The Complainant is LSG Lufthansa Service Holding AG of Neu-Isenburg, Germany, represented by Mayer Brown LLP of Germany.
The Respondent is Syed Hussain, of New Jersey, United States of America.
The disputed domain name <lsgsky.com> (the “Disputed Domain Name”) is registered with Name.com LLC.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 12, 2009. On May 13, 2009, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the Disputed Domain Name. On May 14, 2009, Name.com LLC 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 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 18, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 11, 2009.
The Center appointed Jacques de Werra as the sole panelist in this matter on June 18, 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 Panel notes, with respect to the issue of the identification of the Respondent in these proceedings, that the Complainant's counsel sent a cease and desist letter to the entity which was formally identified as the registrant of the Disputed Domain Name (an entity named “Protected Domain Services”) on March 18, 2009 and received immediately an email from the Respondent who asked the Complainant to make an offer for the acquisition of the Disputed Domain Name, otherwise he was not obliged to respond to the Complainant's “threatening letters”.
The Complainant's authorized representative was also informed by email dated March 24, 2009 from the registrar of the Disputed Domain Name that they were not the registrant of the Disputed Domain Name, but that they were rather offering a WHOIS protection service, of which the Respondent made use and to whom they had forwarded the Complainant's cease and desist letter.
Subsequently, the WHOIS information for the Disputed Domain Name has been changed in order to show the Respondent's contact details. The Panel is therefore satisfied that the Respondent is the registrant of the Disputed Domain Name so that he should be the party to these proceedings (which he has not disputed).
The Complainant is LSG Lufthansa Service Holding AG, a German company the purpose of which is to provide in-flight services on a global basis. The Complainant is a 100 % subsidiary of the German air line company Deutsche Lufthansa AG. The Complainant is the industry's leading expert in managing the complete in-flight service supply chain for airlines world-wide. The Complainant currently has about 30,000 employees at more than 200 customer service centers in 49 countries. In 2008, the Complainant produced 427 million meals for over 300 airlines, representing more than 30 % of the global airlines catering market share.
The designation “LSG” is an abbreviation of Complainant's founding company “Lufthansa Service GmbH”, respectively “Lufthansa Service Gesellschaft”, which was founded in 1966. The designation “LSG SKY CHEFS” is the brand name of all the groups belonging to Complainant's holding company which in 2008 alone achieved consolidated revenues of 2.3 billion Euros.
The Complainant is the owner of numerous trademarks which are registered in various jurisdictions, which contain the designations “LSG” and/or “LSG SKY CHEFS” and are registered for various goods and services (essentially in classes 29, 30, 42 and 43), in particular the following trademarks (the “Trademarks”):
|
Country |
Reg. No. |
Reg. Date |
Trademark |
|
Community Trademark (OHIM) |
2896728 |
March 24, 2004 |
LSG (Word Mark) |
|
German Patent and Trademark Office |
39650314 |
January 20, 1997 |
LSG (Word Mark) |
|
International Trademark (WIPO) |
727609 |
November 10, 1999 |
LSG Sky Chefs (Word/ Design Mark) |
|
Community Trademark |
1227586 |
November 13, 2000 |
LSG Sky Chefs (Word/ Design Mark) |
|
Community Trademark |
2090009 |
April 18, 2002 |
eLSG.SkyChefs (Word/ Design Mark) |
|
United States Patent and Trademark Office (USPTO) |
2311607 |
January 25, 2000 |
LSG Sky Chefs (Word Mark) |
|
United States Patent and Trademark Office (USPTO) |
2542241 |
February 26, 2002 |
LSG Sky Chefs (Word/ Design Mark) |
|
United States Patent and Trademark Office (USPTO) |
2857343 |
June 29, 2004 |
eLSG.SkyChefs (Word/ Design Mark) |
|
German Patent and Trademark Office (DPMA) |
39938316 |
August 25, 1999 |
LSG Sky Chefs (Word Mark) |
The Complainant owns the domain names <lsgskychefs.com>, <lsgskychefs.net>, <lsgskychefs.org>, <lsgskychefs.eu> and <lsgskychefs.de> (and other domain names including variations thereof including, <lsg-skychefs.com> and <lsg-sky-chefs.com>) and operates them for its business purposes.
The Disputed Domain Name was registered on October 16, 2008. The Disputed Domain Name is used as landing page to redirect Internet users to an automatically-generated “parking site” or “landing site” which contains numerous links, some of which are redirecting to commercially active websites of other companies in the airline and/or food industry, one of which is a direct competitor of the Complainant's parent company Deutsche Lufthansa AG.
By email of May 12, 2009 (i.e. on the very day when the Respondent was notified by the Complainant of the filing of the Complainant), the Respondent answered to the Complainant's counsel and stated that he would not accept the “complaint documents by any means and not respond to so called panel”. He also added the following question: “why spend time and money to litigate something so trivial when you could have subjected domain acquired for $500 right now?”
The Complainant filed a supplemental filing by an email to the Center dated May 19, 2009 in order to draw the Center's attention to the email of Respondent of May 12, 2009 (which was enclosed to the filing made by the Complainant).
The Center has rightly put before the Panel for consideration (or otherwise) at its discretion under the Rules the Complainant's unsolicited supplemental filing made by email of May 19, 2009 essentially consisting of an email of the Respondent dated May 12, 2009 to the Complainant's counsel, in which the Respondent stated that he would not file a response in the proceedings and that he offers the Disputed Domain Name for sale by the Complainant for the amount of USD 500.
In The E.W. Scripps Company v. Sinologic Industries, WIPO Case No. D2003-0447, this Panel summarised the position regarding supplemental filings in proceedings under the Policy in the following terms:
“Under the Policy and the Rules, parties have no right to submit additional arguments or evidence. However, the Panel may, in its sole discretion, request further statements or documents from the parties under paragraph 10 of the Rules; and a party's request may be regarded as an invitation to the Panel to exercise this discretion.
The principles which should be applied in exercising this discretion have been considered in numerous cases decided under the Policy and Rules. The principles adopted and confirmed in these decisions are that additional evidence or submissions should only be admitted in exceptional circumstances, such as where the party could not reasonably have known the existence or relevance of the further material when it made its primary submission; that if further material is admitted, it should be limited so as to minimise prejudice to the other party or the procedure; and that the reasons why the Panel is invited to consider the further material should, so far as practicable, be set out separately from the material itself.
These principles are based on the purpose of the Policy and Rules of providing an expeditious and relatively inexpensive procedure for determining a certain type of domain name dispute, in which each party is entitled to make just one submission. One of the matters which the Panel has to bear in mind is that the admission of a further submission from one party may lead the other party to submit a further document in reply, which may lead to a further submission by the first party, and so on, thereby compromising the procedural economy sought to be established by the Policy and the Rules.”
In the present case, the Complainant's supplemental filing essentially consists in the transmission of an email dated May 12, 2009 that was sent by the Respondent to the Complainant's counsel in which the Respondent has offered the Disputed Domain Name for sale to the Complainant for the amount of USD 500.
In light of the rationale justifying the rejection of supplemental submissions by the parties (as reminded above), it appears to the Panel that the admission of the supplemental filing made by the Complainant in this case does not negatively affect in any manner the respective procedural and substantive interests and positions of the parties to this dispute, and most particularly those of the Respondent.
The admission of the Complainant's supplemental filing which consists of an email of the Respondent indeed would not create the obligation for the Panel to give to the Respondent an opportunity to comment on such information given that he is the author of such message (he could in any case have reacted to this in the Response that he chose not to file in these proceedings).
On this basis, the Panel is satisfied that exceptional circumstances justifying the admission of the Complainant's supplemental filing are present in this case. The Panel consequently decides to admit the Complainant's supplemental filing.
The Complainant first claims that the Disputed Domain Name is confusingly similar to its Trademarks (the verbal elements of which are “LSG” and “LSG SKY CHEFS”) because the Disputed Domain Name fully comprises the Complainant's registered trademark LSG and because it incorporates the elements of its LSG SKY CHEFS trademarks thus constituting an intended misspelling of such trademark, which would qualify as a typical typo-squatting case.
The Complainant further alleges that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name because it has not granted to the Respondent any license or has otherwise permitted the Respondent to use the Trademarks or to register for any domain name(s) incorporating the Trademarks. In addition, to the best of the Complainant's knowledge and information, the Respondent is not making, has not in the past made, nor has he undertaken demonstrable preparations to make use whatsoever of the Disputed Domain Name or any name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods and services. The Respondent is rather using the Disputed Domain Name to redirect Internet users to an automatically-generated “parking site” or “landing site” which provides for numerous links, some of which redirect to commercially active websites of other companies in the airline and/or food industry, one of which is a direct competitor of the Complainant's parent company (Deutsche Lufthansa AG). On this basis, the Respondent's use of the Disputed Domain Name in order to redirect Internet users being interested in the Complainant's services to websites that offer similar services in competition with the Complainant's group of companies cannot be seen as a bona fide offering of services.
The Respondent further claims that the Respondent is not known by the Disputed Domain Name. This would be evidenced by a Google search which was made with the terms “lsg sky” which showed that all of the first 50 results out of a total of about 81,700 hits exclusively point to the Complainant, and none to the Respondent. There would in addition be no link whatsoever between the personal name of the Respondent and the Disputed Domain Name and the Respondent neither owns trademark rights nor any other rights in the name “lsg” and/or “lsg sky chefs”.
The Complainant also claims that the Respondent is known to be a typical cyber-squatter who registered numerous domain names which clearly conflicted with the trademark rights of third parties, as evidenced by the fact that the Respondent has been found in breach of the Policy in at least 13 decisions rendered against him since the launch of the UDRP.
The Complainant further alleges that the Respondent is not making a legitimate non-commercial or fair use of the Disputed Domain Name, without intent for commercial gain because the Respondent's use of the Disputed Domain Name in a domain name parking program which is based on “click-through commissions” cannot qualify as an non commercial use.
The Complainant also alleges that the Disputed Domain Name was registered and is being used in bad faith by the Respondent. The Complainant claims in this respect that the Respondent, by using the Disputed Domain Name, intentionally attempted to attract, for commercial gain, Internet users to his website, by creating a likelihood of confusion with the Complainant's Trademarks. Such exploitation of the Trademarks to obtain commercial gain by “click-through commissions” from the diversion of Internet users constitutes a bad faith registration and use of the Disputed Domain Name.
The Complainant also claims that the Respondent was aware of the Complainant's Trademarks (in particular the LSG SKY CHEFS trademark) at the time of the registration of the Disputed Domain Name because the Trademarks are world wide recognized for services emanating from the Complainant, as evidenced not only by the significant sales figures of the Complainant's group of companies, but also by the Google search for the terms “lsg chef” which leads to very numerous hits the first 50 of which exclusively point to the Complainant's activities. The knowledge of the Trademarks by the Respondent can also be inferred from the fact that the Respondent has registered in the past third parties' well-known trademarks as domain names to profit from click-through commissions as found in decisions rendered by other panels against the Respondent in previous UDRP disputes.
The Complainant further claims that the Respondent acquired the Disputed Domain Name for the purpose of selling it to the Complainant for valuable consideration in excess of the Respondent's out-of-pocket costs directly related to the Disputed Domain Name. By answering very quickly to the Complainant's warning letter, and offering the Disputed Domain Name for sale to the Complainant, it is obvious that the Respondent was not at all surprised to be contacted by the Complainant and was simply aiming to make money out of the registration and use of the Disputed Domain Name, whereby the Complainant notes that the Respondent did not even try to defend the legitimacy of the registration and use of the Disputed Domain Name at that time.
The Respondent did not reply to the Complainant's contentions.
Paragraph 4(a) of the Policy provides that the complainant must prove each of the following three elements in order to succeed in a UDRP proceeding. Thus, for the complainant to succeed, it must prove all of the three elements under the Policy:
(i) the respondent's 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 respondent's domain name has been registered and is being used in bad faith.
The Panel is satisfied that the Complainant has rights to the Trademarks in various countries and specifically in the United States of America which is the country where the Respondent is located.
The Panel also notes that the Trademarks have reached a certain degree of distinctiveness and recognition, as evidenced by the documents filed by the Complainant, which is not disputed by the Respondent.
A comparison between the Disputed Domain Name and the Trademarks shows that the Disputed Domain Name contains the distinctive elements of the Trademarks, i.e. the terms “lsg” which are present in all of the Trademarks and the terms “lsg sky” which are present in the trademarks LSG SKY CHEFS), the only difference consisting for these last ones in the absence in the Disputed Domain Name of the descriptive term “chefs”. From this perspective, the Panel is convinced that the Disputed Domain Name which consists of the distinctive combination of the terms “lsg sky” (is confusingly similar to the Trademarks, and specifically to the Trademarks containing the terms “lsg sky chefs”. Other Panels have similarly held that the use of abbreviated versions of the relevant trademarks in the disputed domain names can be confusingly similar to those trademarks. See Banque Saudi Fransi v. ABCIB, WIPO Case No. D2003-0656 and Dow Jones & Company, Inc. & Dow Jones LP v. T.S.E. Parts, WIPO Case No. D2001-0381.
The use in the Disputed Domain Name which partially incorporates the Trademarks to capture the more distinctive elements of those Trademarks (i.e. the terms “lsg sky”) can be viewed as identifying the Complainant's Trademarks. Such partial incorporation of the Trademarks in the Disputed Domain Name does not prevent the finding of confusing similarity between the Disputed Domain Name and the Trademarks owned by the Complainant.
As a result, based on the rights of the Complainant on the Trademarks and on the confusing similarity between the Trademarks and the Disputed Domain Name, the Panel finds that the conditions of paragraph 4(a)(i) of the Policy are met.
Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed Domain Name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial 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.
Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, previous panels have consistently ruled that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
In this case, the Panel finds no evidence that the Respondent ever had any rights or legitimate interests in the Disputed Domain Name. Based on its uncontradicted allegations, the Complainant has demonstrated that the Disputed Domain Name hosts a website providing links to third party websites in what appears to be a “click-through” site as part of a domain name parking program, whereby some of these links point to websites of companies competing with the Complainant's group companies in the airline business.
In addition, the Complainant has shown that the Respondent has immediately offered for sale the Disputed Domain Name for an amount exceeding the out-of-pocket costs directly related to it.
The Panel further acknowledges that the Complainant never authorized, licensed or permitted the Respondent to use the Trademarks in any manner and that the Respondent is not commonly known by the Disputed Domain Name.
On this basis, the Panel finds that the Complainant has made a prima facie showing that the Respondent has no rights or legitimate interests in the Disputed Domain Name and similarly that the Respondent has not established any rights to or any legitimate interests in the Disputed Domain Name.
The Panel is consequently satisfied that the Complainant has established that the second requirement of paragraph 4(a) of the Policy is met.
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;
(ii) circumstances indicating that the respondent 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 the respondent has engaged in a pattern of such conduct;
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its 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 the respondent's website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.
In this case, the Complainant alleges that the Respondent registered and uses the Disputed Domain Name in bad faith because the Trademarks are distinctive and are so well known that the Respondent could not possibly be unaware of their existence at the time when he registered the Disputed Domain Name. In the absence of any response by the Respondent and in view of the distinctive nature of the combination of the elements of the Trademarks which are reproduced in the Disputed Domain Name (i.e. LSG and SKY) which are to be viewed as identifying the Complainant, the Panel accepts that the Respondent had the Trademarks and the Complainant in mind at the time of registration of the Disputed Domain Name.
Based on the uncontradicted evidence filed by the Complainant, the Panel is prepared to find that the Respondent registered the Disputed Domain Name and uses it for the purposes of monetary gain by providing links to sites which are unrelated to the ones of the Complainant or are in some cases even competing with those group of companies of the Complainant. By trading on the goodwill of the Complainant's Trademarks, the Respondent has thus disrupted the business of the Complainant and diverted Internet traffic intended to the Complainant's websites. Such use of the Disputed Domain Name can only be explained by the intent of the Respondent to attract Internet traffic by capitalizing on the Complainant's Trademarks. This type of use of the Disputed Domain Name constitutes sufficient evidence of the bad faith of the Respondent under paragraph 4(b)(iv) of the Policy. See Rhino Entertainment Company v. DomainSource.com, Inc., WIPO Case No. D2006-0968 and Imperial Chemical Industries PLC v. RareNames, WIPO Case No. D2006-0124.
The Complainant also showed that the Respondent immediately reacted to the sending of the cease and desist letter as well as to the filing of the Complaint by the Complainant by offering the Disputed Domain Name for sale to the Complainant (for an amount of USD 500). On this basis, the Panel is satisfied that such circumstances duly support the finding that the Respondent registered the Disputed Domain Name primarily for the purpose of selling it to the Complainant for valuable consideration in excess of documented out-of-pocket costs directly related to it. This constitutes a clear case of bad faith registration and use within the meaning of 4(b)(i) of the Policy.
It has finally been shown by the Complainant that the Respondent has engaged in a pattern of conduct in registering domain names which are confusingly similar to third party trademarks which constitutes another confirmation of the bad faith of the Respondent, as evidenced by the numerous UDRP decisions which have been rendered against the Respondent. See, e.g., Myxer Inc. v. Marketing Total S.A., Domain Drop S.A., Keyword Marketing, Inc., WIPO Case No. D2008-0169; see also Kahn Lucas Lancaster, Inc. v. Marketing Total S.A., WIPO Case No. D2007-1236, General Electric Company v. Marketing Total S.A., WIPO Case No. D2007-1834.
For all these reasons, the Panel considers that the Complainant has established that the Disputed Domain Name was registered and is being used in bad faith by the Respondent pursuant to paragraph 4(a)(iii) of 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 <lsgsky.com> be transferred to the Complainant.
Jacques de Werra
Sole Panelist
Dated: July 2, 2009