Deutsche Lufthansa AG v. Mike Butorin
Claim Number: FA1805001788889
Complainant is Deutsche Lufthansa AG (“Complainant”), represented by Hajo Rauschhofer of Rauschhofer Rechtsanwälte, Germany. Respondent is Mike Butorin (“Respondent”), Russia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lufthansa-airlines.org>, registered with Moniker Online Services 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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 28, 2018; the Forum received payment on May 28, 2018.
On June 1, 2018, Moniker Online Services LLC confirmed by e-mail to the Forum that the <lufthansa-airlines.org> domain name is registered with Moniker Online Services LLC and that Respondent is the current registrant of the name. Moniker Online Services LLC has verified that Respondent is bound by the Moniker Online Services 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 June 13, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 3, 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 email@example.com. Also on June 13, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 6, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David A. Einhorn 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.
Complainant registered the LUFTHANSA mark with multiple trademark organizations, including the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,994,296, registered Aug. 20, 1996) as well as the German Patent and Trademark Office (“GPTMO”) (e.g. Reg. No. 990,835, registered Sept. 25, 1979). Respondent’s <lufthansa-airlines.org> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the mark before appending a hyphen, and the descriptive term “airlines.”
Respondent has no rights or legitimate interests in the <lufthansa-airlines.org> 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 uses the disputed domain name to provide airline tickets in competition with Complainant for Respondent’s commercial gain.
Respondent registered and uses the <lufthansa-airlines.org> domain name in bad faith. Respondent intentionally attracts, for commercial gain, Internet users otherwise seeking Complainant to Respondent’s own website. Respondent had
actual knowledge of Complainant’s rights in the LUFTHANSA mark prior to registration of the disputed domain name.
Respondent failed to submit a response in this proceeding. The Panel notes that Respondent registered the <lufthansa-airlines.org> domain name on September 18, 2015.
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 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.”).
Complainant asserts rights in the LUFTHANSA mark based upon registration with the USPTO (e.g. Reg. No. 1,994,296, registered Aug. 20, 1996) as well as the GPTMO (e.g. Reg. No. 990,835, registered Sept. 25, 1979). Registration of a mark with multiple trademark authorities sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). Accordingly, the Panel finds that Complainant has established rights in the LUFTHANSA mark.
Next, Complainant argues that Respondent’s <lufthansa-airlines.org> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the mark before appending a hyphen, and the descriptive term “airlines.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See ADP, LLC. v. Ella Magal, FA 1738958 (Forum Aug. 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”).The Panel therefore finds that the <lufthansa-airlines.org> domain name is confusingly similar to the LUFTHANSA mark under Policy ¶4(a)(i).
Complainant contends that Respondent has no rights or legitimate interests in the <lufthansa-airlines.org> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). The WHOIS identifies “Mike Butorin / Mike Butorin” as the registrant. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the LUFTHANSA mark. Panels may use such assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA620789 (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). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the disputed domain name prior to its registration, and Complainant has not given Respondent permission to use the disputed domain name. Accordingly, the Panel agrees that Respondent is not commonly known by the <lufthansa-airlines.org> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent uses the <lufthansa-airlines.org> domain name to offer services in direct competition with Complainant. Using a confusingly similar domain name that resolves in a webpage that directly competes with Complainant fails to provide a bona fide offering of goods or services. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Complainant asserts, and the Panel agrees, that Respondent uses the disputed domain name to provide airline tickets for sale in competition with Complainant’s own ticket sales business and appropriates elements of Complainant’s design to accpmplish this. The Panel therefore finds that Respondent has failed to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <lufthansa-airlines.org> domain name in bad faith by intercepting users seeking Complainant’s services and commercially benefitting via the offer of competing services. Using a confusingly similar domain name to offer services in direct competition with a complainant for a registrant’s benefit can evince a finding of bad faith pursuant to Policy ¶ 4(b)(iv). See Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own
financial management and consulting services in competition with Complainant.”). Complainant argues that Respondent chose the disputed domain name in an attempt to capitalize on the goodwill of the Complainant and to divert Internet users to Respondent’s website for Respondent’s commercial gain via ticket sales. The Panel agrees that Respondent attempted to commercially benefit off Complainant’s mark in bad faith for the purposes of Policy ¶ 4(b)(iv).
Further, Complainant claims that Respondent had actual notice of Complainant’s LUFTHANSA mark. Complainant contends that Respondent must have had actual knowledge of Complainant’s rights in the LUFTHANSA mark based upon the distinctive nature of the mark, Respondent’s registration of a domain name wholly incorporating the mark 35 years after Complainant’s earliest registration, and the inclusion of the term “airlines” in the disputed domain name which Complainant asserts Respondent would not have included but for Respondent’s actual knowledge of Complainant and the use of the LUFTHANSA mark. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy
Thus, Complainant has also 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 <lufthansa-airlines.org> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: July 18, 2018
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