The Complainant is Deutsche Lufthansa AG of Frankfurt am Main, Germany, represented by Rauschhofer Rechtsanwälte, Germany.
The Respondent is Mustermann Max / Muster AG of "Musterstadt", Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with B, Inc. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 29, 2015. On July 29, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 30, 2015, the Registrar 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 August 5, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was August 25, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 26, 2015.
The Center appointed Tobias Malte Müller as the sole panelist in this matter on August 31, 2015. 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 registered owner of numerous trademark registrations for and/or including the term Lufthansa, in particular International registration number 450006 LUFTHANSA (word), registered on December 6, 1979 for goods and services in classes 36, 37, 39, 41 and 42 and Community trademark number 001212539 LUFTHANSA (figurative), registered on February 26, 2001 for goods and services in classes 6, 8, 9, 14, 16, 18, 20, 21, 24, 25, 26, 28, 36, 37, 39, 41 and 42.
The disputed domain name was registered by the Respondent on July 11, 2015. It results from the Complainant's allegations that no content is displayed on the website to which the disputed domain name resolves. 5. Parties' Contentions A. Complainant
It results from the Complainant's undisputed allegations that the Complainant is a large, very well-known and one of the world's leading airlines based in Germany and tracing its origins back to 1926. It is an Aviation Group comprising around 400 subsidiaries and affiliates and it operates in five business segments: passenger transportation, logistics, MRO, catering and IT services. Passenger transportation is the Group's core business. It is a member of the Star Alliance Network flying to almost all countries of the world. In addition to its passenger and cargo services the Complainant provides a frequent-flyer program called Miles & More. It operates an extensive website from the domain name . The Complainant has registered numerous other domain names incorporating the term "lufthansa", e.g. , , , , , , , , etc. Moreover, the trademark LUFTHANSA is known worldwide and easily recognized. Finally, the Complainant has established a well-known credit card-service, which is managed by a subsidiary company. The "Lufthansa AirPlus Servicekarten GmbH", a 100% sub-company of the Complainant Lufthansa, is the owner of the domain name . This domain name is used by the company to inform their clients about their credit card especially bills, sales, turnovers etc.
The Complainant contends that the disputed domain name is confusingly similar to its trademarks LUFTHANSA since it wholly incorporates the said trademark combining it with the merely descriptive term "kartenabrechnung" that describes one sector of the Complainant's business and is therefore more likely to increase rather than to reduce confusion. According to the Complainant, the German term "kartenabrechnung" is a generic term of German language meaning "card account" or "card statement".
It further results from the Complainant's undisputed contentions that the Respondent has no prior rights or legitimate interests in the disputed domain name. There is no evidence that the Respondent uses the disputed domain name in connection with a bona fide offering of goods or services. Quite to the contrary the Respondent uses the disputed domain name to get information about the credit card holders and to use this information afterwards for credit card fraud. In fact, the Complainant alleges that the Respondent directs the Complainant's customers with a phishing email including a link to a faked website presented under the third-level-domain to harvest customer data. Moreover, the Respondent is neither commonly known, or was ever known, by the name "lufthansa-kartenabrechnung" nor has any rights in it. The Respondent has not registered "lufthansa-kartenabrechnung" as a trademark, service mark or company name anywhere in the world. The Complainant has exclusive rights to the trademark LUFTHANSA and no license, permission, authorization or other consent has been granted to Respondent to use "lufthansa" in the domain name. Finally a legitimate noncommercial or fair use of the domain name is not evident. Rather, according to the Complainant, the Respondent is intentionally attempting to attract, for commercial gain, Internet users to the corresponding website by confusion with the Complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the websites or of products or services on them. Moreover the Respondent's name and contact details do not support a genuine connection to any rights in the disputed domain name.
Finally, the Complainant contends that the Respondent registered and uses the disputed domain name in bad faith. In particular, it results from the Complainant's undisputed allegations that the trademark LUFTHANSA is a very distinctive trademark, so that it is inconceivable that the Respondent did not have actual notice of the Complainant's trademark rights. It is most likely that the Respondent was aware of the Complainant's trademark and registered the disputed domain name for criminal purposes only. If the Respondent had not known the Complainant it would certainly not have chosen the German term "kartenabrechnung" (that is essential to the Complainant's scope of business) to add it to the mark LUFTHANSA because there wouldn't be any connection between the two terms. The disputed domain name is used in connection with phishing emails containing a link to a faked website under looking like the Complainant's original website, which creates a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation, or endorsement of the Respondent's website.
Furthermore, according to the Complainant a further indication of bad faith is the fact that the Respondent registered a domain name which is identical to the Complainant's existing domain name . The Respondent's intention is evidently to free-ride on the fame of the LUFTHANSA mark. The disputed domain name was created to attract Internet users who were looking for the Complainant's website, causing confusion with the Complainant's trademark, disrupting the Complainant's business by diverting consumers away from the Complainant's website, and all of these actions have been committed for commercial gain and fraud because the Respondent wanted to profit from the revenue generated by the sending of phishing emails. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 the Complainant to prove each of the following three elements in order to obtain an order that the disputed domain name should be transferred or cancelled:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
The Panel is satisfied that the Registrant of record for the disputed domain name is the Respondent and will therefore proceed to analyze whether the three elements of paragraph 4(a) of the Policy are satisfied. A. Identical or Confusingly Similar
Pursuant to paragraph 4(a)(i) of the Policy, the Complainant must first of all establish rights in a trademark or service mark and secondly establish that the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights.
It results from the evidence provided that the Complainant is the registered owner of various trademarks for and/or including the term "Lufthansa". Reference is made in particular to International registration number 450006, registered on December 6, 1979 and Community trademark number 001212539, registered on February 26, 2001. This Community trademark predates the creation date of the disputed domain name which is July 10, 2015.
Many UDRP panels have found that a disputed domain name is confusingly similar to a complainant's trademark where the disputed domain name incorporates the complainant's trademark in its entirety (e.g., Compagnie Générale des Etablissements Michelin v. Christian Viola,WIPO Case No. D2012-2102; Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070; The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812). This is the case in the present proceeding where the Complainant's registered trademark LUFTHANSA is fully included in the disputed domain name.
In addition, the disputed domain name combines the Complainant's registered trademark LUFTHANSA as its distinctive element with the generic German term "kartenabrechnung" (which is to be translated in the sense of "card account"), which is totally applicable as a descriptive term to the field in which the Complainant is active, i.e. credit cards. The element "kartenabrechnung" is therefore calculated to increase the likelihood of confusion between the trademark and the disputed domain name. The addition of this descriptive term to the distinctive trademark is insufficient in itself to remove the confusion and it does not serve to distinguish the disputed domain name from the trademark, but rather, reinforces the association of the Complainant's trademark with the disputed domain name (see e.g. Deutsche Lufthansa AG v. Kudakwashe Musunga / PrivacyP, WIPO Case No. D2009-1754; Viacom International Inc. v. Frank F. Jackson and Nancy Miller,WIPO Case No. D2003-0755; Caterpillar Inc. v. Roam the Planet, Ltd.,WIPO Case No. D2000-0275).
In the light of the above, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
Pursuant to paragraph 4(a)(ii) of the Policy, the Complainant must secondly establish that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
Paragraph 4(c) of the Policy contains a non-exhaustive list of circumstances which, if found by the Panel to be proved, shall demonstrate the Respondent's rights or legitimate interests to the disputed domain name. In the Panel's view, based on the allegations stated above, the Complainant has made a prima facie case that none of these circumstances are found in the case at hand and, therefore, that the Respondent lacks rights or legitimate interests in the disputed domain name.
No content is displayed on the website to which the disputed domain name resolves. Such use can neither be considered a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue in the sense of paragraph 4(c)(i) and (iii) of the Policy (see e.g. Volkswagen AG v. Nowack Auto und Sport - Oliver Nowack,WIPO Case No. D2015-0070).
Finally, the Respondent is not commonly known by the disputed domain name nor has it acquired trademark rights pursuant to paragraph 4(c)(ii) of the Policy.
It is acknowledged that once the Panel finds such prima facie case is made, the burden of production shifts to the Respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the disputed domain name. Since the Respondent in the case at hand failed to come forward with any allegations or evidence in this regard, this Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name. The Complainant is therefore deemed to have satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
According to paragraph 4(a)(iii) of the Policy, the Complainant must thirdly establish that the disputed domain name has been registered and is being used in bad faith. The Policy indicates that certain circumstances specified in paragraph 4(b) of the Policy may, "in particular but without limitation", be evidence of the disputed domain name's registration and use in bad faith.
The Complainant has been established many years ago and has a worldwide reputation and its trademarks have existed for a long time. Therefore, it is the view of this Panel that the Respondent knew or should have known that the disputed domain name included the Complainant's LUFTHANSA trademarks when he registered the disputed domain name. Registration of this disputed domain name in awareness of the reputed LUFTHANSA mark and in the absence of rights or legitimate interests in this case amounts to registration in bad faith (see e.g. The Chancellor, Masters and Scholars of the University of Oxford v. Oxford College for PhD Studies,WIPO Case No. D2015-0812 and The Chancellor, Masters and Scholars of the University of Oxford v. Almutasem Alshaikhissa,WIPO Case No. D2014-2100). In addition, the reputed LUFTHANSA mark has been combined with a descriptive term "kartenabrechnung" in German language, which is linked to the Complainant's business and which is highly similar to the Complainant's existing domain name used to inform its clients about the status of their credit cards (invoices, turnovers etc.).
The disputed domain name does not resolve to an active website. In this regard, the Panel notes that passive holding does not preclude a finding of bad faith (see Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
In the light of the above, the Panel finds that the disputed domain name has been registered and is being used in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
With regard to the Complainant's further allegations as to the Respondent's phishing activities, this Panel finds that it is not necessary to come to a final conclusion on this subject. In this context the Panel notes that the Complainant failed to submit clear and consistent evidence to demonstrate that the alleged phishing activity is actually connected to the disputed domain name. According to the Complainant, the email sent from the email-account "[…]@" (Annex 16 to the Complaint) contained a link redirecting to the third-level domain (Annex 5 to the Complaint). However, the second level domain of this domain name does not correspond to the second level domain of the disputed domain name, since it contains the diverging element "kredit". 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be transferred to the Complainant.
Tobias Malte Müller
Sole Panelist
Date: September 14, 2015
Full & Egal Universal Law Academy