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fight for lh.com (2008) - Deutsche Lufthansa AG v. Future Media Architects, Inc.

Discussion in 'Domain Names & Parking' started by nonin, Feb 16, 2012.

  1. nonin

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    Hi guys... as I am quite deep into domains - this read was very interesting to me. My source ... so I decided to share it here :/ enjoy.

    Deutsche Lufthansa AG v. Future Media Architects, Inc.
    Claim Number: FA0802001153492

    PARTIES
    Complainant is Deutsche Lufthansa AG (“Complainant”), represented by Dennis J. Mondolino of McDermott Will & Emery LLP, of New York, USA. Respondent is Future Media Architects, Inc. (“Respondent”), represented by James E. Rosini of Kenyon & Kenyon LLP of New York, USA.


    REGISTRAR AND DISPUTED DOMAIN NAME
    The domain name at issue is <lh.com>, registered with Moniker Online Services, Inc.

    PANEL
    The undersigned certify that they have acted independently and impartially and that to the best of their knowledge, each has no known conflict in serving as Panelist in this proceeding. Professor David E. Sorkin, Mr. David Tatham, and Hon. Carolyn Marks Johnson (Chair) sit as Panelists.

    PROCEDURAL HISTORY
    Complainant submitted a Complaint to the National Arbitration Forum electronically February 25, 2008; the National Arbitration Forum received a hard copy of the Complaint February 27, 2008.

    On February 26, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <lh.com> domain name is registered with Moniker Online Services, Inc. and that the Respondent is the current registrant of the name. Moniker Online Services, Inc. verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

    On March 4, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 24, 2008, by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@lh.com by e-mail.

    Respondent filed a timely Response that was received and determined to be complete March 24, 2008.


    Complainant filed an Additional Submission March 31, 2008, pursuant to The Forum’s Supplemental Rule #7. The Panel considered the Additional Submission as set out below.

    The Panel read but elected not to consider Respondent's timely filed Additional Submission. The Panel was initially under the impression that the Additional Submission was late; however, after the Panel became aware that it was timely and after further review, the Panel finds that the Additional Submission adds nothing new to the discussion.

    On April 3, 2008, pursuant to Complainant’s request to have the dispute decided by a three-member Panel, the National Arbitration Forum appointed Professor David E. Sorkin, Mr. David Tatham, and Hon. Carolyn Marks Johnson as Panelists.

    RELIEF SOUGHT
    Complainant requests that the domain name be transferred from Respondent to Complainant.

    PARTIES’ CONTENTIONS
    A. Among other allegations, Complainant makes the required following allegations in its Complaint:

    1. Respondent registered a domain name that is identical to or confusingly similar to a mark in which Complainant has rights.
    2. Respondent has no rights to or legitimate interests in the disputed domain name.
    3. Respondent registered and used the domain name in bad faith.

    B. Among other responses, Respondent set out the following in its Response:

    1. Respondent notes that the disputed domain name was registered in 1995 and acquired by Respondent in 2004.
    2. Respondent claims rights to and legitimate interests in the domain name and that it has made a bona fide use of the domain to “redirect consumers to its own search engine located at <oxide.com> before it received notice of Complainant’s alleged rights.”
    3. Respondent did not act in bad faith because Respondent “did not know that Complainant claimed any trademark rights to it.”
    4. Respondent contends that Complainant seeks to have the Panel assist it in awarding it rights in its International Airline Traffic Association (“IATA”) Code.
    5. “Hundreds if not thousands” of entities seek to use the “lh” mark [sic] and have offered Respondent up to $1,000,000. U.S. dollars for it.
    6. Respondent urges that Complainant attempted to buy the domain name from Respondent; but Respondent offered only to lease but not sell the domain name to Complainant.
    7. Respondent charges that Complainant is “intent on obtaining the Domain Name ‘by hook or crook,’ … [and] has resorted to misuse of the Policy to hijack Respondent’s Domain Name or exert leverage on Respondent in the negotiation of a lease arrangement.”
    8. Respondent concludes that Complainant has shown no rights in the mark and has failed to prove the three required factors.

    C. Complainant makes the following points in reply in the Additional Submission:

    1. Complainant’s use in commerce of the LH mark is sufficient to have established secondary meaning in the mark “to identify its airline flights and travel services and to establish trademark rights prior to Respondent’s acquisition and use of the domain name <lh.com>.”
    2. The IATA designator in this case “corresponds with Complainant’s Corporate
    Name and is identical to its mark LH.”
    3. Complainant has a registration for the LH mark.
    4. Complainant also had common-law rights in the LH mark that date back to possibly as early as 1945.
    5. Respondent’s contentions of rights in the domain that date back to 1995 are misleading.
    6. Respondent “first began operating a web site at <lh.com> sometime in 2004.”
    7. The purported factual affidavit of Respondent to support Respondent’s allegations is not reliable and the statements within it are conclusions and not fact statements as is required and should be disregarded.

    PRELIMINARY MATTER: CONCURRENT LEGAL PROCEEDINGS

    The Panel is aware that Respondent purports to have filed an action in the United States District Court for the Southern District of New York (Case No. 08 CV 02801) against Complainant seeking a judgment that Respondent has not violated any rights of Complainant with the registration and use of the <lh.com> domain name and that Complainant has no protectable rights in the LH mark. However, Respondent produced no evidence to support the allegation that a lawsuit is pending. Further, Complainant contends that Respondent has not yet served Complainant with any federal complaint. Moreover, Complainant alleges that even if it were served with a federal complaint, Respondent’s filing of federal court proceedings indicates an improper attempt to delay or usurp the UDRP proceedings. See RMC of Ill. Inc. v. Tex. Int’l Prop. Assocs., FA 998091 (Nat. Arb. Forum Aug. 14, 2007) (where the respondent chose “a court of dubious jurisdiction” and instituted court proceedings on or about the same time that an answer was due in this administrative matter, the panel chose to proceed with a decision under the authority of Rule 18(a) and found the respondent’s actions to indicate an attempt to delay or usurp the UDRP process and such actions are generally frowned upon).

    Under Rule 18(a) of the UDRP, the Panel has the discretion to suspend or terminate the administrative proceeding, or to proceed to a decision. Although Respondent has asserted that this matter would be decided by the court proceeding, the Panel finds no proof to support this allegation and finds that it is appropriate for this Panel to proceed with its analysis and render a decision in this proceeding. See Creative Paradox LLC v. Talk Am., FA 155175 (Nat. Arb. Forum June 23, 2003) (choosing to proceed with a decision under the authority of Rule 18(a), despite the filing of a lawsuit over the parties respective trademark rights in federal court); see also BPI Commc’ns, Inc. v. Boogie TV LLC, FA105755 (Nat. Arb. Forum Apr. 30, 2002) (deciding to proceed despite the complainant filing suit in federal court for trademark and service mark infringement).

    FINDINGS

    Complainant established that it has legal and common law rights in the LH mark through trademark registrations, continuous use, and fame. Complainant registered the LH mark in Germany (Reg. No. 339 47 202, issued Nov. 22, 1999, filed on Aug. 9, 1999), Switzerland (Reg. No. 476,792, issued Oct. 31, 2000), and with the Office of Harmonization for the Internal Market (Reg. No. 001472349, issued May 18, 2001).

    The Panel finds that Complainant’s rights in the LH mark date back to the filing date of the German mark.

    Complainant’s LH mark is not generic.

    Complainant established common law rights in the LH mark, dating possibly to 1945.

    Complainant’s common law rights in the LH mark predate Respondent’s purchase of the registration of the <lh.com> domain name.

    Respondent was not the entity that originally registered the disputed domain name in 1995.

    Respondent did not challenge Complainant’s allegations that Respondent’s business using the <lh.com> mark was not created until 2001.

    Respondent concedes he purchased the disputed domain name and the registration under the Policy refers to the date when the transfer from the original registrant to Respondent took place.

    Respondent engages in the mass acquisition of two-letter and three-letter domain names.

    Respondent’s business model involves the indiscriminate acquisition and use of as many such domain names as possible.

    Respondent claims that “Hundreds if not thousands” of entities seek to use the “lh” mark [sic] and have offered Respondent up to $1,000,000 U.S. dollars for it.

    The disputed domain name is identical to Complainant’s mark and is not generic.

    DISCUSSION
    Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 to 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
    (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.

    Identical to and/or Confusingly Similar

    Complainant alleges rights in the LH mark through trademark registrations, continuous use, and fame. Complainant registered the LH mark in Germany (Reg. No. 339 47 202, issued Nov. 22, 1999, filed on Aug. 9, 1999), Switzerland (Reg. No. 476,792, issued Oct. 31, 2000), and with the Office of Harmonization for the Internal Market (Reg. No. 001472349, issued May 18, 2001). The Panel finds that Complainant established rights in the LH mark pursuant to Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).

    Moreover, the Panel finds that Complainant’s rights in the LH mark pursuant to Policy ¶ 4(a)(i) date back to the filing date of the German mark. See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO dated back to the filing date of the trademark application).

    The Panel further finds that Complainant’s LH mark is not generic. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 7, 2007) (finding that because the complainant had received a trademark registration for its VANCE mark, the respondent’s argument that the term was generic failed under Policy ¶ 4(a)(i)).

    Complainant also alleges common law rights through wide-spread, long-time, continuous and prominent use dating back perhaps as far back as 1945. The Panel finds that Complainant made the necessary showing to prove the requisite secondary meaning. Complainant established common law rights in the LH mark sufficient to satisfy Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Ass’n of Tex. Prof’l Educators, Inc. v. Salvia Corp., FA 685104 (Nat. Arb. Forum May 31, 2006) (holding that the complainant had demonstrated common law rights in the ATPE mark through continuous use of the mark in connection with educational services for over twenty-five years); see also Kahn Dev. Co. v. RealtyPROshop.com, FA 568350 (Nat. Arb. Forum June 23, 2006) (holding that the complainant’s VILLAGE AT SANDHILL mark acquired secondary meaning among local consumers sufficient to establish common law rights where the complainant had been continuously and extensively promoting a real estate development under the mark for several years).

    Complainant contends that its rights in the LH mark predate Respondent’s registration of the <lh.com> domain name because Complainant’s use of the LH mark possibly began as early as 1945 and likely as early as 1953. Its registration rights definitely date from as early as August 9, 1999.

    Complainant also contends that Respondent was not the entity that originally registered the disputed domain name in 1995; that Respondent’s business was not created until 2001; and, further, that the <lh.com> domain name was under the control of a third party until July 13, 2004, when Respondent, as Complainant puts it, “appear[ed] on the scene for <lh.com>.” The record appears to support Complainant’s position in this regard; Respondent concedes he purchased the disputed domain name, and the registration under the Policy refers to the date when the transfer from the original registrant to Respondent took place. See BWR Resources Ltd. v. Waitomo Assoc. Ltd., D2000-0861 (WIPO Oct. 4, 2000) (finding that registration refers to the date when the respondent acquired the name from the person who first registered it.); see also Gewista-Werbegesellschaft mbH v. Unasi Inc., D2005-1051 (WIPO Nov. 22, 2005) (“[H]aving reviewed earlier decisions of panels, the Panel believes, that the fact, that the Respondent did not register the disputed domain name itself but acquired it from the previous owner, does not mean that the Respondent has not ‘registered’ the Domain Name within the meaning of the Policy since there is no reason to differentiate between a direct registration and registration after transfer. The domain name at issue was in fact “registered” within the meaning of the Policy when it had been acquired by the Respondent [from a prior registrant].”). The Panel also finds that Respondent could not possibly have been the registrant of the domain name prior to Respondent’s formation.

    Moreover, the Panel notes, Complainant’s rights in the LH mark need not predate Respondent’s registration of the disputed domain name in order to satisfy the requirements of Policy ¶ 4(a)(i). See Javacool Software Dev., LLC v. Elbanhawy Invs., FA 836772 (Nat. Arb. Forum Jan. 2, 2007) (holding that a complainant need not show that its rights in its mark predate the respondent’s registration of the disputed domain name in order to satisfy Policy ¶ 4(a)(i)); see also CDG v. WSM Domains, FA 933942 (Nat. Arb. Forum May 2, 2007) (“A plain reading of ¶ 4(a)(i) imposes no burden on a Complainant to demonstrate that it has either exclusive right to a mark or that such rights predate the registration of a domain name.”).

    Complainant contends the <lh.com> domain name is identical to Complainant’s LH mark. The disputed domain name utilizes Complainant’s mark in its entirety adding only the generic top-level domain (“gTLD”), “.com.” Addition of a gTLD is irrelevant in a Policy ¶ 4(a)(i) analysis. The disputed domain name is identical to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).

    The Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(i).

    Rights to or Legitimate Interests

    Once Complainant makes a prima facie case to support its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).

    Complainant contends that Respondent is not now and never has been commonly known by the <lh.com> domain name. A search of the WHOIS record reveals the disputed domain name was registered to “Future Media Architects, Inc.” Complainant also contends it has never consented to Respondent’s use of the LH mark. Therefore, the Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).

    Complainant contends that Respondent currently uses the <lh.com> domain name to resolve to a web page that features Respondent’s OXiDE search engine and displays numerous sponsored links to third party websites relating to various subjects. Complainant contends that Respondent profits from receiving click-through fees for each misdirected user. The Panel finds that such use is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), and that it is not a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process).

    Complainant contends that mass acquisition of two-letter domain names does not demonstrate rights to or legitimate interests in a disputed domain name arising there from and the Panel finds that Respondent lacks rights to or legitimate interests in the <lh.com> domain name pursuant to Policy ¶ 4(a)(ii). See Bawag P.S.K. v. Future Media Architects, Inc., D2006-0534 (WIPO July 26, 2006). (“[T]he Respondent has made a business practice of registering as many three-letter domain names as it can acquire. It is evidently true that as to any one of them, Respondent uses the name to conduct business and may have acquired it from a transferor that had rights or legitimate interests in the name.”).

    However, here, Respondent’s business model involves the indiscriminate acquisition and use of as many such domain names as possible. The traditional analyses of the rights to or legitimate interests element should not apply in gross when a registrant is not seeking to use any particular domain name to conduct business, is not otherwise known by that name, and has no interest in the nature of the transferor’s rights there from.

    Thus, the Panel finds that Complainant sufficiently demonstrated that Respondent lacks rights or legitimate interests in the challenged domain name.

    Further, Complainant, in its Additional Submission, contends that Respondent offered to rent or lease the disputed domain name for consideration well beyond Respondent’s out of pocket costs. Respondent reported that he had refused an offer of $1,000,000 for the “mark.” The Panel finds that an offer to rent or lease the <lh.com> domain name supports findings of a lack of rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name); cf. Kinko’s Inc. v. eToll, Inc., FA 94447 (Nat. Arb. Forum May 27, 2000) (finding that the respondent has no rights or legitimate interests in the domain name where it appeared that the domain name was registered for ultimate use by the complainant).

    The Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(ii).

    Registration and Use in Bad Faith

    Complainant contends Respondent has engaged in a pattern of bad faith domain name registrations that prevent the owner of a trademark from reflecting the mark in a corresponding domain name as evidenced by previous UDRP disputes. See Calcar, Inc. v. Future Media Architects, Inc., FA 1080147 (Nat. Arb. Forum Nov. 6, 2007); see also Nat’l Rifle Ass’n of Am. v. Future Media Architects, Inc., FA 781430 (Nat. Arb. Forum Oct. 13, 2006); see also QNX Software Sys. Ltd. v. Future Media Architects, Inc., D2003-0921 (WIPO Feb. 26, 2004). The Panel may find Respondent has registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that the respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii)); see also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks).

    Complainant, in its Additional Submission, contends that Respondent offered to rent or lease the disputed domain name for consideration well beyond Respondent’s out of pocket costs. The Panel finds that an offer to rent or lease the <lh.com> domain name for an amount in excess of reasonable costs also supports findings of bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Wake Forest Univ. v. Needham, FA 125751 (Nat. Arb. Forum Nov. 27, 2002) (finding bad faith pursuant to Policy ¶4(b)(i) where the panel found the respondent had proposed rental fees for use of the domain names in dispute); see also STMicroelectronics Inc. v. Trabalza, FA 100637 (Nat. Arb. Forum Dec. 18, 2001) (finding bad faith under Policy ¶ 4(b)(i) where the respondent offered to rent the <stmicroelectronics.info> domain name to the complainant for $2900).

    Complainant also contends, in its Additional Submission, that Respondent’s business model essentially involves directing confused Internet users, who are in search of a legitimate business, to Respondent’s websites, which feature Respondent’s OXiDE search engine. The Panel may infer that Respondent is profiting from such use through the collection of click-through and pop-up fees for each redirected Internet user. The Panel finds that such use is likely to lead to confusion among Internet users as to Complainant’s sponsorship of or affiliation with the resulting websites and supports findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Corp. v. Out Island Props., Inc., FA 154531 (Nat. Arb. Forum June 3, 2003) (stating that “ince the disputed domain names contain entire versions of Complainant’s marks and are used for something completely unrelated to their descriptive quality, a consumer searching for Complainant would become confused as to Complainant’s affiliation with the resulting search engine website” in holding that the domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (“[T]he Panel finds that Respondent is capitalizing on the confusing similarity of its domain names to benefit from the valuable goodwill that Complainant has established in its marks. Consequently, it is found that Respondent registered and used the domain names in bad faith under Policy ¶ 4(b)(iv).”); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain); see also Velv, LLC v. AAE, FA 677922 (Nat. Arb. Forum May 25, 2006) (finding that the respondent’s use of the <arizonashuttle.net> domain name, which contained the complainant’s ARIZONA SHUTTLE mark, to attract Internet traffic to the respondent’s website offering competing travel services violated Policy ¶ 4(b)(iv)).

    Moreover, Complainant further alleges in its Additional Submission that some of the links previously featured on Respondent’s resultant website operated in competition with Complainant’s business. Complainant contends that after contact, Respondent removed competing links to travel-related services but that does not prevent the Panel from finding that such use constituted a disruption of Complainant’s business and therefore supports findings of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant).

    The Policy’s list of four circumstances demonstrating registration and use of a domain name in bad faith, merely illustrates possible situations that demonstrate bad faith. The Panel is permitted to look to the totality of the circumstances surrounding a registration and use of a domain name in determining whether bad faith is present. See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”). Taking into consideration the totality of the circumstances, the Panel finds that Respondent registered and used the disputed domain name in bad faith.

    The Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(iii).


    DECISION
    Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

    Accordingly, it is Ordered that the <lh.com> domain name be TRANSFERRED from Respondent to Complainant.



    Hon. Carolyn Marks Johnson, Chair
    David Tatham, Panelist
    Dated: April 17, 2008.