The case was heard by one panellist under the dispute resolution
process of Nominet, the registry for .uk domains. Lockheed Martin
lost and appealed, but has now failed in its appeal before a three
person panel.
The domain ukskunkworks.co.uk is owned by UKSkunkworks Ltd, a
company which sells cannabis seeds and smoking paraphernalia
related to cannabis. Skunk is a slang term for a particularly
strong strain of cannabis.
Lockheed Martin tried to gain control of the domain because it
has in times of war operated a secret laboratory developing new
products which it called Skunk Works. It owns several UK and
Community trade marks related to the term.
Lockeed Martin claimed in its case that UKSkunkworks registered
the domain in order to disrupt its business, and that it was a
blocking tactic. It said that the registration would cause consumer
confusion.
The panel found that such claims were unlikely, since the term
'skunk works' was not a well known one in the UK, and certainly not
one immediately associated with Lockheed Martin.
"The Complainant [Lockheed Martin]'s arguments rely heavily on
the fame of its use of the name ‘skunk works’, attested by a
collection of articles from magazines. Underlying these three
contentions there appears to be an assumption by the Complainant
that this fame is such that anyone seeing the name must have prior
awareness of Lockheed Martin's use," said the panel in its ruling.
"The Panel’s view is that at least in the United Kingdom, there is
no such general awareness."
"The Respondent says that he had never heard of the Complainant
or its subsidiaries before being contacted about the Name," it
said. "Furthermore, the general lack of awareness in the UK of the
Complainant’s use of the name means that users of the Respondent’s
website would be highly unlikely to associate it in any way with
the Complainant."
The panel was scathing about Lockheed Martin's claim that
UKSkunkworks' business was illegitimate and designed to damage
it.
"It has not been shown by the Complainant that the activities of
the Complainant are illegal or that the Respondent has been
prosecuted for illegal activities," it said. "Naturally, the Panel
can sympathise with LMC’s desire to avoid association with
activities that people may object to, even if the activities are
within the law."
"Lockheed Martin’s original use of the name ‘skunk works’ was
humorous, and a sense of humour may be appropriate to this
situation," said the ruling. "There may be some comfort for
Lockheed Martin in the fact that many people have as little wish to
be associated with military aircraft as have Lockheed Martin to be
associated with illegal drug use. The risk of ‘contamination by
association’ therefore seems low."
Lockheed Martin listed a number of decisions of the World
Intellectual Property Organisation (WIPO)'s dispute resolution
panels which had gone in its favour in support of its case. The
Nominet panel, though, noted that these panels were located in
North America where the association of Skunk Works with Lockheed
Martin was stronger.
Litigatin expert John Mackenzie of Pinsent Masons, the law firm
behind OUT-LAW.COM, said that the case demonstrated the need to
present evidence in support of arguments in front of dispute
resolution panels.
"This is another illustration that big brands have to be careful
how they present their case," he said. "Here they seemed to rely on
previous WIPO cases they had won, which obviously didn't get them
very far. Brand owners have to take each case on its own merits and
make sure you have enough evidence to support your case."
As with all domain dispute resolutions, though, either party can
take the case to a court after the dispute resolution process is
complete. "They could go to court, which would have little regard
to the case heard by the panellists," said Mackenzie. "The court
they went to would depend on the normal rules of jurisdiction, so
it could be a US court or a UK court."
