WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutsche Lufthansa AG v. Transure Enterprise Ltd / Above.com Domain Privacy
Case No. D2012-1742
1. The Parties
The Complainant is Deutsche Lufthansa AG of Frankfurt, Germany, represented by Rauschhofer Rechtsanwälte, Germany.
The Respondent is Transure Enterprise Ltd of Tortola, British Virgin Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland / Above.com Domain Privacy of Beaumaris, Victoria, Australia.
2. The Domain Name and Registrar
The disputed domain name <lufthansaexpert.com> is registered with Above.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on August 28, 2012. On August 28, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 29, 2012, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on August 29, 2012, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on August 30, 2012.
The Center verified that the Complaint together with the amendment to 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 August 31, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 20, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 21, 2012.
The Center appointed Amund Grimstad as the sole panelist in this matter on September 27, 2012. 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 is a large and very well-known airline based in Germany. Since the 1990’s it has been part of a network of airlines operating worldwide.
The Complainant is the registered proprietor of a large number of trademarks consisting of, or including the word “Lufthansa” in many countries around the world. The earliest of these registrations dates from September 1979.
The trademarks are registered for a wide range of other goods and services, e.g., transport services, hotels, rental cars and credit cards as well as for clothing.
5. Parties’ Contentions
The disputed domain name <lufthansaexpert.com> is confusingly similar to the Complainant’s trademark since the disputed domain name includes the trademark in its entirety and just adds the descriptive term “expert” to it, which is a common term of the English language. The most prominent part of the disputed domain name is the LUFTHANSA mark, which is a very distinctive and famous mark with a substantial reputation.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Policy provides inter alia that the Respondent shall have a right or legitimate interest in the disputed domain name if, prior to commencement of the dispute, the Respondent used the disputed domain name or names corresponding to the disputed domain name in connection with the bona fide offering of goods or services. There is no evidence that the Respondent uses the disputed domain name or name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. The Respondent diverts Internet users searching for the Complainant’s website, adding the term “expert” to the Complainant’s mark and redirecting Internet users to a commercial webpage.
The disputed domain name <lufthansaexpert.com> has been registered and is used by Respondent in bad faith. The Complainant claims its trademark is very distinctive, and therefore it is inconceivable that the Respondent did not have actual notice of Complainant’s trademark rights. Furthermore, the disputed domain name is used for a website containing sponsored links. The Complainant claims this constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 4(a) of the Policy states in respect of a domain name holder:
“You are required to submit to a mandatory administrative proceeding in the event that a third party (a ‘complainant’) asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.”
The Complainant has made the relevant assertions as mentioned above. This dispute is properly within the scope of the Policy and the Panel has jurisdiction to decide the dispute.
A. Identical or Confusingly Similar
In order for the Complainant to successfully argue that the disputed domain name be transferred to the Complainant, the disputed domain name must be identical or confusingly similar to a trademark or service mark in which the Complainant has rights (Policy, paragraph 4(a)(i)).
The Panel finds the disputed domain name <lufthansaexpert.com> wholly incorporates the LUFTHANSA trademark, creating confusing similarity to this trademark.
The disputed domain name incorporates the Complainant’s trademark with the addition of the word “expert”. “Expert” is a generic word. The mere addition of a generic or descriptive term such as “expert” to a mark in a domain name, does not change the overall impression, and is insufficient to avoid a finding of confusing similarity. See for example Asia Pacific Breweries Limited v. Chris Kwan, WIPO Case No. D2003-0920 and Arthur Guinness Son & Co. (Dublin) Ltd v. Steel Vertigogo, WIPO Case No. D2001-0020.
The Panel concludes that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The first requirement of the Policy has therefore been fulfilled.
B. Rights or Legitimate Interests
Secondly, the Complainant must show that the Respondent has no rights or legitimate interests in respect of the disputed domain name, in accordance with paragraph 4(a)(ii) of the Policy.
The Complainant is required to make out an initial prima facie case that the Respondent lacks rights or legitimate interests. The Respondent then carries the burden of demonstrating rights or legitimate interests in the disputed domain name. If the Respondent fails to do so, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy, See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name. Additionally, the Panel finds no other circumstances in this case that would establish any rights or legitimate interests to the Respondent in the disputed domain name. In the absence of submissions from the Respondent, the Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
Finally, the Complainant must show that the disputed domain name has been registered and is being used in bad faith (paragraph 4(a)(iii) of the Policy).
The trademark of the Complainant is registered in various countries and is used worldwide. The Panel agrees that the trademark LUFTHANSA is well known and distinctive. The Panel finds it most likely that the Respondent was aware of the Complainant and its trademarks when the Respondent registered the disputed domain name.
Further, the disputed domain name is used to link to a website with sponsored links, which mostly cover the Complainant’s business areas. The Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to an on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or other location. This constitutes evidence of bad faith registration and use, in accordance with paragraph 4(b)(iv) of the Policy.
The Panel furthermore agrees with the decision rendered in Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163, in that bad faith is found where a domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”. In this case the use of the well-known trademark LUFTHANSA with the addition of the generic term “expert”, suggests that the Respondent has acted in bad faith.
The third requirement of the Policy has therefore been fulfilled.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <lufthansaexpert.com> be transferred to the Complainant.
Dated: October 11, 2012