WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Deutsche Lufthansa AG v. Whois Privacy Services Pty Ltd / Mediablue Inc, Kwangpyo Kim

Case No. D2013-1844

1. The Parties

The Complainant is Deutsche Lufthansa AG of Cologne, Germany, represented by Rauschhofer Rechtsanwälte, Germany.

The Respondent is Whois Privacy Services Pty Ltd of Fortitude Valley, Australia / Mediablue Inc, Kwangpyo Kim of Gwang-ju, Republic of Korea, represented by ESQwire.com PC, United States of America (“US”).

2. The Domain Name and Registrar

The disputed domain name <flynet.com> is registered with Fabulous.com Pty Ltd (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 29, 2013. On October 30, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 2013, 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 November 4, 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 November 7, 2013.

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 amendment to the Complaint, and the proceedings commenced on November 7, 2013. In accordance with the Rules, paragraph 5(a), the due date for Response was November 27, 2013. On November 13, 2013, the Respondent requested an extension of the due date for filing of the Response, to which the Complainant objected on November 15, 2013. On November 15, 2013, the Center extended the due date for filing of the Response until December 2, 2013. The Response was filed with the Center on December 2, 2013. On December 6, 2013, the Complainant submitted a supplemental filing to the Center.

The Center appointed Thomas Hoeren and The Hon Neil Brown Q.C. as panelists in this matter on December 16, 2013, and appointed Assen Alexiev as presiding panelist on January 6, 2014. The Panel finds that it was properly constituted. Each member of 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.

In exercise of its discretion, the Panel has decided to admit and consider the Complainant’s supplemental filing. The Complainant was not in a position to address earlier some of the statements contained in the Response, and was not aware of the identity of the Respondent prior to its disclosure by the Registrar. The Complainant thus did not have an adequate opportunity to fully consider all the circumstances that may be indicators of bad faith but which require knowledge of the identity of the registrant.

4. Factual Background

The Complainant is one of the world’s leading airlines. It is a member of the Star Alliance Network, which operates worldwide. In 2013, the Complainant served 218 destinations around the world. The Complainant offers on-board broadband Internet communication services under the name “FlyNet”.

The Complainant is the registered owner of the following trademarks (the FLYNET trademarks):

The word trademark FLYNET with registration No. 3,875,491, registered on November 16, 2010 for the territory of the US for services in International Classes 35, 38, 41, 42;

The word trademark FLYNET with registration No. 30166909, registered on April 4, 2002 for the territory of Germany for services in International Classes 35, 36, 38 and 39; and

The word trademark FLYNET with registration No. 002658912, registered on October 2, 2003 for the European Union for services in International Classes 35, 38, 39, 42.

The disputed domain name was first registered on April 8, 1998 by a third party. It was acquired by the Respondent through a domain name auction on July 1, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to its FLYNET trademarks because the disputed domain name wholly incorporates them. Since the Complainant has previously registered the domain names <lufthansa-flynet.com> and <lufthansa-flynet.de>, Internet users are likely to assume that the disputed domain name is somehow sponsored by, or affiliated with the Complainant.

The Complainant maintains that the Respondent has no rights or legitimate interests in the disputed domain name. The website at the disputed domain name only displays sponsored links related to airline tickets and travel services, and the Respondent is not itself making any genuine offering of goods or services related to travel, aviation and holidays. In view of this, the Respondent must be receiving click-through fees for diverting Internet users looking for the Complainant and redirecting them to third party websites.

The Complainant asserts that the Respondent does not have any relevant trademark rights for the term “Flynet”, that the Respondent’s name shows no connection to the disputed domain name, and that there is no relationship between the Complainant and the Respondent. The Complainant contends that it has exclusive rights in the FLYNET trademarks and that it has not granted to the Respondent any license or other consent to use these trademarks in the disputed domain name. The Complainant concludes that the Respondent is not making any legitimate noncommercial or fair use of the disputed domain name.

The Complainant contends that the disputed domain name was registered and is being used in bad faith. According to it, the FLYNET trademarks are distinctive and have no meaning in any language other than as a trademark identifying the Complainant as a source of origin. The disputed domain name was acquired by the Respondent ten years after the first registrations of the FLYNET trademarks, and is now used for redirection to sponsored links related to travel, aviation, holidays and flight tickets. For these reasons, it is unlikely that the Respondent did not have knowledge of the Complainant’s trademark rights when it acquired the disputed domain name. The Respondent’s intention is more likely to be to free-ride on the goodwill of the Complainant and of its FLYNET trademarks and to generate click-through revenue from the sponsored links posted on the website at the disputed domain name.

On September 23, 2013, the Complainant contacted the Respondent and demanded the transfer of the disputed domain name. On October 1, 2013, the Respondent’s representative rejected the demand without disclosing the Respondent’s identity or explaining the reasons for the registration of the disputed domain name.

With its amendment to the Complaint dated November 7, 2013, the Complainant points out that the Respondent has already been the Respondent in Unilever NV 대 김광표, WIPO Case No. D2002-0614, and claims that the non-disclosure of the Respondent’s identity shows that the Respondent has registered and is using the disputed domain name in bad faith.

With its supplemental filing dated December 6, 2013, the Complainant submits that the relevant date for the assessment of the conduct of the Respondent is the date of its acquisition of the disputed domain name, which the Respondent admits to have happened on July 1, 2013. The argument of the Respondent related to the inaction of the Complainant against the prior registrant of the disputed domain name is not relevant, because the infringing content of the website at the disputed domain name was introduced only after the Respondent acquired and started to use the disputed domain name. Contrary to its allegation, the Respondent offers for sale all its domain names referred to in the Response, which contradicts its statement of intention to use these domain names for its own business. The Respondent’s allegation that it has used the domain parking services of the company “Parked.com” is not credible, because this company has stopped providing services long before the acquisition of the disputed domain name. According to the Complainant, even if the sponsored links on the website of the Respondent were introduced by a third party, the Respondent continues to be responsible for the content of this website.

B. Respondent

The Respondent submits that the disputed domain name was first registered by a third party on April 8, 1998, and was acquired by the Respondent through a domain name auction on July 1, 2013. The Respondent alleges to have purchased the disputed domain name in good faith from its prior owner solely because it included the generic words “fly” and “net”, which the Respondent believed not to be subject of trademark rights. According to the Respondent, the Complainant has set forth no evidence demonstrating otherwise or that it was targeted. The Respondent contends that it didn’t register the disputed domain name aiming to take advantage of the Complainant’s trademark, to disrupt the Complainant’s business or to mislead and confuse the Internet consumers as to the source of the disputed domain name and the website related to it. The Respondent admits to have heard of the Complainant but at the time of the registration of the disputed domain name it did not make a connection between the Complainant and the term “flynet”. According to the Respondent, where a third party purchases a domain name in a public auction from its prior owner, the presumption should be that the domain name is free for use and not subject to third party claims.

The Respondent submits that the Complainant cannot claim exclusive rights to the combination of generic words – “fly” and “net.” The Complainant’s FLYNET trademarks are generic or descriptive when used in connection with in-flight web or broadband services and thus may be subject to cancellation. The Complainant does not have exclusive trademark rights in the term “Fly Net,” and many third parties use this term online. The Respondent questions the well-known character of the FLYNET trademarks as to the general public outside Lufthansa passengers.

The Respondent contends to have legitimate interest in the disputed domain name. According to the Respondent, its legitimate interest in the disputed domain name is justified by the presence of descriptive advertising links displayed on the website at the disputed domain name, generated by the company Parked.com, which hosts the disputed domain name. These advertising links were auto generated using Parked.com’s software technology, based on the contextual meaning of the words contained in the disputed domain name. The Respondent also submits that its company owns many airline ticket related domain names and its aim is to develop software and a website to unify the airline industry.

The Respondent denies that the disputed domain name was registered or used in bad faith. According to the Respondent, it had no knowledge of the Complainant or its trademark and did not register the disputed domain name to target the Complainant. The Respondent denies that it had any intent to sell the disputed domain name to the Complainant, to disrupt the Complainant’s business, or to confuse consumers seeking to find the Complainant’s website. The Respondent claims to have registered the disputed domain name solely based on its descriptive nature and not because of the Complainant’s FLYNET trademark, and cites in this regard the other non-trademark phrases it had registered as domain names containing the descriptive words “fly” or “net”. In the Respondent’s submission, the appearance of links created by a third party domain monetization service does not constitute bad faith on the part of the domain name owner.

The Respondent invokes in its defence the doctrine of laches by stating that the Complainant, who was aware of the registration of the disputed domain name, has waited over 15 years before initiating the present proceeding, and thus should be barred from asserting its trademark rights.

6. Discussion and Findings

Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain name:

(i) the disputed 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 disputed domain name; and

(iii) the Respondent has registered and is using the disputed domain name in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided evidence about the registrations of the FLYNET trademarks, registered for the territory of the United States and for the territory of the European Union, which evidence satisfies the Panel that the Complainant has exclusive rights in these trademarks.

It is a common practice under the Policy to disregard in appropriate circumstances the generic Top-Level Domain (“gTLD”), such as “.com”, for the purposes of the comparison under the Policy, paragraph 4(a)(i). Therefore, the relevant part of the disputed domain name here is the element “flynet”. This element is identical to the Complainant’s FLYNET trademarks, so the Panel is satisfied that the disputed domain name is identical to these trademarks.

Therefore, the Panel finds that the Complainant has established the first element of the test under the Policy, paragraph 4(a).

B. Rights or Legitimate Interests

The Consensus view of WIPO UDRP panels is that the Policy requires the Complainant to make at least a prima facie showing that the Respondent has no rights or legitimate interests in the disputed domain name. Once the Complainant makes such a showing, the Respondent may provide evidence to demonstrate that it has rights or legitimate interests in the disputed domain name. The burden of proof, however, always remains on the Complainant to establish that the Respondent lacks rights or legitimate interests in the disputed domain name. See paragraph 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”).

The Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain name because the Respondent is not connected to the Complainant and has not been licensed by it to use the disputed domain name or to offer services under the FLYNET trademarks. According to the Complainant, the Respondent is not engaged in any activity that could give rise to rights or legitimate interests in the disputed domain name, but rather attempts to exploit the reputation of the Complainant’s FLYNET trademarks for its own commercial gain by diverting Internet users from the Complainant to third parties. Thus, the Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.

The Respondent alleges that it has purchased the disputed domain name because of its generic character. The descriptive advertising links on the website at the disputed domain name were generated on the basis of the contextual meaning of the words “fly” and “net”, without targeting the Complainant. In this regard, the Respondent maintains that it intends to develop software and a website to unify the airline industry.

Having analysed the submissions of the parties, the Panel has reached the following conclusions.

One of the main arguments of the Respondent is that FLYNET is a generic or a descriptive term. However, the Respondent has not provided a convincing explanation why the combination of the two words “fly” and “net” is descriptive, and what it is descriptive for. The Panel accepts that the words “fly” and “net” may separately have generic meaning in certain contexts, but in its view their combination is not generic. This finding is supported by the fact that FLYNET is registered as a trademark in the US, Germany and the European Union for the services listed in Section 4 above.

As discussed in paragraph 2.2 of the WIPO Overview 2.0, the consensus view of UDRP panels is that in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase). As further discussed in paragraph 2.6 of the WIPO Overview 2.0, there is a consensus view that the use of a domain name to post parking and landing pages or pay-per-click links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a “bona fide offering of goods or services”.

Even if we regard “flynet” as a combination of the two words “fly” and “net”, the Respondent has not explained how the sponsored links that represent the only content of the website at the disputed domain name are “genuinely related to the meaning” of the combination of these two words. A review of the website at the disputed domain name shows that these links are related to airline tickets and travel services. This may be related to the meaning of the separate word “fly”, but does not appear to be related to the meaning of the combination between “fly” and “net”. Therefore, the genuine relationship requirement of paragraph 2.2 of the WIPO Overview 2.0 is not satisfied. For these reasons, the Panel does not regard the existence of sponsored links related to airline tickets and travel services on the Respondent’s website as a circumstance that gives rise to rights or legitimate interests of the Respondent in the disputed domain name.

The Panel is not persuaded by the Respondent’s allegation that it intends to use the disputed domain name in relation to its plans to develop software and a website to unify the airline industry. The Respondent has not submitted any evidence in support of this allegation. In the lack of any evidence for such plans or an explanation how this activity would involve a genuine use of the meaning of the disputed domain name, the Panel is not satisfied that the alleged intentions of the Respondent give rise to rights or legitimate interests in the disputed domain name.

The Panel also notes that the disputed domain name was acquired by the Respondent as recently as July 1, 2013, while some of the Complainant’s FLYNET trademarks were registered ten years earlier. The website at the disputed domain name contains sponsored links related to travel services. If one accepts the Respondent’s allegations that it plans to rationalise the aviation industry with its use of the disputed domain name, this would suggest a certain level of knowledge of the Respondent of this industry. Taken together, these circumstances make it more likely than not that the Respondent knew of the FLYNET trademarks at the time it acquired the disputed domain name, and made this acquisition because it knew that FLYNET was being used by the Complainant. This Panel does not regard such actions as giving rise to rights or legitimate interests of the Respondent in the disputed domain name.

On the basis of all the above, and in the lack of any evidence to the contrary, the Panel finds that the Complainant’s prima facie case has not been rebutted. Accordingly, the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists four illustrative alternative circumstances that shall be evidence of the registration and use of a domain name in bad faith by a respondent, namely:

“(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 web site 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 or service on your website or location.”

In the present case, the Complainant has established that the disputed domain name is identical to its FLYNET trademarks and that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 3.7 of the WIPO Overview reflects the consensus among panels applying the Policy that the transfer of a domain name to a third party does amount to a new registration for the purposes of assessing bad faith. Therefore, the relevant point in time to analyze the conduct of the Respondent is the moment of its acquisition of the disputed domain name.

As noted above in this decision, the disputed domain name was acquired by the Respondent ten years after the first registrations of the FLYNET trademarks, and is now used for redirection to sponsored third party links related to travel and airplane tickets. The Respondent has not provided a plausible explanation for the inclusion of these links on its website, but has stated that it has plans for the development of software and a website to unify the airline industry, which suggests that the Respondent must be acquainted with the specifics of this industry at least to some extent.

The Panel does not accept the argument of the Respondent that it is not responsible for the sponsored links that appear on the Respondent’s website. In the Panel’s view, even if a third party designs a website and introduces sponsored links on it, the registrant of the respective domain name continues to be responsible for the content of its website. A further circumstance that weakens the Respondent’s credibility is the fact that the company Parked.com has stopped providing services long before the acquisition of the disputed domain name and thus could not have had any contribution to the content of the Respondent’s website.

It should also be noted that the Complainant is one of the largest airlines in the world, and that the Respondent has admitted having knowledge of the Complainant.

In light of the above, the Panel is prepared to accept the Complainant’s contention that the Respondent had knowledge of the Complainant’s trademark rights when it acquired the disputed domain name, and that this knowledge, rather than the alleged descriptive nature of the disputed domain name, motivated the Respondent to acquire it and to use it for a website containing pay-per-click links to third party websites offering products and services related to the airline and tourist industry.

The Respondent correctly notes that in principle a long delay in bringing a complaint is a factor that has to be taken into consideration in disputes under the Policy. Nevertheless, this factor cannot apply in the present case because all of the delay occurred before the Respondent acquired the domain name. In the Panel’s view, this particular circumstance precludes the Respondent from relying on the delay of the Complainant. An additional argument in support of this conclusion is the explanation of the Complainant for its inaction, based on the allegation that the previous owner of the disputed domain name did not use it in a way that interferes with the trademark rights of the Complainant.

The Panel does not accept the argument of the Respondent that the acquisition of a domain name at a public auction necessarily means that the domain name is free from third party claims. The Panel is not aware of such legal principle applicable to domain names, and is not prepared to apply such principle by analogy to the circumstances of the present case.

Taken together, and in the absence of any evidence to the contrary, the circumstances of the present case satisfy the Panel that the Respondent, by acquiring and using the disputed domain name, has intentionally attempted to attract for commercial gain Internet users to its website and to third parties online locations by creating a likelihood of confusion with the Complainant’s FLYNET trademarks as to the source, sponsorship, affiliation, or endorsement of the same website. This supports a finding of bad faith registration and use of the disputed domain name under the Policy, paragraph 4(b)(iv).

Therefore, the Panel finds that the Respondent has registered and used the disputed domain name in bad faith.

7. Decision

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 <flynet.com> be transferred to the Complainant.

Assen Alexiev
Presiding Panelist

Thomas Hoeren
Panelist

The Hon Neil Brown Q.C.
Panelist

Date: January 22, 2014