Deutsche Lufthansa AG v. Harley Street Health and Beauty
Claim Number: FA1601001655422
Complainant: Deutsche Lufthansa AG of Frankfurt, Germany.
Complainant Representative: Rauschhofer Rechtsanwälte of Wiesbaden, Germany.
Respondent: Harley Street Health and Beauty of Solihull, West Midlands, International, GB.
REGISTRIES and REGISTRARS
Registries: Top Level Design, LLC
Registrars: eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.
Prathiba M. Singh, as Examiner.
Complainant submitted: January 7, 2016
Commencement: January 7, 2016
Default Date: January 22, 2016
Having reviewed the communication records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
The Complainant submits that it is the owner of the famous and well known trademark “LUFTHANSA” which is operating their businesses worldwide. The Complainant further submits that “Luftanasa” is known for its creative design and corporate identity and also offers jobs to design engineers. Therefore, there is a connection between Lufthansa and design.
The Complainant has alleged that the Respondent’s domain name “lufthansa.design” is identical and/or confusing similar to its registered trademark “LUFTHANSA”, the only difference being the suffix “.design”.
The Complainant further submits that the Respondent has no rights or legitimate interest in respect of the domain name and has no right to use the trademark “LUFTHANSA” without permission. The Respondent has no identical trademark nor offers related services. The Respondent’s domain name has been registered and is being used in bad faith in order to suggest to the Internet user a connection between the Complainant’s products and Respondent’s domain which does not exist. Therefore, the visitors who search for Lufthansa and its services are being misled.
Furthermore, the Complainant submits that the Respondents e-mail “transfers-auth@” is linked to several different domains, indicating that the Respondent has intentionally attempted to attract for commercial gain Internet users to its website and selling domain names.
Even though the Respondent has defaulted, URS Procedure 1.2.6, requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
“1.2.6.1. that the registered domain name is identical or confusingly similar to a word mark: (i) for which the Complainant holds a valid national or regional registration and this is in current use; or (ii) that has been validated through court proceedings; or (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
a. Use can be shown by demonstrating the evidence of use – which can be a declaration and one specimen of current use in commerce
- Was submitted to, and validated by, the Trademark Clearinghouse.
b. Proof of use may also be submitted directly with the URS complaint
And
1.2.6.2 that the Registrant has no legitimate right or interest to the domain name; and
1.2.6.3 that the domain was registered and is being used in bad faith.”
The three elements are addressed by the Panel below:
1. Identical or Confusingly Similar:
The Complainant has established that its trademark “LUFTHANSA” is a famous and well known trademark. The Complainant has obtained numerous trademark registrations for “Lufthansa” and uses the same internationally. Some of the registrations are as follows:-
|
S. No. |
Registration No. |
Date of Registration |
Date of Expiry |
|
|
United States registration No.1994296 |
August 20, 1996 |
- |
|
|
CTM registration No. 001212539 |
February 26, 2001 |
June 11, 2019 |
|
|
Deutsches registration No. 001210665 (with the logo) |
November 29, 2000 |
June 11, 2019 |
|
|
WIPO Registration No. 722971 |
August 5, 1999 |
August 5, 2019 |
Further, the Complainant has provided NAF Panel Decisions which have recognised and protected the Complainant’s registered trademark “LUFTHANSA” (See Lufthansa v. Chesnel FA1566251, Lufthansa v. Gandiyork FA1549328, Lufthansa v. Ivanov FA1554367 and Lufthansa v. Keelakarai FA1549329). Thus, the mark LUFTHANSA is an invented mark deserving the highest degree of protection.
The Respondent has registered the domain name in dispute, i.e., <LUFTHANSA.DESIGN>, thus, wholly incorporating the trademark “LUFTHANSA” of the Complainant, which is found to sufficiently establish identity/confusing similarity. In fact, the registering of a domain name with the `.design’ extension adds to confusion as to origin, affiliation and sponsorship between the Complainant and the Respondent. There is thus identical and/or confusing similarity between the Complainant’s mark and the Respondent’s domain name.
2. No Rights or Legitimate Interests:
The Complainant has several trademark registrations for the mark “LUFTHANSA” and has been using the trademark for a long time. Furthermore, the Complainant has provided National Arbitration Forum decisions that have given judicial strength to the registered trademark of the Complainant.
The Complainant has shown that the Respondent is not making legitimate use of the domain name ‘lufthansa.design’. Moreover, the Complainant has not authorized or given any permission to the Respondent to use the LUFTHANSA trademark. As the Respondent has not filed a Response, the Respondent has not proved its rights or legitimate interests in the trademark. The Complainant has thus proved that the Respondent does not have any rights or legitimate interests in the domain name.
3. Domain is Registered and Used in Bad Faith:
The Respondent registered the domain name <lufthansa.design> on December 22, 2015. URS 1.2.6.3 elaborates on the circumstances that entail bad faith registration and use, which is reproduced below:
“1.2.6.3. ….
a. Registrant has registered or 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 documented out-of-pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that the Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s 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 Registrant’s website or location or of a product or service on that website or location.”
Pursuant to the URS Procedure, the Complainant has to establish that the Respondent registered and used the domain name in bad faith. It is seen that the Respondent is not making use of this website with bona fide offerings of goods or services in any commerce. The website of the Respondent does not exist and is parked with the message “lufthansa.design is not available.”
Furthermore, the Respondent’s e-mail ids “transfers-auth@nemes.co.uk” is linked to 184,143 \ domain names which is evident from a WHOIS search. This leads to a clear inference that the Respondents have acquired the domain name “lufthansa.design” for the purpose of selling, renting or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark at a profit. The complainant has also established that the trademark of the Complainant “Lufthansa” is known for its creative design specifically in relation to aircraft interiors. Thus, the Respondent’s registration and use of the impugned domain name by the Respondent is in bad faith.
As the Respondent has defaulted, and proof of service is evident, the Examiner has based the above findings on prima facie evidence and conclusions as provided by the Complainant.
After reviewing the Complainant’s submissions, the Examiner determines that
the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.
<LUFTHANSA.DESIGN>
Prathiba M. Singh, Examiner
Dated: January 22, 2016
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