Deutsche Lufthansa AG v. Mohamed elkassaby
Claim Number: FA1808001801815
Complainant is Deutsche Lufthansa AG (“Complainant”), represented by Hajo Rauschhofer of Rauschhofer Rechtsanwälte, Germany. Respondent is Mohamed elkassaby (“Respondent”), Egypt.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <starallianceonline.com>, registered with GoDaddy.com, LLC.
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.
Nicholas J.T. Smith as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 17, 2018; the Forum received payment on August 17, 2018.
On August 20, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <starallianceonline.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 22, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 11, 2018 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@starallianceonline.com. Also on August 22, 2018, 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.
A timely Response was received and determined to be complete on September 10, 2018.
On September 14, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Nicholas J.T. Smith 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 for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant asserts rights in the STAR ALLIANCE mark based upon registration with both the European Union Intellectual Property Office (“EUIPO”) and the United States Patent and Trademark Office (“USPTO”) (e.g., EUIPO—Reg. No. 000419887, registered Dec. 4, 1998; USPTO—Reg. No. 2,678,370, registered Jan. 21, 2003). Respondent’s <starallianceonline.com> domain name is confusingly similar to Complainant’s mark as the entirety of the mark is incorporated prior to the addition of the word “online” and the “.com” generic top-level-domain (“gTLD”).
Respondent has no rights or legitimate interests in the <starallianceonline.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent hosts pay-per-click links related to Complainant’s business.
Respondent registered and uses the <starallianceonline.com> domain name in bad faith. Respondent hosts pay-per-click links related to Complainant’s business for Respondent’s commercial gain or passively holds the domain name. Respondent had actual knowledge of Complainant’s rights in the STAR ALLIANCE marks prior to registration of the disputed domain name.
B. Respondent
The Response makes no claims in respect of the <starallianceonline.com> domain name, rather the Response refers to the domain names <staralliance.tours>, <staralliance.world> and <staralliance.group>, the subject of a different claim. Respondent states that as it operates a travel agency known as Star Alliance Tours that sells services in Egypt and Beirut. Response annexes documents certifying the entity from the Egyptian Ministry of Tourism and the International Air Travel Association.
Complainant holds trademark rights for the STAR ALLIANCE mark. The Domain Name is confusingly similar to Complainant’s STAR ALLIANCE mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <starallianceonline.com> domain name and that Respondent registered and uses the Domain Name in bad faith.
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 and is being used in bad faith.
Complainant has rights in the STAR ALLIANCE mark based upon registration with the EUIPO and the USPTO (e.g., EUIPO—Reg. No. 000419887, registered Dec. 4, 1998; USPTO—Reg. No. 2,678,370, registered Jan. 21, 2003). Registration with multiple trademark agencies is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (stating, “Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”).
Complainant contends that the Domain Name is identical or confusingly similar to the STAR ALLIANCE mark as it merely adds the term “online” along with the gTLD “.com” to Complainant’s fully incorporated mark. The Panel finds that the Domain Name is confusingly similar to the STAR ALLIANCE mark; 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.) See also Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the Domain Name. In order for Complainant to succeed under this element, it must first make a prima facie case that Respondent lacks rights and legitimate interests in the 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) and AOL LLC v. Gerberg, FA 780200 (Forum Sept. 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 holds that Complainant has made out a prima facie case.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name as Respondent is not commonly known by the Star Alliance name, nor has Complainant authorized Respondent to use the STAR ALLIANCE mark. Respondent has no relationship, affiliation, connection, endorsement or association with Complainant. WHOIS information can help support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). The WHOIS lists “Mohamed elkassaby” as registrant of record. Coupled with Complainant’s unrebutted assertions as to absence of any affiliation between the parties, the Panel finds that Respondent is not commonly known by the Domain Name in accordance with Policy ¶ 4(c)(ii).
The Domain Name resolves to a parking page that has a photo of an airplane wing and the words “Coming soon 19671” and a logo primarily consisting of the words “StarAlliance” with the much smaller words “Online.com” above. By itself the use of the Domain Name for a parking page is not enough to establish rights or legitimate interests. Respondent argues that the <starallianceonline.com> domain name is used in respect of an Egyptian tourism company known as Star Alliance Tours. However Respondent has provided no evidence that it has used that domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services (or has made demonstrable preparations to do so) or that it is commonly known as <starallianceonline.com> or a corresponding name; rather all evidence provided in the Response relates to the trade name Star Alliance Tours and domain name <staralliancetours.com>. Furthermore Respondent, other than providing details relating to an initial business license, has provided no documentary evidence of Star Alliance Tours being an actual trading entity that presently offers goods and services under the Domain Name or any related name; the <starallianceonline.com> domain name resolves to a parking page and there is no other documentary evidence of Respondent trading.
In summary, Respondent’s evidence is insufficient in showing that it has rights or legitimate interests in the <starallianceonline.com> domain name.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
The Panel finds that Respondent had actual knowledge of Complainant’s STAR ALLIANCE mark since Respondent purports to be in the travel industry and Complainant’s STAR ALLIANCE mark is very well known in the travel industry, with Star Alliance being one of the leading airline alliances offering more than 18,400 daily flights to 1,300 airports in 191 countries. The Domain Name was registered on April 18, 2017, post-dating the registration of the STAR ALLIANCE mark. In the absence of rights or legitimate interests of its own this demonstrates registration in bad faith under Policy ¶ 4(a)(iii).
Complainant argues that Respondent registered and uses the <starallianceonline.com> domain name in bad faith by creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the domain name to commercially benefit by offering competing goods or services. While the <starallianceonline.com> domain name presently resolves to a parking page, this page contains contact details and both reproduces the STAR ALLIANCE Mark and, at least implicitly, promotes the offering of travel and airline services, being services consumers may associate with those offered by Complainant. See also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <starallianceonline.com> domain name be TRANSFERRED from Respondent to Complainant.
Nicholas J.T. Smith, Panelist
Dated: September 17, 2018
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