WIPO Domain Name Decision D2010-0647 for belufthansa.com

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Deutsche Lufthansa AG v. Hank Case No. D2010-0647 1. The Parties

The Complainant is Deutsche Lufthansa AG of Frankfurt, Germany, represented by Rauschhofer Rechtsanwälte, Germany.

The Respondent is Hank of Bingkaso, Greenland, Overseas Territory of Denmark. 2. The Domain Name and Registrar

The disputed domain name is registered with OnlineNic, Inc. d/b/a China-C. 3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 23, 2010. On April 23 and 27, 2010, the Center transmitted by email to OnlineNic, Inc. d/b/a China-C a request for registrar verification in connection with the disputed domain name. On April 29, 2010, OnlineNic, Inc. d/b/a China-C transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 30, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 20, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 21, 2010.

The Center appointed Flip Jan Claude Petillion as the sole panelist in this matter on May 27, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background

The Complainant is the holder of a number of trademarks consisting of, or including the word “Lufthansa” in various countries throughout the world. The earliest of these registrations date from September 1979. The Complainant shows to be the holder of the following LUFTHANSA trademarks:

- LUFTHANSA, registered in Germany under number 990835 on September 25, 1979 and applied for on April 2, 1979 for classes 36, 37, 39, 41 and 42;

- LUFTHANSA, registered in Germany under number 990834 on September 25, 1979 and applied for on April 2, 1979 for classes 36, 39, 41 and 42;

- LUFTHANSA, registered in Germany under number 39871924.1 on April 12, 1999 and applied for on December 10, 1998 for classes 06, 08, 09, 14, 16, 18, 20, 21, 24, 25, 26, and 28;

- LUFTHANSA, registered in Germany under number 39871923.3 on April 12, 1999 and applied for on December 10, 1998 for classes 06, 08, 09, 14, 16, 18, 20, 21, 24, 25, 26 and 28;

- LUFTHANSA, registered in the European Union under number 001212539 on February 26, 2001 and applied for on June 11, 1999 for classes 06, 08, 09, 14, 16, 18, 20, 21, 24, 25, 26, 28, 36, 37, 39, 41 and 42;

- LUFTHANSA, registered in the European Union under number 001210665 on November 29, 2000 and applied for on June 11, 1999 for classes 06, 08, 09, 14, 16, 18, 20, 21, 24, 25, 26, 28, 36, 37, 39, 41 and 42;

- LUFTHANSA, registered as an international trademark under number 722971 on August 5, 1999 for classes 06, 08, 09, 14, 16, 18, 20, 21, 24, 25, 26 and 28;

- LUFTHANSA, registered as an international trademark under number 450006 on December 6, 1979 for classes 36, 37, 39, 41 and 42;

- LUFTHANSA, registered in the United States under number 74383260 on August 20, 1996 and applied for on April 27, 1993 for classes IC 039 and US 100 105.

Previous panels have already established that Complainant has rights in the LUFTHANSA trademark and has acquired a substantial reputation and fame in the use of the trademark in many jurisdictions throughout the world.

It is stated in the WhoIS records that Hank Billgates, Respondent in the instant case, is the current holder of the disputed domain name , which was registered on December 22, 2004 with OnlineNic, Inc. The address appearing in the WhoIS records is an incomplete and/or incorrect address.

The disputed domain name is not linked to any website that can be accessed on the Internet. Therefore, no content is available. 5. Parties' Contentions A. Complainant

Complainant considers the disputed domain name to be identical or confusingly similar to the trademarks and service marks in which it claims to have rights. Complainant further claims that Respondent has no rights or legitimate interest in respect of the disputed domain name. According to Complainant, Respondent has not used the domain name in connection with a bona fide offering of services or a legitimate non-commercial use. Also, Respondent has not been commonly known by the domain name, according to Complainant.

Finally, Complainant considers that the domain name was registered and being used in bad faith. B. Respondent

The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

The onus is on the Complainant to make out its case and it is apparent, both from the terms of the Policy and the decisions of past UDRP panels, that the Complainant must show that all three elements set out in paragraph 4 (a) of the Policy have been established before any order can be made to transfer a domain name. As the proceedings are civil, the standard of proof is the balance of probabilities.

Thus for the Complainant to succeed it must prove, within the meaning of Paragraph 4(a) of the Policy and on the balance of probabilities that:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

2. The 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.

The Panel will therefore deal with each of these requirements in turn. A. Identical or Confusingly Similar

The Complainant must first establish that there is a trademark or service mark in which it has rights. Since Complainant is the holder of the widely and well-known LUFTHANSA trademark, that is used in connection with passenger and freight transportation services, it is clearly established that there is a trademark in which Complainant has rights.

The Panel considers the disputed domain name to be composed of the non-distinctive generic term “be” and a name identical to the LUFTHANSA trademark. The Panel is of the opinion that the mere addition of non-distinctive text to a complainant's trademark constitutes confusing similarity, as set out in paragraph 4(a)(i) of the Policy (See Caterpillar Inc. v. Roam the Planet, Ltd.,WIPO Case No. D2000-0275, where the addition of the generic word “machines to the complainant's trademark CAT did not serve to distinguish the domain name ; Nike Inc. v; Farrukh Zia,WIPO Case No. D2000-0167, where the domain name was held to be confusingly similar to the trademark nike; Lime Wire LLC v. David Da Silva/C,WIPO Case No. D2007-1168, where the domain name was held to be confusingly similar to the LIME WIRE trademark, especially with addition of the word “download” because users typically download complainant's software; International Business Machines Corporation v. Scott banner,WIPO Case No. D2008-0965, where the domain name was held to be confusingly similar to the IBM trademark because many Internet users would assume that the domain name identifies a website from which they can download software supplied by the Complainant; Nintendo of America Inc v. Marco Beijen, Beijen Consulting, Pokemon Fan Clubs Org., and Pokemon Fans Unite, WIPO Case No. D2001-1070, where the addition of the words ‘mail', ‘post', ‘fan' and ‘top50' to the word ‘POKÉMON' in the disputed domain names was held to be of minimal impact on what the visitor of the website focuses on, namely the word ‘POKÉMON'; Nintendo of America v. Gray West International,WIPO Case No. D2000-1219, where it was held that the addition of the word ‘games' in the domain name does nothing to reduce its confusing similarity with Nintendo's POKÉMON marks); Dr. Ing. h.c. F. Porsche AG v. Kentech, Inc. a.k.a. Helios Lab a.k.a. Orion Web a.k.a. Titan Net a.k.a. Panda Ventures a.k.a. Spiral Matrix and Domain Purchase, NOLDC, Inc.,WIPO Case No. D2005-0890, where the domain name was held to be confusingly similar to the trademark PORSCHE).

The addition of the non-distinctive term “be” does nothing to reduce the confusing similarity of the disputed domain name with Complainants widely and well-known trademark. Therefore, the Panel considers the disputed domain name to be confusingly similar with Complainants trademark LUFTHANSA.

Accordingly, the Complainant has made out the first of the three elements that it must establish. B. Rights or Legitimate Interests

Under paragraph 4(a)(ii) of the Policy, the Complainant has the burden of establishing that respondent has no rights or legitimate interests in respect of the domain names.

It is established case law that it is sufficient for the Complainant to make a prima facie showing that Respondent has no right or legitimate interest in the domain name in order to shift the burden of proof to the Respondent. (See: Champion Innovations, Ltd. V. Udo Dussling (45FHH),WIPO Case No. D2005-1094 ; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455 ; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110 .)

The Panel notes that Respondent has not been commonly known by the domain name and that the Respondent has not acquired trademark or service mark rights.

Respondent's use and registration of the disputed domain name was not authorized by Complainant. There are no indications that a connection between Complainant and Respondent existed.

Moreover, the Panel is of the opinion that Respondent is not making a legitimate non-commercial or fair use of the domain name. In fact, Respondent is not making any use of the domain name at all. According to the Panel, the passive holding or non-use of a domain name is evidence of a lack of legitimate rights in the domain name (See Am. Home Prod. Corp. v. malgioglio,WIPO Case No. D2000-1602 ; Vestel Elektronik Sanayi ve Ticariet AS v. Kahveci,WIPO Case No. D2000-1244 ; Paws, Inc. v. G, NAF Case No. FA-097328 (g); Victoria's Secret v; This domain name for Sale, NAF Case No. FA-96486 . C. Registered and Used in Bad Faith

The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith (See e.g. Telstra Corporation Limited v. Nuclear Marshmallow,WIPO Case No. D2000-0003; Control Techniques Limited v. Lektronix Ltd,WIPO Case No. D2006-1052).

Paragraph 4(b) of the Policy provides a non-exclusive list of factors, any one of which may demonstrate bad faith. Among these factors demonstrating bad faith is the registration of the domain name in order to prevent the holder of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name holder has engaged in a pattern of such conduct. 1. Bad Faith Registration

In the instant case, Respondent must have had knowledge of Complainant's rights in the LUFTHANSA trademark at the moment he registered the disputed domain name, since Complainant's trademark is a well-known and widely known trademark. The fact that LUFTHANSA is a very distinctive trademark has already been confirmed by other panels (See e.g., Deutsche Lufthansa AG v. Acme mail,WIPO Case No. D2008-1580 ). Respondent's awareness of Complainant's trademark rights at the time of registration suggests bad faith at the moment of registration (See: Nintendo v. Beijin,WIPO Case No. D2001-1070, where the word POKÉMON was held to be a well-known mark of which the use by someone without any connection or legal relationship with the Complainant suggested opportunistic bad faith; BellSouth Intellectual Property Corporation v. Serena, Axel,WIPO Case No. D2006-0007, where it was held that Respondent acted in bad faith when registering the disputed domain name, because widespread and long-standing advertising and marketing of goods and services under the trademarks in question, the inclusion of the entire trademark in the domain name, and the similarity of products implied by addition of telecommunications services suffix suggested knowledge of Complainant's rights in the trademarks).

Since Respondent must have had knowledge of Complainant's rights in the LUFTHANSA trademark at the moment he registered the disputed domain name, and since Respondent had no legitimate interest in the disputed domain name, it is established that the domain name was registered in bad faith. 2. Bad Faith Use

In the instant case, Respondent is passively holding the disputed domain name. The passive holding of a domain name can constitute bad faith use, especially when combined with other factors such as Respondent preventing a trademark or service mark holder from reflecting his mark in a corresponding domain name, the failure of Respondent to respond to the complaint, the concealment of identity, etc. (See e.g., Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 ); Myer Stores Limited v. Mr. David John Singh,WIPO Case No. D2001-0763 ).

In the instant case, Respondent concealed his identity by only providing a fake name and inexistent and thus incorrect address to the registrar. Although the actual identity being concealed, the name used by Respondent for the registration of the disputed domain name has also been used for the registration of other domain names that were registered preventing the holder of a trademark or service mark from reflecting the mark in a corresponding domain name (See SparkPeople Inc. v. Hank, NAF Case No. FA0606000734851 ; IMT Services Corp. v. Hank c/o Billgates, NAF Case No. FA0706001002627 . This is a clear indication that Respondent has engaged in a pattern of preventing trademark or service mark holders from reflecting the mark in a corresponding domain name. Moreover, Respondent has not filed a response in either this case or the abovementioned cases. As a result, these factors clearly show that the disputed domain name has not only been registered, but is also used in bad faith. 7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant .

Flip Jan Claude Petillion
Sole Panelist

Dated: June 10, 2010

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