The Complainant is Deutsche Lufthansa AG of Frankfurt, Germany, represented by Rauschhofer Rechtsanwälte of Germany.
The Respondent is OFFICE LINKS PTY LTD, Wang Degui of Victoria, Australia.
The disputed domain name <lufthansa.com.au> (the “domain name”) is registered with Smartyhost Pty Ltd.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 8, 2009. On June 8, 2009, the Center transmitted by email to Smartyhost Pty Ltd. a request for registrar verification in connection with the disputed domain name. On June 30, 2009 Smartyhost Pty Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements under Schedule A of the .au Dispute Resolution Policy (the “Policy”), the Rules for .au Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .au 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 July 1, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 23, 2009.
The Center appointed Michael C. Pryles as the sole panelist in this matter on July 29, 2009. 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.
The Complainant is the registered proprietor of a large number of trademarks consisting of, or including the word, “Lufthansa” in various countries of the world, including Germany, the United States of America, and Australia. The earliest of these registrations dates from September 1979. The relevant Australian trademarks of “Lufthansa” as registered under the Trademarks Act 1995 (Cth) are dated October 1, 1992 and July 22, 1999, with registration numbers A587545 and 801238, respectively.
The domain name which is the subject of this dispute, <lufthansa.com.au>, comprises the Lufthansa trademark in which the Complainant has rights and the second level domain, “.com.au”.
Apart from the name and address details mentioned above, no information is known about the Respondent.
The Complainant alleges that:
(i) the domain name is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name was registered and is subsequently being used in bad faith.
In support of these allegations, the Complainant contends that:
- its trademark “Lufthansa”, registered in various countries including Australia, is known worldwide and easily recognised;
- the domain name <lufthansa.com.au> is identical to its trademarks;
- in the present case, there is no evidence that the Respondent uses the domain name or a name corresponding to the domain name in a manner complying with the Policy; that is, in connection with a bona fide offering of goods or services;
- the Respondent is neither commonly known, nor was ever known, by the name “lufthansa”;
- the domain name is a logical domain name for the Complainant to use to promote its operations in Australia. Consequently, it is highly likely that a significant number of Internet users would believe that the domain name would lead to the Complainant's website;
- the Parties corresponded before the commencement of the arbitration, beginning with an unsolicited email from the Respondent dated May 8, 2009 to the Complainant. This date was one week after the registration of the domain name by the Respondent. In the course of this email the domain name was offered for sale to the Complainant in return for payment in the amount of €10,000.
- as at May 13, 2009, the domain name <lufthansa.com.au> resolved to a website which had no content but forwarded to the website of “www.sedoparking.com”, indicating that the Respondent was engaging in “Domain Parking”, an advertising practice more precisely called “parked domain monetisation” used primarily to monetise type-in traffic by way of advertising to users visiting a parked domain name. The landing page linked to by the domain name could have been used for advertising links at the Respondent's will, although was blank in the present case;
- on May 13, 2009, the Complainant wrote to the Respondent by email addressed to the “Registrant Contact” listed in the whois database on that date (firstname.lastname@example.org) and to the email address used by the Respondent to offer the domain name to the Complainant (email@example.com), requesting that the Respondent relinquish the AuthCode to facilitate the transfer of the domain name to the Complainant. The Complainant's authorised representative explained the trademark infringement perpetrated by the Respondent in detail;
- on the following day, the account holder of the email address firstname.lastname@example.org answered, stating that the domain name “registered by his client” did not infringe any rights but nevertheless suspended the operation of the domain name. The domain name has been disconnected since that day;
- on May 20, 2009, the Complainant's authorised representative received an email referring to the domain name from “Ray Charles” of email address email@example.com, offering the domain name for sale to the Complainant for the sum of €3,000. Although the name and email address of the sender of this email was different to the details of the first unsolicited email, the two emails were almost identical with regards to the phrases “employed”, and it may be assumed that one and the same person was behind both emails;
- on the same day, the Complainant's authorised representative replied to the email from “Ray Charles” and again requested that the relevant AuthCode be relinquished;
- the Complainant's authorised representative received a reply email from “Ray Charles”, again dated May 20, 2009, which stated, inter alia, that the sender had purchased the domain name “weeks ago for €3,000. So if you get this domain for free i will lose a lot”;
- also on May 20, 2009, the Complainant's authorised representative replied to this email indicating that the “loss” of €3,000 would be an insignificant sum in comparison to the claims for damages and costs for civil and criminal proceedings which would follow;
- again on May 20, 2009, the Respondent finally refused the transfer of the domain name without the payment of an amount of €3,000;
- on June 2, 2009, the Complainant's authorised representative received three further emails from “Wang Degui” (firstname.lastname@example.org) of identical content, offering the domain name <lufthansa.com.au> for purchase at the price of €3,000;
- on June 3, 2009, the Complainant's authorised representative again received three emails from “Wang Degui” (email@example.com) of identical content to the emails dated June 2, 2009;
- on June 4, 2009, the Complainant's authorised representative again received three emails from “Wang Degui” (firstname.lastname@example.org) of identical content to the emails dated June 2 and 3, 2009;
- the Respondent's emails did not claim any rights or interests in the domain name nor offer explanation as to the reasons for the Respondent's choice of the domain name or the kind of use that the Respondent intended to make of it;
- the Complainant contends that the Respondent's behaviour, including discounting the original claim for €10,000 to €3,000, indicates the Respondent's “true motivation which is only a financial one. This can not be regarded as legitimate under the Policy”;
the domain name was registered by the Respondent in bad faith. The trademark “Lufthansa” is a very distinctive trademark, which has no meaning in any language other than as a trademark identifying the Complainant. 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. In addition, “Lufthansa” is a German word whereas the Respondent is obviously not a national of Germany. Therefore it is inconceivable that the Respondent did not have actual notice of the Complainant's trademark rights;
- the Respondent falsely warranted in its registration agreement with the Registrar that the domain name did not infringe another party's rights;
- an inactive holding of a domain name with a blank webpage, as occurred in the present circumstances, demonstrates bad faith use of a domain name under the Policy;
- the Respondent's unsolicited offer of the domain name in dispute to the Complainant in return for an amount of €10,000, and the admission in a later email that the Respondent had bought the domain name for €3,000, indicate that it was acquired primarily for the purpose of selling it to the owner of the relevant trademarks for a profit. This is evidence of a bad faith registration and use within the meaning of paragraph 4(a)(iii) of the Policy;
- the cost of registering a domain name is very modest and does not come to €10,000. Furthermore, the Respondent has not produced evidence to establish that the domain name was purchased by it for €3,000, as claimed;
- the Respondent is aware of the commercial value of the Complainant's trademark as the means to distinguish the Complainant's services from those of its competitors; and
- the whole circumstances of this case support the finding of bad faith on the Respondent's part.
The Complainant requests a decision that <lufthansa.com.au> be transferred to the Complainant.
The Respondent has not filed a Reply in these proceedings.
Under paragraph 4(a)(i) of the Policy, the Complainant must prove that the domain name is identical or confusingly similar to the Complainant's trademark.
The domain name is <lufthansa.com.au>. The “.com.au” component of the domain name is not relevant to the consideration of identity or confusing similarity under paragraph 4(a)(i) of the Policy. The Complainant's trademark is LUFTHANSA. The principal part of the domain name is the word “Lufthansa”, which, apart from the first letter being in lower case, is identical to the Complainant's trade mark and is certainly confusingly similar.
Under paragraph 4(a)(ii) of the Policy the Complainant must prove that the Respondent does not have any rights or legitimate interests in the domain name.
The Complainant contends, and the Panel accepts, that public records indicate that the Respondent does not have any trademarks, service marks or any other trading name or product with any likeness to the name “Lufthansa”.
The Respondent has not responded to the Complainant's contentions. According to paragraph 14(b) of the Rules, the Panel is entitled to draw any inference it deems appropriate from the Respondent's silence. The Panel does so, inferring from the Respondent's silence that any information it could provide is unlikely to be in its favour.
For these reasons the Panel finds that the Respondent has no rights or legitimate interest in the disputed domain name.
Under paragraph 4(a)(iii) of the Policy the Complainant must prove that the domain name was registered and is being used in bad faith.
Paragraph 4(b) of the Policy lists circumstances that, if found by a Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. In particular, 4(b)(i) is found by the Panel to be relevant in this case. It comprises:
“circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name”.
The Panel finds the following circumstances in the instant case to be relevant:
- the registration by the Complainant of the trademark LUFTHANSA in various countries including Australia;
- the Respondent has no registered trademarks corresponding with the domain name;
- the Respondent sought, by way of unsolicited email to the Complainant, to offer the transfer of the domain name registration for consideration totaling €10,000, and subsequently, €3,000;
- there is no evidence that the Respondent registered the domain name in connection with a bona fide offering of goods or services, or for any reason other than to receive profit from its transfer.
In the circumstances of this case the Panel is satisfied that the Respondent is acting in bad faith. The domain name is unconnected with the business of the Respondent, and intimately connected with that of the Complainant. The Panel cannot conceive of a situation in which the Respondent could use the domain name in good faith, and the Respondent has not made any submission to the contrary. The Panel therefore finds that paragraph 4(a)(iii) of the Policy is satisfied.
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 name <lufthansa.com.au> be transferred to the Complainant.
Michael C. Pryles
Dated: August 12, 2009