Deutsche Lufthansa AG v. wang wen zhou
Claim Number: FA2105001943684
Complainant is Deutsche Lufthansa AG (“Complainant”), represented by Dr. Hajo Rauschhofer of Rauschhofer Kanzlei für IT-Recht, Germany. Respondent is wang wen zhou (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lufthansa-efly.com>, registered with PSI-USA, Inc. dba Domain Robot.
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 3, 2021; the Forum received payment on May 3, 2021.
On May 4, 2021, PSI-USA, Inc. dba Domain Robot confirmed by e-mail to the Forum that the <lufthansa-efly.com> domain name is registered with PSI-USA, Inc. dba Domain Robot and that Respondent is the current registrant of the name. PSI-USA, Inc. dba Domain Robot has verified that Respondent is bound by the PSI-USA, Inc. dba Domain Robot 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 5, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 25, 2021 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@lufthansa-efly.com. Also on May 5, 2021, 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 May 27, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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, Deutsche Lufthansa AG, operates an international airline company. Complainant has rights in the trademark LUFTHANSA through its registration with Germany’s Patent and Trade Mark Office (“GPTMO”), dating back to 1956, and its registration with other national and regional trademark offices in various countries. Respondent’s <lufthansa-efly.com> domain name, registered on April 4, 2021, is confusing similar to Complainant’s LUFTHANSA mark, only differing by the addition of a hyphen and the term “efly,” referring to Complainant’s own eFly services. The domain name also adds the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <lufthansa-efly.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the LUFTHANSA mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor does it make a legitimate noncommercial or fair use thereof. Instead, Respondent uses the disputed domain name to create the impression that Respondent is Complainant or is somehow affiliated to Complainant to advertise an unrelated lottery service to Internet users.
Respondent registered and uses the <lufthansa-efly.com> domain name in bad faith as Respondent disrupts Complainant’s business by leading Internet users to a website advertising an unrelated lottery which likely generates commercial gain for Respondent. Additionally, Respondent must have possessed actual knowledge of Complainant’s rights in the LUFTHANSA mark prior to registering the disputed domain name based on the fame of the mark and the use of the term eFly in the domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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.
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 and evidence 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 and supported 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”).
Complainant asserts rights in the LUFTHANSA mark through its registration with the GPTMO and other national trademark offices. Registration of a mark with a trademark agency, such as the GPTMO, is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See teamtechnik Maschinen und Anlagen GmbH v. Edgar Bechtle / Ebechtle LLC, FA 1652306 (Forum Jan. 28, 2016) (finding rights in the TEAMTECHNIK mark pursuant to Complainant’s trademark registration with GPTMO). Complainant provides screenshots from the GPTMO, WIPO, and EUTM websites evidencing its claimed trademark registrations. Thus, the Panel finds that Complainant has rights in the LUFTHANSA mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <lufthansa-efly.com> domain name is confusingly similar to Complainant’s LUFTHANSA mark, only differing by the addition of a hyphen, the term “efly,” and the “.com” gTLD. Such changes do not necessarily negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Svensson Viljae, FA 1784650 (Forum June 1, 2018) (finding confusing similarity where “[t]he disputed domain name <skechers-outlet.com> adds a hyphen and the generic term ‘outlet’ to Complainant's registered SKECHERS mark, and appends the ‘.com’ top-level domain.”). Notably, Complainant has used the term “eFly” in its own business for online and mobile flight check-in and it submits a screenshot from its website that promotes such branded services. Thus, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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”).
Complainant argues that Respondent lacks rights and legitimate interests in the <lufthansa-efly.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the LUFTHANSA mark. In considering this issue, relevant WHOIS information can demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Here, the WHOIS information of record identifies “wang wen zhou” as the registrant of the disputed domain name. As Respondent has not filed a Response or made any other submission in this case, nothing in the record rebuts Complainant’s contention that Respondent is not commonly known by the disputed domain name and that it never authorized Respondent to use the LUFTHANSA mark. Thus, the Panel finds no ground upon which to find that Respondent has any rights or legitimate interest in the disputed domain name under Policy ¶ 4(c)(ii).
Next, Complainant argues that Respondent does not use the <lufthansa-efly.com> domain name for any bona fide offering of goods or services or that it makes a legitimate noncommercial or fair use thereof. Instead, the website of the disputed domain name encourages users to visit another website at <9505t.com> that advertises a lottery service which appears to have no relationship with Complainant or its business. Previous Panels have held that such use does not constitute either a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Materia, Inc. v. Michele Dinoia, FA 1627209 (Forum Aug. 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”) Complainant provides screenshots of the resolving website for the disputed domain name, whose minimal content encourages Internet users to click a button which leads to the <9505t.com> site as mentioned above. Screenshots of the <9505t.com> site are also provided and confirm that this site offers a lottery service to potential customers and has no apparent connection with Complainant or its business. Thus, Complainant has made out a prima facie case which has gone unrebutted by Respondent and, upon a preponderance of the available evidence, the Panel cannot conclude that Respondent has any rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
Complainant asserts that Respondent registered the <lufthansa-efly.com> domain name with actual knowledge of Complainant’s rights in the LUFTHANSA mark. Under Policy ¶ 4(a)(iii), actual knowledge of another’s famous trademark can form a solid foundation upon which to build a case for bad faith registration of a disputed domain name. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). Here, Complainant contends that it is one of the largest airline companies in the world, and that Respondent registered the disputed domain name to drive additional traffic to the unrelated lottery page which it redirects to. The Complaint states that “LUFTHANSA is a famous and well-known trademark” and that “because of the worldwide fame of Complainant’s Lufthansa mark, it is certain that Respondent had actual knowledge of that mark when he registered the Domain Name.” Presumably in support of these statements Complainant provides extensive evidence of its global trademark registrations. However, it only submits a single screenshot from one of its own websites showing use of the mark and the term “eFly”. No evidence is provided to show the extent of Complainant’s advertising and marketing efforts or whether such efforts have resulted in the claimed famous reputation with the public. Trademark registrations, alone, while sufficient to show the existence of trademark rights, do not, on their own, show the extent of a mark’s reputation. See Chevra Hatzalah Inc. v. Registration Private, Domains By Proxy, LLC / Susan Green, Marketing Specialty, D2021-0524 (WIPO Apr. 28, 2021) (“trademark registrations do not ipso facto conjure up fame, notoriety or public recognition of a mark as associated with a single source. It was incumbent on Complainant to show that consumers in March 2001 would likely perceive the disputed domain name … as more like than not associated exclusively with Complainant.”) However, Complaint does cite numerous prior UDRP decisions in which its mark has been deemed well-known by prior Panelists. See, e.g., Deutsche Lufthansa AG v. Khanh To Binh, FA 1825277 (Forum Feb. 18, 2019) (“Complainant argues that based on the fame of Complainant’s mark, Respondent had knowledge of Complainant’s LUFTHANSA mark at the time of registration. The Panel agrees and holds that Respondent had actual knowledge of the LUFTHANSA mark at the time Respondent registered the <lufthansa-vietnam.com> domain name…“) Finally, the Panel agrees with Complainant’s assertion that it is extremely unlikely that Respondent would have chosen the coined term “Lufthansa” and paired it with another unusual term “eFly” that is also used by Complainant as part of its online services. As such, the Panel finds it highly likely that Respondent had actual knowledge of Complainant’s mark at the time it registered the <lufthansa-efly.com> domain name.
Complainant further claims that Respondent registered and uses the <lufthansa-efly.com> domain name in bad faith as Respondent disrupts Complainant’s business by leading Internet users to a website advertising an unrelated lottery service. Such use may constitute bad faith through both disruption and attraction to commercial gain by a likelihood of confusion with the asserted mark under Policy ¶¶ 4(b)(iii) and (iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Dovetail Ventures, LLC v. Klayton Thorpe, FA 1625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained). As previously noted, Complainant provides screenshots of the resolving website for the disputed domain name and of the additional <9505t.com> site at which unrelated lottery services are promoted. Respondent has not participated in this case and so does not provide any other explanation for its actions. Based on the evidence presented in this case, the Panel therefore finds that Respondent registered and uses the disputed domain in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).
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-efly.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: May 28, 2021
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