WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutsche Lufthansa AG v Postech
Case No. D2001-1251
1. The Parties
The Complainant is Deutsche Lufthansa Aktiengesellschaft, a German Corporation having its principal place of business in Cologne, Germany. The Complainant is represented by Dr. Andrea Jaeger-Lenz, of the firm Latham & Watkins Schön Nolte, of Hamburg.
The Respondent is POSTECH, POSTECH IE CAMlab San31 Hyojadong Namgu, of Pohang, Kyungbuk 790-784, Replublic of Korea. The Respondent is represented by the domain name registrant�s administrative contact, Hong Hee Dong.
2. The Domain Name and Registrar
The domain name at issue is ("the domain name"). The Registrar with which the domain name is registered ("the Registrar") is Dotster, Inc, of Long View, Washington 98632, United States of America. The domain name was re-registered by the Respondent on October 4, 2001.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The Complaint was received by the Center on October 16, 2001 (email) and October 19, 2001 (hard copy).
On October 19, 2001, the Center sought confirmation of registration details from the Registrar.
On November 1, 2001, the Registrar confirmed that the domain name is registered with it, and that the Respondent is the registrant. The Registrar also confirmed that the Policy applies to the registration agreement, and that the language of that agreement is English. The status of the domain name was reported as "active". The Registrar advised that the administrative and technical contact for the domain name was Mr. Hee Dong, Hong, of the same address as the registrant.
Having satisfied itself as to procedural aspects of the Complaint, on November 2, 2001, the Center forwarded by email to the Respondent a form of Notification of Complaint and Commencement of Administrative Proceeding, together with a copy of the Complaint (minus attachments). Hard copies of the Notification and Complaint were sent to the Respondent with enclosures, on November 2, 2001.
On November 13, 2001, Hee Dong, Hong sent an email to the Center advising that he is the Respondent in the dispute, and seeking an extension of time for filing his response. The Complainant was content to leave the request for extension of time to the discretion of the Center, and on November 15, 2001 the Center advised the parties that the time for filing a response was extended to November 26, 2001.
The Respondent filed a response by email on November 23, 2001, but it did not include certain particulars required by the Rules or the Supplemental Rules, including the certification required by paragraph 5(b)(viii) of the Rules and paragraph 12 of the Supplemental Rules. The following day, November 24, 2001 the Respondent sent a further email attaching an amended response. The amended response appears to be identical to the November 23 response, with the exception that the Respondent added a page referring to a WIPO decision referring to the domain name .
The Center drew to the Respondent�s attention the deficiencies under the Rules and the Supplemental Rules, and an amended response incorporating the appropriate certificates was received on December 4, 2001 (hard copy) and December 5, 2001 (email).
In the meantime, the Complainant�s representative sought (on November 28, 2001) the opportunity to make a "very brief retort" (apparently on the basis that the Respondent had submitted two responses, on November 23 and November 24, 2001). The Center advised the Complainant that that request would be referred to the Panel when appointed, and that it would be a matter for the Panel whether the request should be granted.
Both parties have called for a single-member Panel, and the requisite fee has been paid by the Complainant.
On December 12, 2001, the Center invited Warwick Alexander Smith, of Auckland, New Zealand to serve as sole Panelist in the case. It transmitted to him a statement of acceptance and requested a declaration of impartiality and independence.
On December 13, 2001, Warwick Alexander Smith advised his acceptance and forwarded to the Center his statement of impartiality and independence. The Center formally appointed Warwick Alexander Smith as sole Panelist in the administrative proceeding, on December 13, 2001. In terms of paragraph 15(b) of the Rules, in the absence of exceptional circumstances, the Panel is therefore required to forward its decision by December 27, 2001.
The Panel has reviewed the Complaint, and agrees with the Center that it complies with the requirements of the Rules and the Supplemental Rules. The Panel considers that he has been properly appointed.
No other proceedings relating to the domain name have been notified to the Panel.
The language of the administrative proceeding is English, being the language of the registration agreement.
4. Factual Background
The Complainant
The Complainant is one of the world�s leading airlines. It has operated in various forms under the name Deutsche Lufthansa (or similar names) from the 1920s, and it is now one of Germany�s biggest public companies with some 400,000 shareholders.
According to the company�s website at , the airline serves 349 destinations in 94 countries, with a fleet of about 240 aircraft and a staff of more than 30,000 employees. It maintains its own stations, handling check-in, ticket sales, and other services at all major international airports.
Lufthansa is a founding member of the Star Alliance, one of the world�s major multi-lateral airline groupings.
In addition to its core business of flying passengers and cargo, Lufthansa offers other aviation-related services, including inflight catering, aircraft maintenance and overhaul, and travel-related information technology.
The Complainant�s website at (linked to by all of the Complainant�s other websites), is said to be amongst Germany�s leading online travel shops. In addition, the Complainant provides eight call centers around the world.
The Complainant has registered numerous other domain names containing the word "Lufthansa", including. , , , and .
The Complainant�s activities are prominently promoted, worldwide, under the mark LUFTHANSA. It is the proprietor of several registered trademarks consisting of or containing the word "Lufthansa". These registrations cover some twenty trademark classes, including registrations in Class 39 in respect of transportation. A "Trademarkscan" printout of US Federal, Community, and International Register trademarks dated 17 September 2001, shows the status of the marks LUFTHANSA, EXPERTS LUFTHANSA, and LUFTHANSA CITY CENTER, as being registered, and an application for the mark LUFTHANSA CITY CENTER SPORTS & TRAVEL, as pending. In each case the Complainant is shown as the proprietor of the trademark.
Quite apart from its formal trademark registrations, the Complainant says that the trademark LUFTHANSA is known worldwide, and is easily recognizable.
The Respondent
The Respondent�s name POSTECH appears to be associated with the Pohang University of Science and Technology, in the Republic of Korea. A page from the Postech website produced by the Complainant shows Hee-Dong, Hong as a Ph.D. student in the "Cam Lab" Department of the University. In correspondence with the Center, the Respondent has described himself as Dr. Hong.
The Complainant says in its complaint that the domain name is linked to the website at "DomainB". The Complainant has produced in evidence a number of pages copied from the website, including a copy of a "pop-up" window which introduces the website over the signature of Hong Hee-Dong as CEO. The page produced from the website includes, immediately below the tool bar and immediately above a prominent depiction of the name and logo, the words:
"L was registered by DomainB: Contact Us."
A visitor to the website clicking on "Contact Us" is taken to a web page displaying the words:
"If you really want to be interested in this domain name, fill out this form."
There follow spaces for the website visitor to insert his or her name, email address, and an appropriate message.
Generally, the website at offers domain registration and transfer services, including online auctions of domain names. The main marketing thrust appears to be rapid registration, at a cost of only US$15 per annum with no additional or hidden charges. One of the website pages produced by the Complainant states that offers free domain name trading, where buyers and sellers are put in touch with each other direct, without any commission fee.
Another page from the website shows a range of domain names which are apparently for sale through . They are grouped in different categories, with prices expressed in US dollars.
The website at appears to be concerned only with domain name registration and sale. It does not appear to directly provide web design or webhosting services, although it contains links to other sites for URL forwarding and web hosting services. For example, at , a WebPark service is offered for domains which are either for sale or with websites under construction. The link to this site advertises a free starter web page, with the words: "No place to park your domain name while you develop it? Park it here!" Other services apparently available at include "web forwarding" services, where "aliases" can be added to an existing site (giving automatic transfer to the desired website).
The Complaint alleges that the Respondent purchased the domain name from Mario Koch of Germany, who was the original Registrant. A WHOIS search run by the Complainant on September 24, 2001 shows that Mario Koch was indeed the Registrant of the domain name as at that date, and a later WHOIS search shows that the Respondent became the registrant on October 4, 2001.
The Complainant alleges in its Complaint that Mario Koch is known to have engaged in a pattern of conduct, commonly described as "domain grabbing", and that he has been sentenced in a criminal Court in Germany for the domain grabbing. A German language copy of the Court decision was attached to the Complaint, but no English translation has been provided by the Complainant.
In his Response, the Respondent says that the domain name is linked to an internet shopping mall website, which is completely unrelated to the Complainant�s commercial activities. The Respondent has annexed as appendices to his Response, two website pages which are said to support the contention that the domain name is linked to a Korean language internet shopping mall website. One of the two pages contains some English language, and displays pictures of various electronic appliances, including television sets, DVDs, and MP3 equipment. These pictures are displayed, with what appear to be product descriptions and prices beneath them, under the English language heading "Buyer�s Choice".
5. Parties� Contentions
Complainant
The Complainant says that it is the owner of the LUFTHANSA trademarks, and that the LUFTHANSA mark is known worldwide and is easily associated with the Complainant�s airline. It points to two WIPO arbitral decisions where the respective Panelists regarded domain names which included the word "Lufthansa", as being readily recognizable reproductions of the Complainant�s well-known trade mark. (see Guerlain SA v Peikang (WIPO Case No D2000-0055), and Sony Corporation v Sin, Eonmok (WIPO Case No D2000-1007)).
The Complainant says that the domain name registered by the Respondent in this case, is identical with its registered trademark and trade name "Lufthansa".
The Complainant says that the Respondent has no rights or legitimate interest in the domain name, and provides no services which are legitimately associated with the domain name. He conducts no "non-governmental" activity under the domain name. The Complainant says that, although no commission seems to be earned by the operator of DomainB through domain name auctions, the Respondent himself is now the owner of the domain name and is likely to try to sell the name in a DomainB auction.
The Respondent is not an agent of the Complainant, and nor does the Respondent carry out any activity or have any business association with the Complainant. The Complainant says that there could be no plausible circumstance in which the Respondent might be legitimately using the domain name.
The Complainant says that it is obvious that the domain name was originally registered in bad faith by Mario Koch, and that it is "extremely likely" that the Respondent knew of the activities of Mario Koch � both are alleged to conduct widely spread activities of domain name trading worldwide, with widely known trademarks. As the Complainant puts it, "therefore a prior contact seems inevitable".
More generally, the Complainant says that there are no conceivable circumstances where it would be plausible to believe that the Respondent could have purchased and re-registered the domain name in good faith. The Complainant points to the "Contact Us" link on the web page immediately beside the announcement that the domain name has just been registered by , as an indication that the Respondent was offering the domain name for sale.
The Complainant explains the fact that it did not send any cease and desist letter to the Respondent, by referring to its concern to avoid the Respondent becoming suspicious and effecting a quick re-sale of the domain name.
Respondent
The Respondent does not take issue with the Complainant�s claim to be the proprietor of the LUFTHANSA trademark, and does not challenge the Complainant�s contention that the domain name is identical with that trademark.
Nor does the Respondent claim to have any specific rights or legitimate interests in the domain name. He has confined his response to an argument that he did not register, and is not using, the domain name in bad faith.
In his response, the Respondent has worked through each of the examples of bad faith registration and use, which are set out in paragraph 4(b) of the Policy. He contends firstly that he has not made any approach to the Complainant with a view to sale of the domain name, and therefore his conduct does not fall within paragraph 4(b)(i) of the Policy.
With reference to paragraphs 4(b)(ii) and (iii) of the Policy, the Respondent says that he has "never registered the domain name to prevent the Complainant".. He says that, currently, the domain name was opened as an internet shopping mall site in Korea. He says that this website is constructed in the Korean language.
Dealing with paragraph 4(b)(iv) of the Policy, the Respondent says that a domain name is a sort of brand, and that in his opinion, his use of the domain name will not hurt the Complainant�s business. He says that the website now associated with the domain name is only for Koreans, and that opening the domain name as a shopping mall "is not problem".
As for the internet shopping mall, he says "Currently, it is running well."
The Respondent goes on to acknowledge that while the Complainant may be the proprietor of the LUFTHANSA trademark, that does not matter under the Policy if there has been no bad faith on the part of the Respondent. As he puts it in his Response, "There is no right to have all Lufthansa domain TLD if Lufthansa will not be used as a bad faith and will be hurted in the complaint. � Continuously, I will use this domain as a helpful website in Korea."
Finally, the Respondent refers to the WIPO decision dealing with , mentioned earlier, as an example of a case where a Complainant failed to show that the domain name in issue had been registered and was being used in bad faith by the Respondent.
6. Discussion and Findings
Preliminary Procedural Point: Complainant�s Request to File a Reply
In an email to the Center dated November 28, 2001, the Complainant requested that it be permitted to file a brief reply. The grounds for that request were apparently that the Respondent had lodged two documents, on November 23 and November 24, 2001 and that the acceptance of the second document (if it is accepted) should result in the Complainant having a right of reply.
The Panel declines to allow the Complainant the right to make any supplemental filing. The Respondent had been given a deadline of November 26, 2001, to provide his Response, and the two documents were submitted within that time. The deficiencies were of a fairly technical nature, and were subsequently corrected within a reasonable time. The addition made in the second document was only minor, and considerations of fairness do not require that the Complainant be given any right of reply.
General Principles under the Policy and the Rules
Under paragraph 4(a) of the Policy, the Complainant carries the burden of proving:
(i) That the Respondent�s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the 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".
Rule 5(b)(i) requires that a respondent�s response must respond specifically to the statements and allegations contained in the Complaint, and must include any and all bases for the respondent to retain registration and use of the disputed domain name.
Application of Paragraph 4(a) of the Rules to this Case :
Paragraph 4(a)(i) of the Rules - domain name identical or confusingly similar to Complainant�s marks
The Panel has no difficulty in finding this part of the Complaint established. The Complainant is the proprietor of the registered mark LUFTHANSA, and the domain name (ignoring the ".org" suffix) is identical to that mark. The Respondent does not dispute this part of the claim.
Paragraph 4(a)(ii) of the Policy - Respondent has no rights or legitimate interests in respect of the domain name
The Respondent does not challenge the Complainant�s assertion that he is not an agent of the Complainant, and does not carry out any activity for, or have any business association with, the Complainant. He has no entitlement to use the Complainant�s trademarks. The Panel accepts the Complainant�s allegation that its LUFTHANSA mark is well-known worldwide (including in the Republic of Korea), and finds that a significant proportion of internet users worldwide would be likely to associate the domain name with the Complainant�s airline and related activities.
In the absence of evidence from the Respondent, those matters would normally be sufficient proof of this part of the Complaint.
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that he or she has rights or legitimate interests in a domain name for the purposes of paragraph 4(a)(ii) of the Policy.
The circumstances are as follows:
(i) before any notice to [the respondent] of the dispute, [the respondent�s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In his Response, the Respondent does not seek to bring himself within any of these subparagraphs. He does assert that the domain name is now being used in connection with an internet shopping mall (where goods are said to be offered for sale), but he has not shown that he was making that use of the domain name before he had notice of the present dispute. Nor has he produced anything which might be considered reliable evidence of his having made "demonstrable preparations" for such use before he became aware of this dispute.
The Respondent makes no suggestion that he (or some business or organization associated with him) is commonly known by the domain name, so subparagraph (ii) of Paragraph 4(c) of the Policy can have no application. Similarly, the Respondent does not argue that his use of the domain name falls within subparagraph (iii), as a "legitimate noncommercial or fair use, � without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue".
The Respondent has offered no reason for choosing this particular domain name, and in all the circumstances set out above the Panel is satisfied that the Respondent has no rights or legitimate interests in respect of the domain name.
Paragraph 4(a)(iii) of the Policy - Domain name registered and being used in bad faith
In support of its argument that the domain name was registered and is being used in bad faith, the Complainant has attached a German language Court judgment, which is said to establish that the original Registrant of the domain name, Mario Koch, has engaged in a pattern of conduct which could be described as "domain-grabbing". Notwithstanding that the language of this administrative proceeding is English, no translation of this German language document has been provided by the Complainant.
The Panel has considered whether to exercise its right under the Rules to call for a translation of this document. The Panel takes the view that calling for a translation of the document would not be likely to advance matters. Mario Koch is not the present Registrant of the domain name, and the Complainant must prove that the present Registrant registered the domain name in bad faith and is using it in bad faith. It is not suggested by the Complainant that there is anything in the judgment which would implicate the Respondent in Mr. Koch�s alleged activities, or even that the Respondent was aware of them. An even more practical point is that it is not apparent to the Panel from a quick perusal of the judgment that Mr. Koch�s name even appears in the document. It does not appear to have any evidentiary value, and the Panel is not prepared to delay this administrative proceeding by calling for a translation.
The most the Panel can say from the evidence produced by the Complainant, is that Mario Koch was the owner of the domain name prior to the Respondent acquiring ownership of it, and that Mr. Koch had no association with the Complainant or apparent rights in respect of the domain name. The Respondent does not suggest otherwise in his Response. The Panel is prepared to infer that the Respondent purchased the domain name from Mr. Koch, and that the Respondent therefore had some knowledge of Mr. Koch.
The Complainant points to the worldwide renown of the trademark LUFTHANSA, and submits that there is no plausible circumstance under which the Respondent could have purchased and re-registered the domain name in good faith.
The Panel accepts that LUFTHANSA is a world-famous mark, and finds that, on the balance of probabilities, the Respondent was well aware of the Complainant and its famous mark at the time he acquired the domain name. It is apparent that the Respondent is a sophisticated user of the internet. He is the Chief Executive Officer of the entity which operates the website , and that website offers, in the English language and at US dollar prices, international domain name registration and auction services. The Respondent is enrolled as a Ph.D. student at a Korean University, and it appears from an email he sent to the Center on November 13, 2001, that his business activities have taken him to Europe on at least one occasion. Finally, the Respondent does not suggest in his Response that he was unaware of the Complainant and its mark. In all those circumstances, the Panel finds that, at the time he acquired and re-registered the domain name, the Respondent knew that the domain name was identical to the Complainant�s famous trademark.
When the Respondent re-registered the domain name on October 4, 2001, it was used to take the web browser to the website . One of the pages at that website stated prominently:
"L was registered by DomainB: Contact Us".
The page on which that statement appears advertises the registration, auction, and other web services offered through , and the "Contact Us" link contained the invitation "If you really want to be interested in this domain name, fill out this form".
On the evidence produced by the Complainant, then, it appears that the Respondent used the domain name to attract internet browsers to the website at . There, the domain name was advertised as having been registered by , and visitors to the website were invited to contact the operators of the site if they were "interested" in the domain name. In the context of the website, and in the absence of other evidence, the Panel would have no difficulty concluding that the domain name was used to attract internet browsers to the website, and that DomainB visitors were then invited to make offers to purchase the domain name.
Referring to the pages from the website produced by the Complainant, the Respondent says in his Response that, when he first registered the domain name, the first stage was a "parking page", and that what the Complainant has attached as Annexure 9 to its Complaint was just a parking page and an "advertisement to inform the netizen of before home page will be constructed completely." He says that "L" was "being developed at that time", and that "on 18-Sep-2001, L was opened as a Schedule".
There are difficulties with this explanation. First, the advertisement advising that the operators of have registered , does not mention or suggest any intention to construct a home page specific to . Read in its context in the DomainB webpage, the advertisement is more sensibly read as an invitation to visitors to the site to make offers to purchase the domain name. Secondly, the WHOIS printout of September 24, 2001, produced by the Complainant, shows that, as at September 18, 2001, the Registrant of was not the Respondent, but Mario Koch.
The Respondent has produced no supporting information to establish that a home page for the domain name was under construction on September 18, 2001. It is not explained how that might have occurred when the Respondent was not even the owner of the domain name at that date. While he asserts that the internet shopping mall is currently "running well", the Respondent has produced no documentary support apart from two Korean language web pages with the words "L" appearing in brackets beneath some Korean characters. No translation of the Korean language in these documents has been provided by the Respondent.
There is no suggestion that the word "Lufthansa" would have any meaning to citizens of the Republic of Korea, other than as a reference to the Complainant�s famous airline. As evidence that the domain name is being used in association with the bona fide running of an internet shopping mall business , what the Respondent has produced is quite unsatisfactory.
The Panel has found that, on the balance of probabilities, the Respondent knew at the time he acquired the domain name that it was a famous trademark associated with the Complainant�s airline and related activities. The Panel has further found that the Respondent has no legitimate right or interest in the domain name himself, and that a significant number of internet users (including Korean users) would immediately associate the domain name with the Complainant or its airline. The Respondent has offered no explanation for the choice of the name "Lufthansa".
The Respondent�s sole defence appears to be that, because he is not operating in the same field of business as the Complainant, and the Complainant will not be hurt by his activities, that can not amount to bad faith use under the Policy. (The Panel has considered the "" WIPO decision referred to by the Respondent, namely Pohang Iron and Steel Co. Ltd. v Peijie Lu (WIPO Case D2001-0319), but finds nothing in that decision which assists the Respondent in this case. That case was decided on very different facts from this one, and the passages from the decision which the Respondent has cited in his Response are no more than statements of broad principle to the general effect that if a Complainant fails to prove bad faith registration and use, the Complaint should be dismissed.).
Even if one accepts that the domain name may currently be linked to a website hosting an internet shopping mall (and the Panel has serious reservations about the evidence the Respondent has produced in support of that claim), the only plausible explanation for the Respondent�s choice of a famous trademark such as LUFTHANSA as his domain name, is that he wanted to attract to his internet shopping mall site internet browsers looking for websites associated with the Complainant. The domain name would be the "hook" which would attract to the Respondent�s website browsers who would not otherwise have been attracted to it. In this case, the Complainant�s mark is also sufficiently famous that, in the absence of any other explanation for the Respondent�s use of it, a proportion of visitors to his internet shopping mall site would be likely to assume that the Respondent must have some affiliation or connection with the Complainant�s business.
In the Panel�s view, such activity falls within Paragraph 4(b)(iv) of the Policy, as an intentional attempt to attract, for commercial gain, internet users to the respondent�s website, by the creation of a likelihood of confusion with the complainant�s mark as to the source of the respondent�s website.
The circumstances set out at Paragraph 4(b) of the Policy are only examples of bad faith registration and use. The Panel is entitled to take into account any other indicators of bad faith which may not fall squarely within the Paragraph 4(b) examples. In this case, there are a number of factors which, taken in combination, add to the overall impression of bad faith registration and use. No explanation is offered why the university, Postech, was registered as the registrant rather than Mr. Hee Dong, Hong himself. The Respondent�s explanation that the webpage produced by the Complainant as Annexure 9 to the Complaint was merely an advertisement for a home page which was under construction does not seem credible when one looks at the context of the particular website page and the absence of any reference to a forthcoming homepage. For all these reasons, the Panel is satisfied that the Complainant has sufficiently proved that the domain name was registered and is being used, in bad faith.
7. Decision
For the foregoing reasons, the Panel decides that:
(a) The Respondent�s domain name is identical to the LUFTHANSA mark to which the Complainant has rights.
(b) The Respondent has no rights or legitimate interests in respect of the domain name;
(c) The Respondent�s domain name has been registered, and is being used, in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name be transferred to the Complainant.
Warwick Alexander Smith
Sole Panelist
Dated: December 24, 2001
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