DECISION
Deutsche Lufthansa AG v. Private Eye
Claim Number: FA1706001734128
PARTIES
Complainant is Deutsche Lufthansa AG (“Complainant”), represented by Hajo Rauschhofer of Rauschhofer Rechtsanwälte, Germany. Respondent is Private Eye (“Respondent”), Norway.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lufthansatickets.us>, registered with NameCheap, Inc.
PANEL
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
The Honourable Neil Anthony Brown QC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the FORUM electronically on June 1, 2017; the FORUM received payment on June 1, 2017.
On June 1, 2017, NameCheap, Inc. confirmed by e-mail to the FORUM that the <lufthansatickets.us> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 2, 2017, the FORUM served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 22, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@lufthansatickets.us. Also on June 2, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the FORUM transmitted to the parties a Notification of Respondent Default.
On June 27, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the FORUM appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the FORUM has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the FORUM's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant
PARTIES' CONTENTIONS
A. Complainant
Complainant made the following contentions.
Complainant, Deutsche Lufthansa AG is one of the world’s leading airline companies. Complainant has rights in the LUFTHANSA mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,871,600, registered Jan. 3, 1995). See Compl. at Attached Ex. 9. Respondent’s <lufthansatickets.us> is identical or confusingly similar to Complainant’s mark as it includes the entirety of the LUFTHANSA mark in combination with the generic term “tickets” and the country-code top-level domain (“ccTLD”) “.us”.
Respondent does not have rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name and Complainant has not granted Respondent permission or license to use the LUFTHANSA mark for any purpose. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the website to attract users to participate in a “fake” lottery of Lufthansa tickets. Respondent attempts to phish for the personal data of the users while they link and share the lottery on Facebook.
Respondent has registered and used the disputed domain name in bad faith. First, Respondent is attempting to attract, for commercial gain, Internet users by creating confusion as to the source sponsorship, affiliation, or endorsement of the disputed domain name. Further, Respondent’s counterfeit use imputes an attempt to disrupt the legitimate business of Complainant pursuant to Policy ¶ 4(b)(iii). Finally, Respondent had actual knowledge of Complainant’s mark when registering the <lufthansatickets.us> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
1. Complainant is a German company and is the prominent international airline.
2. Complainant has established its trademark rights in the LUFTHANSA mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,871,600, registered Jan. 3, 1995).
3. Respondent registered the disputed domain name on May 24, 2017.
4. Respondent uses the website to which the domain name resolves to attract users to participate in a “fake” lottery of Lufthansa tickets and attempts to phish the personal data of the users while they link and share the lottery on Facebook.
DISCUSSION
Paragraph 15(a) of 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 that Complainant must 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
2. Respondent has no rights or legitimate interests in respect of the domain name; and
3. the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP decisions as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Identical and/or Confusingly Similar
The first issue that arises is whether Complainant has a trademark or service mark on which it can rely. Complainant claims rights in the LUFTHANSA mark based upon its registration with the USPTO (Reg. No. 1,871,600, registered Jan. 3, 1995). See Compl. at Attached Ex. 9. Registration with USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Therefore, the Panel may find that Complainant has rights in LUFTHANSA mark per Policy ¶ 4(a) (i).
The second issue that arises is whether the disputed <lufthansatickets.us> domain name is identical or confusingly similar to Complainant’s LUFTHANSA mark. Complainant submits that Respondent’s <lufthansatickets.us> is identical or confusingly similar to LUFTHANSA mark as it includes the entirety of the LUFTHANSA mark in combination with the generic term “tickets”. Respondent also adds the “ccTLD” “.us”. The omission of spacing and a mark and the addition of a ccTLD are insufficient to distinguish a domain name from a mark per Policy ¶ 4(a)(i). See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.”). Similarly, the inclusion of the generic term “tickets” in the Disputed Domain Name may not negate the confusing similarity between <lufthansatickets.us> and LUFTHANSA mark because Complainant submits correctly that they are merely descriptive and generic, describing services Complainant sells under the LUFTHANSA mark, and therefore do not defeat a claim of confusing similarity. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
Rights or Legitimate Interests
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (ForumSept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s LUFTHANSA mark and to use it in its domain name and has added the generic word “tickets” which does not detract from the confusing similarity that is clearly present but suggests that the domain name is referring to the ticketing services of Complainant;
(b) Respondent registered the disputed domain name on May 24, 2017;
(c) Respondent uses the website to which the domain name resolves to attract users to participate in a “fake” lottery of Lufthansa tickets and to phish the personal data of the users while they link and share the lottery on Facebook;
(d) Respondent engaged in the aforementioned activities without the permission or authority of Complainant;
(e) Complainant argues that Respondent has no rights or legitimate interests in the <lufthansatickets.us> domain name as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the LUFTHANSA mark in any way. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information of record identifies Respondent as “Private Eye.” Additionally, lack of evidence in the record to indicate that Respondent had been authorized to register a domain name using Complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel may therefore find under Policy ¶ 4(c)(iii) that Respondent has not been commonly known by the disputed domain name;
(f)There is nothing in the available evidence which indicates that Respondent has rights in a mark identical to the disputed domain name, which would serve to satisfy Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Therefore, the Panel concludes that Respondent has failed Policy ¶ 4(c)(i);
(g) Complainant further argues Respondent’s lack of rights or legitimate interests in the disputed domain name is evinced by its failure to use the bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant contends that Respondent’s use of the website is to attract users to participate in a “fake” lottery of Complainant’s tickets to phish the personal data of users. Panels have found that the unauthorized resale of Complainant’s goods (counterfeit or otherwise) is neither a Policy ¶4 (c)(ii) or Policy ¶4 (c)(iv). See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv).”). Here, the Panel notes pages 8–11 of the Complaint demonstrating the phishing survey offered by Respondent, and the social media feedback that invariably harms Complainant’s reputation. Therefore, the Panel finds that Respondent’s use of the domain name is not a bona fide offering of goods and services nor a legitimate noncommercial or fair use.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
Registration or Use in Bad Faith
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant claims Respondent’s website prominently features the LUFTHANSA mark, and attempts to carry out unauthorized sales of counterfeit LUFTHANSA airline tickets—disrupting Complainant’s business. Sale of counterfeit goods may be evidence of bad faith under Policy ¶ 4(b)(iii). See H-D U.S.A., LLC v. Linchunming / linchunming, FA1411001589214 (Forum Dec. 22, 2014) (“As mentioned above, Respondent uses the domain name to promote counterfeit goods like those offered by Complainant. Doing so disrupts Complainant’s business and demonstrates Respondent’s bad faith under Policy ¶ 4(b)(iii).”). The Panel is reminded of Attached Exhibit 10, which demonstrates Respondent’s alleged attempt to sell counterfeit iterations of Complainant’s airline tickets. The Panel agrees that Respondent’s attempt to sell goods branded with Complainant’s mark is a clear attempt to disrupt Complainant’s legitimate business pursuant to Policy ¶ 4(b)(iii).
Secondly, Complainant submits that Respondent’s domain name is confusingly similar to Complainant’s mark, as Internet users accessing Respondent’s domain name may become confused as to Complainant’s affiliation with the resulting commercial website. Where a respondent endeavors to conduct fake surveys or otherwise phish for Internet users’ personal information, commercial gain is a logical reason for such deceptive use, and therefore bad faith under Policy ¶ 4(b)(iv) may be found. See Capital One Financial Corp. v. Mai Erne / Hara Partners, FA1505001617710 (Forum June 12, 2015) (“Here, the Panel agrees that Internet users’ completion of the fields included on the resolving site in question is equivalent to a survey, and conjures a similar presumed reward/payoff in the minds of misled Internet users and therefore is an indication of Policy ¶ 4(b)(iv) bad faith.”). Complainant submits that Respondent capitalizes on visitors’ mistaken belief that they are accessing legitimate products and/or services. The Panel agrees that this business model constitutes registration and use of a domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Thirdly, Complainant claims that Respondent had actual knowledge of Complainant’s LUFTHANSA mark when registering the <lufthansatickets.us> domain name because Respondent registered the disputed domain name using an added generic term coupled with Complainant’s LUFTHANSA mark, which is famous and familiar to countless consumers. Actual knowledge may be proven through a totality of circumstances. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). As Complainant provides evidence of Respondent creating confusion as to Complainant’s connection with the website by selling counterfeit products and submits that the domain name includes Complainant’s mark in its entirety within the disputed domain name, the Panel agrees that actual knowledge exists—which supports a finding of bad faith under Policy ¶ 4(a)(iii).
Fifthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the LUFTHANSA mark and in view of the conduct that Respondent engaged in when using the domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lufthansatickets.us> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 28,2017
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