Deutsche Lufthansa AG v. Khanh To Binh
Claim Number: FA1901001825277
Complainant is Deutsche Lufthansa AG (“Complainant”), represented by Hajo Rauschhofer of Rauschhofer Rechtsanwälte, Germany. Respondent is Khanh To Binh (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lufthansa-vietnam.com>, registered with NameSilo, LLC.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 16, 2019; the Forum received payment on January 16, 2019.
On January 16, 2019, NameSilo, LLC confirmed by e-mail to the Forum that the <lufthansa-vietnam.com> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 January 17, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 2019 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-vietnam.com. Also on January 17, 2019, 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 February 11, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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
1. Complainant is known worldwide for transportation of passengers and incentive award programs as well as a wide range of other goods and services including hotels, rental cars, and credit cards. Complainant has rights in the LUFTHANSA mark based on its registrations with multiple trademark agencies including the World Intellectual Property Office (“WIPO”) (e.g. Reg. No. 450006, registered June 12, 1979) and the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,871,600, registered Jan. 3, 1995).
2. Respondent’s <lufthansa-vietnam.com>[i] domain name is identical and confusingly similar to Complainant’s mark because Respondent merely adds a hyphen, the geographic indicator “Vietnam,” and the generic top-level domain (“gTLD”) “.com” to Complainant’s fully incorporated mark.
3. Respondent lacks rights or legitimate interest in the <lufthansa-vietnam.com> domain name. Respondent has not been granted any license, permission, or authorization by which Respondent could own or use any domain name confusingly similar to Complainant’s mark. Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. Respondent instead attempts presumably to receive fees in exchange for diverting Internet users to its parked website, or via participation in the contest located at the website. Finally, Respondent uses the confusingly similar disputed domain name to direct visitors to a website unrelated to Complainant.
4. Respondent registered and uses the domain name in bad faith because Respondent attempts to cause confusion with Complainant’s mark, disrupt Complainant’s business, and attract Internet users for commercial gain by profiting from revenue generated by the website.
5. Furthermore, Respondent had actual and constructive notice of Complainant’s rights in the mark at the time of registration based on the distinctiveness of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the LUFTHANSA mark. Respondent’s domain name is confusingly similar to Complainant’s LUFTHANSA mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <lufthansa-vietnam.com> domain name and that Respondent registered and uses the domain name 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 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 the 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 has rights in the LUFTHANSA mark based on its registration with multiple trademark agencies. Registration of a mark with multiple trademark agencies is sufficient to establish a complainant’s rights in a mark. See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014). Complainant has provided the Panel WIPO World Brand Database information of its registration in the mark with multiple trademark agencies, including WIPO (e.g. Reg. No. 450006, registered June 12, 1979) and the USPTO (e.g. Reg. No. 1,871,600, registered Jan. 3, 1995).
Next, Complainant contends Respondent’s <lufthansa-vietnam.com> domain name is identical and confusingly similar to Complainant’s LUFTHANSA mark because Respondent merely includes a hyphen, the geographic indicator “Vietnam” and the gTLD “.com” to Complainant’s fully incorporated mark. The addition of a hyphen, geographic indicator, and gTLD do not distinguish a domain name from a mark in which a complainant has rights per Policy ¶ 4(a)(i). See Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”); see also Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang, FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant’s registered mark). Therefore, the Panel holds that Respondent’s <lufthansa-vietnam.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <lufthansa-vietnam.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues Respondent has not been granted a license, permission, or authorization to use Complainant’s mark. WHOIS information may be used to demonstrate a respondent is not commonly known by a domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Khanh To Binh” as the registrant. There is no evidence in the record to show that Respondent has ever been legitimately known by the LUFTHANSA mark. The absence of such evidence may be used to support Complainant’s contention that the Respondent is not commonly known by the <lufthansa-vietnam.com> domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Further, Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the <lufthansa-vietnam.com> domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. Nothing in the record contradicts these assertions. Accordingly, the Panel holds that Respondent is not commonly known by the <lufthansa-vietnam.com> domain name under Policy ¶ 4(c)(ii).
Additionally, Complainant argues, without contradiction, that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <lufthansa-vietnam.com> domain name because Respondent attempts to create the impression that Respondent is sponsored by or affiliated with Complainant. Use of a domain name containing the mark of another to divert Internet users to a respondent’s website by confusing Internet users into believing an affiliation exists between it and a complainant is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). the Panel agrees. Thus, the Panel holds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <lufthansa-vietnam.com> domain name under Policy ¶¶ 4(c)(i) or (iii).
Finally, Complainant argues Respondent uses the <lufthansa-vietnam.com> domain name to advertise a contest offering money and trips unrelated to Complainant. Using a domain name containing the mark of another to profit off unrelated services demonstrates a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii). See Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) (“Using a confusingly similar domain to display unrelated content can evinces a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant provides a screenshot of the resolving webpage of the <lufthansa-vietnam.com> domain name along with a English translation, which shows that the resolving webpage advertises a contest offering money and trips. Therefore, this use fails to indicate a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends Respondent registered and uses the <lufthansa-vietnam.com> domain name in bad faith because Respondent attempts to create confusion with Complainant’s trademark and divert Internet users to Respondent’s website for commercial gain. Diverting Internet users using a mark in which another has rights, likely for commercial gain, who are searching for a complainant’s website can support a finding of bad faith registration and use under Policy ¶ 4(b)(iv). See Microsoft Corporation v. Story Remix / Inofficial, FA 1734934 (Forum July 10, 2017) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). The Panel concurs and finds Respondent registered and uses the <lufthansa-vietnam.com> domain name in bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant argues Respondent had actual notice of Complainant’s rights in the LUFTHANSA mark at the time of registration. Actual knowledge of a complainant’s mark prior to registering a domain name can be adequate to find bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration). 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, thus constituting bad faith registration and use under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
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-vietnam.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: February 18, 2019
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