The Complainant is Germanwings GmbH, of Cologne, Germany, of Germany, represented internally.
The Respondent is Domain Admin. Privacy Protect.org/ Artur Lewandowski, of Moergestel, Poland; of Katowice, Poland, respectively.
The disputed domain name <germanwings.mobi> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 29, 2009. On August 31, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On September 2, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 4, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on September 9, 2009. The Center verified that the Complaint together with the amendment to 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 11, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 1, 2009. The Response was filed with the Center on September 29, 2009.
The Center appointed Richard Hill as the sole panelist in this matter on October 7, 2009. 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 the Rules, paragraph 7.
The Complainant is a licensee for the registered trademark GERMANWINGS, which mark belongs to a company that owns 49% of the Complainant.
The Respondent is aware of the Complainant's business activities and offered to sell the disputed domain name for an amount in excess of out-of-pocket costs.
The disputed domain name appears to be inactive.
The disputed domain name was registered on September 26, 2009.
The Complainant alleges that it is a well-known German company offering airline services throughout Europe. It is a wholly owned subsidiary of Eurowings Luftverkehrs AG, in which Deutsche Lufthansa AG has a holding of 49%.
Further, the Complainant alleges that it is the licensee of the registered trademark GERMANWINGS, which is owned by Deutsche Lufthansa AG.
According to the Complainant, it would be impossible for the Respondent to acquire any rights or legitimate interests in the disputed domain name, given the extent of the Complainant's rights.
The Complainant states that there was an exchange of e-mails between itself and the Respondent. As a result of that, the Respondent indicated that it would be willing to transfer the disputed domain name for the amount of Euros 1'880.
According to the Complainant, that amount exceeds out-of-pocket costs and the Respondent has therefore engaged in bad faith behavior in the sense of paragraph 4(b) of the Policy.
The Respondent alleges that the proceedings are invalid because the Complainant does not own the trademark GERMANWINGS.
Further, according to the Respondent, the contested domain name consists of the very common English words “german” and “wings”: it is not a unique trade name such as “Coca-Cola”. The name Germanwings has not been widely known on the Polish market and still is not.
The Respondent states that the Complainant owns many other domain names, for example <germanwings.pl>, which have been used only to link to <germanwings.com>.
The Respondent states that the Complainant did not challenge his registration of the disputed domain name during the .mobi sunrise period.
The Respondent states that he plans to use the disputed domain name to publish antiwar content.
The Respondent denies registering or using the disputed domain name in bad faith, and he states that he offered to sell the disputed domain name in exchange for a contribution to his costs.
As a preliminary matter, the Panel will deal with the Respondent's allegation that the Complainant did not challenge his registration of the disputed domain name during the .mobi sunrise period.
Whether or not this allegation is correct can have no effect on the current proceedings. The Complainant is under no obligation to use the provisions available during the sunrise period in order to protect its mark. It is perfectly free to invoke the Policy after the sunrise period, and this whether or not it invoked the special provisions available during the sunrise period.
Indeed, any decision taken (or not taken) under the sunrise provisions could not constitute res judicata with respect to the present proceedings, because the substantive provisions of the sunrise policy are not the same as the substantive provisions of the Policy which governs the present proceedings. Res judicata can only be invoked when the parties are the same, the facts are the same, and the cause of action is the same. The cause of action under the Policy is not the same as the cause of action under the sunrise provisions.
Further, the Panel cannot hold that the Complaint is barred because of excessive delay, see Tom Cruise v. Network Operations Center / Alberta Hot Rods, WIPO Case No. D2006-0560 (July 5, 2009) (“This Panel does not accept that there is meaningful precedent under the Policy for refusing to enforce trademark rights on the basis of a delay in bringing a claim following use of a disputed domain name.”).
Thus the Panel holds that whether or not the Complainant initiated sunrise proceedings is not relevant for the present proceeding.
The disputed domain name is identical to the mark GERMANWINGS, of which the Complainant is a licensee.
The Respondent contends that the present case should be dismissed because the Complainant does not own the mark. But this is not the view of the prevailing case law under the Policy. That case law is summarized in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, at section 1.8.
According to that overview, the majority view is that in most circumstances a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a mark is considered to have rights in a trademark under the UDRP.
Thus the Panel holds that the Complainant has satisfied its burden of proof under this element of the Policy.
See also Lycos Europe N.V. v. RegionCo, WIPO Case No. D2000-1102 (“However, the Policy and Rules do not limit the ability to be Complainant in the Uniform Domain Name Dispute Resolution Procedure to owners of trademarks but merely require that the Complainant demonstrate rights in a trademark. As a license confers upon the licensee the right to use a trademark, the fact that Complainant has demonstrated no trademark rights of his own does not bar his standing in this procedure.”).
The Complainant alleges that the Respondent does not have rights or legitimate interests in the disputed domain name. The Respondent alleges that he intends to use the disputed domain name to publish antiwar content.
The Respondent did not provide any plans or any other evidence to support his assertion regarding use of the contested domain name. As the Respondent correctly states, the disputed domain name consists of two common English words, “german” and “wings”. Neither of these words have any special relation to war, given that many countries have engaged in war for centuries (including extensive aerial warfare since 1940), and given that wings are primarily used for purposes other than war. That is, the Panel does not see why an average Internet user would associate the disputed domain name with war or anti-war content. Thus, the Panel finds that the Respondent's explanation is not credible. And this in particular in light of the Respondent's offer to sell the disputed domain name for an amount well above out-of-pocket costs, see below.
As a consequence, the Panel finds that the Respondent does not have any rights or legitimate interests in the dispute domain name.
See Medisite S.A. R.L. v. Intellisolve Limited, WIPO Case No. D2000-0179 (“On balance this Administrative Panel must conclude that there were no demonstrable preparations by the Respondent to use the domain name <medisite.com> in connection with the planned venture.”).
The Complainant alleges that the Respondent registered and used the disputed domain name in bad faith because he offered to sell it for an amount well above out-of-pocket costs. The Respondent alleges that the Complainant's mark is not well-known in Poland and that he only requested a contribution to his costs.
Whether or not the Complainant's mark is well-known in Poland is less relevant than the fact that the Respondent clearly is well aware of the Complainant and its business, since he makes assertions regarding the Complainant's use of the domain name <germanwings.pl>.
The Respondent did not provide any evidence to support his assertion that the sum he requested (Euros 1'880) was based on his costs. Thus, the Panel finds that this assertion is not credible. The Panel finds that the amount requested was well above out-of-pocket costs.
As a consequence, the Panel finds that the Respondent registered and used the disputed domain name in bad faith, in the sense of paragraph 4(b)(i) of the Policy.
See SAir Group v. Pat Reinhardt, WIPO Case No. D2000-0482 (“The Complainant has also demonstrated that the Respondent offered to sell the domain name <qualiflyer.com> to the Complainant for USD 185,000. This is an important sum of money, well in excess of out-of-pocket expenses, and as such is evidence of bad faith. While it may be true that the Respondent's offer was triggered by the Complainant's actions, the Panel is convinced that the Respondent acquired the domain name primarily for the purpose of selling it to the Complainant, and that an offer or solicitation was inevitable. This conclusion is supported by the Respondent's decision to ‘park' the domain name, and his decision not to use the domain name for a legitimate non-commercial use, or the provision of goods or services.”)
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <germanwings.mobi> be transferred to the Complainant.
Dated: October 14, 2009