Deutsche Lufthansa AG v. David Seagle using the alias “Lord Oxford”
Case No. D2009-1329
1. The Parties
1.1 The Complainant is Deutsche Lufthansa AG, Airportring of Frankfurt, Germany, represented by Rauschhofer Rechtsanwälte, Germany.
1.2 The Respondent is “Lord Oxford” of Piggabeen, Australia. For reasons set out in detail later on in this decision, this appears to be the pseudonym of one “David Seagle”.
2. The Domain Name and Registrar
2.1 The disputed domain name <star-alliance.net> (the “Domain Name”) is registered with Gal Communications (CommuniGal) Ltd. d/b/a Galcomm (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2009. On October 8, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 14, 2009, 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”).
3.2 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 October 15, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 4, 2009. On various dates during the course of the proceedings the Center received informal communications from the Respondent. These are discussed in greater detail later on in this decision
3.3 The Center appointed Matthew S. Harris as the sole panelist in this matter on November 6, 2009. 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
4.1 The Star Alliance is an alliance of various airlines. It was established in 1997 and the airlines that are members of the Star Alliance provide over 16,000 daily flights to 855 destinations in 155 countries. The Star Alliance operates through Star Aliance Services GmbH in Frankfurt.
4.2 The Complainant is a well-known German airline and is one of the five founding members of the Star Alliance. It is the registered proprietor of various trade marks that comprise or incorporate the term “Star Alliance” and is authorised by Star Alliance Services GmbH to prosecute trade mark infringements and to bring proceedings under the UDRP.
4.3 These various marks include International trade mark registration1 no. 674914 dated May, 2 1997 for the words STAR ALLIANCE in classes 9, 16, 39 and 42, which has proceeded to registration in various countries.
4.4 There is also Australian trade mark (i.e. registered no 724120) for the words STAR ALLIANCE , which was filed on December 1996 and is registered in the name of United Air Lines, Inc, another airline member of the Star Alliance.
4.5 The Domain Name was registered on January 23, 2003.
4.6 Court proceedings in Australia2 would suggest that “Lord Oxford” is an alias and the real name of the Respondent is David Seagle. In the registration for the Domain Name the Respondent gives his address as “Domain-Man.com, [email protected], Top Banana Piggabeen 2486”. Piggabeen is a town in New South Wales, Australia.
4.7 It appears the Respondent has been involved in various proceedings under the Policy in respect of registrations where he has used various names including “Robert Seagle”, “Mike Smith” and “Mr Oxford”. Relevant cases identified in the papers before the Panel are:
(i) The Chancellor, Masters and Scholars of the University of Oxford v. DR Seagle,
WIPO Case No. D2000-0308, (<oxford-university.com>);
(ii) The Chancellor, Masters and Scholars of the University of Oxford v Dr Seagle t/a Mr. Oxford- University
WIPO Case No., D2001-0746 (<university-of-oxford.com>);
(iii) Macquarie Bank Limited v. Robert Seagle aka Oxford University,
WIPO Case No. D2003-0374 (<macquarie-bank.com>);
(v) Westpac Banking Corporation v. Sir Oxford University aka David Seagle Doc Seagle and Mr Oxford Univerity,
WIPO Case No. D2003-0250 (<westpac-bank.com>);
(vi) America Online, Inc. v. Oxford University a/k/a Oxford U – Domains for Sale Domain-Man.com, NAF Claim Number FA0206000114654 (<7aol.com>, <aol6.com>, <aolnorth.com>, <aolprime.com>, <aolseven.net>, <aolseven.org>, <aolta.com>, <aolus.net>, <northaol.com>, <primeaol.com>, <americaonlineinc.net>, <americaonlineinc.org>, <americaonlines.net> and <americaonlines.org> and <amiricaonlines.com>);
(vii) Harvey Norman Retailing Pty Ltd v Oxford University,
WIPO Case No. D2000-0944 (<harveynorman.net> and <harveynorman.org>).
4.8 The Macquarie Bank Limited cases supra appear to have been followed by at least two sets of proceedings against the Respondent in the Australian courts. The decision of the Australian Courts in Macquarie Bank Limited v Seagle ACN 008 583 5423 suggests that the Respondent proceeded to register no less than seven additional domain names incorporating the “Macquarie” name.
4.9 At least recently, the Domain Name has been used for the purposes of a domain name parking and pay per click website. The “sponsored links” displayed on the page in question appear for the most part to be airline or air ticket related.
4.10 On September 22, 2009 the Complainant's lawyers sent the Respondent a letter by email. It referred to the Complainant's trade marks and sought transfer of the Domain Name by September 30, 2009.
4.11 In an email response on September 24, 2009 the Respondent stated:
“www.star-alliance.net is mine and should be pointing to www.UnitedSpaceAgency.com – blame “seedo parking” for whats on it now”
and
“so... are you threatening me or are you offering to buy the domain from me?”
4.12 There then followed extensive further email correspondence. Much of the content of the various emails sent by the Respondent in the course of that correspondence was ill-conceived and vitriolic in character. In one of those emails he offered to sell the Domain Name to the Complainant for “$50,000”.
4.13 As has already been mentioned earlier in this decision, on various dates during the course of these proceedings the Center received informal communications from the Respondent. This included an email on October 19, 2009 in which the Respondent stated as follows:
“I am unsuprised to see WIPO seeking to steal from me again on behalf of the rich and powerful and for a fee and a wink ;-)
Luftwafhasen and Rauschhofer Rechtsanwälte (Sekretariat) ... (whatever that means) who have yet to show me what connection they have with Luftwafhansa, other than to CAUSE PROBLEMS on their behalf
MY domain www.Star-Alliance.net is allied with www.UnitedSpaceAgency.com and www.Air-Alliance.net. and many other domains.
I'm a legend in my own mind, if not in my own time, which is the future. One a lot better than we're headed for ... see my ‘www.SavingThePla.net'
BOTH the names “UnitedSpaceAgency” and “Star-Alliance” have been organizations thought up and used by science fiction authors, WELL BEFORE your client (or I) subverted them for a trade or design idea name. See Analog.
Seedo Was not authorised to adjust my website to offend your client by automatically offering competitors with better (or worse) ‘deals'. By all means sue them, they are making advertising dollars out of such subversion and Galcom will not permit it to be pointed elsewhere whilst you are involved, so I can't even put an argument there, can I?
This is a Cartel, not an Alliance, and its design is to ELIMINATE competition by force, of arms or MONEY, where once again there is a huge difference between ‘the parties' and myself, here on the breadline in Australia trying to improve things.
Your hands are tied, like mine, [... ], if you waqnt to keep your well paid job dispensing injustice, or being part of it. Still, do what you can to make things more fair, rather than less. I've been unable to contact the CEO of Luftwafhansa, who, on their website seems like a nice enough bloke
One more point...
www.StarAlliance.net belongs to a non-associated company of any of us.:- here it is, (in part) for those without a browser
STAR ALLIANCE FOR ALL
Promotes Quality-of-Life Peace Ethics for all since 1985 Donations to the STAR ALLIANCE Foundation are IRS tax-deductible throughout the United States clearly your client has STOLEN the name that it now wants to steal from me
Lord Oxford”
4.14 The Domain Name continues to be used for the purposes of a domain name parking and pay per click website as at the date of this decision.
5. Parties' Contentions
A. Complainant
5.1 Under the heading “the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights” the Complainant refers to its various trade marks and claims that the “.net” TLD and the fact that the Domain Name contains a hyphen is of no significance.
5.2 The Complainant contends that there is no evidence that the Complainant is using the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. It makes reference to the parking page use of the Domain Name and claims that the Respondent is using the Domain Name to receive click through revenue.
5.3 The Complainant further contends that the Respondent is neither commonly known or was ever known by the name “Star Alliance” and that the Respondent has not at any time been authorised by the Complainant to use those words.
5.4 Reference is also made by the Complainant to the email correspondence between the parties and the Respondent's offer to sell the Domain Name for “$50,000”.
5.5 In the circumstances, the Complainant asserts that the Respondent has no legitimate right or interest in the Domain Name.
5.6 So far as bad faith registration and use are concerned the Complainant contends:
(i) that the STAR ALLIANCE mark is distinctive and has no meaning in any language other than as a trade mark and therefore “[i]t is highly unlikely for another person to choose that name without the Complainant and its airline alliance in mind and the possibility that internet users will confuse it for the Complainant's trademark”;
(ii) that the Respondent falsely represented in his registration agreement with the Registrar that the domain name did not infringe other party's rights. This warranty it is said would have “at least required” the Respondent “to type in the word the Respondent wanted to register as a domain name in a search engine or trademark search system”;
(iii) that the Respondent's use of the Domain Name in connection with a domain name parking page falls within the scope of paragraph 4(b)(iv) of the Policy;
(iv) that the offer to sell the Domain Name in return for “$50,000” indicates that Respondent acquired the Domain Name primarily for the purpose of selling it to the Complainant for a consideration in excess of out his out of pocket expenses and that therefore the Respondent's activities fall within the scope of paragraph 4(b)(i) of the Policy; and
(v) that the previous cases in which the Respondent has been involved establishes a pattern of registering domain names that are uniquely related to other companies or institutions to capitalise on their reputation and goodwill.
B. Respondent
5.7 The Respondent did not file any formal Response to the Complainant's contentions.
6. Discussion and Findings
6.1 There are no exceptional circumstances within paragraph 5(e) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response.
6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and
(iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)).
6.3 However, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”.
A. Identical or Confusingly Similar
6.4 The Panel accepts that the Complainant is the owner of various registered trade marks through the mechanism of at least one International Registration for the words “STAR ALLIANCE”. Further, it accepts that the only sensible reading of the Domain Name is as the words “Star Alliance” with the space between those two words replaced with a hyphen and combined with the “.net” TLD.
6.5 In the circumstances, the Domain Name is virtually identical to trade marks in which the Complainant has rights. The Complainant has easily made out the requirements of paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
6.6 Many panels have adopted the approach of saying that where prima facie none of the examples of rights or legitimate interests laid out in paragraph 4(c) of the Policy apply, then the burden of proof passes to the respondent to show such a right or interest. It is an approach that the Panel could perhaps also have followed in the current case. However, the Panel prefers to deal with this issue in a somewhat more direct manner.
6.7 It is clear in this case that the Domain Name is being used by the Respondent for use with a “domain name parking” or “pay per click” service. It is possible for use of a domain name for a parking site with advertising revenue generating sponsored links to provide a legitimate interest within the meaning of paragraph 4(a)(ii) of the Policy. For example, if a registrant intends to profit from the descriptive nature of the word or words in the domain name without intending to take advantage of a third party's rights and reputation in that term, then it may have a legitimate interest in the domain name (see Section 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions). On the other hand, if the owner of the domain name in question is using it with such a service in order to unfairly capitalise upon or otherwise take advantage of a similarity with another's mark then such use would not provide the registrant with a right or legitimate interest in the domain name (see, for example, the decision of the three member panel in Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright,
WIPO Case No. D2007-0267).
6.8 The Panel also accepts that the Respondent's offer for sale of the Domain Name in correspondence prior to these proceedings indicates that the Domain Name was registered and is currently held with a view to its potential onward sale. There is generally nothing per se illegitimate in selling or dealing in domain names. However, if there is an intention by reason of the sale or threatened sale of the domain name to take advantage of the third party's rights and reputation in a trade mark represented in that domain name, then that is quite a different matter.
6.9 Essentially, therefore, in this case the assessment of rights or legitimate interests boils down to the question; is the Respondent using the Domain Name with the Complainant's marks in mind and with a view to taking unfair advantage of the reputation of those marks?
6.10 This is a question that is addressed in greater detail when assessing the question of bad faith. For the reasons that are explained in greater detail under the heading of bad faith below, the Panel has reached the unequivocal conclusion that the Domain Name has been both registered and used with a view to taking unfair advantage of the reputation of the terms embodied in the Complainant's trade marks. In the circumstances, the Panel has little difficulty in reaching a positive finding that the Respondent has no right or legitimate interest in the Domain Name. Accordingly, the Complainant has made out the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.11 As the Panel has already stated, it seems clear that the Domain Name has at least recently been used in connection with a “pay per click” or “domain name parking” service. It is now well-known how these sorts of services operate. A domain name owner “parks” the domain name with a domain name parking service provider. The service provider then generates a page that incorporates sponsored links or links to sponsored links. When an Internet user clicks on these sponsored links, the entity sponsoring that link will make a payment. This “click through revenue” is then ordinarily split between the domain name parking service provider and the owner of the domain name (see, for example, Owens Corning v. NA,
WIPO Case No. D2007-1143).
6.12 The generation of revenue from domain name parking activities is not necessarily activity in bad faith. However, it is use in bad faith within the scope of paragraph 4(b)(iv) of the Policy where the registrant is using the domain name in this manner because of its similarity to a mark or name of another person in the hope and expectation that that similarity would lead to confusion on the part of Internet users and result in an increased number of Internet users being drawn to that domain name parking page (see, for example, Express Scripts, Inc. v. Windgather Investments Ltd, supra). The confusion that is usually relevant here is the confusion that draws the Internet user to the respondent's website in the first place (for example, confusion that leads an Internet user to type the domain name into his Internet browser). It does not matter that when the Internet user arrives at the pay per click site that it then becomes clear that the website is unconnected with the trade mark holder.
6.13 It is clear beyond any reasonable doubt that the Domain Name has in this case been used to take advantage of confusion with the Complainant's mark. The Panel is persuaded that the reputation of the STAR ALLIANCE mark as used by the Complainant (and other members of the Alliance) is substantial and extends world wide. The words “Star Alliance” are most obviously associated with the trade mark of the Complainant.
6.14 The suggestions by the Respondent in various emails that the Domain Name was registered in connection with the “United Space Agency” strikes the Panel as fanciful. It is a claim that does not form of any formal Response and is wholly unsubstantiated by any supporting evidence. It is also belied by the fact that the Domain Name has not been used for any such purpose since it was registered six years ago.
6.15 Similarly, the assertions by the Respondent that Sedo choose the specific links on the page operating from the Domain Name do not assist the Respondent. The words “Star Alliance” are not in any manner descriptive of airline services and yet the links predominantly relate to airlines and air tickets. For the reasons set out by the three member panel in Hydentra, LP. v. Xedoc Holding SA,WIPO Case No. D2008-0454, this of itself is indicative of bad faith even if the Respondent did not and does not choose the exact links that appear.
6.16 Further and in any event, there is the offer of the sale of the Domain Name for $50,000. So far as the offer for sale is concerned it is difficult to see why it is that the Domain Name might command such a value unless it is because of its associations with the Complainant's mark.
6.17 Further, in the Panel's view the past activities of the Respondent unequivocally show that the Respondent a serial cybersquatter who has engaged in the registration of a large number of domain names incorporating the marks of others with a view (whether by means of sale, domain name parking or otherwise) to taking personal advantage of the reputations that have been developed in those marks. The registration and use of the Domain Name in this case appears to be simply the latest example of the Respondent's activities in this regard.
6.18 There is also the usage by the Respondent of the pseudonym “Lord Oxford” to disguise his identity, which is also suggestive of bad faith.
6.19 In short, when considered as a whole, the evidence of bad faith registration and use in this case is overwhelming.
6.20 That is not to say that the Panel entirely accepts all the contentions of the Complainant. First, the Panel does not accept the Complainant's assertion that the term “Star Alliance” has no meaning in any language other than as a trade mark. It is two ordinary words in combination and it is not impossible to envisage usages of these words that are unconnected to the Complainant's mark. It is simply that on the facts of this case the Panel is unequivocally of the view that it was because of the trade mark significance of this combination of words that the Domain Name was actually registered and used.
6.21 Second, the Panel is unpersuaded by the Complainant's claims by reference to the representations and warranties contained in the registration agreement agreed by the Respondent. It is somewhat unclear what the Complainant is arguing in this respect but it appears to be suggesting that the existence of these contractual terms means that the Respondent must have, or is likely to have, undertaken some form of trade mark registry or search engine search before registering the Domain Name. The Panel is unconvinced that as a matter of fact this necessarily follows.
6.22 Nevertheless, the rejection of these contentions by the Panel makes no difference to the outcome of this case. The Complainant has more than adequately made out the requirements of paragraph 4(a)(iii) of the Policy
6.23 It is appropriate to add one last comment in this case. As has already been recorded in this decision, in the course of correspondence the Respondent has made various comments that are vitriolic in character. At times he has been abusive. His comments have included allegations of bullying by the Complainant and various references and allusions to Nazi Germany. On the papers that the Panel has seen, these claims of bullying and improper conduct have no foundation. The Complainant has done no more than seek to enforce its rights under the Policy against a person who for a number of years has demonstrated scant regard for the rights of others. In doing so, both the Complainant and its legal advisors appear to have conducted themselves with commendable professional restraint.
7. Decision
7.1 For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <star-alliance.net> be transferred to the Complainant.
Matthew S. Harris Sole Panelist
Dated: November 13, 2009
1 i.e. a Madrid Agreement / Protocol trade mark application.
