WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutsche Lufthansa AG v. Above.com Domain Privacy / Ni How
Case No. D2013-0780
1. The Parties
The Complainant is Deutsche Lufthansa AG of Köln, Germany, represented by Rauschhofer Kanzlei für IT-Recht, Germany.
The Respondent is Above.com Domain Privacy of Beaumaris, Australia/ Ni How of Nanjing, China.
2. The Domain Name and Registrar
The disputed domain name <lufthansexperts.com> (the “Domain Name”) 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 May 2, 2013. On May 2, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 3, 2013, the Registrar transmitted by email to the Center its verification response disclosing the 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 May 3, 2013, 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 May 6, 2013.
The Center verified that the Complaint together with the amendment thereto 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 May 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was May 27, 2013. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 28, 2013.
The Center appointed Olga Zalomiy as the sole panelist in this matter on June 6, 2013. 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 Deutsche Lufthansa AG owns numerous trademark registrations around the world, including: International Trademark Nos. 450006 (registered, December 12, 1979) and 722971 (registered, August 5, 1999); German Trademarks Nos. 990835 (registered, September 25, 1979), 990834 (registered, September 25, 1979), 39871924.1 (registered, April 12, 1999) and 39871923.3 (registered, December 4, 1999); Community Trademark Nos. 001212539 (registered, June 11, 1999), 001210665 (registered, November 29, 2000); and United States Trademarks Nos. 1871600 (registered, January 3, 1995) and 74383260 (registered, August 20, 1996) (“the LUFTHANSA Mark”). It uses the LUFTHANSA Mark to transport passengers’ incentive award programs and a wide range of goods and services.
The Complainant also owns a Community Trademark registration in the mark eXperts No. 009734302 (registered, July 21, 2011) and a domain name <lufthansaexperts.com>. (the “eXperts Mark” or collectively with the LUFTHANSA Mark- the “Marks”).
According to the publicly available WhoIs information, the Domain Name was registered on March 14, 2012. The Domain name is used to host a website that provides links to third party websites offering services that compete with those offered by the Complainant.
5. Parties’ Contentions
The Complainant contends that it is a large and very well-known German airline that owns a large number of trademark registrations around the world in the LUFTHANSA Mark for use in connection with transportation of services and other goods and services. The Complainant further claims to own a European Community Trademark registration in the eXperts Mark and the domain name <lufthansaexperts.com>. The Complainant alleges that the Domain Name is confusingly similar to its trademarks because it incorporates its eXperts Mark in its entirety and its LUFTHANSA Mark in its entirety with exception of the second letter “a.”
The Complainant further contends that the Respondent has no rights or legitimate interest in the Domain Name because there is no evidence that the Respondent uses the Domain Name in connection with bona fide offering of goods or services. The Complainant claims that the Domain Name refers to a website displaying third-party sponsored links and thus, the Respondent diverts Internet users searching for the Complainant’s website. The Complainant alleges that it is not aware of any trademark applications to register the word Lufthansa belonging to the Respondent. The Complainant claims it has exclusive rights in the LUFTHANSA Mark and it has not given any license, permission, authorization or other consent to the Respondent to use the LUFTHANSA Mark. The Complainant contends that the Respondent does not use the Domain Name in a legitimate, non-commercial or fair use manner.
The Complainant claims that the Respondent registered and is using the Domain Name in bad faith. The Complainant claims that the LUFTHANSA Mark is a very distinctive mark that has no meaning in any language. It is unlikely that someone will choose the term LUFTHANSA unless it wants to confuse Internet users about its association with the Complainant. The Complainant claims that LUFTHANSA is a well-known mark. Further, the Complainant states that the Respondent registered the Domain Name 30 years after the earliest registration of the LUFTHANSA Mark and shortly after registration of the eXperts Mark. According to the Complainant, the Domain Name is designed to capitalize on the Complainant’s goodwill. Further, the Complainant claims that the Domain Name is being used in bad faith, because it is used as a pay-per-click website to divert Internet users seeking the Complainant’s website to the Respondent’s website. The Complainant also asserts that use of a privacy service to conceal the Respondent’s identity and a failure to respond to the Complaint and the Complainant’s emails notifying the Respondent about its infringing activities are further evidence of bad faith use. Finally, the Complainant claims that the Respondent Ni How, solely and jointly with Above.com Domain Privacy, was a respondent in a number of other UDRP cases, e.g. Lego Juris A/S v. Ni How, WIPO Case No. D2012-2218; Inter IKEA Systems B.V. v.Above.com Domain Privacy / Ni How, WIPO Case No.D2013-0387.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed on its claim, Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests with respect to the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, a complainant must prove that the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights.
The Panel finds that the Complainant has established rights in the LUFTHANSA Mark by virtue of its international and German registrations and its long-standing and widespread use of the Mark.
The Domain Name <lufthansexperts.com> is visually and phonetically identical to the Complainant’s LUFTHANSA Mark and eXperts Mark omitting only a letter “a”. The Panel finds Respondent has engaged in typosquatting by registering the Domain Name <lufthansexperts.com>, a practice by which “a domain name which contains a common or obvious misspelling of a trademark.”1 Such a domain name “normally will be found to be confusingly similar to such trademark, where the misspelled trademark remains the dominant or principal component of the domain name.”2 The addition of the generic top-level domain (gTLD) ".com" has no bearing on the question of confusing similarity.3
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, a complainant must prove that respondent has no rights or legitimate interest in the domain name. Тo satisfy this requirement, the complainant must make out a prima facie case that the respondent lacks rights or legitimate interest in the domain name. 4
The Complainant represents that the Respondent does not have any rights or legitimate interests in the Domain Name because: the Complainant has not granted to the Respondent any license, permission, authorization or other consent to use the LUFTHANSA Mark in the Domain Name; there is no connection between the Complainant and the Respondent; and the Complainant is not aware of any pending applications of the Respondent to register the LUFTHANSA Mark. Further, by using the Domain Name to direct to a pay-per-click website, the Respondent is not making a legitimate non-commercial or fair use of the Domain name without the intent for commercial gain, misleadingly to divert consumers, or to tarnish the trademark or service mark at issue. Moreover, the Domain Name was used to direct to a website displaying several sponsored links to third party websites which by itself would not confer on the Respondent rights or legitimate interests arising from a "bona fide offering of goods or services" or from "legitimate noncommercial or fair use" of the Domain name.5
The Complainant’s assertions and evidence, without contrary evidence from the Respondent, are sufficient to permit a finding in the Complainant’s favor on this issue because the Respondent has not rebutted the prima facie case made out by Complainant (see Alcoholics Anonymous World Services, Inc. v. Lauren Raymond, WIPO Case No. D2000-0007).
For the foregoing reasons, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied.
C. Registered and Used in Bad Faith
Pursuant to paragraph 4(a) of the Policy, “a positive finding that both the registration and use were in bad faith”6 is required.
Based on the evidence of record, the Panel agrees with prior UDRP panels holding that the LUFTHANSA Mark is well known. The Domain Name was registered on March 14, 2012, over thirty years after the Complainant registered the LUFTHANSA Mark in Germany and many years after the Complainant started using the LUFTHANSA Mark in other countries. Given the Complainant’s long-term use of the LUFTHANSA Mark, the distinctiveness and fame of the LUFTHANSA Mark, the fact that the Respondent incorporated the entirety of the LUFTHANSA Mark in the Domain Name (excluding the second letter “a”) and that the Domain is virtually identical to the Complainant’s domain name <lufthansaexperts.com>, the Panel finds it is highly unlikely that the Respondent was unaware of the Complainant or its rights in the LUFTHANSA or eXpert Marks when he registered the Domain Name. Such behavior can form the basis for a finding of bad faith.7 Furthermore, the record shows that the Respondent has engaged in a pattern of registering domain names by registering twelve domain names which were similar to registered marks of others, and he was a respondent in ten prior WIPO cases.8 This pattern of conduct clearly demonstrates bad faith on the part of Respondent.
The Panel also agrees with the Complainant that the Respondent is using the Domain Name in bad faith because use of a Domain Name that is confusingly similar to the Complainant’s LUFTHANSA Mark in conjunction with a pay-per-click website9 can constitute evidence of bad faith use. The Panel finds that by using the Domain Name in this manner, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s LUFTHANSA Mark as to the source, sponsorship, affiliation or endorsement of such site or the products or services advertised on such site, within the meaning of paragraph 4(b)(iv) of the Policy.
Moreover, the Respondent’s use of a domain proxy service and his failure to respond to the Complainant’s repeated communications is further evidence of bad faith use of the Domain Name.10
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
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 <lufthansexperts.com> be transferred to the Complainant.
Date: June 20, 2013
1 Paragraph 1.10, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).
3 See Research In Motion Limited v. International Domain Names Inc,/Moniker Privacy Services, WIPO Case No. 2008-0780; RX America, LLC v. Matthew Smith, WIPO Case No. D2005-0540; Sanofi-Aventis v. US Online Pharmacies, WIPO Case No. D2006-0582.
4 See paragraph 2. 1 of the WIPO Overview.
5 Paragraph 2.6, WIPO Overview 2.0.
6 Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd, WIPO Case No. D2010-0470.
7 Paragraph 3.4, WIPO Overview 2.0.
8 Paragraph 3.3, WIPO Overview 2.0.
9 Paragraph 3.8, WIPO Overview 2.0.