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FUNDUS Hotelentwicklungs- und Verwaltungsgesellschaft mbH v. Adlon Hotel [2001] GENDND 1027 (28 May 2001)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

The Complainant is FUNDUS Hotelentwicklungs- und Verwaltungsgesellschaft mbH, a German corporation with its principal place of business at Köln, Germany. The Complainant is represented by Boris Kreye, of Clifford Chance Pünder, attorneys of Düsseldorf, Germany.

The Respondent is Adlon Hotel of Campbell, California, U.S.A. The Respondent is represented by Michael K. Bosworth of Oppenheimer, Wolff & Donnelly LLP of Palo Alto, California, U.S.A.

The domain name at issue is <adlon-hotel.com>. The domain name is registered with Network Solutions Inc. of Herndon, Virginia, U.S.A. ("the Registrar"). The name was registered with the Registrar on September 28, 1998.

The Complaint submitted by the Complainant was received on March 8, 2001, (electronic version) and March 13, 2001, (hard copy) by the World Intellectual Property Organization and Mediation Center ("WIPO Center").

On March 13, 2001, a request for Registrar verification was transmitted by the WIPO Center to the Registrar, requesting it to:

- Confirm that a copy of the Complaint had been sent to it by the Complainant as requested by WIPO Supplemental Rules for Uniform Dispute Resolution Policy ("Supplemental Rules"), paragraph 4(b).

- Confirm that the domain name at issue is registered with the Registrar.

- Confirm that the person identified as the Respondent is the current registrant of the domain name.

- Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrar’s WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the building contact for the domain name.

- Confirm that the Uniform Domain Dispute Resolution Policy ("UDRP") was in effect.

- Indicate the current status of the domain name.

By email dated March 15, 2001, the Registrar advised WIPO Center as follows:

- It had received a copy of the Complaint from the Complainant.

- It is the Registrar of the domain name registration <adlon-hotel.com>.

. The Respondent is shown as the "current registrant" of the domain name at the above address.

. The Registrar’s 4.0 Service Agreement is in effect.

- The administrative contact is Ken Manrao of the same address as the Registrant.

- The domain name registration <adlon-hotel.com> is currently in ‘active’ status.

- The Registrar has currently incorporated in its agreements the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN").

-The advice from the Registrar that the domain name in question is in‘active’status indicates the Respondent has not requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate the agreement with the Registrar. Accordingly, the Respondent is bound by the provisions of the Registrar’s Domain Name Dispute Resolution Policy, i.e., the ICANN policy. The Respondent has not challenged the jurisdiction of the Panel.

-Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, the WIPO Center on March 16, 2001, transmitted by post-courier and by email a notification of the Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to the Registrar and ICANN.

-The Respondent was advised that a Response to the Complaint was required within 20 calendar days. The Respondent was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email. A Response was filed by the Respondent on April 5, 2001 (electronic) and April 9, 2001 (hard copy).

-The Complainant elected to have the Complaint resolved by a three-person Panel. The Complainant has duly paid the amounts required of it to the WIPO Center.

-WIPO Center invited the Honorable Sir Ian Barker QC of Auckland, New Zealand to serve as Presiding Panelist in the case. It had earlier invited Mr. Jonas Gulliksson, President of Ström & Gulliksson AB of Malmö, Sweden and Mr. Tom Arnold of Howrey, Simon, Arnold & White LLP of Houston, Texas, U.S.A. to be Panelists. It transmitted to each of them a statement of acceptance and requested a declaration of impartiality and independence.

-All Panelists duly advised acceptance and forwarded to the WIPO Center a statement of impartiality and independence. The Panel finds that the Administrative Panel was properly constituted in accordance with the Rules and the Supplemental Rules.

-On May 8, 2001, WIPO Center forwarded to the Panel by courier the relevant submissions and the record. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by May 21, 2001. Because of various delays the time for decision has been extended to May 28, 2001.

-The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999, ("the Rules") and the Supplemental Rules.

-The language of the administrative proceeding is English, being the language of the registration agreement.

In Germany, the Complainant owns several trademarks with the designation ADLON, amongst them the German trademark 2 105 179 "ADLON". The mark claims a priority of May 15, 1993, and is registered in class 42, i.e. for hotel services.

Besides the registered trademarks, in at least Germany and possibly in New York City, the Panel can accept without finding as a fact that Complainant owns some rights to the business designation "Adlon". The District Court of Berlin ruled in two recent decisions that Complainant can claim a priority for the designation ADLON in Germany as of 1907.

The Complainant owns the internet domain <www.adlon-hotel.de>. The ADLON trademarks, the business designation ADLON and the domain name <www.adlon-hotel.de> are used by the Kempinski AG for running the Hotel ADLON in Berlin.

From 1995 up to the end of 1999 the Hotel ADLON Berlin was represented in the U.S. by a public relations company in New York. This company published various press releases on the Hotel ADLON, especially pointing out its affiliation with the U.S.A. On the Hotel ADLON in Berlin numerous articles appeared in various newspapers, magazines and TV and radio broadcasts. In 1995 articles about the rebuilding of the ADLON in Berlin were published in the New York Times and the International Herald Tribune, followed by several articles in 1996.

Besides that, the ADLON Hotel in Berlin has been listed since 1996 in the hotel guide "Kempinski Directory" and since 1997 in the hotel guide "Leading Hotels of the World". The 1996 and 1997 issues of both guides were distributed in the U.S. The hotel had been destroyed by fire in 1945 and a rebuilt version was opened for business in 1997.

In 1998 and 1999 the Hotel ADLON conducted various "sales blitzes" in the U.S. In February 1999 a special promotion in Washington DC was held in co-operation with the Metropolitan Club.

The Respondent since 1998 has used the designation ADLON in connection with its luxury hotel business in San José, California, and in connection with its internet site. The name "Adlon" is used by hotels in Sweden, Austria and Italy.

(a) The Complainant has long been the owner of the ADLON trademark for use in connection with hotel services. It has widely used and promoted the mark around the world and in the United States in connection with the word-renown hotel ADLON in Berlin, Germany. The ADLON name and mark is well known to consumers in the United States and is exclusively associated with the Complainant’s famous hotel in Berlin.

(b) Under German Trademark Law, the owner of a trademark is entitled to enjoin any person who uses in commerce without the consent of the owner an identical or similar mark or domain name in connection with the sale, distribution or advertising of any goods or services, if such is likely to cause confusion or deception. Since Respondent’s domain name includes the designation ADLON and can be downloaded in Germany, the use of the domain in Germany is likely to cause confusion with or to deceive potential consumers about business relations between the Respondent and the Hotel ADLON in Berlin. The name "ADLON" in the domain is identical to the name "ADLON" in Complainant’s older trademarks and business designations. All other parts of the domain name are merely descriptive. Also, the services offered under the domain are identical to the services offered by the Complainant.

(c) In the U.S., the Complainant has been using the designation "ADLON" long before the Respondent ever did. The ADLON name has been used by the Complainant in commerce and advertisements since 1996 throughout the U.S. The Respondent’s subsequent use of the designation "ADLON" is a violation of the Complainant’s rights in the U.S. acquired through use in commerce.

(d) Since the Respondent offers identical services under an identical designation, the adoption of the well-known ADLON name in Respondent’s domain is likely to cause consumer confusion even in the U.S. The use of the domain name "ADLON" causes mistake and deception and leads consumers mistakenly to believe that the Respondent’s services in the U.S. and abroad are in some way associated with or endorsed by the Complainant and the hotel ADLON in Berlin.

(e) Reviewing the Respondent’s website, it appears that the name "ADLON" was chosen specifically to take advantage of the Complainant’s name and reputation. The specific reference made to the hotel’s "Grand European style" and the promotion of such features as "Berlin Room" in its brochure and on the internet site makes clear the Respondent’s intent to wrongfully associate itself with the Complainant’s famous hotel in Berlin and clearly shows that the domain name was registered and is being used in bad faith. This is underlined by the fact, that the Respondent’s general manager, Mr. Tari Ka Foltz is alleged to have distributed a "fact-sheet" in the hotel ADLON in Berlin about the hotel in San José mentioning the internet domain <www.adlon-hotel.com>.

(a) Respondent notes that Complainant recently filed a United States Trademark Application for "ADLON", USSN 76/178,009, based upon an "INTENT TO USE" the mark in the United States. The fact of this filing was not mentioned in the Complaint. In the opinion of the Panel, it should have been.

(b) The HOTEL ADLON designation is used by three other unaffiliated hotels, in Sweden, Austria and Italy, all with prior use to 1997. Therefore, insofar as revealed in evidence before the Panel, the Complainant’s rights to use the "Hotel Adlon" designation appear not to be exclusive in Europe, ie even amongst European international travelers. These European hotels are thousands of miles nearer Berlin than San José.

(c) Respondent’s Adlon Hotel has been in business as a luxury business hotel in downtown San José, California, U.S.A., since 1998, well before Respondent received any form of demand from Complainant. Respondent is actively using the subject domain name and website to display and advertise its 57-room luxury hotel in the heart of Silicon Valley and the related reservation services. Respondent registered the domain <www.adlon-hotel.com> in September 1998, in association with its hotel and related restaurant services. Respondent advertises in several media, including public telephone books.

(d) Complainant has not shown that the domain was registered for the "primary purpose" of selling it for a profit.

(e) Complainant has not alleged that Respondent has a pattern of cyber-squatting.

(f) Complainant and Respondent offer the same type of services, but they are not competitors because hotel services, by their very nature, are location specific. Respondent’s and Complainant’s hotels are approximately 5,600 miles (9,000 km) apart, each in well-known cities. Thus travelers to Berlin looking for a luxurious hotel will not think that Respondent’s hotel in San José is a "competitor", nor would the reverse be true. Complainant’s websites in the top center show "HOTEL ADLON BERLIN", whereas Respondent’s website on the front page shows the downtown San José address, with the slogan "Located in the heart of San José". Further, Respondent’s use of its domain name is solely to facilitate its own hotel business in the heart of Silicon Valley, not "primarily to disrupt Complainant’s business" in Berlin.

(g) When advised of Complainant’s concern about confusion between its Hotel Adlon in Berlin and Respondent’s Adlon Hotel in San José, Respondent offered to put a disclaimer and a link to Complainant’s web page on its site, but Complainant declined to accept this offer. Instead, Respondent inserted the legend: "*Not affiliated with any of the Adlon Hotels in Europe". Respondent is not trying to create any confusion with any of the existing European Adlon Hotels. Respondent is merely using the most common top level domain designating a commercial enterprise ".com" in connection with its business "adlon-hotel". To Respondent’s knowledge, there is not a country code ".us" operational from which Respondent would be able to select an alternate equivalent to the ".de" and ".it" and ".se" top level domains used by other European Adlon hotels.

(h) Respondent is and has been commonly known by the domain name at issue, as shown by its web page and advertising, including the listing of the domain name at the bottom of its advertisement in the Pacific Bell Yellow Pages Telephone Book.

To qualify for cancellation or transfer of the disputed domain name, a Complainant must prove each element of paragraph 4(a) of the Policy, namely:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the domain names; and

(iii) the disputed domain name has been registered and is being used in bad faith.

In the Panel’s view, the disputed domain name <adlon.hotel.com> is confusingly similar to the Complainant’s registered mark "Adlon", which is used for hotel services and often with the word "hotel", as by the Respondent.

The Complainant gave the Respondent no rights or legitimate interests in the disputed domain name. That finding can sometimes be sufficient for the Complainant to discharge the initial evidential burden. Paragraph 4(c)(ii) of the Policy indicates three ways that a Respondent can demonstrate rights or legitimate interests in the domain name. Thus the Respondent can prevail by showing any of the following circumstances:

(i) before any notice to you of the dispute, your use of or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods and services; or

(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly direct customers or to tarnish the trademark or service mark at issue. The word "you" in the above refers to a respondent.

The Panel considers that the Respondent can demonstrate rights or legitimate interests under paragraphs (i) and (ii) above. The hotel in San José conducts a regular hotel business under the name "Adlon Hotel". Before any notice of the dispute, the Respondent was running an hotel business called the Adlon Hotel in San José – many miles away from Berlin. The name Adlon, as the Response shows, is used by other hotels in Europe. The name is not in common parlance like "Hilton" or "Sheraton", which are worldwide hotel chains. The Respondent’s website is operative. It clearly extols the attractions of the Respondent’s San José hotel and specifically states it has no connection with any other hotel of the same name.

Accordingly, the Panel does not find the second criterion proved. It is therefore unnecessary to consider the question of bad faith. The Panel notes however that the Complainant may have had difficulties under this criterion. Although the Respondent is not a cyber-squatter and is not interested in selling the name which it uses for its business as an hotelier, it may have adopted the name in the knowledge that the famous Berlin hotel excited. For example, its feature of "Berlin Room". However, this is a matter which would be better decided in a Court.

It may be that the Complainant has an unfair competition claim under United States or other law, stemming from Respondent’s decision in 1998 to use the word "ADLON" as its hotel name. This decision under the UDRP should not be seen to prejudice any such claim. It should be noted that the UDRP is designed to address only disputes involved in a narrow variety of alleged abusive, bad faith internet domain name registration activities. Because of its limited provisions for the gathering and presentation of evidence, the UDRP is not sell-suited for adjudicating complex trademark priority disputes. The Complainant was required to provide evidence showing that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant would have been expected to provide at least some evidence to address each of the "safe harbor" provisions of paragraph 4(c) of the Policy, but has not done so. The result is fatal to the Complainant’s cause in this present forum.

For the foregoing reasons, the Panel decides that the Complaint be denied.

Hon. Sir Ian Barker QC
Presiding Panelist

Mr. Jonas Gulliksson
Panelist

Mr. Tom Arnold
Panelist

Dated: May 28, 2001