Fundus Hotelentwicklungs; Verwaltungsgesellschaft mbH v. Kenneth S. and Rosemary A. Manrao

WIPO Arbitration

and Mediation Center

ADMINISTRATIVE

PANEL DECISION

FUNDUS Hotelentwicklungs-

und Verwaltungsgesellschaft mbH v. Adlon Hotel

Case No.

D2001-0339

1. The Parties

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.

2. The Domain Name and

Registrar

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.

3. Procedural History

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.

4. Factual Background

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.

5. Parties’ Contentions

Complainant:

(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>.

Respondent:

(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.

6. Discussion and

Findings

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.

7. Decision

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