Skunkworx Custom Cycle, a World Intellectual Property Organization (WIPO) panel has refused to order the transfer of the domain name 'skunkworxcc.com' to the complainant.

Lockheed Martin Corporation filed a complaint with WIPO under the Uniform Domain Name Dispute Resolution Policy (UDRP) against Skunkworx Custom Cycle, the registrant of disputed domain name 'skunkworxcc.com'. Lockheed owns numerous US and foreign trademark registrations for SKUNK WORKS and asserted that it had acquired significant goodwill in these marks. It contended that (i) Skunkworx's use of the disputed domain name would cause user confusion, given the similarity of the name with the SKUNK WORKS marks, and (ii) Skunkworx had no rights or legitimate interests in the domain name.

Skunkworx's evidence was that it had, since November 2000, provided motorcycle customization and detailing services under its mark THE SKUNKWORX CUSTOM CYCLE and had developed considerable goodwill in the mark over the years. Skunkworx argued that no user confusion would arise because 'Skunk Works' was a common English term (meaning a department or laboratory involved in cutting edge research) that had acquired a generic meaning. It also denied Lockheed's allegation that it had no rights or legitimate interests in the domain name.

The WIPO panel declined to rule on whether the term 'Skunk Works' had become generic, stating that questions of trademark invalidity, including genericness, were not within the purview of a UDRP proceeding and were best left for adjudication by the courts or other inter partes proceedings before appropriate governmental bodies. It held that the summary and rather abbreviated nature of UDRP proceedings totally precluded the establishment of a full factual record, which was necessary for the determination of such questions.

While the panel agreed with Lockheed that user confusion was likely to arise given the phonetic equivalence of the disputed domain name with Lockheed's SKUNK WORKS marks, the panel declined to order the transfer of the domain name as it found that Skunkworx had rights and legitimate interests in it due to Skunkworx's genuine and continuous use of the domain name (and corresponding business name) from November 2000. It had acquired a significant reputation in the name as a result of such use.

The panel cautioned that the UDRP merely provides protection from a very narrow form of trademark infringement (ie, cybersquatting) and did not provide a trademark owner with an unfettered right to halt all third-party use of a registered mark in a domain name.

Penny Leng, Drew & Napier LLC, Singapore

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