The Complainant is Germanwings GmbH of Cologne, Germany, represented by Dr. Carsten Schulte, Germany.
The Respondent is Hin und Weg Flugreisenzentrale GmbH of Munich, Germany, represented by HK2 Rechtsanwälte, Germany. 2. The Domain Name and Registrar
The disputed domain name is registered with Ascio Technologies Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 17, 2011. On July 18, 2011, the Center transmitted by email to Ascio Technologies Inc. a request for registrar verification in connection with the disputed domain name. On July 22, 2011, Ascio Technologies Inc. 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”).
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 26, 2011. In accordance with paragraph 5(a) of the Rules, the due date for Response was August 15, 2011. The Response was filed with the Center on August 15, 2011.
The Center appointed Brigitte Joppich as the sole panelist in this matter on August 24, 2011. 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 paragraph 7 of the Rules.
On September 7, 2011, the Panel issued Procedural Order No. 1 to the parties, requesting the Complainant to provide evidence that it owns trademark rights in the trademark registrations for GERMAN WINGS under paragraph 4(a)(i) of the Policy, in particular to explain the chain of license from their registered owner, Deutsche Lufthansa AG, to the Complainant. The Complainant filed a reply to Procedural Order No. 1 on September 13, 2011. The Respondent replied to the Complainant’s sumission on September 19, 2011. 4. Factual Background
The Complainant is an airline operating all over Europe and has its headquarters in Cologne, Germany.
The Complaint is based on two German trademark registrations in the name of Deutsche Lufthansa AG, namely trademark registration no. 1141894 GERMAN WINGS & DESIGN, registered on June 27, 1989, and trademark registration no. 30237548 GERMANWINGS, applied for on July 31, 2002 and registered on August 20, 2002, two International registrations based on the aforementioned German trademarks, and Community trademark registration no. 009422486 GERMANWINGS & DESIGN, applied for on September 20, 2010 and registered on February 10, 2011 (hereinafter together referred to as the “GERMAN WINGS Marks”). The Complainant provided a license agreement between Deutsche Lufthansa AG and Eurowings Flug GmbH dated August 21, 2002 referring to the German and International registrations quoted above.
The disputed domain name was registered on December 23, 1999.
The Complainant contacted the Respondent in 2002 and in 2010 with the aim of acquiring the disputed domain name. In 2010, the Complainant’s highest offer of EUR 1,000 was rejected by the Respondent. 5. Parties’ Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is identical or at least highly similar to the trademark and trade name “germanwings” used by the Complainant. With regard to the Complainant’s rights in the GERMAN WINGS Marks, the Complainant contends in the Complaint that it is a wholly owned subsidiary of Eurowings Luftverkehrs AG, in which Deutsche Lufthansa AG holds 49%. In reply to Procedural Order No. 1, the Complainant provided a license agreement between Deutsche Lufthansa AG (licensor) and Eurowings Flug GmbH (licensee) dated August 21, 2002 stating that the licensee set up a low-cost department in 1997 which became a separate company under the name “Germanwings” on October 27, 2002 and that Deutsche Lufthansa AG acquired “Germanwings” from Eurowings Flug GmbH with effect from January 1, 2008.
(2) The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant contends that the Respondent is not commonly known by the name “germanwings” as it operates under the name “Hin und Weg Flugreisenzentrale GmbH” and uses the domain name for offering its goods and services on the Internet. The Complainant further contends that it would be impossible for the Respondent to acquire any rights or legitimate interests in the disputed domain name due to the extent of the Complainant’s rights in “germanwings”.
(3) The disputed domain name was registered and is being used in bad faith. The Complainant states that the Respondent was clearly aware of the Complainant and its rights in the disputed domain name at the time of its registration as the trademark GERMANWINGS had been registered and used as early as the end of the 1980s. With regard to bad faith use, the Complainant states that the Respondent’s aim of the registration was to take advantage of the likelihood of confusion between the disputed domain name and the Complainant’s trade name “Germanwings”. The Complainant further states that it offered the Respondent EUR 500 for the transfer of the disputed domain name on July 23, 2010, that the Respondent asked for an offer in the five-figure range and that it rejected another offer from the Complainant in the amount of EUR 1,000, requesting a “real offer” and claiming earlier rights in the name “germanwings”. The Complainant argues that the disputed domain name was registered primarily for the purpose of blocking it and selling it with profit to the Complainant. B. Respondent
The Respondent argues that the Complainant is engaged in reverse domain name hijacking. The Respondent states that the Complainant conceals that it contacted the Respondent in 2002 in order to negotiate an amicable solution and failed. The Respondent invokes laches with regard to the Complainant’s claims.
The Respondent further argues that the present case is not a case of clear cyber-squatting as it includes complex questions of German trademark law, e.g. the expiry of trademark rights following non-use of those GERMAN WINGS Marks that predate the registration of the disputed domain name, and the acquisition of the GERMAN WINGS Marks by Deutsche Lufthansa AG, and that the claim should therefore be dismissed.
In addition, the Respondent argues that under German law the Complainant cannot demand transfer or cancellation of the disputed domain name.
With regard to the three elements specified in paragraph 4(a) of the Policy, the Respondent denies the Complainant’s contentions.
(1) The Respondent denies that the Complainant owns rights in the GERMAN WINGS Marks as such marks are registered in the name of Deutsche Lufthansa AG and as the Complainant did not provided any evidence that it is the licensee of such trademarks. The Respondent further argues that there is no confusing similarity between the domain name and the Complainant’s marks as the word elements GERMAN and WINGS of the Complainant’s trademarks are descriptive and as the distinctiveness of the trademarks at issue result from the graphic element and the compound spelling, respectively.
(2) The Respondent contends that it registered the disputed domain name because of its generic meaning in order to use it for its own business. The Respondent argues that no third party rights in “German Wings” existed when the Respondent registered the disputed domain name, as the trademarks at issue predating such registration were either invalid or unenforceable due to lack of use. The Respondent further contends that the Complainant had no trade name rights in German Wings at the time of the registration of the disputed domain name as the Complainant’s company name was “Eurowings Flug GmbH” and that neither the Complainant nor Deutsche Lufthansa AG were owner of any GERMAN WINGS trademark at the time of registration of the disputed domain name.
(3) The Respondent argues that there were no enforceable trademark rights in German Wings at the time of the registration of the disputed domain name and that the registration of the disputed domain name therefore did not occur in bad faith. The Respondent states that the trademarks that predate the registration of the disputed domain name were originally owned by a company named “German Wings Luftfahrtunternehmen GmbH” which became insolvent in 1990 and were therefore unenforceable in 1999, when the disputed domain name was registered. The Respondent further claims that the Complainant’s use of GERMAN WINGS started in 2002 and does not constitute a relevant use of the trademarks that predate the registration of the disputed domain name either, as the Complainant uses a different graphical design and not the registered design. Furthermore, the Respondent contends that there were no trade name rights in German Wings in 1999. The Respondent finally contends that it did not register the disputed domain name for the purpose of selling it to the Complainant. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant’s trade mark; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
On balance, the Panel finds that the Complainant did not provide conclusive evidence that it can rely on trademark or service mark rights under paragraph 4(a)(i) of the Policy for the following reasons:
In its Complaint, the Complainant contends that it is a “wholly owned subsidiary of Eurowings Luftverkehrs AG, in which Deutsche Lufthansa AG has a holding of 49%”, and provides evidence that the GERMAN WINGS Marks are registered in the name of Deutsche Lufthansa AG. In reply to Procedural Order No. 1, requesting the Complainant to provide evidence that it owns trademark rights in the GERMAN WINGS Marks under paragraph 4(a)(i) of the Policy, in particular to explain the chain of license from their registered owner, Deutsche Lufthansa AG, to the Complainant, the Complainant provided a license agreement between Deutsche Lufthansa AG and Eurowings Flug GmbH dated August 21, 2002. Furthermore, it stated that the licensee set up a low-cost department in 1997, which became a separate company under the name of “Germanwings” on October 27, 2002, and that Deutsche Lufthansa AG acquired “Germanwings” from Eurowings Flug GmbH with effect from January 1, 2008. The Panel finds that the Complainant’s submission is inconsistent with regard to its affiliation with Deutsche Lufthansa AG, and that the Complainant also failed to provide evidence of a chain of license linking it to the trademark owner and enabling it to enforce trademark rights that stem from the GERMAN WINGS Marks. As a result, the Panel cannot but find that the Complainant failed to provide the required evidence that it owns trademark or service mark rights under paragraph 4(a)(i) of the Policy.
Moreover, in any case, the present dispute could not have been appropriately decided under the Policy. The Policy was adopted to deal with cases of cyber-squatting. According to paragraph 170 of WIPO’s Final Report of the WIPO Internet Domain Name Process of April 30, 1999, the scope of the process is limited to cases of “deliberate, bad faith abusive registration of a domain name in violation of rights in trademarks and service marks”. ICANN’s adoption of WIPO’s recommendations gives panelists limited latitude, in what is intended to be a summary proceeding (See Jason Crouch and Virginia McNeill v. Clement Stein,WIPO Case No. D2005-1201; Family Watchdog LLC v. Lester Schweiss,WIPO Case No. D2008-0183). In other words, the UDRP is designed to deal with simple cases of cyber-squatting (See Summit Industries, Inc. v. Jardine Performance Exhaust Inc.,WIPO Case No. D2001-1001).
On the record of the present case, namely the statements and documents submitted by the parties, are underlying disputes regarding trademark rights and usage, trademark infringement, their legal consequences and effects, and related issues under German law. While paragraph 15(a) of the Policy provides that a panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the UDRP, the UDRP Rules, and any rules and principles of law that it deems applicable, which may also include provisions under national law, the questions that a panel has jurisdiction to address under the Policy are relatively simple and straightforward, and the decision framework of the UDRP generally does not require resort to concepts or jurisprudence specific to national law (See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") with further references). The present case is way beyond the scope of the Panel’s limited jurisdiction under the Policy as just described. It is evident from the record that this dispute involves broad factual and legal issues regarding trademark rights and usage under German law, and not only the more narrowly framed questions that can be decided under the Policy, which was never intended to serve as a vehicle for adjudication of traditional trademark disputes.
Domain name disputes such as the present are more appropriately decided by traditional means as they turn on questions of fact that cannot be resolved on the basis of the parties’ statements and documents filed in a summary proceeding, and on questions of law beyond the limited scope of the Policy (See Clinomics Biosciences, Inc. v. Simplicity Software, Inc.,WIPO Case No. D2001-0823).
The Panel wishes to point out, however, that the present decision expresses no view on the respective merits of the parties’ cases, as presented in the instant dispute. In any event, this decision would have no precedential effect upon any subsequent judicial proceedings. 7. Decision
For all the foregoing reasons, the Complaint is denied.
Brigitte Joppich
Sole Panelist
Dated: September 22, 2011
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