In a fairly straightforward cyber-squatting case, this January, Lufthansa filed with the WIPO Arbitration and Mediation Center a complaint against a national of Bangladesh, who had registered the domain names “lufthanza.com” and “lufthansaairlines.com” in his names as early as 2001. Lufthansa relied – obviously – on its trade mark registrations for “LUFTHANSA” in several countries around the world, dating back at least as early as 1979 and complaint both for confusing similarity with its earlier trade marks and filing in bad faith. According to the complaint, the disputed domain names forward to “www.usseek.com” web pages that contain Google AdWords pay-per-click advertisements, some of which lead to transportation websites that compete with Complainant’s own websites.
Some days ago, the sole panelist delivered his decision, which, although not original, includes a good summary of the relevant WIPO case-law on domain name confusing similarity and bad faith filing (which this Class46 member feels is good reference for trade mark law & domain name enthusiasts.
According to the decision:
The domain name looks and sounds nearly identical to Complainant’s LUFTHANSA trademark other than the “.com” at the end. The use of a “z” in place of the “s” in “Lufthansa” indicates an intent to “typosquat”, because the letters look and sound very similar and are very close together on a QWERTY keyboard, and “lufthanza” does not appear to be a word (the Panel did not find it in the dictionary, Complainant alleges it is not a word, and Respondent does not dispute Complainant’s allegation). The “.com” also does not distinguish the domain name but rather is a mandatory addition for a domain name in the “.com” gTLD. United Consumers Club, Inc. v. Texas International Property Associates, WIPO Case No. D2007‑0987. Similarly, the addition, in , of “airlines” and the “.com” gTLD after Complainant’s trademark do not adequately distinguish that domain name from Complainant’s trademark. The addition of a generic word following a trademark does not dispel confusing similarity. Indeed, where, as here, the generic word describes the goods or services of the Complainant, its addition contributes to the confusion. Hoffmann-La Roche Inc. v. Kevin Chang, WIPO Case No. D2008‑1344.
Accordingly, the Panel finds that the disputed domain names are confusingly similar to a trademark or service mark in which Complainant has rights, and that Rule 4(a)(i) is satisfied.
Further, the sole panelist held that:
The Respondent is using the disputed domain names for pay-per-click links that compete with Complainant’s own services. “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.” MAACO Enterprises, Inc. v. IP Admin / DNAV ASSOCS, WIPO Case No. D2008‑0009. Further, the sale of competitive products using the Complainant’s trademark typically is not considered “bona fide” or “legitimate” or “fair” for purposes of paragraph 4(a)(ii). LTD Commodities, LLC v. Nadeem Qadir, NAF Claim No. FA0601000636445; Interstate National Dealer Services, Inc. v. Selwyn Colley, WIPO Case No. D2003‑0934.
Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the domain names, and that paragraph 4(a)(ii) of the Policy is satisfied.
A finding of bad faith was also not diffcult to reach since the Respondent was a “repeat offender” (sic), having been found to have registered at least five trade marks of other parties in bad faith. Apparently, the fact that he is the registrant for more than 560 other domain names, and that Respondent’s e-mail address is associated with more than 1,530 domain names did not make him look any good either.
Further, citing precedents, the panelist held that:
Respondent’s typosquatting “is further evidence of bad faith registration and use under Policy 4(a)(iii).” LTD Commodities, LLC v. Nadeem Qadir, supra. See also TPI HOLDINGS, INC. v. Nadeem Qadir, supra; Specialized Bicycle Components, Inc. v. Nadeem Qadir, supra; Symantec Corporation v. Nadeem Qadir, supra.
Although, the respondent did not bother to reply to the complaint (obvsiously 560 domain names can be a handful), it is interesting to note that Lufthansa’s apparent years of delay in pursuing this weighed zero in the decision. The Greek Regulatory Authority, as this Class46 member can recall, is stricter on delays.
The decision can be found here. Lufthansa’s official site here .