Deutsche Lufthansa AG v. Dock Holbrook
Claim Number: FA2205001995398
Complainant is Deutsche Lufthansa AG (“Complainant”), represented by Dr. Hajo Rauschhofer of Specialist Solicitor for Information Technology Law, Germany. Respondent is Dock Holbrook (“Respondent”), Indiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lufthansaflight.com>, registered with NameCheap, Inc.
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 Honorable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 9, 2022; the Forum received payment on May 9, 2022.
On May 9, 2022, NameCheap, Inc. confirmed by e-mail to the Forum that the <lufthansaflight.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 10, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 2022 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@lufthansaflight.com. Also on May 10, 2022, 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 6, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honorable 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 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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant is a Germany-based global airline company. Complainant claims rights in the LUFTHANSA mark through its registration with the United States Patent and Trademark Office (“USPTO”), among other trademark registrations in multiple countries. (e.g., Reg. No. 1,371,779 registered November 19, 1985). See Compl. Annexes 4-13. The disputed domain name <lufthansaflight.com> is confusingly similar to the mark because it incorporates wholly Complainant’s LUFTHANSA mark, differing only through the addition of the description term “flight” and the addition of the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <lufthansaflight.com> domain name. Respondent has not been authorized by Complainant to use the LUFTHANSA mark in any way, nor is Respondent commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass off as Complainant and offer competing services.
Respondent registered and uses the <lufthansaflight.com> domain name in bad faith. Respondent uses the disputed domain name to pass off as Complainant to disrupt Complainant’s business for personal gain. Additionally, Respondent had actual knowledge of Complainant’s rights in the LUFTHANSA mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is the prominent Germany-based global airline company.
2. Complainant has established its rights in the LUFTHANSA mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”), among other trademark registrations in multiple countries. (e.g., Reg. No. 1,371,779 registered November 19, 1985).
3. Respondent registered the <lufthansaflight.com> domain name on March 30, 2022.
4. Respondent uses the disputed domain name to pass itself off as Complainant and to offer competing services.
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.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights to the LUFTHANSA mark through its registration with the USPTO, among others. (e.g., Reg. No. 1,371,779 registered November 19, 1985). See Compl. Annexes 4-13. Registration of a mark with a trademark agency such as the USPTO is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). As Complainant provides evidence of registration with the USPTO, the Panel finds Complainant has established its rights in the LUFTHANSA mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s LUFTHANSA mark. Complainant argues that Respondent’s <lufthansaflight.com> domain name is confusingly similar to Complainant’s LUFTHANSA mark because it incorporates wholly Complainant’s mark and is merely followed by the term “flight”, before also adding the “.com” gTLD. The addition of a generic or descriptive phrase and gTLD generally fails to distinguish a disputed domain name sufficiently from a mark per Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists 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 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.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
(a) Respondent has chosen to take Complainant’s LUFTHANSA mark and to use it in its domain name adding only the word “flight” to the mark;
(b) Respondent registered the domain name on March 30, 2022;
(c) Respondent uses the disputed domain name to pass itself of as Complainant and to offer competing services;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues Respondent lacks rights or legitimate interest in the <lufthansaflight.com> as Respondent has not been given license or consent to use the LUFTHANSA mark or register domain names using Complainant’s mark. Furthermore, where a response is lacking, WHOIS information and other evidence may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information associated with the disputed domain name does not indicate that respondent is known by the disputed domain name. See Compl. Annex 2. Rather, Complainant is known by the name “Dock Holbrook.” See Registrar Verification Email. Respondent was not given rights to use the LUFTHANSA mark nor was Respondent commonly known by the disputed domain name. Therefore, as the Panel agrees, it finds Respondent is not commonly known by the disputed domain name and was not granted rights to use the domain name per Policy ¶ 4(c)(ii);
(f) Complainant further argues that Respondent does not use the <lufthansaflight.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Using a disputed domain name to pass off as a Complainant and offer competing services is generally not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or (iii). See Coryn Group, Inc. v. Media Insight, FA 198959 (Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks); see also DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant alleges that Respondent purports to offer services with the intention of confusing Internet users into creating a false association with Complainant and offers competing services in furtherance of that confusion. See Compl. Annexes 18-21. Therefore, as the Panel agrees, it finds that Respondent failed to make a bona fide offering of goods or services or legitimate noncommercial or fair use per Policy ¶ 4(c)(i) or (iii).
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 does not have a right or legitimate interest in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
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 argues that Respondent registered and uses the <lufthansaflight.com> domain name in bad faith because Respondent disrupts Complainant’s business and attempts to attract Internet users to its competing website for commercial gain. Where a respondent uses a disputed domain name to pass itself off as a complainant, the Panel may find evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and an attempt to attract users for commercial gain under Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant.”). Here, Complainant provides evidence that Respondent’s resolving website not only mimics Complainant’s, but also offers competing services. See Compl. Annexes 18-21. As the Panel agrees, it finds that Respondent registered and used the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
Secondly, Complainant argues that Respondent had actual knowledge of Complainant’s rights in the LUFTHANSA mark at the time of registering the <lufthansaflight.com> domain name, based on the notoriety of the mark, as well as Respondent’s specific use of the mark. The Panel finds that a Respondent may be found to have had actual knowledge of a Complainant's rights in a mark prior to registering a disputed domain name by looking at the fame of the mark, as well as the use of the mark by Respondent, and that consequently actual knowledge can adequately demonstrate bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). To support this submission, Complainant points to its trademark registrations, along with the fact that Respondent impersonates Complainant through the disputed domain name as well as the fame of Complainant’s mark. See Compl. Annexes 4-13; see also Compl. Annexes 18-21. As such, the Panel finds that Respondent had actual knowledge of Complainant’s right in its mark, which supports a finding of bad faith under Policy ¶ 4(a)(iii).
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lufthansaflight.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Neil Anthony Brown QC
Panelist
Dated: June 7, 2022
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page