As reported by Elliot today, Lufthansa airlines won a UDRP case over the domain LH.com.
Lufthansa relied on a a german common law trademark whcih they said was established in 1945. However the airline did not file for an actual trademark on the term LH until 1999.
The domain was acquired by the current holder in 2004.
First let me note that it was a three panel decision and the vote was 2-1 in favor of Lufthansa.
The was an dissenting opinion issued by David E. Sorkin who voted in favor of the domain holder.
There are many problems with this decision.
For one I do not Lufthansa using this mark.
I just went thought their whole site and I can find no reference to the term LH.
I do not find one instance where they refer to their company as LH, or use it as one would expect an important mark to be used.
Certainly this is quite differnet from american airlines that uses the term “AA” all over their site and in advertising.
The only connection I can find for the term LH to Lufthansa is that there flight numbers all have LH in them
So if you were flying from new York to Berlin you might be on flight LH405.
That’s it. This is the only place I can find on there whole site, and they have a lot of material, the term LH.
Interestingly even in their history of Lufthansa on their site where they list milestones in the airlines history dating back to 1926, their is not one mention of the term “LH”, and certainly not any refernce to the use of LH in 1945 or their trademark registration in 1999.
Now for the language in the decision.
The panel said in part find for Lufthansa:
“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.”
This is a problem for all domainers.
The panel goes on to say:
“”””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.””
The panel is thereby holding against the domain holder because the domain holder had in it words a ” mass acquisition of two-letter domain names”
The panel therefore suggests if the domain holder only owned 1 or 2, two letter domains the ruling might have been different?
The panel also took issue with the domain holder offering to lease the domain to Lufthansa.
“The Panel finds that an offer to rent or lease the domain name for an amount in excess of reasonable costs also supports findings of bad faith registration and use”
It certainly did not help the domain holder that some of the links on the parked page went to what the panel said was competing travel related businesses.
The bottom line.
A very valuable and very generic two letter domain was taken by the panel and given to Lufthansa, based on trademark of what appears to be a very lightly used term by the trademark holder.
LH.com is not famous in my opinion. I have never heard of it until today. I have never seen it in a ad for Lufthansa and as I said I can’t find any reference to its use on its site, other than in its flight numbers.
I think Lufthansa has no more right to the LH term because of its use in the flight numbers than it does in the numerical portion of the flight number.
In his dissent Mr. Sorkin stated in part:
“”””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.
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. 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.””””
I agree.
How can you be found to be taking advantage of a mark which the trademark holder doesn’t even use?
No one is going to LH.com thinking about Lufthansa because no one know of the mark or Lufthansa use of it.
Finally if cases like this are allowed to stand which declares parking pages to not be bona fide offering of goods or services, we are all going to have a problem.
Fortunately in this case it appears the domain holder has deep pockets and already has a federal lawsuit on this same issue pending.
An absolutely horrific decision which sets an even worse precedent.
I hope the ICA is all over this.
Decision was bad, but the legal defense was worse–incompetent and needs to be replaced for the NY case. Multitude of mistakes and bad judgments. Case should have been a slam dunk win. Not sure what is expected the ICA do.
I’ll bet I could find at least 15 trademarks utilizing the letter “L” and “H” with time-priority dates superior to the birth of domain names.
Based on this panel’s terrible decision; I guess all of them have the legal rights to LH.com as well.
No domainer; or anyone else who cares about right and wrong; should ever (again) fly Lufthansa.
I know I won’t.
Once again to me the most shocking part of this decision is that the domain was generic, the use of the trademark non-existent and then the two findings by the panel, one that the use of a parked page is not a bona fide offering or good or services and that domain holders are going to be treated differently based on the number of domain they own.
Not sure what the ICA can do.
The domain holder had representation and a decision was rendered.
The case that is now in federal court is not really an appeal of the UDRP decision, but a separate action.
Therefore the UDRP decision is out their to be cited by others as precedent, and I don’t think there is anything the ICA or any domainer can do about it.
Once Lufthansa’s been beaten in an actual court of law, wise domain defense legal counsel will use the case as a strong counter to the unfounded UDRP decision; including the excellent, detailed basis’ FMA is employing to beat them; in future cases with similar factors.
I think the judge/jury will take Lufthansa, and the NAF, to the woodshed.
Though the UDRP decision was incorrect and unfounded, since FMA has the funds to fight Lufthansa in court (which most domainers do not), this could actually end up as a big net gain for the industry long term.
Steven
According to attorney’s who practice in this area,
A US Federal Court Decision will not be binding per se on the UDRP panels but will be cited by them.
However it may be 1-2 years or more to this case gets heard and a ruling is made.
FMA needs to do a better far job in court than it did with its NAF case. That was an amateur legal performance.
Mr. Black
Agree 100% with you.
They had an extremely strong case and to get bounced out like they did, was an extremely bad showing.
Moreover they allowed the panel to basically make up new rules as they went along.
Terrible
As domainers we need to try to see it from a non domainers perspective to across the board maximize the chances of being able to keep IP that is rightfully ours.
Looking from the perspective of the general internet users experience, domainers holding up premium domains with parking pages is NOT seen to be in the overall interest.
It is the perceived hoarding that fuels these biased decisions. If the names were seen to be productively used and not just taken out of use it would go a long way to protecting rightfully owned IP.
If in 10 years the name will still likely be a parking page, they will try to bend the rules as much as possible to stop this “waste of resources” that could benefit the general internet community.
The answer is for domainers in general to make efforts to develop good names into what is seen to be productive use, and to make available for sale (when a top offer comes along)
In reality it’s those who very rarely sell and very rarely develop who help put everybody’s domains at higher risk.
Greg
Don’t fall for it.
In this country you are allowed to own all the vacant lots you want.
You are allowed to own all the undeveloped real estate you want.
There is no law or requirement that you build on it.
No one can make you build on it.
You are allowed to own all the major art work you want.
There is no law that you have to display it or lend it to a museum so others may see it.
There is no law that says you cannot own all the domains you want.
There is no law that says you have to develop them.
There is a law that says you cannot infringe on famous trademarks.
But LH.com is not a famous trademark.
This was simply a bad decision.
The airlines does not use this mark. They do not use it in its advertising, they do not even use it once anywhere on their site.
Other than including it in their flight numbers, I see no connection to the very generic two letter term.
We have to fight all attempts to treat domains differently than any other asset.
Don’t fall for it.
Admin
You say “Don’t fall for it”
We’re talking about the REALITY of domains being taken away from domainers. Yes fight, but accept that domainers are losing domains on mass. I’ve lost many I should have been allowed to keep.
You say “This was simply a bad decision.”
85% of decisions go against domainers – they may very well all be bad decisions – but rather than just say these decisions are wrong, and lose domains on mass, we need to fight and also to ask ourselves why.
Maybe it shouldn’t be but in reality land ownership is a different situation, when was the last time somebody made an IP claim against somebody and successfully took a piece of land.
There are reasons that 85% of cases are decided against the existing domain holder. Pretend or, “don’t fall for it” if you like. That won’t change thousands of domains being taken from existing holders, we need to fight, AND look at why these decisions are being made this way.
Parking pages and mass domain hoarding are not seen to be productive for the internet in general. Many non domainers see it as the equivalent of buying a house and leaving it vacant, when there is a housing shortage (where 2 people want the same house) On one hand they have somebody who wants the house and will probably use it well, and on the other they have somebody who want to have 10,000’s of houses and not use any of them.
This non-domainer perception is why the IP laws continue to be “bent” as far away from domainers rights as they can be. Those with foresight just see this situation getting worse.
It is a battle between domain holders and trademark holders, but the general internet community thinks they have more to gain from the trademark holders owning a couple of domains each and developing the majority well than domainers owning 10,000’s of parking pages each.
Like it or not if every domain was developed into what people would consider worthwhile sites then trademark claims would carry much less weight.
Greg
Greg
A majority of the 85% of decisions that go against the domain holders is because a vast majority of these are no brainer trademark violations.
So the 85% is a deceiving stat. You have to take out all the really crap cases (most of which are not even defended) from the cases where there is real question of infringement.
Here are some decisions for the week of Feb 28: (Just picked that week by random):
Liberty League International got
libertyleaguetruth.com
Baylor University got
baylormedicalcenteratirving.com, baylorhealthcaregarland.com,
baylormedicalcenterhospital.com, baylorregionalmedicalcenter.com,
baylorcollegemedicine.com, baylorschools.org, baylorbanks.com
Advanta Corp. got
advantahome.net
Diners Club International got
sydneydinersclub.com, sydneydinerscard.com
McKee Foods Kingman, (owner of little debbie brand) got
littledebbie.info
State Farm Mutual got
statefarmrecruiting.com
Shutterfly.com got
hutterfly.com, chutterfly.com, dhutterfly.com,
hsutterfly.com, hutterfly.com, sgutterfly.com,
shetterfly.com, shhutterfly.com, shotterfly.com,
shtuterfly.com, shurterfly.com, shutherfly.com,
shutrerfly.com, shuttarfly.com, shutteefly.com,
shutteerfly.com, shutterefly.com, shutterffly.com,
shutterfli.com, shutterflly.com, shutterflt.com,
shutterfy.com, shutterrfly.com, shuttertfly.com,
shuttetfly.com, shuttetrfly.com, shuttherfly.com,
shuttirfly.com, shuttorfly.com, shuttrefly.com,
shuttrerfly.com, shuttrrfly.com, shutturfly.com,
shuttwrfly.com, shutyerfly.com, shuutterfly.com,
shuyterfly.com, shytterfly.com, sjutterfly.com,
sshutterfly.com, suhtterfly.com, wshutterfly.com
Bank of America got
bankofamrica.com, bankofamericacreditcards.com,
abnkofamerica.com, bankofamercica.com, bankofamarika.com,
bankocamerica.com, bank-of-america-mortgage-loans.info,
bankaamerica.com, bankofamericamyaccount.com, bankofamrcia.com,
bankofamiraca.com, bankofamirca.com, bankofcamerica.com
The vast majority of cases that go against the domain holder are horrible cases that you or I would vote for the trademark holder. They involve in domain containing a famous mark or instances where the domain holder owned tens or hundreds of miss spellings, or typo variations of trademarks.
If every name was developed I agree that the trademark holder would have a harder time getting the domain, but this is just not going to happen for those owning thousands of domains.
Again there is no law against owing thousands of domains.
Your point that people do not like those who own vacant land when there is housing needed for people is just my point, you may not like it, but its perfectly legal and like it or not, as long as the owner pays there property tax there isn’t anything anyone can do about it.
Ok, 85% contains many of the obvious cases, the point this figure is used to make is that too many decisions go against domain holders, it’s really the cases going against domainers where many could use the domain in good faith which are the ones we’re worried about.
When you say “as long as the owner pays there property tax there isn’t anything anyone can do about it.” That is the whole point of the LH.com story, and our point of concern – we believe it to be generic – however there is apparently something people can do about it in some cases successfully.
This is a bad one but not the only case decided against a domain holder that should have been decided in their favour.
I wont post again and let you have the last word since this isn’t a forum but your blog 🙂
Well if LH did have the trademark registered before the reg of lh.com then they should have certainly won. Personally, I don’t like FmA because they have many domains which I would like to buy but they have a no sale policy. Does anyone know how much LH paid for the domain after court?