WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutsche Lufthansa SA v. Mr. Paul Greenwald
Case No. D2001-1456
1. The Parties
The Complainant is Deutsche Lufthansa SA of von-Gablenz-Straße 2 - 6, D-50670 Köln, Germany.
The Complainant is represented by Dr. Andrea Jaeger-Lenz of Latham & Watkins Schön Nolte, at Warburgstraße 50, D-20354 Hamburg, Germany.
The Respondent is Mr. Paul Greenwald, 6823 Alta Vista Drive, Ranchos Palo Verdes, CA 90275-5603, United States of America.
The Respondent is represented by Mr. John B. Berryhill Ph.D. Esq. of Dann, Dorfman, Herrell and Skillman, P.C., at 1601 Market Street, Suite 720, Philadelphia, PA 19103, United States of America.
2. The Domain Name and Registrar
The domain name with which this dispute is concerned is <milesandmore.com>.
The Registrar with which the domain name is currently registered is Verisign Inc. of 21355 Ridgelop Circl, Dulles, Virginia 20170-5142, United States of America.
3. Procedural History
3.1 The Complaint was filed on December 14, 2001, electronically and on December 17, 2001, in hard copy to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center").
3.2 On December 27, 2001, the Registrar, trading as Network Solutions Inc., verified:
(i) that the domain name is registered with it;
(ii) that the current registrant of the domain name is the Respondent;
(iii) that its Service Agreement Version 5 is in effect. Under that Agreement, the Policy applies to the registration of the domain name;
(iv) that the domain name is currently in "active" status;
(v) that the language of the registration agreement is English;
(vi) that the Respondent is the Administrative and Billing Contact for the domain name and that the Registrar's World NIC Name Host is the Technical Contact.
3.3 On January 11, 2002, all formal requirements for the establishment of the Complaint having been checked by the WIPO Center, the Complaint was found to be in compliance with the applicable ICANN Policy, ICANN Rules ("the Rules") for Uniform Domain Name Dispute Resolution Policy ("the Policy"), and WIPO’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules"). The Panel has checked the file and confirms the WIPO Center's finding of proper compliance with the Rules and establishment of the Complaint.
3.4 On January 11, 2002, the WIPO Center sent Notification of Complaint and Commencement of Administrative Proceeding as follows:
(i) by courier and by e-mail to Respondent, the Administrative Contact and the Technical Contact;
(ii) by e-mail to the postmaster at the domain name;
3.5 The e-mail and courier deliveries to Respondent appear to have been effected. The Panel is satisfied the responsibility on the Center imposed by Rule 2(a) of the Rules has been met and that Respondent received due notice of the Complaint.
3.6 The Administrative Proceeding commenced on January 11, 2002, and the Response was due on January 31, 2002.
3.7 In e-mail correspondence between Respondent and the WIPO Center, Respondent asserted that due to an error in the e-mail address used to contact him, receipt of the Notification of Complaint and Commencement of Administrative Proceeding was delayed. He sought an extension of time for filing a Response and WIPO Center, with the consent of Complainant, and the WIPO Center granted an extension to February 14, 2002. Pursuant to Rule 10(c) of the Rules, the Panel endorses that extension.
3.8 A Response was filed on February 14, 2002.
3.9 Panelists Dr. Gerd F. Kunze and Professor David E. Sorkin, and Presiding Panelist Desmond J. Ryan, all having filed Statements of Acceptance and Declarations of Impartiality and Independence, the Panel was appointed on March 15, 2002.
4. Factual Background
4.1 Complainant is a large and very well-known airline based in Germany. It is, and has been, since the early 1990's part of the Star Alliance Network of airlines operating worldwide. The Star Alliance includes United Airlines and Air Canada. Complainant claims to serve 72 destinations in North America, and claims to have generated revenues there is anof amount 2,663 billion DM.. In April 1993, Complainant instituted a Frequent Flyer loyalty program under the name "Miles&More". From that time on, it promoted the program under the names "Miles&More" and "Lufthansa Miles&More." By 1998, it had over 3 million cardholders of whom over 350,000 were located in the United States. Complainant's advertising and promotion was carried out in both the English and German languages, and features the name "Miles&More" both alone and in combination with the word "Lufthansa" (Complaint Annexes 4 and 5). Brochures advertising the "Miles&More" program were also published in Japanese, Italian and Portuguese (Complaint Annex 6).
4.2 Complainant has trademark registrations and pending applications for registration of "Miles&More" and "Lufthansa Miles&More" in countries throughout the world including the United States. In the United States it has registered trademark No. 1971521 "Lufthansa Miles&More", filed July 17, 1995, and claiming first use in commerce on July 1, 1993. It has a pending U.S. application No. 75904152 for "Miles&More" alone, filed January 28, 2000. It has similar registrations and pending applications in other countries including Germany and the European Community Trademark Office. Complainant advertises its "Miles&More" program on its web-site at <www.lufthansa.com>.
4.3 As at December 5, 2001, the domain name resolved to a page stating that "This site is currently under construction" (Complaint Annex 9).
4.4 On July 27, 2001, Complainant addressed an e-mail to Respondent at a former e-mail address of Respondent enquiring whether he would transfer the domain name to Complainant. Respondent asserts it did not receive this e-mail. On September 26, 2001, Complainant, through its attorneys, addressed a letter to Respondent asserting its assumption that the domain name was registered to prevent Complainant from reflecting its trademark in the domain name, and demanding transfer of the domain name to it (Complaint Annexes 10 and 11).
4.5 Respondent replied on November 1, 2001, through its attorneys Perkins Coie LLP, asserting that Respondent had reserved the domain name in the hope of one day creating a web-site devoted to "hiking, cycling, camping and other subjects". Respondent denied Complainant's assertion as to the purpose for which he had registered the domain name, and characterised to the demand for transfer as "wholly inappropriate" (Complaint Annex 12).
4.6 Respondent is an individual, a former policeman, who claims to be a long-time enthusiast of hiking, trekking and bicycling and to have recently suffered a debilitating illness from which he is now recovering. Respondent claims to be the owner of, and a subscriber to several books and magazines devoted to cycling, climbing and other outdoor activities (Response Exhibits B and E), a family member of American Youth Hotels Inc, and a participant in many outdoor activities (Response Exhibits F and G).
4.7 The domain name was created on October 23, 1998.
5. Applicable Dispute
5.1 This dispute is one to which the Policy applies. By registering the domain name, Respondent accepts the dispute resolution policy adopted by the Registrar. The Registrar's current policy set out in its domain name registration agreement is the Policy.
5.2 To succeed in its Complaint, Complainant must show that each of the conditions of paragraph 4(a) of the Policy are satisfied, namely that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
6. The Parties' Contentions
6.1 Complainant's contentions may be summarized as follows:
(i) Complainant's service mark "Miles&More" is well-known and widely recognised throughout the world. The domain name is substantially identical to Complainant's mark, save for the substitution of the word "and" for the ampersand, a symbol which is not permissible in an e-mail address.
(ii) Complainant's intention to set up a separate internet presence for its "Miles&More" program under the domain name <milesandmore.com> is frustrated by Respondent's registration.
(iii) Respondent's claim to have reserved the domain name for use in creating a web-site devoted to outdoor activities is a mere pretense, as there is no logical reason why such sites should be called "<milesandmore.comn>". Such pretended interest does not constitute legitimate interest in a domain name incorporating Complainant's established U.S. trademark.
(iv) Respondent's failure to respond to Complainant's offer (undocumented) to settle the matter on terms including the transfer to him of a domain name which Complainant has registered "as next best thing", is evidence of bad faith.
(v) Respondent has registered the domain name in order to prevent Complainant from reflecting its mark in the corresponding domain name, and is biding his time to use the name for commercial gain by attracting millions of customers of Complainant's "Miles&More" program to his web-site, thereby creating the likelihood of confusion with Complainant's mark.
6.2 Respondent's contentions may be summarized as follows:
(i) Complainant has not established trademark rights in the mark "Miles&More" per se. Its use and registrations have been of the composite mark "Lufthansa Miles&More" in which Lufthansa plays the major part.
(ii) The expression "Miles&More" is not distinctive, and its use is practically unavoidable by any person who offers frequent flyer miles in addition to other things. Complainant's pending trademark applications are not probative of any acquired secondary meaning in the descriptive term.
(iii) Respondent has a legitimate interest in the domain name in which he intends to set up a web-site devoted to outdoor activities and it has been delayed because of the illness from which he is only now recovering. As a long time outdoor enthusiast he has a long-time interest in logging "miles" and achieving "more", and that the expression "miles and more" is commonly used on web-sites devoted to such activities. Respondent therefore submits that "he had a legitimate right to register as a domain name a combination of words, commonly used in connection with his purpose, and against which there was no legal impediment". The domain name was not registered in bad faith and he is not using, or intending to use, the domain name in bad faith. At the time he registered the domain name he had no knowledge of any rights asserted by Complainant.
(iv) He has not registered the domain name with the intention of blocking Complainant from reflecting its trademark in a domain name, and such reflection is not in fact blocked. Complainant has registered the domain name <miles-and-more.com>, <miles-n-more> is unregistered and available, and an unrelated third party has registered <milesnmore.com> as a domain name in relation to an agricultural product site. Further, there is no evidence or even allegation that Respondent has been engaged in a pattern of such conduct as required by paragraph 4(b)(ii) of the Policy.
(v) Complainant's future intention to set up a web-site at the domain name gives it no rights to claim ownership of the domain name, and there is no basis for the contention that Respondent is "only biding his time to use the domain name for commercial gain".
(vi) Respondent did not attempt to sell the domain name, and does not wish to sell it.
(vii) Complainant has failed to discharge the burden of showing that Respondent has no legitimate right or interest, or that he has registered and is using the domain name in bad faith.
7. Discussion and Findings
Identical or Confusingly Similar Trademark
7.1 Complainant has demonstrated substantial trademark use of "Miles&More" both alone and in conjunction with "Lufthansa" and other indicia. It has registrations of such composite marks in several countries including the United States, and has pending applications for registration of the word "Miles&More" per se, in several jurisdictions including the United States, on an application claiming a priority date of July 30, 1999. Complainant's demonstrated use of the trademark "Miles&More" both alone and in combination, is substantial and extensive. The Panel is of the opinion that as of the date of filing of the Complaint, Complainant had rights in the trademark "Miles&More". The Panel is not in the position to decide whether at the date of registration of the domain name in 1998, Complainant's use and reputation in the trademark "Miles&More" in the United States had been sufficient to establish trademark rights in that, or any other jurisdiction. However, for the purpose of this decision, the Panel proceeds on the basis that such rights existed at the date of registration of the domain name in October 1998 and that the domain name is confusingly similar to the trademarks.
Rights and Legitimate Interests
7.2 As clearly set out in paragraph 4(a) of the Policy, the onus is on the complainant to establish each of the required elements of that paragraph. However, the burden of proof is a shifting one, and if the complainant establishes a prima facie case, the burden of rebuttal shifts to respondent.
The Panel expresses doubt as to whether Complainant has established a prima facie case of Respondent's lack of legitimate right or interest. Its case in this respect, appears to rest only on the assertion that Respondent's claim to have registered the domain name with the intent of establishing a web-site devoted to outdoor activities is a pretense, and on a presumption that its use and reputation establishes that Respondent could not have a legitimate right or interest in those words. Respondent asserts an intention to establish a web-site devoted to outdoor activities, and whilst the Panel is not convinced that "Miles&More" is so obviously an appropriate name for such a web-site, Respondent's contentions do not stretch credulity.
However, the Panel finds it unnecessary to decide this question, having regard to the conclusions it has reached as to whether the domain name was registered, and is being used in bad faith.
Bad Faith Use and Registration
7.3 As noted above, the onus is upon the Complainant to show registration and use in bad faith. In the opinion of the Panel, it has failed to do so.
7.4 The Panel has accepted for the purpose of this discussion, that Complainant has trademark rights in "Miles&More". However, in the opinion of the Panel it has not demonstrated that such rights would be so well-known in the United States that it would be likely that Respondent, when registering the domain name in October 1998, would be so familiar with those rights, as to render its adoption of the domain name improper. In a country the size of the United States, the fact that there are some 350,000 "Miles&More" card holders is not, in our view, sufficient to raise a presumption that, at October 1998, Respondent would have known of Complainant's mark. In such circumstances, some account needs also to be taken of the fact that the trademark consists of prima facie common and descriptive words (see for example WIPO Case No. D2000-1403, John Fairfax Publications Pty Ltd, v. Domain.Names 4U and Fred Gray). Respondent's denial of knowledge of the trademark must therefore be given due weight.
7.5 Complainant is faced with the further difficulty in that, in the opinion of the Panel, Complainant has failed to show any evidence of use of the domain name in bad faith. The domain name is not presently in use; it has not been offered for sale to Complainant or to any other person; there is no evidence of Respondent's use of the domain name to attract users to its web-site for commercial gain by creating a likelihood of confusion with Complainant's mark; nor is there any evidence that he has registered the domain name primarily for the purpose of disrupting the business of a competitor. Mere failure to use the domain name is not evidence of bad faith, and in any event, Respondent was offered an explanation for his delay. As to Complainant's contention that Respondent has registered the domain name in order to prevent Complainant from reflecting its trademark in a corresponding domain name, there is nothing to support this assertion, and there is clearly no evidence, or even assertion, that Respondent has engaged in a pattern of such conduct. Complainant has failed to demonstrate any of the circumstances set out in paragraph 4(b) of the Policy, nor has it established any other ground on which bad faith can be shown.
7.6 The Panel therefore finds that Complainant has failed to show that the domain name has been registered and is being used in bad faith.
8.1 The Panel decides and orders that:
(i) Complainant has failed to establish the domain name has been registered and is being used in bad faith;
(ii) The Complaint is dismissed.
Gerd F. Kunze
David E. Sorkin
Dated: March 25, 2002
APPENDIX TO DECISION
In an exchange of e-mails with WIPO Center in January 2002, Respondent, acting personally, made an attack on the competence, independence and impartiality of the Case Manager. The Panel has examined the file and has found this attack totally unjustified and without foundation. The Panel finds that the Case Manager acted with due propriety, competence and expedition in the handling of the case.