Interesting case and decision and not in a good way..
Complainant is Deutsche Lufthansa AG (“Complainant”), represented by Dennis J. Mondolino of McDermott Will & Emery LLP, of
. Respondent is Future Media Architects, Inc. (“Respondent”), represented by James E. Rosini of Kenyon & Kenyon LLP of New York, USA . New York, USA
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lh.com>, registered with Moniker Online Services, Inc.
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.
Notable to mention dissenting opinion at the end:
I respectfully dissent. I simply do not believe it is likely that Respondent’s reasons for acquiring the disputed domain name were related in any way to Complainant or its mark, and therefore would not find that the domain name was registered in bad faith, as required by Paragraph 4(a)(iii) of the Policy.
I reach this conclusion primarily for two reasons: First, based upon the evidence before the Panel I doubt that Respondent was even aware of Complainant’s LH trademark when it acquired the domain name, and mere constructive notice of a trademark is insufficient under the Policy. See, e.g., LULU Enters. Inc. v. The eBrand Factory, D2006-1253 (WIPO Nov. 29, 2006). Second, usage of LH as Complainant’s mark appears to be quite rare compared to other senses in which LH is used, making it unlikely that Respondent would have selected the disputed domain name in order to target Complainant’s mark even if it had been aware of the mark at the time.
The majority is correct in viewing the four sets of circumstances set forth in Paragraph 4(b) as merely exemplary rather than exhaustive, and it is not inappropriate to consider the totality of circumstances in evaluating whether a domain name registrant has acted in bad faith. But such bad faith, to satisfy Paragraph 4(a)(iii) of the Policy, still must be directed at the Complainant or its mark. See, e.g., Asset Mktg. Sys., LLC v. Silver Lining, D2005-0560 (WIPO July 22, 2005) (noting that “[t]he essence of the Complaint is an allegation of bad faith, bad faith targeted at the Complainant”);
v. RareNames, WebReg, D2007-0489 (WIPO June 7, 2007) (requiring that “the trademark owner or its mark [be] targeted by the domain name registrant”). Terana, S.A.
I would find that Complainant has failed to meet its burden of proving bad faith registration, and would deny the Complaint on that basis.
David E. Sorkin
There is an ongoing discussion about the case on DNF