WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutsche Lufthansa AG v. Domain Admin, Whois Privacy Corp / Ryan G Foo, PPA Media Services
Case No. D2015-2346
1. The Parties
The Complainant is Deutsche Lufthansa AG of Cologne, Germany, represented by Rauschhofer Rechtsanwälte, Germany.
The Respondent is Domain Admin, Whois Privacy Corp of Nassau, Bahamas / Ryan G Foo, PPA Media Services of Santiago, Chile.
2. The Disputed Domain Name and Registrar
The disputed domain name <lufthasna.com> is registered with TLD Registrar Solutions Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2015. On December 23, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 24, 2015, 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 January 4, 2016 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 January 11, 2016.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 12, 2016. In accordance with the Rules, paragraph 5, the due date for Response was February 1, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 2, 2016.
The Center appointed Evan D. Brown as the sole panelist in this matter on February 11, 2016. 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 following facts, relevant to the Panel’s determination, are set forth in the Complaint and are not disputed by the Respondent.
The Complainant is a large and very well-known airline based in Germany and tracing its origins back to 1926. The Complainant owns numerous trademark registrations around the world for the mark LUFTHANSA (the “Mark”), e.g., International Trade Mark Reg. No. 450006 (issued December 6, 1979) and United States Reg. No. 1871600 (issued January 3, 1995). Apart from the formal trademark registrations, the Mark is known worldwide and easily recognized.
According to the WhoIs database, the Respondent registered the disputed domain name on May 4, 2004.
5. Parties’ Contentions
The Complainant has provided evidence that the Respondent has used the disputed domain name to set up a website providing links to products (namely, suitcases, trolleys and luggage) that are competitive to similar products that the Complainant sells in its “Worldshop”.
The Complainant asserts that the disputed domain name is confusingly similar to the Mark because the disputed domain name includes an obvious misspelling of the Mark, i.e., that the Respondent has engaged in “typosquatting”. According to the Complainant, the sole use of the wording is made to attract Internet users who have mistakenly typed the wrong word when seeking to visit the Complainant’s website.
The Complainant further asserts that the Respondent has no rights or legitimate interests in respect of the disputed domain name because, among other things, the Complainant never granted the Respondent any rights to use the Mark, or any misspellings thereof. Moreover, the Respondent is not known as “lufthasna”. According to the Complainant, the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name, but instead uses the disputed domain name to divert Internet users to an entirely different site, namely, “www.taschenkaufhaus.de”.
Finally, the Complainant asserts that the disputed domain name has been registered and is used by the Respondent in bad faith. Because of the Mark’s great distinctiveness, it is inconceivable, says the Complainant, that the Respondent did not have actual notice of the Complainant’s trademark rights when it registered the disputed domain name. Further, the Complainant claims that the Respondent is using the disputed domain name in bad faith because its use of the disputed domain name is to intentionally attempt to divert, for commercial gain, Internet users to one or more competing websites (some of which are third party “sponsors” and many of which presumably compensate the Respondent for driving Internet traffic to their sites) in an effort to confuse and mislead consumers.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed 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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Panel finds that all three of these elements have been met in this case.
A. Identical or Confusingly Similar
This element requires the Panel to consider two issues: first, whether the Complainant has rights in a relevant mark; and, second, whether the disputed domain name is identical or confusingly similar to that mark.
The Panel finds the Complainant has established rights in the Mark based on the Complainant’s long-standing use of the Mark as well as numerous trademark registrations in various jurisdictions around the world.
The Panel further finds that the disputed domain name is confusingly similar to the Mark. The disputed domain name incorporates the entirety of the Mark, with only one minor alteration (the interposition of the letters “N” and “S”) and the addition of the generic Top-Level Domain (“gTLD”) “.com”. When a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525. Furthermore, the addition of the gTLD “.com” is of no legal significance from the standpoint of comparing the disputed domain name to the Mark, because use of a gTLD is required of domain name registrants and “.com” does not serve to identify a specific enterprise as a source of goods or services. SBC Communications Inc. v. Fred Bell aka Bell Internet, WIPO Case No. D2001-0602. Similarly, UDRP panels have consistently held that “a mere addition of a minor misspelling or typographical error of a mark, does not create a new or different mark in which Respondent has legitimate rights.” Hobson, Inc. v. Peter Carrington a/k/a Party Night Inc, WIPO Case No. D2003-0317. Such insignificant modifications to trademarks are commonly referred to as “typosquatting” or “typo-piracy,” as such conduct seeks to wrongfully take advantage of errors by users in typing domain names into their web browser’s location bar. See, Six Continents Hotels, Inc. v. null John Zuccarini d/b/a Country Walk, WIPO Case No. D2003-0161. “Domain names which constitute typo-squatting are confusingly similar by definition; it is this similarity which makes them attractive.”, Dell Computer Corp. v. Clinical Evaluations, WIPO Case No. D2002-0423; see also American Home Products Corporation v. Privateer Ltd., WIPO Case No. D2000-0455 (ADDVIL.com held confusingly similar to ADVIL).
For the foregoing reasons, the Panel finds that paragraph 4(a)(i) of the Policy has been satisfied.
B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent. See, Canon U.S.A., Inc. v. Miniatures Town, WIPO Case No. D2014-0948, citing WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.1 (after the complainant makes a prima facie case, the burden of showing rights or legitimate interests in the domain name shifts to the respondent).
The Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. By failing to respond to the Complaint, the Respondent did not overcome its burden of demonstrating rights or legitimate interests, and no other facts in the record tip the balance in the Respondent's favor.
Paragraph 4(c) of the Policy instructs respondents on a number of ways they could demonstrate rights or legitimate interests (“you” and “your” in the following refers to the particular respondent):
“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
In this case, there are several indicators concerning the Respondent’s lack of rights or legitimate interests. The Respondent is not commonly known by the disputed domain name, nor is there any evidence in the record showing the Respondent’s use of, or demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services before any notice of the dispute. Joining with numerous previous panels, this Panel finds that the use of the disputed domain name to establish a web page to redirect to websites for competitive products is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the disputed domain name.
Accordingly, the Respondent does not have any rights or legitimate interests in regard to the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four criteria that are to be considered as evidence of the registration and use of a domain name in bad faith:
“(i) 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; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product.”
These criteria are not exclusive and the Panel may conclude that the Respondent has acted in bad faith where other circumstances reveal the bad faith nature of the registration and use of the disputed domain name.
The Panel concludes, on the evidence submitted by the Complainant, that the Respondent has registered and used the disputed domain name in bad faith. As an initial matter, the Respondent’s mere act of typosquatting presents ample evidence of bad faith in the circumstances of this case. Briefing.com Inc. v. Cost New Domain Manager, WIPO Case No. D2001-0970 (finding that “Respondent has demonstrated bad faith by engaging in ‘typo-piracy’ to confuse Internet users and draw them away from Complainant’s web site”).
Additionally, the Respondent’s bad faith in registering the disputed domain name is supported by the following undisputed facts: (1) the Respondent registered a domain name for use with competitive products that is confusingly similar to the Mark which Complainant has been using for many years and which became the subject of registrations in several jurisdictions around the world prior to the time of the registration of the disputed domain name; (2) there is no relationship between the Respondent and the Complainant and the Complainant has not given the Respondent permission to use the Mark for any purpose, including in a domain name; and (3) the Respondent was likely aware of the Mark and yet adopted it for use in the disputed domain name.
The Respondent is using the disputed domain name in bad faith because its use of the disputed domain name is to intentionally attempt to divert, for commercial gain, Internet users to one or more competing websites (some of which are third party “sponsors” and many of which presumably compensate the Respondent for driving Internet traffic to their sites) in an effort to confuse and mislead consumers. Net2phone Inc. v. Dynasty System Sdn Bhd, WIPO Case No. D2000-0679.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(iii) of the Policy.
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, <lufthasna.com> be transferred to the Complainant.
Evan D. Brown
Date: February 25, 2016