WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutsche Lufthansa AG v. Nadeem Qadir / Bladimir Boyiko
Case No. D2010-2147
1. The Parties
The Complainants are Deutsche Lufthansa AG of Köln, Germany and Deutsche Lufthansa AG of Frankfurt, Germany (the “Complainant”), represented by Rauschhofer Rechtsanwälte, Germany.
The Respondent is Nadeem Qadir of Dhaka, Bangladesh / Bladimir Boyiko of Moscow, Russian Federation.
2. The Domain Name and Registrar
The disputed domain names <lufhansa.com>, <lufthansausa.com> and <wwwlufthansa.com> are registered with eNom (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2010. On December 13, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain names. On December 14, 2010, the Registrar transmitted by email to the Center its verification response confirming that Nadeem Qadir and Bladimir Boyiko are listed as the registrants and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 December 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 21, 2011.
The Center appointed Knud Wallberg as the sole panelist in this matter on January 31, 2011. 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
The Complainant operates the Lufthansa airline based in Germany and has registrations for the trademark LUFTHANSA in several countries around the world including Russian Federation, dating back at least as early as 1979.
The disputed domain names were registered in 2000 and 2001.
The Complainant attached webpage printouts to its Complaint which show the Respondent’s use of the disputed domain names. The Complainant wrote to the Respondent in July 2010 and demanded immediate transfer of the disputed domain names. The Complainant asserts that the Respondent did not respond to these letters.
5. Parties’ Contentions
The following is taken from the Complaint.
The disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The disputed domain name <lufhansa.com> is confusingly similar to the Complainant’s trademarks since the domain name almost includes the trademarks in its entirety. The only difference between the Complainant’s trademark and this disputed domain name is the omission of a “t”, which is only a small difference that can be disregarded for the purpose of evaluating confusing similarity.
The domain name <lufthansausa.com> is as well confusingly similar to the trademarks in which the Complainant has rights. The disputed domain name wholly includes the Complainant’s trademark and adds the geographical term and country code “usa” to it.
The domain name <wwwlufthansa.com> is finally as well confusingly similar to the Complainant’s trademarks. It comprises the trademark LUFTHANSA as a whole, only “www” is added. This addition is neither suitable to eliminate the confusing similarity.
The Respondent has no rights or legitimate interests in respect of the disputed domain names
The Complainant alleges that in the present case, there is no evidence that Respondent uses the disputed domain names or names corresponding to the disputed domain names in connection with a bona fide offering of goods or services.
The disputed domain names <lufhansa.com> and <lufthansausa.com> resolve via a redirection to a page displaying several sponsored links to third party websites. The Respondent’s only activity carried out under those domain names is the redirection to “travelshowroom.com resp. usseek.com”.
Thus Respondent diverts Internet users searching for the Complainant’s website, miss-typing the trademark LUFTHANSA or adding a geographical term “usa”, to other sites. The Respondent does not offer goods or services himself. The Respondent simply takes advantage of the fact that Internet users looking for a website connected with the Complainant are “captured” by the Respondent and redirected to a commercial page. It can therefore be presumed that the Respondent receives click-through fees in exchange for diverting Internet users to such websites.
The disputed domain name “wwwlufthansa.com” is not connected to the Internet and no goods or services have ever been offered via this website. There is no evidence that a website or other online presence is in the process of being established which will use the domain name. There is no evidence of advertising, promotion or display to the public of the disputed domain name, and according to the Complainant, failure to provide a product or service or develop a site demonstrates that the Respondent has not established any rights or legitimate interests in the said domain name.
The Complainant claims that it is well established that the use of a domain name that incorporates a well-known trademark to direct visitors to a website unconnected with the trademark owner cannot constitute use in connection with a bona fide offering of goods or services or otherwise be considered a legitimate interest in a domain name.
The Complainant is furthermore not aware of any relevant trademark application for the terms “lufhansa”, “lufthansausa”, “wwwlufthansa” or similar from the Respondent or any third party.
The Complainant has exclusive rights to the trademark LUFTHANSA and no license, permission, authorization or other consent has been granted to the Respondent to use LUFTHANSA or a similar term in the domain name. Furthermore a connection between the Complainant and the Respondent does not exist.
The Respondent is - in addition - not making a legitimate noncommercial or fair use of the disputed domain names without the intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
Finally, the Complainant states that the Respondent has been named Respondent in a large number of domain name disputes handled under the UDRP. In all cases except of one the Respondent has been ruled against and it has been stated that the Respondent had no rights or legitimate interests in the domain names.
The domain names were registered and are being used in bad faith
The Complainant claims that the disputed domain names have been registered and are used by the Respondent in bad faith.
The trademark LUFTHANSA is a very distinctive trademark, and has no meaning in any language other than as a trademark identifying the Complainant as a source of origin. It is highly unlikely for another person to choose that name without the Complainant in mind and the possibility that Internet users will confuse it for the Complainant’s trademark. Therefore it is inconceivable that the Respondent did not have actual notice of the Complainant's trademark rights.
Furthermore, the disputed domain names have been registered by the Respondent almost 22 years after the earliest registrations of the trademark LUFTHANSA. It defies common sense to believe that the Respondent coincidentally selected these precise domain names without any knowledge of the Complainant and its trademarks and coincidentally uses the domain names for a redirection to sponsored links in relation with travel and aviation business. On the contrary it is most likely that the Respondent was aware of the Complainant’s trademark and company name.
The Respondent has no plausible reason to include "Lufthansa" or a similar term in its domain names other than howsoever to capitalize on the goodwill of the Complainant.
The Complainant further states that the disputed domain names <lufhansa.com> and <lufthansausa.com> are designed to attract Internet users who are looking for the Complainant’s website, cause confusion with the Complainant’s trademark, disrupt the Complainant’s business by diverting consumers away from Complainant’s website, and do all of these things for commercial gain because the Respondent profits from the revenue generated by this websites.
Concerning the domain name <wwwlufthansa.com> the Complainant states that there is also bad faith although the website is not actively used. The practice of registering domain names containing the trademarks of other companies can indicate that the disputed domain names were registered and are being used in bad faith. Ownership of numerous domain names that correspond to the names or marks of well-known business entities suggests intent to profit from the activities of others.
According to the Complainant it is well established that the lack of active use of a domain name does not as such prevent a finding of bad faith. The Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. Examples of circumstances that can indicate bad faith include a complainant having a well-known trademark, no response to a complaint, concealment of identity and the impossibility of conceiving a good faith use of a domain name. Panels may draw inferences about whether a domain name was used in bad faith given the circumstances surrounding registration, and vice versa.
Finally, the Complainant claims that the Respondent by trying to conceal his identity by using several aliases and by not answering to the emails sent by the Complainant prior to initiating these proceedings are other indicators that the Respondent acts in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Preliminary Procedural Issue: Consolidation of Multiple Domain Names and Respondents
According to paragraph 3(c) of the Rules a complaint may relate to more than one domain name, provided that the domain names are registered by “the same domain name holder”. In addition paragraph 10(e) of the Rules generally empowers a panel to consolidate multiple domain name disputes in accordance with the Policy and the Rules. Neither the Policy nor the Rules does thus expressly provide for the consolidation of multiple respondents per se in a single administrative proceeding, but a number of panels nonetheless have concluded that the Policy and Rules do not preclude a complainant in appropriate circumstances from seeking relief against multiple registrants in a single administrative proceeding. See the very thorough analysis of the issue in Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281 where the panel concludes:
“In view of the foregoing, the Panel concludes that the consolidation of multiple registrants as respondents in a single administrative proceeding may in certain circumstances be appropriate under paragraph 3(c) or 10(e) of the Rules provided the complainant can demonstrate that the disputed domain names or the websites to which they resolve are subject to common control, and the panel, having regard to all of the relevant circumstances, determines that consolidation would be procedurally efficient and fair and equitable to all parties.”
In this instance, the Complainant alleges that the two different registrants which control the disputed domain names are effectively controlled by the same person and/or entity, which is operating under several aliases entities.
In the Complaint the Complainant thus states the following:
- According to the concerned Registrar’s database, the Respondent in this administrative proceeding concerning the domain names <lufhansa.com> and <lufthansausa.com> is Nadeem Qadir of Bangladesh. The Respondent is listed in the WhoIs data as Registrant, Administrator and Technical Contact.
- According to the concerned Registrar’s database, the Respondent in this administrative proceeding concerning the domain name <wwwlufthansa.com> is Bladimir Boyiko of Russian Federation). Copies of the printout of the database search conducted on December 13, 2010 were provided as Annex 2 to the Complaint. The Respondent is listed in the WhoIs data as Registrant, Administrator and Technical Contact.
- However, “Nadeem Qadir” and “Bladimir Boyiko” are one and the same person. This is the reason why the three domain names have been included in one UDRP-Complaint.
- The National Arbitration Forum (NAF) has noticed in various different decisions (two were attached as Annex 3 to the Complaint), that “Nadeem Qadir” and “Bladimir Boyiko” are controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.
Moreover, there are substantial similarities between the disputed domain names and how they are used. For example, all of the disputed domain names are either misspellings of the LUFTHANSA trademarks and domain names or combinations of the LUFTHANSA trademark and a geographical term.
All the three domain names being subject to this Complaint are registered with one and the same registrar, eNom, Inc. Moreover, the Complainant has indicated that the domain names <lufhansa.com> and <lufthansausa.com> were both redirected through the website “www.ownbox.com” which is registered by “Bladimir Boyiko” (Annex 4 to the Complaint). Moreover, the registrant’s “[…]@ownbox.com” email-address which is indicated for the domain names in the WhoIs data for <lufhansa.com> and <lufthansausa.com> shows a connection to “Bladimir Boyiko” since this person is registered as the registrant of <ownbox.com>.
The Respondent has not rebutted this allegation and the Panel finds that the Complainant has sufficiently established that the disputed domain names are subject to the common ownership or control.
This finding is supported by the similar findings in previous cases under the UDRP to which the Complainant refers in the Complaint and which this Panel has perused carefully.
The Panel further concludes in the circumstances of this case that consolidation would be equitable to all the parties and procedurally efficient, and therefore will allow the consolidation as requested by the Complainant pursuant to paragraph 10(e) of the Rules.
The Panel will therefore proceed to a decision on the merits of all three disputed domain names.
7. Discussion and Findings
According to paragraph 15(a) of the Rules the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
Paragraph 4(a) of the Policy directs that a complainant must prove each of the following:
(1) that the domain name registered by respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) that 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.
Paragraph 4(a) of the Policy states that the burden of proving that all these elements are present lies with the Complainant. At the same time, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules, or any request from the Panel, the Panel shall draw such inferences there from as it considers appropriate.
A. Identical or Confusingly Similar
The Panel finds that the disputed domain name <lufhansa.com> is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark because it is identical to the mark entirety with the omission of the letter “t”. The gTLD suffix does not preclude a finding of confusing similarity where it otherwise exists, as it does in the present case.
The Panel finds that the disputed domain name <lufthansausa.com> is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark because it contains the mark in its entirety. The addition of the geographical term “usa” as suffix to the trademark to form the disputed domain name does not dispel a finding of confusing similarity. As stated above it has also long been held by UDRP panels that gTLD suffixes do not preclude a finding of confusing similarity where it otherwise exists, as it does in the present case.
The Panel further finds that the disputed domain name <wwwlufthansa.com> is confusingly similar (in the sense of the Policy) to the Complainant’s registered trademark because it contains the mark in its entirety. The addition of the commonly used acronym for World Wide Web “www” as prefix does not dispel a finding of confusing similarity. The gTLD suffix does not preclude a finding of confusing similarity where it otherwise exists, as it does in the present case.
The Panel finds that the conditions in paragraph 4(a)(i) of the Policy are therefore fulfilled in relation to all the disputed domain names.
B. Rights or Legitimate Interests
According to the Complaint, the Complainant has not licensed or otherwise permitted the Respondent to use its trademark.
Given the circumstances of this case, the Panel is of the opinion that the Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not rebutted this and the way the Respondent has been using the disputed domain names does not support a finding of rights or legitimate interests.
Consequently the Panel finds that the conditions in paragraph 4(a)(ii) of the Policy are also fulfilled.
C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires the Complainant to prove both registration and use of the disputed domain name in bad faith. Paragraph 4(b)(i) of the Policy provides an example of circumstances which shall be evidence of registration and use in bad faith:
i) circumstances indicating that the holder has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or
ii) the holder has 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 holder has engaged in a pattern of such conduct; or
iii) the holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv) by using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to the holder’s web site or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the holder’s web site or location or of a product or service on the holder’s web site or location.
Accordingly, for the Complainant to succeed, the Panel must be satisfied that the disputed domain names have been registered and are being used in bad faith.
Given the circumstances of the case and in particular the extent of use of the Complainant’s trademark, the marks reputation and the distinctive nature of the mark, it is inconceivable to the Panel in the current circumstances that the Respondent registered the disputed domain name without prior knowledge of the Complainant and the Complainant’s mark. Further, the Panel finds that the Respondent could not have been unaware of the fact that it chose domain names which could attract Internet users in a manner that is likely to create confusion for such users.
The Panel therefore finds that the disputed domain names were registered in bad faith.
The disputed domain name <lufhansa.com> is redirected to the website “www.travelshowroom.com” and contains information about travel and sponsored links concerning this topic. The disputed domain name <lufthansausa.com> is redirected to the website ”www.usseek.com” containing sponsored links in relation to travel as well. At the time of rendering this decision these disputed domain names were thus used for websites which contain links to websites that offer products and services that are similar to and in competition with those offered by the Complainant. The Panel therefore finds that the Respondent by its registration and use of these two disputed domain names, intentionally created a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the disputed domain names with the purpose of attracting Internet users to the website for commercial gain.
The domain name <wwwlufthansa.com> is not actively used and resolves to an error page. However, as first stated in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, and repeated in many subsequent decisions under the UDRP:
“the concept of a domain name ‘being used in bad faith’ is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by Respondent to amount to the domain name being used in bad faith.”
The Panel finds that the Respondent’s lack of bona fide use of this disputed domain name is likely to disrupt the business of the Complainant since it could, in this Panel’s view, give those Internet users that will look for information on the Complainant on the Internet, and who may well mistype the Internet address of the Complainants official website “www.lufthansa.com” by omitting the “.” after “www”, the impression that the Complainant is not active on the Internet.
In regards to all three disputed domain names the Panel also notes that the disputed domain names incorporate a well-known trademark, that no Response has been filed, and that there appears to be no conceivable good faith use that could be made by the Respondent of the disputed domain names.
Considering all the facts and evidence, the Panel therefore finds that the requirements of paragraph 4(a)(iii) of the Policy are also fulfilled in this case.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names, <lufhansa.com>, <lufthansausa.com> and <wwwlufthansa.com> be transferred to the Complainant.
Dated: February 11, 2011