national arbitration forumv

 

URS FINAL DETERMINATION

 

Deutsche Lufthansa AG v. yoyo.email et al.

Claim Number: FA1404001552833

 

DOMAIN NAME

<lufthansa.email>

 

PARTIES

Complainant: Deutsche Lufthansa AG of Frankfurt, Germany.

Complainant Representative: Rauschhofer Rechtsanwälte of Wiesbaden, Germany.

 

Respondent: yoyo.email of Watford, United Kingdom.

Complainant Representative: Smith and Wells Solicitors of Coventry, United Kingdom.

 

yoyo.email of Dunsatble, International, GB.

 

REGISTRIES and REGISTRARS

Registries: EMAIL Registry

Registrars: GoDaddy.com, LLC

 

EXAMINER

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding.

 

Piotr Nowaczyk, as Examiner.

 

PROCEDURAL HISTORY

Complainant submitted: April 7, 2014

Commencement: April 7, 2014     

Response Date: April 28, 2014

 

Having reviewed the communications records, the Examiner finds that the National Arbitration Forum has discharged its responsibility under URS Procedure  Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules") .

 

RELIEF SOUGHT

Complainant requests that the domain name be suspended for the life of the registration.

 

STANDARD OF REVIEW

Clear and convincing evidence.

 

FINDINGS and DISCUSSION

 

Procedural Findings:

Multiple Complainants: This proceeding features a sole Complainant regarding the single domain name <lufthansa.email>.

No domain names are dismissed from this complaint.

Multiple Respondents: This proceeding appears to feature a sole Respondent regarding the single domain name <lufthansa.email>.

No domain names are dismissed from this complaint.

 

 

 

Findings of Fact:

The Complainant owns a Community trademark consisting of “LUFTHANSA”  which is registered under  No. 001212539. in classes 6, 8, 9, 14, 16, 18, 20, 21, 24, 25, 26, 28, 36, 37, 41 and 42, in force until June 11, 2019.

 

The Complainant contends that the Respondent’s domain name, <lufthansa.email>, is identical or confusingly similar to the LUFTHANSA mark, and was registered and is being used in bad faith by the Respondent who has no rights or legitimate interests in the Domain Name.

 

The Respondent admits that Lufthansa AG holds a valid national and regional registration for the trade mark “LUFTHANSA” and that the Domain Name contains the word “LUTHANSA”. The Respondent denies that the intended use of the Domain Name will create any likelihood of confusion with the trade mark LUFTHANSA, as to any of the source, sponsorship, affiliation, or endorsement of the intended website at the Domain Name, or any product or service on the said website or location. The Respondent also states that it has made a “legitimate and fair use” of the Domain Name without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark LUFTHANSA . Namely, it intends to use the Domain Name, and a large number of other domain names which have been registered with the .email suffix for the same purpose and with similar surrounding circumstances, for a service to internet users of a recorded delivery service and/or email reply monitoring system each driven by a neutral communication platform.

 

URS Procedure 1.2.6, requires the Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.

 

 

Legal Findings and Conclusion:

IDENTICAL OR CONFUSINGLY SIMILAR

The Domain Name, <lufthansa.email> is identical to the Complainant's LUFTHANSA mark since it includes the exact wording of the registered trademark. In addition, it is well accepted that the top level domain is irrelevant in assessing identity or confusing similarity, thus “.email” is of no consequence here (Facebook Inc. v.  Radoslav, Claim Number: FA1308001515825). Moreover, the Respondent has clearly admitted that the Domain Name contains the word “LUTHANSA”. The Examiner finds that the Complainant met the standard sets out in 1.2.6.1. of the URS Procedure since it proved that it holds a valid regional trademark registration (Community Trademark Register No. 001212539). Further, the Complainant confirmed that the registered trademark is in current use by presenting printouts from various pages of the Complainant’s website.

NO RIGHTS OR LEGITIMATE INTERESTS

The Respondent does not have any rights in the name “LUFTHANSA” nor is the Respondent commonly known by this name. The Complainant has not authorized Respondent’s use of its mark and has no affiliation with the Respondent. Therefore, the Examiner finds that Respondent has established no rights or legitimate interests in the Domain Name (1.2.6.2. of the UDR Procedure).

 BAD FAITH REGISTRATION AND USE

The Respondent has registered and use the Domain Name in bad faith – the Complaint satisfied URS 1.2.6.3 (d). The Respondent must have known of the Complainant's trademark when registering <lufthansa.email> which is famous all over the word as confirmed in Deutsche LUFTHANSA AG v. Gandiyork (SL - FA1403001549328 April 04, 2014). Moreover, the Respondent did not present demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services. The Respondent only describes its intention which is found to be insufficient to prevail over circumstances demonstrated by the Complainant. In the Examiner’s view the Respondent has intentionally attempted to attract for commercial gain Internet users to <lufthansa.email> web by creating a likelihood of confusion with the “LUFTHANSA” mark.

DETERMINATION

After reviewing the parties’ submissions, the Examiner determines that

the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration:

<lufthansa.email>

 

 

Piotr Nowaczyk, Examiner

Dated:  April 28, 2014