Complainant is Deutsche Lufthansa AG of Frankfurt, Germany, represented by Rauschhofer Rechtsanwälte, Germany.
Respondent is Kudakwashe Musunga / PrivacyProtect.org of Mutare, Zimbabwe.
The disputed domain name <lufthansa-reisemarkt.com> is registered with Hebei Guoji Maoyi (Shanghai) LTD aka HEBEI INTERNATIONAL TRADING (SHANGHAI) CO., LTD dba HebeiDomains.com (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 22, 2009. On December 22, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On December 23 and 29, 2009, 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 December 30, 2009 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 4, 2010. 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 January 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on January 26, 2010.
The Center appointed Gabriel F. Leonardos as the sole panelist in this matter on January 29, 2010. 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.
Complainant is the company Deutsche Lufthansa AG, a German corporation, large, well-known and one of the world's leading airlines based in Germany and tracing its origins back to 1926. It has a large staff and services over 350 destinations in more than 90 countries worldwide. Every year, Complainant carries over 50 million passengers. It is a member of the Star Alliance Network flying to almost all countries of the world. In addition to its passenger and cargo services it provides aviation-related services such as catering, maintenance, overhaul, travel related technology and tourism services.
Complainant operates an website from the domain name <lufthansa.com> (linked to by other Complainant's other websites). The Complainant has registered numerous other domain names incorporating the word “lufthansa”, e.g. <lufthansa.de>, <lufthansa.com>, <lufthansa.us> etc. The Complainant furthermore also uses various other domain names including descriptive words in combination with “lufthansa”, e.g. <lufthansa-airlines.de>, <lufthansa-job.de> etc.
Complainant also registered the domain name <lufthansa-reisemarkt.de> via its 100-percent daughter company TATS - Travel Agency Technologies & Services GmbH. The term “lufthansa reisemarkt” and the corresponding German domain name are used for providing services comparable to those of a travel agency. In particular, the reserving and booking of flights, package holidays etc. is possible. According to Complainant, the German word “reisemarkt” could be translated into English as “travelling market”.
Complainant owns in many countries of the world a large number of trademarks not only registered for passenger and freight transportation services, but also for a wide range of other goods and services, e.g. for games and clothing as well as for jewellery. Such trademarks consist of, or include the word “lufthansa”. The earliest of these registrations dates from September 1979:
German trademark LUFTHANSA (Reg.-No: 990835)
Classes: 36; 37; 39; 41; 42
Filing date: 02.04.1979
Date of registration: 25.09.1979
German trademark LUFTHANSA (Reg.-No: 990834)
Classes: 36; 39; 41; 42
Filing date: 02.04.1979
Date of registration: 25.09.1979
German trademark LUFTHANSA (Reg.-No: 39871924.1)
Classes: 06; 08; 09; 14; 16; 18; 20; 21; 24; 25; 26; 28
Filing date: 10.12.1998
Date of registration: 12.04.1999
German trademark LUFTHANSA (Reg.-No: 39871923.3)
Classes: 06; 08; 09; 14; 16; 18; 20; 21; 24; 25; 26; 28
Filing date: 10.12.1998
Date of registration: 12.04.1999
European Community Trademark LUFTHANSA (Reg.-No: 001212539)
Classes: 06; 08; 09; 14; 16; 18; 20; 21; 24; 25; 26; 28; 36; 37; 39; 41; 42
Filing date: 11.06.1999
Date of registration: 26.02.2001
European Community Trademark LUFTHANSA (Reg.-No: 001210665)
Classes: 06; 08; 09; 14; 16; 18; 20; 21; 24; 25; 26; 28; 36; 37; 39; 41; 42
Filing date: 11.06.1999
Date of registration: 29.11.2000
International Trademark LUFTHANSA (Reg.-No: 722971)
Classes: 06; 08; 09; 14; 16; 18; 20; 21; 24; 25; 26; 28
Date of registration: 05.08.1999
International Trademark LUFTHANSA (Reg.-No: 450006)
Classes: 36; 37; 39; 41; 42
Date of registration: 06.12.1979
United States Trademark LUFTHANSA (Reg.-No: 74383260)
Classes: IC 039. US 100 105
Filing Date: 27.04.1993
Date of registration: 20.08.1996
Respondent is a natural person with an address in the city of Mutare, in Zimbabwe. The disputed domain name was registered on July 20, 2007.
Complainant argues that it has rights over the trademark LUFTHANSA and that the term “reisemarkt” is of common use in the German language. According to Complainant's contentions, the addition of a generic term does not avoid a finding of a domain name to be confusingly similar with a trademark.
Complainant alleges that Respondent hosts under the disputed domain name a website displaying sponsored links in the German language, all concerning travel and aviation, which are in direct competition with Complainant's activities.
Complainant also argues that Respondent has no rights or legitimate interests in respect of the disputed domain name and that Respondent registered and uses the disputed domain name in bad faith.
Complainant seeks that the disputed domain name be transferred to him.
The Respondent did not reply to the Complainant's contentions.
To succeed, the Complainant must demonstrate that all of the elements listed 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; and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) the Domain Name has been registered and is being used in bad faith.
The burden of proving these elements is on the Complainant.
In the present case, the disputed domain name incorporates the whole of the Complainant's LUFTHANSA trademark and the fact that it includes the descriptive term “reisemarkt” (which means travel market in German) does not exclude the confusing similarity.
It is a well established principle that the addition of a descriptive term to a trademark is insufficient in itself to remove the confusion. In fact, the addition of a generic term does not serve to distinguish the domain name from the trademark, but rather, reinforces the association of the complainant's trademark with the domain name (see e.g. Viacom International Inc. v. Frank F. Jackson and Nancy Miller, WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet, Ltd., WIPO Case No. D2000-0275).
In light of the above, the Panel finds the domain name confusingly similar to the prior registered trademark in which the Complainant has rights, according to paragraph 4(a)(i) of the Policy.
Complainant states that it has not authorized Respondent to use the LUFTHANSA trademark. The Panel infers from the record that the Respondent is not commonly known by the name LUFTHANSA or by the disputed domain name <lufthansa-reisemarkt.com>.
Complainant has provided evidence that Respondent used the disputed domain name in a web page with several sponsored links, in what has been commonly called a “link farm”. From Complainant's exhibits showing the website, it is apparent that Respondent used the disputed domain name to trade off of the reputation of Complainant – thus, Respondent did not use the disputed domain name to make a bona fide offering of goods or services.
The Panel is satisfied that Complainant made a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent, by failing to provide a response, has failed to demonstrate such rights or legitimate interests. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
According to paragraph 4(a)(iii) of the Policy, Complainant must prove registration and use in bad faith. Paragraphs 4(b)(i)-(iv) of the Policy contain a non-exhaustive list of circumstances, which shall constitute evidence of registration and use of a domain name in bad faith.
It has been proven to the Panel's satisfaction that Complainant's trademark LUFTHANSA is well-known, and the Panel accepts that the Respondent could not likely reasonably ignore the marks high reputation of the products they identify.
It has been also shown that in the website in operation under the disputed domain name Respondent hosts a “link farm”, i.e., a list of sponsored links, which in the circumstances amounts to unduly taking advantage of the well-known nature of Complainant's mark to attract more Internet users and generate revenue presumably to Respondent's benefit in the form of “pay-per-click”.
In this sense, there is little doubt that Respondent intended to earn profit from the confusion created with Internet users, who believe to be accessing Complainant's website. In this regard, see Molmed S.p.A. v. Prof. Asif Ahmed, WIPO Case No. D2002-0177: “Indeed, by redirecting Internet users looking for the web site of Molmed S.p.A. to its own pages, Respondent is attempting to attract them for commercial gain, while creating a likelihood of confusion with Complainant's trademark.”
As a further element evidencing the bad faith, the Panel notes that there has been an attempt by Respondent to avoid submission to this UDRP proceeding, apparently by means of a privacy service. The initial Respondent as per the Complaint submitted on December 22, 2009 was “PrivacyProtect.org”, of the Netherlands, who has been involved in prior UDRP proceedings, all of them decided for the transfer of the disputed domain name. See Research In Motion Limited v. PrivacyProtect.org / berry store, hery santosa, WIPO Case No. D2009-0469; Crown Trophy, Inc. v. PrivacyProtect.org / Pluto Domain Services Private Limited, WIPO Case No. D2009-0061; Société Air France v. PrivacyProtect.org / Rob McGee, WIPO Case No. D2008-1917; F. Hoffmann-La Roche AG v. PrivacyProtect.org / Contact Id 7065280, Shutikhin Sergey, WIPO Case No. D2008-0765.
The WhoIs details of the disputed domain name having been changed to “Kudakwashe Musunga of Mutare, Zimbabwe”, of Zimbabwe, as confirmed by the Registrar, the Complainant filed an amendment to the Complaint on January 4, 2010.
A change in the ownership of a domain name after a UDRP proceeding has been initiated is often an of bad faith, i.e., a way to create difficulties for a trademark owner to assert its rights. There is no information in the docket of this case of when exactly the change in WhoIs details occurred, but in any case it is clear that such change occurred after this Complaint had already been filed.
This change in WhoIs details is another evidence of bad faith as it has already been decided in several cases. In that regard see Starline Publications, Inc. v. Gioacchino Zerbo, WIPO Case No. D2008-1822: “The Complainant correctly notes that the domain name registration was changed after these proceedings were initiated. Such attempts to avoid or delay judicial or UDRP proceedings by changing domain registration details or registrars after learning of the complaint have been referred to as cyberflight, see PREPADOM v. Domain Drop S.A., WIPO Case No. D2006-0917.”
Thus, the Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's website or other on-line location, by creating a likelihood of confusion with Complainant's mark and that Complainant has proven that Respondent's registration and use of the disputed domain name was in bad faith, according to paragraph 4(a)(iii) under the Policy.
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-reisemarkt.com> be transferred to the Complainant.
Gabriel F. Leonardos
Sole Panelist
Dated: February 12, 2010