Deutsche Lufthansa AG v.
Future Media Architects, Inc.
Claim Number: FA0802001153492
PARTIES
Complainant is Deutsche Lufthansa AG (“Complainant”), represented by Dennis
J. Mondolino of McDermott Will & Emery LLP, of
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lh.com>, registered with Moniker
Online Services, Inc.
PANEL
The undersigned certify that they have acted independently and
impartially and that to the best of their knowledge, each has no known conflict
in serving as Panelist in this proceeding. Professor David
E. Sorkin, Mr. David Tatham, and Hon. Carolyn Marks Johnson (Chair) sit as
Panelists.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically February 25, 2008; the
National Arbitration Forum received a hard copy of the Complaint February 27, 2008.
On February 26, 2008, Moniker Online Services, Inc. confirmed by
e-mail to the National Arbitration Forum that the <lh.com> domain name is
registered with Moniker Online Services, Inc.
and that the Respondent is the current registrant of the name. Moniker Online
Services, Inc. verified that Respondent is bound by the Moniker Online Services, Inc. registration
agreement and thereby has agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On March 4, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of March 24, 2008, by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts, and to postmaster@lh.com by e-mail.
Respondent filed a timely Response that was received and determined to
be complete March 24, 2008.
Complainant filed an Additional Submission March 31, 2008, pursuant to
The Forum’s Supplemental Rule #7. The
Panel considered the Additional Submission as set out below.
The Panel read but elected not to consider Respondent's timely filed
Additional Submission. The Panel was initially under the impression that
the Additional Submission was late; however, after the Panel became aware that
it was timely and after further review, the Panel finds that the
Additional Submission adds nothing new to the discussion.
On April 3, 2008, pursuant to Complainant’s request to have the dispute
decided by a three-member Panel, the National
Arbitration Forum appointed Professor David E. Sorkin, Mr. David Tatham,
and Hon. Carolyn Marks Johnson as Panelists.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Among other allegations, Complainant makes
the required following allegations in its Complaint:
1. Respondent registered a domain name that is
identical to or confusingly similar to a mark in which Complainant has rights.
2. Respondent has no rights to or legitimate
interests in the disputed domain name.
3. Respondent registered and used the domain
name in bad faith.
B. Among other responses, Respondent set out the
following in its Response:
1. Respondent notes that the disputed domain
name was registered in 1995 and acquired by Respondent in 2004.
2. Respondent claims rights to and legitimate
interests in the domain name and that it has made a bona fide use of the domain to “redirect consumers to its own
search engine located at <oxide.com> before it received notice of
Complainant’s alleged rights.”
3. Respondent did not act in bad faith because
Respondent “did not know that Complainant claimed any trademark rights to it.”
4. Respondent contends that Complainant seeks to
have the Panel assist it in awarding it rights in its International Airline
Traffic Association (“IATA”) Code.
5. “Hundreds if not thousands” of entities seek
to use the “lh” mark [sic] and have offered Respondent up to $1,000,000. U.S.
dollars for it.
6. Respondent urges that Complainant attempted
to buy the domain name from Respondent; but Respondent offered only to lease
but not sell the domain name to Complainant.
7. Respondent charges that Complainant is
“intent on obtaining the Domain Name ‘by hook or crook,’ … [and] has resorted
to misuse of the Policy to hijack Respondent’s Domain Name or exert leverage on
Respondent in the negotiation of a lease arrangement.”
8. Respondent concludes that Complainant has
shown no rights in the mark and has failed to prove the three required factors.
C. Complainant makes the following points in
reply in the Additional Submission:
1. Complainant’s use in commerce of the LH mark
is sufficient to have established secondary meaning in the mark “to identify
its airline flights and travel services and to establish trademark rights prior
to Respondent’s acquisition and use of the domain name <lh.com>.”
2. The IATA designator in this case “corresponds
with Complainant’s Corporate
Name and is identical to its mark LH.”
3. Complainant has a registration for the LH
mark.
4. Complainant also had common-law rights in the
LH mark that date back to possibly as early as 1945.
5. Respondent’s contentions of rights in the
domain that date back to 1995 are misleading.
6. Respondent “first began operating a web site
at <lh.com> sometime in 2004.”
7. The purported factual affidavit of Respondent
to support Respondent’s allegations is not reliable and the statements within
it are conclusions and not fact statements as is required and should be
disregarded.
PRELIMINARY MATTER: CONCURRENT LEGAL PROCEEDINGS
The
Panel is aware that Respondent purports to have filed an action in the
United States District Court for the Southern District of New York (Case No. 08
CV 02801) against Complainant seeking a judgment that Respondent has not
violated any rights of Complainant with the registration and use of the <lh.com> domain name and that
Complainant has no protectable rights in the LH mark. However, Respondent produced no evidence to
support the allegation that a lawsuit is pending. Further, Complainant contends that Respondent
has not yet served Complainant with any federal complaint. Moreover, Complainant alleges that even if it
were served with a federal complaint, Respondent’s filing of federal court
proceedings indicates an improper attempt to delay or usurp the UDRP
proceedings. See RMC of Ill. Inc. v.
Under
Rule 18(a) of the UDRP, the Panel has the discretion to suspend or terminate
the administrative proceeding, or to proceed to a decision. Although Respondent has asserted that this
matter would be decided by the court proceeding, the Panel finds no proof to support
this allegation and finds that it is appropriate for this Panel to proceed with
its analysis and render a decision in this proceeding. See Creative Paradox LLC v. Talk Am.,
FA 155175 (Nat. Arb. Forum June 23, 2003) (choosing to proceed with a
decision under the authority of Rule 18(a), despite the filing of a lawsuit
over the parties respective trademark rights in federal court); see also BPI
Commc’ns, Inc. v. Boogie TV LLC, FA105755 (Nat. Arb. Forum Apr. 30, 2002)
(deciding to proceed despite the complainant filing suit in federal court for
trademark and service mark infringement).
FINDINGS
Complainant established that it has
legal and common law rights in the LH mark through trademark registrations,
continuous use, and fame. Complainant
registered the LH mark in
The Panel finds that Complainant’s rights in the LH mark
date back to the filing date of the German mark.
Complainant’s
LH mark is not generic.
Complainant established common law rights in the LH mark,
dating possibly to 1945.
Complainant’s common law rights in the LH mark predate
Respondent’s purchase of the registration of the <lh.com> domain name.
Respondent was not the entity that originally registered
the disputed domain name in 1995.
Respondent did not challenge Complainant’s allegations that
Respondent’s business using the <lh.com> mark was not created
until 2001.
Respondent concedes he purchased the disputed domain name and
the registration under the Policy refers to the date when the transfer from the
original registrant to Respondent took place.
Respondent engages
in the mass acquisition of two-letter and three-letter domain names.
Respondent’s business model involves the indiscriminate acquisition and use of as many such domain names as possible.
Respondent claims that “Hundreds if not thousands” of entities seek to use the “lh” mark [sic] and have offered Respondent up to $1,000,000 U.S. dollars for it.
The disputed domain name is identical to Complainant’s mark and is not
generic.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph 4(a) of the Policy requires Complainant to prove each of the
following three elements to obtain an order that a domain name should be
cancelled or transferred:
(1) the domain name registered by the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered and is
being used in bad faith.
Complainant alleges rights in the
LH mark through trademark registrations, continuous use, and fame. Complainant registered the LH mark in
Moreover, the Panel finds that Complainant’s rights in the
LH mark pursuant to Policy ¶ 4(a)(i) date back to the filing date of the German
mark. See Hershey
The Panel further finds that Complainant’s
LH mark is not generic. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7,
2007) (finding that because the complainant had received a trademark
registration for its VANCE mark, the respondent’s argument that the term was
generic failed under Policy ¶ 4(a)(i)).
Complainant also alleges common law rights through
wide-spread, long-time, continuous and prominent use dating back perhaps as far
back as 1945. The Panel finds that
Complainant made the necessary showing to prove the requisite secondary
meaning. Complainant established common law rights in the LH mark sufficient to
satisfy Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000)
(finding common law rights in a mark where its use was continuous and ongoing,
and secondary meaning was established); see
also Ass’n of Tex. Prof’l Educators,
Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006)
(holding that the complainant had demonstrated common law rights in the ATPE
mark through continuous use of the mark in connection with educational services
for over twenty-five years); see also Kahn Dev. Co. v. RealtyPROshop.com,
FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s
VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers
sufficient to establish common law rights where the complainant had been
continuously and extensively promoting a real estate development under the mark
for several years).
Complainant contends that its rights in the LH mark predate
Respondent’s registration of the <lh.com>
domain name because Complainant’s use of the LH mark possibly began as
early as 1945 and likely as early as 1953. Its registration rights definitely date
from as early as August 9, 1999.
Complainant also contends that Respondent was not the
entity that originally registered the disputed domain name in 1995; that
Respondent’s business was not
created until 2001; and, further, that the <lh.com>
domain name was under the control of a third party until July 13, 2004, when
Respondent, as Complainant puts it, “appear[ed] on the scene for <lh.com>.” The record appears to support Complainant’s
position in this regard; Respondent concedes he
purchased the disputed domain name, and the registration under the Policy
refers to the date when the transfer from the original registrant to Respondent
took place. See BWR Resources Ltd. v. Waitomo Assoc. Ltd.,
D2000-0861 (WIPO Oct. 4, 2000) (finding that registration refers to the date
when the respondent acquired the name from the person who first registered
it.); see also Gewista-Werbegesellschaft mbH v. Unasi Inc., D2005-1051
(WIPO Nov. 22, 2005) (“[H]aving reviewed
earlier decisions of panels, the Panel believes, that the fact, that the
Respondent did not register the disputed domain name itself but acquired it
from the previous owner, does not mean that the Respondent has not ‘registered’
the Domain Name within the meaning of the Policy since there is no reason to
differentiate between a direct registration and registration after transfer.
The domain name at issue was in fact “registered” within the meaning of the
Policy when it had been acquired by the Respondent [from a prior registrant].”). The Panel also
finds that Respondent could not possibly have been the registrant of the domain
name prior to Respondent’s formation.
Moreover, the Panel notes, Complainant’s rights in the LH mark need not predate Respondent’s registration of the disputed domain name in order to satisfy the requirements of Policy ¶ 4(a)(i). See Javacool Software Dev., LLC v. Elbanhawy Invs., FA 836772 (Nat. Arb. Forum Jan. 2, 2007) (holding that a complainant need not show that its rights in its mark predate the respondent’s registration of the disputed domain name in order to satisfy Policy ¶ 4(a)(i)); see also CDG v. WSM Domains, FA 933942 (Nat. Arb. Forum May 2, 2007) (“A plain reading of ¶ 4(a)(i) imposes no burden on a Complainant to demonstrate that it has either exclusive right to a mark or that such rights predate the registration of a domain name.”).
Complainant contends the <lh.com> domain name is identical to Complainant’s LH mark. The disputed domain name utilizes Complainant’s mark in its entirety adding only the generic top-level domain (“gTLD”), “.com.” Addition of a gTLD is irrelevant in a Policy ¶ 4(a)(i) analysis. The disputed domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The
Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case to support its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent is not
now and never has been commonly known by the <lh.com> domain name.
A search of the WHOIS record reveals the disputed domain name was
registered to “Future Media Architects, Inc.” Complainant also contends it has
never consented to Respondent’s use of the LH mark. Therefore, the Panel finds that Respondent
has no rights to or legitimate interests in the disputed domain name pursuant
to Policy ¶ 4(c)(ii). See St.
Complainant contends that Respondent currently uses the <lh.com> domain name to resolve to a web page that features Respondent’s OXiDE search engine and displays numerous sponsored links to third party websites relating to various subjects. Complainant contends that Respondent profits from receiving click-through fees for each misdirected user. The Panel finds that such use is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and that it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).
Complainant contends that mass acquisition of two-letter domain names does not demonstrate rights to or legitimate interests in a disputed domain name arising there from and the Panel finds that Respondent lacks rights to or legitimate interests in the <lh.com> domain name pursuant to Policy ¶ 4(a)(ii). See Bawag P.S.K. v. Future Media Architects, Inc., D2006-0534 (WIPO July 26, 2006). (“[T]he Respondent has made a business practice of registering as many three-letter domain names as it can acquire. It is evidently true that as to any one of them, Respondent uses the name to conduct business and may have acquired it from a transferor that had rights or legitimate interests in the name.”).
However, here, Respondent’s business model involves the indiscriminate acquisition and use of as many such domain names as possible. The traditional analyses of the rights to or legitimate interests element should not apply in gross when a registrant is not seeking to use any particular domain name to conduct business, is not otherwise known by that name, and has no interest in the nature of the transferor’s rights there from.
Thus, the Panel finds that Complainant sufficiently demonstrated that Respondent lacks rights or legitimate interests in the challenged domain name.
Further, Complainant, in its
Additional Submission, contends that Respondent offered to rent or lease the
disputed domain name for consideration well beyond Respondent’s out of pocket
costs. Respondent reported that he had
refused an offer of $1,000,000 for the “mark.”
The Panel finds that an offer to rent or lease the <lh.com> domain name supports findings of a lack of rights or
legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See George
Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007)
(holding that where a respondent makes a “disproportionate” offer to sell its
domain name registration to the complainant for more than its out-of-pocket
registration costs, there is additional evidence that the respondent lacks
rights and legitimate interests in the disputed domain name); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098
(Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the
respondent’s apparent willingness to dispose of its rights in the disputed domain
name suggested that it lacked rights or legitimate interests in the domain
name); cf. Kinko’s Inc. v. eToll, Inc.,
FA 94447 (Nat. Arb. Forum May 27, 2000) (finding that the respondent has no
rights or legitimate interests in the domain name where it appeared that the
domain name was registered for ultimate use by the complainant).
The
Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(ii).
Complainant contends Respondent has
engaged in a pattern of bad faith domain name registrations that prevent the
owner of a trademark from reflecting the mark in a corresponding domain name as
evidenced by previous UDRP disputes. See Calcar, Inc. v. Future Media Architects,
Inc., FA 1080147 (Nat. Arb. Forum Nov. 6, 2007); see also Nat’l Rifle Ass’n of Am. v. Future Media Architects, Inc., FA 781430 (Nat. Arb. Forum Oct. 13, 2006); see also QNX Software Sys. Ltd. v. Future Media Architects, Inc.,
D2003-0921 (WIPO Feb. 26, 2004). The
Panel may find Respondent has registered and used the disputed domain name in
bad faith pursuant to Policy ¶ 4(b)(ii).
See Westcoast Contempo Fashions Ltd. v.
Complainant, in its Additional
Submission, contends that Respondent offered to rent or lease the disputed
domain name for consideration well beyond Respondent’s out of pocket
costs. The Panel finds that an offer to
rent or lease the <lh.com>
domain name for an amount in excess of reasonable costs also supports findings of
bad faith registration and use pursuant to Policy ¶ 4(b)(i). See
Wake Forest Univ. v.
Complainant also contends, in its
Additional Submission, that Respondent’s business model essentially involves
directing confused Internet users, who are in search of a legitimate business,
to Respondent’s websites, which feature Respondent’s OXiDE search engine. The Panel
may infer that Respondent is profiting from such use through the collection of click-through
and pop-up fees for each redirected
Internet user. The Panel finds that such
use is likely to lead to confusion among Internet users as to Complainant’s sponsorship
of or affiliation with the resulting websites and supports findings of bad
faith registration and use pursuant to Policy ¶ 4(b)(iv). See
Bank of Am. Corp. v.
Moreover,
Complainant further alleges in its Additional Submission that some of
the links previously featured on Respondent’s resultant website operated in
competition with Complainant’s business. Complainant contends that after contact,
Respondent removed competing links to travel-related services but that does not
prevent the Panel from finding that such use constituted a disruption of
Complainant’s business and therefore supports findings of bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the
complainant’s business); see Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith
registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the
disputed domain name to operate a commercial search engine with links to the
complainant’s competitors); see
also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000)
(finding that the respondent has diverted business from the complainant to a
competitor’s website in violation of Policy ¶ 4(b)(iii)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum
May 14, 2001) (finding bad faith where the respondent used the domain name, for
commercial gain, to intentionally attract users to a direct competitor of the
complainant).
The Policy’s list of four circumstances demonstrating registration and use of a domain name in bad faith, merely illustrates possible situations that demonstrate bad faith. The Panel is permitted to look to the totality of the circumstances surrounding a registration and use of a domain name in determining whether bad faith is present. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”). Taking into consideration the totality of the circumstances, the Panel finds that Respondent registered and used the disputed domain name in bad faith.
The
Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(iii).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lh.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon.
Carolyn Marks Johnson, Chair
David Tatham, Panelist
Dated: April 17, 2008.
DISSENTING OPINION
I respectfully dissent. I simply do not believe it is likely that Respondent’s reasons for acquiring the disputed domain name were related in any way to Complainant or its mark, and therefore would not find that the domain name was registered in bad faith, as required by Paragraph 4(a)(iii) of the Policy.
I reach this conclusion primarily for two reasons: First, based upon the evidence before the Panel I doubt that Respondent was even aware of Complainant’s LH trademark when it acquired the domain name, and mere constructive notice of a trademark is insufficient under the Policy. See, e.g., LULU Enters. Inc. v. The eBrand Factory, D2006-1253 (WIPO Nov. 29, 2006). Second, usage of LH as Complainant’s mark appears to be quite rare compared to other senses in which LH is used, making it unlikely that Respondent would have selected the disputed domain name in order to target Complainant’s mark even if it had been aware of the mark at the time.
The majority is correct in viewing
the four sets of circumstances set forth in Paragraph 4(b) as merely exemplary
rather than exhaustive, and it is not inappropriate to consider the totality of
circumstances in evaluating whether a domain name registrant has acted in bad
faith. But such bad faith, to satisfy
Paragraph 4(a)(iii) of the Policy, still must be directed at the Complainant or
its mark. See, e.g., Asset Mktg. Sys., LLC v. Silver Lining, D2005-0560 (WIPO
July 22, 2005) (noting that “[t]he essence of the Complaint is an allegation of
bad faith, bad faith targeted at the Complainant”);
I would find that Complainant has failed to meet its burden of proving bad faith registration, and would deny the Complaint on that basis.
David E. Sorkin
Panelist
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