Deutsche Lufthansa AG v. Milen Radumilo
Claim Number: FA1712001764056
Complainant is Deutsche Lufthansa AG (“Complainant”), represented by Hajo Rauschhofer of Rauschhofer Rechtsanwälte, Germany. Respondent is Milen Radumilo (“Respondent”), Romania.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <miles-and-more-cards.com>, registered with Network Solutions, LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 22, 2017; the Forum received payment on December 22, 2017.
On Dec 22, 2017, Network Solutions, LLC confirmed by e-mail to the Forum that the <miles-and-more-cards.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, 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 December 26, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 16, 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 postmaster@miles-and-more-cards.com. Also on December 26, 2017, 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 January 17, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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 the domain name be transferred from Respondent to Complainant.
A. Complainant
Trademark/Service Mark Information:
Complainant has registered about 30 trademarks containing “Miles and More”. The Complaint is based exemplary on the trademarks “Miles & More” (no. 74371759
LUFTHANSA MILES AND MORE US trademark, reg. 7/12/1993), “Miles & More” (no 001258722 reg. 7/29/1999) and “Miles and More” (no. 002551638 reg. 06/06/2003) which are registered as individual trademarks of the European Union (EUTM).
The trademarks of Complainant are registered in Nizza Classes:
18 (Goods of leather and imitations of leather, namely bags and other containers not specifically designed for the objects being carried, and small goods of leather; sports and travel bags; rucksacks, trunks and travelling bags, including those of nylon and/or polyester fabric; bicycle bags, shoe bags);
20 (Sleeping bags for camping);
21 (Household or kitchen containers (not of precious metal or coated therewith); drinking flasks, insulated drinking flasks (of stainless steel);
22 (Tents);
24 (Quilts; bedspreads; throws and blankets; bed and table covers, in particular picknick mats);
25 (Clothing, including sportswear and leisurewear; work clothing; headgear; footwear; gloves; belts, including belts of leather; accessories, namely headscarves, scarves, shawls, dress handkerchiefs, ties);
35 (Operation of bonus systems for use of flights, hotels, car rental and credit cards);
39 (air transportation of passengers, Transport of passengers, airline services, travel bookings, car rental reservations)
42 (Hotel reservations).
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds:
[a] In April 1993, Complainant instituted a global frequent flyer loyalty program under the name "Miles&More". From that time on, it promoted the program under the names "Lufthansa Miles & More", "Miles & More", “Lufthansa Miles and More” and “Miles and More” , e.g. via the website lufthansa.com.
Miles & More is the largest traveler loyalty program in Europe with 25 million members as of March 2014. It offers rewards to passengers of the Star Alliance travelling on certain types of tickets. The program was launched by Complainant (Lufthansa) in 1993 and has about 40 airline partners, including the 28 airlines of the Star Alliance. The program enables its members to earn and redeem frequent flyer miles on all of the fully integrated airlines, all Star Alliance members as well as several other partner airlines. Furthermore, there are more than 270 non-aviation companies affiliated with the program. These include partners from the hotel, car rental & cruise industries, subscriptions & books, banks & insurance, telecommunications & electronics industries as well as shopping & lifestyle. Customers are able to build status, which gives them access to certain privileges. Miles & More is free of charge.
Furthermore the Miles & More participant can combine the services with a credit card. Members of the program also earn award miles when paying their purchases with their Miles & More credit card. Holders of the Miles & More Credit Card Gold benefit furthermore from unlimited mileage validity. Program members use more than 1.4 million Miles & More Credit Cards in Germany and 22 additional countries, primarily in Europe, America and Asia.
Every user of the Miles & More-program receives a “card” with his membership details. Therefore, the Miles & More-program is notionally and practically combined with a card (see Wikipedia-article).
Respondent has registered the domain “miles-and-more-cards.com” that includes the trademark in its entirety and adds the word cards. As shown above the “card” is notionally and practically combined with the program.
Respondent has no rights or legitimate interests in the disputed domain name because Respondent has never been commonly known by the disputed domain name and has never used any trademark or service mark similar to the disputed domain name by which it may have come to be known, other than the infringing use noted herein.
The fame achieved by the miles & more mark, has already been recognized under the laws of the United States of America and Europe, making it a popular target for Internet-based scams and cybersquatters.
In the Panel's view to WIPO Case No. D2017-1449 <samsclubdiscovercard.net> the addition of the generic term "card" to Complainant's trademark in the disputed domain name reinforces the link with Complainant's trademarks and activities
[b.] Respondent does not offer goods or services himself. Respondent simply takes advantage of the fact that internet users looking for a website connected with Complainant are “captured” by Respondent and redirected to a commercial page. It can therefore be presumed that Respondent receives click-through fees in exchange for diverting Internet users to such websites. “The use of a domain name (that is identical or confusingly similar to a trademark) as a parking page that generates click through revenue typically does not give rise to rights or legitimate interests.” See MAACO Enterprises, Inc. v. IP Admin / DNAV ASSOCS, WIPO Case No. D2008-0009.
Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services since the disputed domain name has been used to redirect Internet users to a rotating set of domain names that resolve to various websites including airlines and business cards of competitors such as Turkish airlines (see WIPO Case No. D2017-1449 Discover Financial Services v. Contact Privacy Inc. Customer 0142035953 / Milen Radumilo <samsclubdiscovercard.net>). Furthermore Respondent offers the domain for sale.
The WhoIs record for the disputed domain name shows that it is being offered for sale.
It is - moreover - well established that the use of a domain name that incorporates a well-known trademark to direct visitors to a website unconnected with the trademark owner cannot constitute use in connection with a bona fide offering of goods or services or otherwise be considered a legitimate interest in a domain name (see Madison Square Garden L.P., Radio City Trademarks, LLC v. Great Camanoe Investments Ltd / Belize Domain Names Whois Service Lt, WIPO Case No. D2007-0819).
Complainant has not granted any license, permission, or authorization by which Respondent could own or use any domain name registrations which are confusingly similar to Complainant's trademark. Furthermore a commercial or legal connection between Complainant and Respondent does not exist.
[c.] The trademarks “Lufthansa Miles and More” and “Miles & More” are very distinctive trademarks. It is highly unlikely for another person to choose that name or confusingly similar names without Complainant in mind and the possibility that internet users will confuse it for Complainant’s trademark. Therefore it is inconceivable that Respondent did not have actual notice of Complainant's trademark rights.
The domain has been registered on 2016-03-28. The first trademark has been registered in 1993. Between both dates is a huge gap of 23 years! At the time of registration Respondent has been well aware of the trademark of Complainant and registered it only because he wanted to sell it to Complainant or to benefit otherwise as to establish pay for click links for example.
Respondent has no plausible reason to include "Miles and More" or a similar term in his domain names other than howsoever to capitalize on the goodwill of Complainant.
Respondent is a well-known domain grabber who has engaged in such a pattern for many times. For example in the case about the domain <samsclubdiscovercard.net> he has grabbed a domain of a credit card and electronic payment services company. The similarity is given as the domain miles-and-more-cards is also about a (credit) card based program, that is well known and operated worldwide.
The domain name miles-and-more-cards.com is designed to attract internet users who are looking for Complainant’s website, cause confusion with Complainant’s trademarks, disrupt Complainant’s business by diverting consumers away from Complainant’s website, and do all of these things for commercial gain because Respondent profits from the revenue generated by this website. In Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415, this behavior has been evaluated as use of the domain name in bad faith.
Complainant further contends that Respondent registered the disputed domain name with either actual or constructive knowledge of Complainant's rights in the Miles & More trademark by virtue of Complainant's prior registrations. Also, the redirection of the disputed domain name to webpages containing links to third-party websites offering financial services from Complainant's direct competitors characterizes bad faith in the use of the disputed domain name, as well as the present offer of the disputed domain name for sale as per the WhoIs information.
Lastly, Complainant points out that Respondent has engaged in a pattern of conduct to register domains containing famous trademark and business names to grab and sell these domains what in its point of view is a further strong indication of Respondent's bad faith and intent to use the disputed domain name in a way which may be abusive or otherwise detrimental to Complainant and its rights (see Car & Boat Media v. Contact Privacy Inc. Customer 0142463834 / Milen Radumilo, Case No. D2017-1107; WIPO Case No. D2017-1449 <samsclubdiscovercard.net>; Littlethings, Inc. v. Milen Radumilo, Case No. D2017-0745; Veolia Environnement SA v. Milen Radumilo, Case No. D2017- 0713; Association des Centres Distributeurs E. Leclerc v. Whois Agent, Whois Privacy Protection Service, Inc. / Milen Radumilo, Case No. D2017-0336; Immochan v. Milen Radumilo, Case No. D2017-0113; Intesa Sanpaolo S.p.A. v. Milen Radumilo, Case No. D2016-2648; Compagnie Générale des Etablissements Michelin v. Milen Radumilo, Case No. D2016-2636; Natixis v. Milen Radumilo, Case No. D2016-2277; Valero Energy Corporation and Valero Marketing and Supply Company v. Perfect Privacy LLC / Milen Radumilo, Case No. D2016- 2173 and many more.
Respondent's knowledge of Complainant appears to be evident from the choice of the disputed domain name adding the term "card" to the Miles & More trademark given Complainant's activities as well as the addition of the trademark of a large retailer which also offers credit cards, creating a likelihood of association of Internet users between the disputed domain name and Complainant's services (WIPO Case No. D2017-1449 <samsclubdiscovercard.net>).
The domain is confusingly similar to the Trademark of Complainant, and has been registered and used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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 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 claims rights in the MILES & MORE mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 2,651,023, registered Nov. 19, 2002). Registration with a governmental trademark agency, such as the USPTO or the European Trademark Office (“EUTM”), is sufficient to prove Policy ¶4(a)(i) rights in a mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish Complainant’s rights in the HOME DEPOT mark). Complainant’s registration of the MILES & MORE mark with the USPTO and EUTM is sufficient to establish rights in the mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <miles-and-more-cards.com> domain name is confusingly similar to the MILES & MORE mark, because the name contains the mark in its entirety and adds the word “cards” (which is related to Complainant’s frequent flyer program because they give users cards). The addition of a generic or descriptive term to a mark is not sufficient to distinguish a domain name from the incorporated mark under a Policy ¶4(a)(i) analysis. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy). No domain name may contain spaces because spaces are prohibited characters in domain names. Therefore, the omission of spaces is disregarded under a Policy ¶4(a)(i) analysis. No domain name may contain ampersands because ampersands are also prohibited characters in domain names. Therefore, the omission of ampersands is disregarded under a Policy ¶4(a)(i) analysis. A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs. See Russell & Bromley Limited v. KIM H. SUK, FA 1729773 (Forum June 12, 2017) (finding respondent’s <russellandbromley.com> domain name identical to complainant’s RUSSEL & BROMLEY mark, because “[t]he ampersand is a prohibited character in a domain name so there is no difference between the ampersand (in the mark) and the word ‘and’ (in the domain name)”); see also Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Forum Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶4(a)(i)). The <miles-and-more-cards.com> domain name is confusingly similar to the MILES & MORE mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent has no rights or legitimate interests in the <miles-and-more-cards.com> domain name because Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the MILES & MORE mark in any way. Absent information in the record to the contrary (and there is none in this case), the WHOIS information and common sense allow the Panel to decide Respondent is not commonly known by the disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶4(c)(ii).”). The WHOIS information of record identifies Respondent as “Milen Radumilo.” That name is unrelated to the disputed domain name. No information on the record indicates Respondent has been authorized to register the domain name incorporating Complainant’s mark. The Panel finds Respondent has not been commonly known by the <miles-and-more-cards.com> domain name under Policy ¶4(c)(ii).
Complainant claims Respondent’s lack of rights or legitimate interests in the <miles-and-more-cards.com> domain name is demonstrated by his failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. The domain name resolves to a dynamic parking page, which generates click-through revenue by linking to third-party websites. Using a domain name to link to a complainant’s competitors does not create rights or legitimate interests under Policy ¶¶4(c)(i) or (iii). See Materia, Inc. v. Michele Dinoia, FA1507001627209 (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.”). Respondent does not have rights or legitimate interests in the <miles-and-more-cards.com> domain name.
Complainant claims Respondent’s lack of rights and legitimate interests in the <miles-and-more-cards.com> domain name is evidenced by offering to sell the domain name. Offers to sell a domain name to the public generally indicate a respondent does not have rights or legitimate interests in the name under Policy ¶4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). The WHOIS information for the disputed domain name indicates the name is for sale. Respondent is not using the domain name for any purpose other than offering a dynamic parking page and advertising the fact the domain name is for sale. Respondent does not have rights or legitimate interests in the domain name under Policy ¶4(a)(ii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent’s offer to sell the <miles-and-more-cards.com> domain name indicates the name was registered and used in bad faith. An offer to sell a domain name to the general public is evidence the name was registered and used in bad faith under Policy ¶4(b)(i). See Staples, Inc. v. lin yanxiao, FA1505001617686 (Forum June 4, 2015) (“Respondent’s offering to sell the disputed domain name to a third party (in this case, the general public) supports a finding of bad faith registration and use.”); see also Citigroup Inc. v. Kevin Goodman, FA1506001623939 (Forum July 11, 2015) (holding that the evidence showed that Respondent registered the disputed domain name primarily for the purpose of transferring it for a profit and demonstrates Respondent’s bad faith registration and use of the disputed domain name pursuant to Policy ¶4(b)(i).). The WHOIS information for the domain name clearly indicates it is for sale. Respondent has registered and used the domain name in bad faith under Policy ¶4(b)(i).
Complainant claims Respondent’s registration of the <miles-and-more-cards.com> domain name is part of a pattern of bad faith registration and use. This Panel does not find such behavior violates Policy ¶4(b)(ii) because Complainant owns the <miles-and-more.com> domain name. However, the examples under Policy ¶4(b)(ii) are just that, examples. It is not an exhaustive list of how to prove bad faith.
Respondent’s prior acts can be used to show Respondent’s business model. Respondent clearly acquires domain names solely with the intention of selling them to the owner of related trademarks. This constitutes bad faith registration and use under the penumbra of Policy ¶4(b).
Complainant claims Respondent’s bad faith is demonstrated by its use of the <miles-and-more-cards.com> domain name to link to third party websites through a dynamic parking page. Using a domain name to host a dynamic parking page consisting primarily of third-party links demonstrates a respondent’s bad faith per Policy ¶4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that 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 Complainant’s business, through which Respondent presumably commercially gained). Respondent profits from the confusion its domain name creates regarding Complainant’s mark. Respondent has registered and used the domain name in bad faith under Policy ¶4(b)(iv).
Complainant claims it is inconceivable Respondent could have registered the <miles-and-more-cards.com> domain name without actual knowledge of Complainant's mark in light its fame and notoriety. The Panel finds Respondent’s dynamic parking page certainly knew about Complainant’s mark because it created so many pay per click links to it. That knowledge is imputed to Respondent. Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and such actual knowledge is adequate evidence of bad faith under Policy ¶4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting Respondent's contention that it did not register the disputed domain name in bad faith since the panel found that Respondent had knowledge of Complainant's rights in the UNIVISION mark when registering the disputed domain name). Respondent had actual prior knowledge of Complainant’s rights in the mark. Respondent registered and used the disputed domain name in bad faith.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <miles-and-more-cards.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, January 19, 2018
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