Susan M. W. NORWICK et al.
(a) As a general principle some state functions are so bound up with the operation of the State as a governmental entity as to permit exclusion from those functions of all persons who have not become part of the process of self-government. Accordingly, a State is required to justify its exclusion of aliens from such governmental positions only "by a showing of some rational relationship between the interest sought to be protected and the limiting classification." Foley v. Connelie, 435 U.S. 291, 296, 98 S.Ct. 1067, 55 L.Ed.2d 287. Pp. 73-74.
(c) Taking into consideration the role of public education and the degree of responsibility and discretion teachers possess in fulfilling that role, it is clear that public school teachers come well within the "governmental function" principle recognized in Sugarman v. Dougall, 413 U.S. 634, 93 S.Ct. 2842, 37 L.Ed.2d 853, and Foley v. Connelie, supra, and, accordingly, the Constitution requires only that a citizenship requirement applicable to teaching in the public school bear a rational relationship to a legitimate state interest. Pp. 75-80.
Judith A. Gordon, Asst. Atty. Gen. of New York, New York City, for Ambach, et al.
Bruce J. Ennis, Jr., New York City, for Norwick et al.
manifested an intention to apply for citizenship. The Commissioner of Education is authorized to create exemptions from this prohibition, and has done so with respect to aliens who are not yet eligible for citizenship. Unless a teacher obtains certification, he may not work in a public elementary or secondary school in New York.
alien's relationship to this country, and the alien's willingness to substitute some other sign of loyalty to this Nation's political values, such as an oath of allegiance. Id., at 921. We noted probable jurisdiction over the state school officials' appeal, 436 U.S. 902, 98 S.Ct. 2229, 56 L.Ed.2d 340 (1978), and now reverse.
or maintaining an inherently dangerous enterprise, Ohio ex rel. Clarke v. Deckebach, 274 U.S. 392, 47 S.Ct. 630, 71 L.Ed. 1115 (1927), States permissibly could exclude aliens from working on public construction projects, Crane v. New York, 239 U.S. 195, 36 S.Ct. 85, 60 L.Ed. 218 (1915), and, it appears, from engaging in any form of public employment at all, see Truax, supra, 239 U.S., at 40, 36 S.Ct., at 10.
Over time, the Court's decisions gradually have restricted the activities from which States are free to exclude aliens. The first sign that the Court would question the constitutionality of discrimination against aliens even in areas affected with a "public interest" appeared in Oyama v. California, 332 U.S. 633, 68 S.Ct. 269, 92 L.Ed. 249 (1948). The Court there held that statutory presumptions designed to discourage evasion of California's ban on alien landholding discriminated against the citizen children of aliens. The same Term, the Court held that the "ownership" a State exercises over fish found in its territorial waters "is inadequate to justify California in excluding any or all aliens who are lawful residents of the State from making a living by fishing in the ocean off its shores while permitting all others to do so." Takahashi v. Fish & Game Comm'n, 334 U.S. 410, 421, 68 S.Ct. 1138, 1144, 92 L.Ed. 1478 (1948). This process of withdrawal from the former doctrine culminated in Graham v. Richardson, supra, which for the first time treated classifications based on alienage as "inherently suspect and subject to close judicial scrutiny." 403 U.S., at 372, 91 S.Ct., at 1852. Applying Graham, this Court has held invalid statutes that prevented aliens from entering a State's classified civil service, Sugarman v. Dougall, 413 U.S. 634, 93 S.Ct. 2842, 37 L.Ed.2d 853 (1973), practicing law, In re Griffiths, 413 U.S. 717, 93 S.Ct. 2851, 37 L.Ed.2d 910 (1973), working as an engineer, Examining Board v. Flores de Otero, 426 U.S. 572, 96 S.Ct. 2264, 49 L.Ed.2d 65 (1976), and receiving state educational benefits, Nyquist v. Mauclet, 432 U.S. 1, 97 S.Ct. 2120, 53 L.Ed.2d 63 (1977).
"Such power inheres in the State by virtue of its obligation, already noted above, 'to preserve the basic conception of a political community.' . . . And this power and responsibility of the State applies, not only to the qualifications of voters, but also to persons holding state elective or important nonelective executive, legislative, and judicial positions, for officers who participate directly in the formulation, execution, or review of broad public policy perform functions that go to the heart of representative government." 413 U.S., at 647, 93 S.Ct., at 2850 (citation omitted).
The exclusion of aliens from such governmental positions would not invite as demanding scrutiny from this Court. Id., at 648, 93 S.Ct., at 2842. See also Nyquist v. Mauclet, supra, 432 U.S. at 11, 97 S.Ct. 2120; Perkins v. Smith, 370 F.Supp. 134 (D.C.Md.1974), summarily aff'd, 426 U.S. 913, 96 S.Ct. 2616, 49 L.Ed.2d 368 (1976).
Applying the rational-basis standard, we held last Term that New York could exclude aliens from the ranks of its police force. Foley v. Connelie, 435 U.S. 291, 98 S.Ct. 1067, 55 L.Ed.2d 287 (1978). Because the police function fulfilled "a most fundamental obligation of government to its constituency" and by necessity cloaked policemen with substantial discretionary powers, we view the police force as being one of those appropriately defined classes of positions for which a citizenship requirement could be imposed. Id., at 297, 98 S.Ct., at 1071. Accordingly, the State was required to justify its classification only "by a showing of some rational relationship between the interest sought to be protected and the limiting classification." Id., at 296, 98 S.Ct., at 1070.
The rule for governmental functions, which is an exception to the general standard applicable to classifications based on alienage, rests on important principles inherent in the Constitution. The distinction between citizens and aliens, though ordinarily irrelevant to private activity, is fundamental to the definition and government of a State. The Constitution itself refers to the distinction no less than 11 times, see Sugarman v. Dougall, supra, 413 U.S. at 651-652, 93 S.Ct. at 2862 (REHNQUIST, J., dissenting), indicating that the status of citizenship was meant to have significance in the structure of our government. The assumption of that status, whether by birth or naturalization, denotes an association with the polity which, in a democratic republic, exercises the powers of governance. See Foley v. Connelie, supra, 435 U.S., at 295, 98 S.Ct., at 1070. The form of this association is important: an oath of allegiance or similar ceremony cannot substitute for the unequivocal legal bond citizenship represents. It is because of this special significance of citizenship that governmental entities, when exercising the functions of government, have wider latitude in limiting the participation of noncitizens.
go[es] to the heart of representative government." Sugarman v. Dougall, supra, 413 U.S., at 647, 93 S.Ct., at 2850.
both demonstrate our recognition of the importance of education to our democratic society. It is required in the performance of our most basic public responsibilities, even service in the armed forces. It is the very foundation of good citizenship. Today it is a principal instrument in awakening the child to cultural values, in preparing him for later professional training, and in helping him to adjust normally to his environment." Brown v. Board of Education, 347 U.S. 483, 493, 74 S.Ct. 686, 691, 98 L.Ed. 873 (1954).
son & K. Prewitt, Political So cialization 146-167 (1969); R. Hess & J. Torney, The Development of Political Attitudes in Children 114, 158-171, 217-220 (1967); V. Key, Public Opinion and American Democracy 323-343 (1961).
perceptions and values. Thus, through both the presentation of course materials and the example he sets, a teacher has an opportunity to influence the attitudes of students toward government, the political process, and a citizen's social responsibilities. This influence is crucial to the continued good health of a democracy.
help fulfill the broader function of the public school system. Teachers, regardless of their specialty, may be called upon to teach other subjects, including those expressly dedicated to political and social subjects. More importantly, a State properly may regard all teachers as having an obligation to promote civic virtues and understanding in their classes, regardless of the subject taught. Certainly a State also may take account of a teacher's function as an example for students, which exists independently of particular classroom subjects. In light of the foregoing considerations, we think it clear that public school teachers come well within the "governmental function" principle recognized in Sugarman and Foley. Accordingly, the Constitution requires only that a citizenship requirement applicable to teaching in the public schools bear a rational relationship to a legitimate state interest. See Massachusetts Board of Retirement v. Murgia, 427 U.S. 307, 314, 96 S.Ct. 2562, 2567, 49 L.Ed.2d 520 (1976).
of primary duty and loyalty. They have rejected the open invitation extended to qualify for eligibility to teach by applying for citizenship in this country. The people of New York, acting through their elected representatives, have made a judgment that citizenship should be a qualification for teaching the young of the State in the public schools, and § 3001(3) furthers that judgment.
requirement of citizenship upon a person before that person may earn his living in a specified occupation. These New York statutes, for the most part, have their origin in the frantic and overreactive days of the First World War when attitudes of parochialism and fear of the foreigner were the order of the day. This time we are concerned with the right to teach in the public schools of the State, at the elementary and secondary levels, and with the citizenship requirement that N.Y.Educ.Law § 3001(3) (McKinney 1970), quoted by the Court, ante, at 70 n. 1, imposes.
a relevant qualification for fulfilling " 'important nonelective executive, legislative, and judicial positions' held by 'officers who participate directly in the formulation, execution, or review of broad public policy.' " Id., at 296, 98 S.Ct., at 1070, quoting Sugarman v. Dougall, 413 U.S. 634, 647, 93 S.Ct. 2842, 2850, 37 L.Ed.2d 853 (1973). For such positions, a State need show only some rational relationship between the interest sought to be protected and the limiting classification. Police, it then was felt, were clothed with authority to exercise an almost infinite variety of discretionary powers that could seriously affect members of the public. 435 U.S., at 297, 98 S.Ct., at 1071. They thus fell within the category of important officers who participate directly in the execution of "broad public policy." The Court was persuaded that citizenship bore a rational relationship to the special demands of police positions, and that a State therefore could constitutionally confine that public responsibility to citizens of the United States. Id., at 300, 98 S.Ct., at 1073. The propriety of making citizenship a qualification for a narrowly defined class of positions was also recognized, in passing, in Sugarman v. Dougall, 413 U.S., at 647, 93 S.Ct., at 2850, and in Nyquist v. Mauclet, 432 U.S. 1, 11, 97 S.Ct. 2120, 2126, 53 L.Ed.2d 63 (1977).
and teacher); Examining Board v. Flores de Otero, 426 U.S. 572, 96 S.Ct. 2264, 49 L.Ed.2d 65 (1976) (the practice of civil engineering). See also Nyquist v. Mauclet, supra (New York statute barring certain resident aliens from state financial assistance for higher education).
Indeed, the Court has held more than once that state classifications based on alienage are "inherently suspect and subject to close judicial scrutiny." Graham v. Richardson, 403 U.S. 365, 372, 91 S.Ct. 1848, 1852, 29 L.Ed.2d 534 (1971). See Examining Board v. Flores de Otero, 426 U.S., at 601-602, 96 S.Ct., at 2280-2281; In re Griffiths, 413 U.S., at 721, 93 S.Ct., at 2854; Sugarman v. Dougall, 413 U.S., at 642, 93 S.Ct., at 2847; Nyquist v. Mauclet, 432 U.S., at 7, 97 S.Ct., at 2124. And "[a]lienage classifications by a State that do not withstand this stringent examination cannot stand." Ibid.
over 12 years. Each is married to a United States citizen. Each currently meets all the requirements, other than citizenship, that New York has specified for certification as a public school teacher. Tr. of Oral Arg. 4. Each is willing, if required, to subscribe to an oath to support the Constitutions of the United States and of New York. Each lives in an American community, must obey its laws, and must pay all of the taxes citizens are obligated to pay. Appellees, however, have hesitated to give up their respective British and Finnish citizenships, just as lawyer Fre Le Poole Griffiths, the subject of In re Griffiths, supra, hesitated to renounce her Netherlands citizenship, although married to a citizen of the United States and a resident of Connecticut.
our society rests. After then observing that teachers play a critical part in all this, the Court holds that New York's citizenship requirement is constitutional because it bears a rational relationship to the State's interest in furthering these educational goals.
tempted rationalization of this fact, ante, at 81-82 n. 15, hardly extinguishes the influence school board members, including these otherwise "disqualified" resident aliens, possess in school administration, in the selection of faculty, and in the approval of textbooks and instructional materials.
Second, the New York statute is all-inclusive in its disqualifying provisions: "No person shall be employed or authorized to teach in the public schools of the state who is . . . [n]ot a citizen." It sweeps indiscriminately. It is "neither narrowly confined nor precise in its application," nor limited to the accomplishment of substantial state interests. Sugarman v. Dougall, 413 U.S., at 643, 93 S.Ct., at 2848. See Note, Aliens' Right to Teach: Political Socialization and the Public Schools, 85 Yale L.J. 90, 109-111 (1975).
accomplish the desired result. An artificial citizenship bar is not a rational way. It is, instead, a stultifying provision. The route to "diverse and conflicting elements" and their being "brought together on a broad but common ground," which the Court so emphasizes, ante, at 77, is hardly to be achieved by disregarding some of the diverse elements that are available, competent, and contributory to the richness of our society and of the education it could provide.
"Lawyers do indeed occupy professional positions of responsibility and influence that impose on them duties correlative with their vital right of access to the courts. Moreover, by virtue of their professional aptitudes and natural interests, lawyers have been leaders in government throughout the history of our country." 413 U.S., at 729, 93 S.Ct., at 2858.
District Court expressed it well and forcefully when it observed that New York's exclusion "seems repugnant to the very heritage the State is seeking to inculcate." Norwick v. Nyquist, 417 F.Supp. 913, 922 (SDNY 1976).
"3. Not a citizen. The provisions of this subdivision shall not apply, however, to an alien teacher now or hereafter employed, provided such teacher shall make due application to become a citizen and thereafter within the time prescribed by law shall become a citizen. The provisions of this subdivision shall not apply after July first, nineteen hundred sixty-seven, to an alien teacher employed pursuant to regulations adopted by the commissioner of education permitting such employment." N.Y.Educ.Law § 3001(3) (McKinney 1970).
"Citizenship. A teacher who is not a citizen of the United States or who has not declared intention of becoming a citizen may be issued a provisional certificate providing such teacher has the appropriate educational qualifications as defined in the regulations and (1) possesses skills or competencies not readily available among teachers holding citizenship, or (2) is unable to declare intention of becoming a citizen for valid statutory reasons." 8 N.Y.C.R.R. § 80.2(i) (1978).
 Certification by the Commissioner of Education is not required of teachers at state institutions of higher education and the citizenship restriction accordingly does not apply to them. Brief for Appellants 13 n. *.
 At the time of her application Norwick had not yet met the postgraduate educational requirements for a permanent certificate and accordingly applied only for a temporary certificate, which also is governed by § 3001(3). She since has obtained the necessary graduate degree for full certification. Dachinger previously had obtained a temporary certificate, which had lapsed at the time of her 1975 application. The record does not indicate whether Dachinger previously had declared an intent to obtain citizenship or had obtained the temporary certificate because of some applicable exception to the citizenship requirement.
 That the significance of citizenship has constitutional dimensions also has been recognized by several of our decisions. In Trop v. Dulles, 356 U.S. 86, 78 S.Ct. 590, 2 L.Ed.2d 630 (1958), a plurality of the Court held that the expatriation of an American citizen constituted cruel and unusual punishment for the crime of desertion in time of war. In Afroyim v. Rusk, 387 U.S. 253, 87 S.Ct. 1660, 18 L.Ed.2d 757 (1967), the Court held that the Constitution forbade Congress from depriving a person of his citizenship against his will for any reason.
"Lawyers do indeed occupy professional positions of responsibility and influence that impose on them duties correlative with their vital right of access to the courts. Moreover, by virtue of their professional aptitudes and natural interests, lawyers have been leaders in government throughout the history of our country. Yet, they are not officials of government by virtue of being lawyers." 413 U.S., at 729, 93 S.Ct., at 2858.
 As San Antonio Independent School Dist. v. Rodriguez recognized, there is no inconsistency between our recognition of the vital significance of public education and our holding that access to education is not guaranteed by the Constitution. 411 U.S., at 30-35, 93 S.Ct., at 1295-1297.
 Although the findings of scholars who have written on the subject are not conclusive, they generally reinforce the common-sense judgment, and the experience of most of us, that a teacher exerts considerable influence over the development of fundamental social attitudes in students, including those attitudes which in the broadest sense of the term may be viewed as political. See, e. g., R. Dawson & K. Prewitt, Political Socialization 158-167 (1969); R. Hess & J. Torney, The Development of Political Attitudes in Children 162-163, 217-218 (1967). Cf. Note, Aliens' Right to Teach: Political Socialization and the Public Schools, 85 Yale L.J. 90, 99-104 (1975).
 Appellees contend that restriction of an alien's freedom to teach in public schools is contrary to principles of diversity of thought and academic freedom embodied in the First Amendment. See also id., at 106-109. We think that the attempt to draw an analogy between choice of citizenship and political expression or freedom of association is wide of the mark, as the argument would bar any effort by the State to promote particular values and attitudes toward government. Section 3001(3) does not inhibit appellees from expressing freely their political or social views or from associating with whomever they please. Cf. Givhan v. Western Line Consol. School Dist., 439 U.S. 410, 415-416, 99 S.Ct. 693, 696-697, 58 L.Ed.2d 619 (1979); Mt. Healthy City School Dist. v. Doyle, 429 U.S. 274, 97 S.Ct. 568, 50 L.Ed.2d 471 (1977); Pickering v. Board of Education, 391 U.S. 563, 88 S.Ct. 1731, 20 L.Ed.2d 811 (1968). Nor are appellees discouraged from joining with others to advance particular political ends. Cf. Shelton v. Tucker, 364 U.S. 479, 81 S.Ct. 247, 5 L.Ed.2d 231 (1960). The only asserted liberty of appellees withheld by the New York statute is the opportunity to teach in the State's schools so long as they elect not to become citizens of this country. This is not a liberty that is accorded constitutional protection.
 In New York, for example, all certified teachers, including those in the secondary schools, are required to be available for up to five hours of teaching a week in subjects outside their specialty. 8 N.Y.C.R.R. § 80.2(c) (1978).
 As our cases have emphasized resident aliens pay taxes, serve in the Armed Forces, and have made significant contributions to our country in private and public endeavors. See In re Griffiths, 413 U.S., at 722, 93 S.Ct., at 2855; Sugarman v. Dougall, 413 U.S., at 645, 93 S.Ct., at 2849; Graham v. Richardson, 403 U.S. 365, 376, 91 S.Ct. 1848, 1854, 29 L.Ed.2d 534 (1971). No doubt many of them, and we do not exclude appellees, would make excellent public school teachers. But the legislature, having in mind the importance of education to state and local governments, see Brown v. Board of Education, 347 U.S. 483, 493, 74 S.Ct. 686, 691, 98 L.Ed. 873 (1954), may determine eligibility for the key position in discharging that function on the assumption that generally persons who are citizens, or who have not declined the opportunity to seek United States citizenship, are better qualified than are those who have elected to remain aliens. We note in this connection that regulations promulgated pursuant to § 3001(3) do provide for situations where a particular alien's special qualifications as a teacher outweigh the policy primarily served by the statute. See 8 N.Y.C.R.R. § 80.2(i)(1) (1978). The appellants inform us, however, that the authority conferred by this regulation has not been exercised. Brief for Appellants 7 n. *.
 Appellees argue that the State cannot rationally exclude aliens from teaching positions and yet permit them to vote for and sit on certain local school boards. We note, first, that the State's legislature has not expressly endorsed this policy. Rather, appellants as an administrative matter have interpreted the statute governing New York City's unique community school boards, N.Y.Educ.Law § 2590-c(4) (McKinney Supp.1978-1979), to permit aliens who are the parents of public school students to participate in these boards. See App. 27, 29. We also may assume, without having to decide, that there is a rational basis for a distinction between teachers and board members based on their respective responsibilities. Although possessing substantial responsibility for the administration of the schools, board members teach no classes, and rarely if ever are known or identified by the students.
 One of the appellees in Nyquist v. Mauclet, 432 U.S. 1, 97 S.Ct. 2120, 53 L.Ed.2d 63 (1977), submitted a list of the New York statutes that required citizenship, or a declaration of intent to become a citizen, for no fewer than 37 occupations. Brief for Appellee Mauclet, O.T.1976, No. 76-208, pp. 19-22, nn. 8-44, inclusive. Some of those statutes have been legislatively repealed or modified, or judicially invalidated. Others are still in effect. Among the latter are those relating to the occupations of inspector, certified shorthand reporter, funeral director, masseur, physical therapist, and animal technician.
 "To be sure, the course of decisions protecting the employment rights of resident aliens has not been an unswerving one." In re Griffiths, 413 U.S. 717, 720, 93 S.Ct. 2851, 2854, 37 L.Ed.2d 910 (1973).
 See In re Griffiths, 413 U.S., at 726 n. 18, 93 S.Ct., at 2857 n. 18.
 One, of course, can agree with this observation. One may concede, also, that public schools are an " 'assimilative force' by which diverse and conflicting elements in our society are brought together on a broad but common ground," ante, at 77, and that the inculcation of fundamental values by our public schools is necessary to the maintenance of a democratic political system.
"Connecticut has wide freedom to gauge on a case-by-case basis the fitness of an applicant to practice law. Connecticut can, and does, require appropriate training and familiarity with Connecticut law. Apart from such tests of competence, it requires a new lawyer to take both an 'attorney's oath' to perform his functions faithfully and honestly and a 'commissioner's oath' to 'support the constitution of the United States, and the constitution of the state of Connecticut.' Appellant has indicated her willingness and ability to subscribe to the substance of both oaths, and Connecticut may quite properly conduct a character investigation to insure in any given case 'that an applicant is not one who "swears to an oath pro forma while declaring or manifesting his disagreement with or indifference to the oath." Bond v. Floyd, 385 U.S. 116, 132, 87 S.Ct. 339, 347, 17 L.Ed.2d 235.' Law Students Research Council v. Wadmond, 401 U.S. , at 164, 91 S.Ct. 720, at 727, 27 L.Ed.2d 749. Moreover, once admitted to the bar, lawyers are subject to continuing scrutiny by the organized bar and the courts. In addition to discipline for unprofessional conduct, the range of post-admission sanctions extends from judgments for contempt to criminal prosecutions and disbarment. In sum, the Committee simply has not established that it must exclude all aliens from the practice of law in order to vindicate its undoubted interest in high professional standards." 413 U.S., at 725-727, 93 S.Ct., at 2857 (footnotes omitted).
 See also Stockton v. Ford, 11 How. 232, 247, 13 L.Ed. 676 (1851); Hickman v. Taylor, 329 U.S. 495, 514-515, 67 S.Ct. 385, 395, 91 L.Ed. 451 (1947) (concurring opinion); Schware v. Board of Bar Examiners, 353 U.S. 232, 247, 77 S.Ct. 752, 760, 1 L.Ed.2d 796 (1957) (concurring opinion); In re Sawyer, 360 U.S. 622, 668, 79 S.Ct. 1376, 1399, 3 L.Ed.2d 1473 (1959) (dissenting opinion); J. Story, Miscellaneous Writings, Value and Importance of Legal Studies 503-549 (W. Story ed. 1972); Stone, The Public Influence of the Bar, 48 Harv.L.Rev. 1 (1934); W. Brennan, The Responsibilities of the Legal Profession, Address before the Law School of Harvard University (1967); A. de Tocqueville, Democracy in America 321-331 (Schocken ed. 1961); J. Rogers, The Lawyer in American Public Life, in Morrison Foundation Lectures 41, 61 (1940).
"Yet, they are not officials of government by virtue of being lawyers. Nor does the status of holding a license to practice law place one so close to the core of the political process as to make him a formulator of government policy." 413 U.S., at 729, 93 S.Ct., at 2858.


Justia › US Law › US Case Law › US Supreme Court › Volume 175 › Hartford Fire Ins. Co. v. Chicago, M. & St.P. Ry. Co.
Hartford Fire Insurance Company v.
Questions of public policy, as affecting the liability for acts done, or upon contracts made and to be performed, within one of the states of the Union -- when not controlled by the Constitution, laws or treaties of the United States, or by the principles of the commercial or mercantile law or of general jurisprudence, of national or universal application -- are governed by the law of the state, as expressed in its own constitution and statutes, or declared by its highest court.
its opinion, and entered final judgment affirming the validity of the agreement, and it also appeared that its final decision was not inconsistent with its decision or opinion in any other case. Held that the question of the validity of the agreement was one of statutory and local law, and not of the commercial law, or of general jurisprudence, and that the final decision of the state court thereon was rightly followed by the circuit court of the United States.
This was an action brought May 10, 1893, in the District Court of Jones county, in the State of Iowa, against the Chicago, Milwaukee & St. Paul Railway Company, a railroad corporation of Wisconsin, by seven fire insurance companies, corporations of other states, to recover for the loss by fire, owing to the defendant's negligence, of a warehouse and goods, belonging to the partnership of Simpson, McIntire & Company, and insured by the plaintiffs, who had paid the loss.
became, to that extent, subrogated to the partnership's right against the defendant, and were entitled to judgment against it for the sum so paid, with interest.
The defendant, on May 23, 1893, removed the case into the Circuit Court of the United States for the District of Iowa, and in that court, on September 12, 1893, filed an answer admitting that the parties to the action were corporations, and that the partnership was doing business at Monticello, as alleged, but denying all the other allegations of the petition.
and further, that the said parties of the second part will in no way obstruct or interfere with the track of said railway company in using said premises."
"And the parties of the second part agree to keep said premises in as good repair and condition as the same are in at the commencement of said term; to pay, as the same become due and payable, all taxes and assessments, general and special, that may be levied or assessed thereon during the time they remain in possession thereof, and to quit and surrender said premises at the expiration of said term, on demand of said railway company, and in case such demand shall not be made at the expiration of said term, to pay said rent at the rate and in the installments aforesaid, as long as they remain in possession thereof, and that they will not underlease said premises without the written consent of said railway company."
"And said parties of the second part further agree to quit and surrender said premises at any time before the expiration of said first-mentioned term, or at any time when default shall be made in the payment of said rent or taxes as aforesaid, within thirty days after demand of said railway company, and that, upon the expiration of said thirty days, it shall be lawful for said railway company to expel them therefrom."
"The parties of the second part may (and hereby agree that they will, if said railway company shall so require) remove from said premises, within thirty days after any termination of this lease, all structures owned or placed thereon by them."
express conditions of said lease and occupancy, and plaintiffs cannot now recover therefor. Wherefore the defendant prays judgment herein."
The plaintiffs demurred to the amended answer on the ground that the stipulation in the lease, by which it was sought to exonerate the defendant from loss by fire caused by the negligence of itself or its servants, was void as against public policy.
At the argument of the demurrer in the circuit court of the United States at April term, 1894, before Judge Shiras (as is shown by his opinion copied in the record, and printed in 62 F. 904), it appeared that a case between other parties, involving the question at issue in this case, was then pending before the Supreme Court of the State of Iowa, under the following circumstances: in that case, entitled Griswold v. Illinois Central Railroad, that court, on October 19, 1892 (by an opinion reported only in 53 N.W. 295), had held a similar stipulation to be void as against public policy, but on February 3, 1894, upon a rehearing, had held to the contrary, and had sustained the validity of the stipulation, two judges dissenting. 90 Ia. 265. A second petition for rehearing was then filed, and was still pending in that court. Under those circumstances, Judge Shiras suspended action on the demurrer, awaiting the final decision of the supreme court of the state. That court afterwards denied the second petition for rehearing, thereby finally affirming the validity of the stipulation, and thereupon Judge Shiras at September term, 1894, overruled the demurrer, and, the plaintiffs declining to plead further, rendered judgment for the defendant.
That judgment was unanimously affirmed by the circuit court of appeals upon the ground that the stipulation was valid, and was not against public policy, Judges Sanborn and Thayer, however, expressing the opinion (Judge Caldwell nonconcurring in this respect) that the decision of the state court was not conclusive upon this question. 70 F. 201. The plaintiffs thereupon applied for and obtained this writ of certiorari.
This action against a railroad corporation for the loss by fire, owing to its negligence in running its engines and trains, of a cold-storage warehouse and the goods therein, owned by a commercial partnership, is brought by insurers of the property, who had paid to the partnership the greater part of the loss and whose right, thereby acquired by way of subrogation, to recover against the railroad company to the extent of the amount so paid, is but the same right that the partnership had. Phoenix Ins. Co. v. Erie Transportation Co., 117 U. S. 312.
It is important, therefore, in the first place, to ascertain exactly what were the relations between the railroad company and the partnership.
"by fire occasioned or originated by sparks or burning coal from the locomotives, or from any damage done by trains or cars running off the track, or from the carelessness or negligence of employees or agents of said railway company,"
within thirty days after demand, and not to underlease without the lessor's consent, with a further agreement that the lessees might, and, if required by the lessor, would, remove from the premises, within thirty days after any termination of the lease, all structures owned or placed thereon by them.
The indenture, in short, is a lease by the railroad company of a strip of its land by the side of its track to the partnership for the purpose of erecting and maintaining a cold-storage warehouse thereon, for one year and for such longer time as the lessee may be permitted by the lessor to remain in possession, and contains no further agreements, other than those usual between lessor and lessee, except a covenant of the lessee not to obstruct or interfere with the railroad track of the lessor and an express condition of the lease and covenant of the lessee that the lessor shall not be liable to the lessee for any damage to the building or to personal property in or about it by fire from the lessor's locomotive engines or by trains or cars running off the railroad track, although owing to the negligence of the lessor or its servants.
The indenture contains no stipulation concerning, or even any mention of, any transportation of goods over the railroad, or any relation of the railroad company as a common carrier to the lessee or to the public, and there is nothing in the record to show that such a relation existed between the railroad company and the lessee, or that the warehouse was built or maintained for the benefit of the public, or of the railroad corporation, or of anyone but the partnership.
The decision of the case turns upon the question whether the provision of this indenture by which the railroad company is not to be liable for damage to the property by fire from its locomotive engines owing to the negligence of itself or its servants is void as against public policy.
The plaintiffs' counsel at the argument much relied on the cases in which similar provisions in the contracts of common carriers or of telegraph companies have been held to be void.
of goods received by it as a common carrier that it shall not be liable to him for any loss or injury of the goods by the negligence of itself or its servants is contrary to public policy, and must be held to be void in the courts of the United States without regard to the decisions of the courts of the state in which the question arises. But the reasons on which those decisions are founded are that such a question is one of general mercantile law; that the liability of a common carrier is created by the common law, and not by contract; that to use due care and diligence in carrying goods entrusted to him is an essential duty of his employment which he cannot throw off; that a common carrier is under an obligation to the public to carry all goods offered to be carried, within the scope and capacity of the business which he has held himself out to the public as doing, and that, in making special contracts for the carriage of such goods, the carrier and the customer do not stand on equal terms. Railroad Co. v. Lockwood, 17 Wall. 357; Liverpool Steam Co. v. Phenix Ins. Co., 129 U. S. 397, 129 U. S. 439-442, and other cases there cited. Although a telegraph company is not a common carrier, yet its relation with senders of messages over its lines is of a commercial nature, and contracts that the company shall not be liable for the negligence of its servants are affected, in some degree, by similar considerations. Express Co. v. Caldwell, 21 Wall. 264, 88 U. S. 269; Western Union Tel. Co. v. Texas, 105 U. S. 460, 105 U. S. 464; Primrose v. Western Union Tel. Co., 154 U. S. 1; Western Union Tel. Co. v. Cook, 61 F. 624; Harkness v. Western Union Tel. Co., 73 Ia. 190.
his servants, or may, by stipulation with the owner of goods carried, have the benefit of such insurance procured thereon by such owner. Phoenix Ins. Co. v. Erie Transportation Co., 117 U. S. 312; California Ins. Co. v. Union Compress Co., 133 U. S. 387, 133 U. S. 414; Wager v. Providence Ins. Co., 150 U. S. 99.
A railroad corporation holds its station grounds, railroad tracks, and right of way for the public use for which it is incorporated, yet as its private property, and to be occupied by itself or by others in the manner which it may consider best fitted to promote, or not to interfere with, the public use. It may, in its discretion, permit them to be occupied by others with structures convenient for the receiving and delivering of freight upon its railroad, so long as a free and safe passage is left for the carriage of freight and passengers. Grand Trunk Railroad v. Richardson, 91 U. S. 454. And it must provide reasonable means and facilities for receiving goods offered by the public to be transported over its road. Covington Stockyards Co. v. Keith, 139 U. S. 128. But it is not obliged, and cannot even be compelled by statute, against its will, to permit private persons or partnerships to erect and maintain elevators, warehouses, or similar structures for their own benefit, upon the land of the railroad company. Missouri Pacific Railway v. Nebraska, 164 U. S. 403.
of land, was the stipulation exempting the railroad company from liability to the licensee for any such damages. And the public had no interest in the question which of the parties to the contract should be ultimately responsible for such damages to property placed on the land of the corporation by its consent only.
The case is wholly different from those cited by the plaintiffs, in which a lease by a railroad corporation, transferring its entire property and franchises to another corporation, and thus undertaking to disable itself from performing all the duties to the public imposed upon it by its charter, has been held to be ultra vires, and therefore void -- as in Thomas v. Railroad Co., 101 U. S. 71, and in Central Transportation Co. v. Pullman's Car Co., 139 U. S. 24, and 171 U. S. 171 U.S. 138.
Questions of public policy as affecting the liability for acts done, or upon contracts made and to be performed, within one of the states of the Union -- when not controlled by the Constitution, laws, or treaties of the United States, or by the principles of the commercial or mercantile law or of general jurisprudence, of national or universal application -- are governed by the law of the state as expressed in its own Constitution and statutes, or declared by its highest court. Elmendorf v. Taylor, 10 Wheat. 152, 23 U. S. 159; Bank of Augusta v. Earle, 13 Pet. 519, 38 U. S. 594; Vidal v. Philadelphia, 2 How. 127, 43 U. S. 197; Bucher v. Cheshire R. Co., 125 U. S. 555, 125 U. S. 581, 125 U. S. 584; Detroit v. Osborne, 135 U. S. 492, 135 U. S. 498-499; Union Bank v. Kansas City Bank, 136 U. S. 223, 136 U. S. 235; Etheridge v. Sperry, 139 U. S. 266, 139 U. S. 276-277; Gardner v Michigan Central Railroad, 150 U. S. 349, 150 U. S. 357; Bamberger v. Schoolfield, 160 U. S. 149, 160 U. S. 159; Missouri &c. Trust Co. v. Krumseig, 172 U. S. 351; Sioux City Terminal Railroad v. Trust Co. of North America, 173 U. S. 99.
The validity of the agreement now in controversy does not depend upon the Constitution, laws, or treaties of the United States, or upon any principle of the commercial or mercantile law, or of general jurisprudence.
the state, and it is within the undisputed powers of that legislature to prescribe the precautions that the corporation shall take to guard against injuries to the property of others by the running of its trains, as well as the measure of its liability in case such injuries happen. Among the most familiar instances of the exercise of this power are statutes requiring a railroad corporation to erect fences between its road and adjoining lands and subjecting it to either single or double damages for any injury to cattle or other animals caused by its neglect to do so. Missouri Pacific Railway v. Humes, 115 U. S. 512; Minneapolis & St. Louis Railway v. Beckwith, 129 U. S. 26; Same v. Emmons, 149 U. S. 364, and statutes making a railroad corporation liable for damages to property of others from fire set by sparks from its locomotive engines, either independently of negligence on its part, or in case of such negligence only. St. Louis & San Francisco Railway v. Mathews, 165 U. S. 1; Atchison &c. Railroad v. Matthews, 174 U. S. 96.
"The right to use the agencies of fire and steam in the movement of railway trains in Iowa is derived from the legislation of the state, and it certainly cannot be denied that it is for the state to determine what safeguards must be used to prevent the escape of fire, and to define the extent of the liability for fires resulting from the operation of trains by means of steam locomotives. This is a matter within state control. The legislation of the state determines the width of the right of way used by the companies. The state may require the companies to keep the right of way free from combustible material. It may require the depot and other buildings used by the company to be of stone, brick, or other like material, when built in cities, or in close proximity to other buildings. The state, by legislation, may establish the extent of the liability of railway companies for damages resulting from fires caused in the operation of the roads. 62 F. 907."
165 U. S. 165 U.S. 17.
"The elevator is mainly a means or instrumentality for loading and unloading grain into and out of cars, boats, barges, or other vehicles, and, incidentally, for storing the same; it is in no just sense a connecting line of transit or connecting common carrier to the defendants' lines."
"The power of courts to declare a contract void for being in contravention of sound public policy is a very delicate and undefined power, and, like the power to declare a statute unconstitutional, should be exercised only in cases free from doubt."
that, "in order to recover, it shall only be necessary for the owner of the property to prove the injury or destruction complained of;" and that, if the company should neglect to pay for thirty days after notice and affidavit, the owner might recover double damages. Under that statute it was held to be no defense that the stock was unlawfully running at large, if not by the willful act of the owner or his agent. Spence v. Chicago & Northwestern Railway (1868), 25 Ia. 139. But where the owner of land had agreed to maintain a fence between it and the railroad, the court, while holding that persons not in privity of estate with him might still recover, said that it could not be doubted that he and his privies were estopped by his agreement to maintain an action against the company under that statute. Warren v. Keokuk & Des Moines Railroad (1875), 41 Ia. 484, 486.
"any corporation operating a railway shall be liable for all damages by fire that is set out or caused by operating of any such railway, and such damage may be recovered by the party damaged, in the same manner as set forth in this section in regard to stock, except to double damages."
for damages by fire; that the fact that the fire was set out or caused by operating the railway was only prima facie evidence of negligence on the part of the company, and that such negligence need not be alleged. Small v. Chicago, Rock Island & Pacific Railroad (1879), 50 Ia. 338; Babcock v. Chicago & Northwestern Railroad (1883), 62 Ia. 593; Seska v. Chicago, Milwaukee & St. Paul Railway (1889), 77 Ia. 137; Engle v. Chicago, Milwaukee & St. Paul Railway (1889), 77 Ia. 661. It was also held that, by virtue of the statute, contributory negligence on the part of the plaintiff was no defense to such an action. West v. Chicago & Northwestern Railroad (1889), 77 Ia. 654; Engle's Case, just cited.
"no contract, receipt, rule, or regulation shall exempt any corporation engaged in transporting persons or property by railway from liability of a common carrier, or carrier of passengers, which would exist had no contract, receipt, rule, or regulation been made or entered into."
That statute was rigidly enforced by the Supreme Court of Iowa in suits against railroad corporations as carriers. Brush v. Sabula &c. Railroad (1876), 43 Ia. 554; McCoy v. Keokuk & Des Moines Railroad (1876), 44 Ia. 424. But no intimation that it applied to them in any other relation was ever made by that court before the execution or the agreement in question in the case at bar.
the want of such fencing, could not be maintained by an owner of adjoining land who had agreed with the railroad company to maintain the fence at the place in question. And that court had never expressed any opinion upon the effect of such an agreement as is now pleaded upon an action against a railroad company, under the latter part of that section, for damages by fire caused by the negligence of its servants in operating its railway.
"transact the business for which said buildings are erected and designed at fair and reasonable rates, and in a prompt and careful manner, so that neither the company nor the public will be prejudiced by reason of the said lessee dealing unfairly or negligently in their behalf, or in the transaction of the business connected with the grain, coal, and lumber buildings so erected as aforesaid."
A district court of the state having upheld the validity of the contract, and rendered judgment for the defendant, the plaintiff appealed to the supreme court of the state.
would have been but for those covenants, no equivalent for which is to be found in the lease now before us.
But that court granted a rehearing, and on February 3, 1894, after further arguments, and, by a majority of the judges, reversed its former opinion, affirmed the judgment of the district court, and held the stipulation in question to be valid. 90 Ia. 265. Its course of reasoning may be shown by quoting some passages of the opinion.
"Public policy is variable; the very reverse of that which is the policy of the public at one time may become public policy at another; hence no fixed rule can be given by which to determine what is public policy. The authorities all agree that a contract is not void as against public policy, unless it is injurious to the interests of the public, or contravenes some established interest of society."
"It must not be forgotten that you are not to extent arbitrarily those rules which say that a given contract is void as being against public policy, because, if there is one thing more than another which public policy requires, it is that men of full age and competent understanding shall have the utmost liberty of contracting, and that their contracts, when entered into fairly and voluntarily, shall be held sacred, and shall be enforced by courts of justice. Therefore you have this paramount public policy to consider -- that you are not lightly to interfere with this freedom of contract."
absolutely liable for all damages by fire that is negligently set out or caused by the operation of the railway. As to such property, the railway company owes to the public the duty of care, and the public has an interest in the performance of that duty. Therefore a contract that exempts from that duty to the public would be injurious to the public interests, and against public policy. The plaintiff Griswold's buildings were not upon his own premises, nor where he had a right to have them, independent of the defendant; they were upon the right of way, where they could only be by its permission. In granting the permission and in placing the buildings there, both parties knew of the increased hazard of the location from fire communicated either through accident or negligence in the operation of the road. They knew that the defendant corporation could only act through its "
officers, agents, and employees, and that these might be negligent in the performance of their duties. . . . This is not a question whether, under section 1289, the defendant would be liable to Griswold for negligently communicating fire to this property in the absence of a contract to the contrary; but it is whether the public has any interest that this contract contravenes. It seems to us now quite clear that, as these buildings could only be placed upon the defendant's right of way by its consent, and were so placed upon the premises, and on the conditions expressed in the lease, the public had no interest therein, under said section 1289 or otherwise, that would be injured by giving effect to the agreement in question. Much as the public may have been interested in the convenience of such a place of business, it had no interest as to who should carry the hazard incident to that property being located as it was. . . . Upon further consideration, we are of the opinion that this contract was not made by the defendant in its capacity as a common carrier, and that the provision of § 1308 is not applicable. . . . After a careful review of the case, we reach the conclusion that the public had no interest in the clause of the contract in question, that its enforcement works no injury to any interest of the public, and that the judgment of the district court should be affirmed.
A second petition for rehearing was then filed, and that case had not been finally decided by the Supreme Court of Iowa when the present case came before the circuit court of the United States at April term, 1894. The circuit court thereupon suspended judgment in this case, and at September term, 1894 -- the state court having meanwhile denied the second petition for a rehearing, and thereby finally affirmed the validity of the stipulation -- followed the final decision of that court, and gave judgment for the defendant. 62 F. 904.
The first opinion of the Supreme Court of the State of Iowa in the case of Griswold v. Illinois Central Railroad was delivered after the agreement now in question was made. The final decision in that case, reversing the former opinion, was made after repeated arguments and full consideration; was nowise inconsistent, to say the least, with the decision or the opinion of that court in any other case, and was rendered before the case at bar was decided in the circuit court of the United States. Under such circumstances, that decision, being upon a question of statutory and local law, was rightly followed by the circuit court. Rowan v. Runnels, 5 How. 134, 46 U. S. 139; Morgan v. Curtenius, 20 How. 1; Fairfield v. Gallatin County, 100 U. S. 47, 100 U. S. 52; Burgess v. Seligman, 107 U. S. 20, 107 U. S. 35; Bauserman v. Blunt, 147 U. S. 647, 147 U. S. 653-656, and cases there cited; Williams v. Eggleston, 170 U. S. 304, 170 U. S. 311; Sioux City Railroad v. Trust Company of North America, 173 U. S. 99; Wade v. Travis County, 174 U. S. 499.


X. Hui and E. C. Kan, “Vital signs over multiplexed radio by near-field coherent sensing”, Nature Electronics, vol. 1, doi: 10.1038/S41928-017, Jan. 2018. (Featured in Nature Research News).
X. Hui and E. C. Kan, “Mitigation of body movement interference in near-field coherent sensing for heartrate monitoring”, IEEE Intl. Conf. Wearable and Implantable Body Sensor Networks (BSN), Las Vegas, NV, Mar. 4 – 7, 2018.
X. Hui and E. C. Kan, “Accurate extraction of heartbeat intervals with near-field coherent sensing”, submitted to IEEE Intl. Conf. Communications (ICC), Kansas City, MO, May 20 -24, 2018.
P. Sharma and E. C. Kan, “Sleep scoring with a UHF RFID tag by near-field coherent sensing”, submitted to IEEE MTT 2018 International Microwave Symp. (IMS), Philedelphia, Pennsylvania, June 10 – 15, 2018.
P. Sharma, X. Hui and E. C. Kan, “An on-chest RFID tag for sleep monitoring by near-field coherent sensing,” IEEE Transactions on Biomedical Circuits and Systems, under review, 2018.
X. Hui, P. Sharma and E. C. Kan “Microwave stethoscope for heart sound by near-field coherent sensing” Microwave Symposium (IMS), 2019 IEEE MTT-S International. IEEE, (2019).
X. Hui and E. C. Kan “Seat integration of RF vital-sign monitoring.” IMBioC2019, (2019).
X. Hui and E. C. Kan, “No-touch measurements of vital signs in small conscious animals”, Science Advances, Vol. 5, no. 2, eaau0169, 2019.
P. Wang, G. Pei and E. C. Kan, “Pulsed wave interconnect”, IEEE Trans. VLSI Systems, vol. 12, no. 5, pp. 453-463, May 2004.
J. Kim, W. Ni, C. Lee and E. C. Kan, “A novel global interconnect method using nonlinear transmission lines”, IEEE Custom Integrated Circuits Conference (CICC), San Jose, CA, September 18 – 21, 2005.
J. Kim, W. Ni and E. C. Kan, “Crosstalk reduction with nonlinear transmission lines for high-speed VLSI system”, IEEE Custom Integrated Circuits Conference (CICC), San Jose, CA, September 11-13, 2006, Paper No. 29.6.
K. G. Lyon, F. Yu and E. C. Kan, “A UWB-IR transmitter using frequency conversion in nonlinear transmission lines with 16pJ/pulse energy consumption”, IEEE Trans. Microwave Theory and Techniques (MTT), vol. 58, no. 12, pp. 3617 – 3625, Dec. 2010.
F. Yu, K. G. Lyon and E. C. Kan, “A novel passive RFID transponder using harmonic generation of nonlinear transmission lines”, IEEE Trans. Microwave Theory and Techniques (MTT), vol. 58, no. 12, pp. 4121 – 4127, Dec. 2010.
F. Yu, K G. Lyon and E. C. Kan, “Harmonic generation from integrated nonlinear transmission lines for RFID applications”, IEEE MTT 2010 International Microwave Symp. (IMS), Anaheim, CA, May 23-28, 2010, pp. 844 – 847.
F. Yu, Y. Ma, K. G. Lyon and E. C. Kan, “Reflective nonlinear transmission lines for single-antenna non-self-jamming RFID”, IEEE MTT 2011 International Microwave Symp. (IMS), Baltimore, MD, June 5 – 10, 2011.
F. Yu, Y. Ma and E. C. Kan, “A passive wireless sensor with reflective nonlinear transmission lines with capacitive signal transduction”, Radio and Wireless Symp. (RWS), Santa Clara, CA, Jan. 15 – 18, 2012.
F. Yu, K. G. Lyon and E. C. Kan, “A low-power UWB-IR transmitter by tapered nonlinear transmission lines”, IEEE Microwave and Wireless Components Letters, vol. 22, no. 12, pp. 618 – 620, Dec. 2012.
Y. Ma and E. C. Kan, “Accurate indoor ranging by broadband passive NLTL tags”, IEEE MTT 2013 International Microwave Symp. (IMS), Seattle, WA, June 2 – 7, 2013.
Y. Ma and E. C. Kan, “Accurate indoor ranging by broadband harmonic generation in passive NLTL backscatter tags”, IEEE Trans. Microwave Theory and Techniques (MTT), vol. 62, no. 5, pp. 1249 – 1261, May 2014.
Y. Ma, H. Rong and E. C. Kan, “Millimeter accuracy passive tag ranging via second harmonics RF backscattering against body movement interference”, IEEE GlobalCom, Austin, TX, Dec. 8 – 12, 2014.
Y. Ma and E. C. Kan, “Ubiquitous tagless object locating with ambient harmonic tags”, IEEE Intl. Conf. Computer Communications (Infocom), San Francisco, CA, Apr. 10 – 15, 2016.
Y. Ma, X. Hui and E. C. Kan, “Harmonic-WISP: A passive broadband RFID platform”, IEEE MTT 2016 International Microwave Symp. (IMS), San Francisco, CA, May 22 – 27, 2016.
Y. Ma, X. Hui and E. C. Kan, “3D locating via broadband nonlinear backscatter in passive devices with centimeter precision”, 22nd Intl. Conf. Mobile Computing and Networking (ACM Mobicom), New York, NY, Oct. 3 – 7, 2016.
X. Hui, Y. Ma and E. C. Kan. “Real-time 3D robotic arm tracking in indoor environment by RF nonlinear backscattering”, 2016 ACM S3, New York City, 2016.
X. Hui, Y. Ma and E. C. Kan, “Code division multiple access in centimeter accuracy harmonic RFID locating system”, IEEE J. Radio Frequency Identification (RFID), vol. 1, no. 1, pp. 51 – 58, March 2017.
X. Hui, Y. Ma, and E. C. Kan, “Real-time code-division multi-tag localization with centimeter accuracy”, 11th Intl. RFID Conf., Phoenix, AZ, May 9 – 11, 2017.
X. Hui and E. C. Kan, “Collaborative reader code division multiple access in the harmonic RFID system”, IEEE J. Radio Frequency Identification (RFID), Art. 2469-7281, July 2018.
Y. Cao, X. Hui and E. C. Kan, “An RF-to-DC rectifier based on tunable threshold diodes”, IEEE J. Radio Frequency Identification (RFID), Accepted, 2019.
X. Hui and E. C. Kan, “Radio ranging with ultra-high resolution using a harmonic radio-frequency identification system”, Nature Electronics, vol. 2, 2019.
N. Rakhilin, B. Barth, J. Choi, N. L. Munoz, S. Kulkarni, J. Jones, D. Small, Y.-T. Cheng, Y. Cao, C. LaVinka, E. C. Kan, X. Dong, M. Spencer, P. Pasricha, N. Nishimura and X. Shen, “Simultaneous optical/electrical in vivo analysis of the enteric nervous system”, Nature Communication, , 2016.
Y. Cao, N. Rakhilin, P. H. Gordon, X. Shen and E. C. Kan, “A real-time neural spike sorting method based on dynamic time warping for enteric neural recording with large waveform variability”, J. Neuron Methods, doi: 10.1016, pp. 97 – 109, Dec. 2015.
K. Jayant, A. Singhai, Y. Cao, J. B. Phelps, M. Lindau, D. Holowka, B. A. Baird and E. C. Kan, “Non-Faradaic electrochemical detection of exocytosis from mast and chromaffin cells using floating-gate MOS transistors”, Nature Scientific Reports, vol. 5, art. 18477, Dec. 2015.
P. H. Gordon, K. Jayant, Y. Cao, K. Auluck, J. B. Phelps and E. C. Kan, “Critical assessment on modeling and design of non-Faradic CMOS electrochemical sensing”, IEEE Sensor Journal, art. 2445292, June 2015.
K. Jayant, K. Auluck, S. Rodriguez, Y. Cao and E. C. Kan, “Programmable ion-sensitive transistor interfaces III. Design considerations, signal generation and sensitivity enhancement”, Phys. Rev. E., vol. 89, no. 5, art. 052817, 2014.
K. Jayant, K. Auluck, M. Funke, S. Anwar, J. B. Phelps, P. H. Gordon, S. R. Rajwade and E. C. Kan, “Programmable ion sensitive transistor interfaces I: Electrochemical gating”, Phys. Rev. E., vol. 88, no. 1, Art. 012801, July, 2013.
X. Li and E. C. Kan, “A wireless low-range pressure sensor based on P(VDF-TrFE) piezoelectric resonance”, Sensors and Actuators A: Physical, vol. 163, no. 2, pp. 457 – 463, Oct. 2010.
B. C. Jacquot, N. L. Muñoz, D. W. Branch and E. C. Kan, “Non-faradic electrochemical detection of protein interactions by integrated neuromorphic CMOS sensors”, Biosensors and Bioelectronics, vol. 23, no. 10, April, 2008.
B. C. Jacquot, C. Lee, Y. N. Shen and E. C. Kan, “Time-resolved ion and molecule transport sensing with microfluidic integration”, IEEE Sensors Journal, vol. 7, no. 10, pp. 1429-1434, Oct. 2007.
Z. Liu, M. Kim, Y. N. Shen and E. C. Kan, “Actuation by electrostatic repulsion by nonvolatile charge injection”, Sensors and Actuators A, Physical, vol. 119, no.1, pp. 236-244, 2005.
Y. N. Shen, Z. Liu, B. C. Jacquot, B. A. Minch, and E. C. Kan, “Integration of chemical sensing and electrowetting actuation on chemoreceptive neuron MOS transistors (CνMOS)”, Sensors and Actuators B., vol. 102, no. 1, pp. 35-43, Sept. 2004.
Y. N. Shen, Z. Liu, C. Lee, B. A. Minch and E. C. Kan, “Charge-based chemical sensors: a neuromorphic approach by the chemoreceptive neuron MOS transistors (CνMOS)”, IEEE Trans. Electron Devices, vol. 50, no. 10, pp. 2171-2178, Oct. 2003.
L.-T. Tung, M. V. Mateus and E. C. Kan, “Tri-gate graphene nanoribbon transistors with transverse-field bandgap modulation”, IEEE Trans. Elec. Dev., vol. 61, no. 9, pp. 3329 – 3334, Sept. 2014.
S. R. Rajwade, K. Auluck and E. C. Kan, “Dynamic Modeling of Dual–Speed Ferroelectric and Charge Hybrid Memory”, IEEE Trans. Elec. Dev., vol. 60, no. 10, pp. 3378 – 3384, Oct. 2013.
J. T. Shaw, H.-W. Tseng, S. Rajwade, L.-T. Tung, R. A. Buhrman and E. C. Kan, “Interface and oxide quality of CoFeB/MgO/Si tunnel junction”, J. Appl. Phys., vol. 111, no. 9, art. 093908, 2012.
J. T. Shaw, Q. S. Xu, S. Rajwade, T.-H. Hou and E. C. Kan, “Redox molecules for resonant tunneling barrier in nonvolatile memory”, IEEE Trans. Elec. Dev., vol. 59, no. 4, pp. 1189 – 1198, Apr. 2012.
S. R. Rajwade, K. Auluck, J. B. Phelps, K. G. Lyon, J. T. Shaw and E. C. Kan, “A ferroelectric and charge hybrid nonvolatile memory – Part I: device concept and modeling”, IEEE Trans. Elec. Dev., vol. 59, no. 2, pp. 441 – 449, Feb. 2012.
J. T. Shaw, Y.-W. Zhong, K. J. Hughes, T.-H. Hou, H. Raza, S. Rajwade, J. Bellfy, J. R. Engstrom, H. D. Abruna and E. C. Kan, “Integration of self-assembled redox molecules in flash memories”, IEEE Trans. Elec. Dev., vol. 58, pp. 826 – 834, Mar. 2011.
T.-H. Hou, H. Raza, K. Afshari, D. J. Ruebusch and E. C. Kan, “Nonvolatile memory with molecule-engineered tunneling barriers”, Appl. Phys. Lett., vol. 92, 153109, April 2008.
T.-H. Hou, U. Ganguly, and E. C. Kan, “Programmable molecular orbital states of C60 from integrated circuits”, Appl. Phys. Lett., vol. 89, article 253113, Dec. 2006.
T.-H. Hou, C. Lee, V. Narayanan, U. Ganguly, and E. C. Kan, “Design optimization of metal nanocrystal memory – Part I: nanocrystal array engineering”, IEEE Trans. Elec. Dev., vol. 53, no. 12, pp. 3095-3102, Dec. 2006.
C. Lee, T.-H. Hou and E. C. Kan, “Nonvolatile memory with a metal nanocrystal/nitride heterogeneous floating gate”, IEEE Trans. Elec. Dev., vol. 52, no. 12, pp. 2697-2702, Dec. 2005.
C. Lee, U. Ganguly, V. Narayanan, T.-H. Hou, J. Kim and E. C. Kan, “Asymmetric electric field enhancement in nanocrystal memories”, IEEE Elec. Dev. Lett., vol. 26, no. 12, pp. 879-881, Dec. 2005.
U. Ganguly, E. C. Kan and Y. Zhang, “Carbon nanotube based non-volatile memory with charge storage in metal nanocrystals”, Appl. Phys. Lett., vol. 87, p. 043108, 2005.
C. Lee, J. A. Meteer, V. Narayanan and E. C. Kan, “Process characterization of metal nanocrystal self assembly on ultra-thin oxide for nonvolatile memory applications”, J. Semiconductor Materials, vol. 34, no. 1, pp. 1-11, Jan. 2005.
G. Pei and E. C. Kan, “Independently driven DG MOSFET for mixed-signal circuits, part I: quasistatic and non-quasistatic channel coupling”, IEEE Trans. Electron Devices, vol. 51, no. 12, pp. 2086 – 2093, Dec. 2004.
P. Wang and E. C. Kan, “High-speed interconnects with underlayer orthogonal metal grids”, IEEE Trans. Components, Packaging and Manufacturing Technology, Part B: Advanced Packaging, vol. 27, no. 3, pp. 497-507, Aug. 2004.
P. Wang, N. Tien and E. C. Kan, “Permalloy loaded transmission line for high-speed interconnects”, IEEE Trans. Electron Devices, vol. 51, no. 1, pp. 74-82, Jan. 2004.
Z. Liu, C. Lee, V. Narayanan, G. Pei and E. C. Kan, “A novel quad source/drain metal nanocrystal memory device for multi-bit-per-cell storage”, IEEE Electron Device Letters, vol. 24, no. 5, pp. 345-347, May 2003.
1. Z. Liu, C. Lee, V. Narayanan, G. Pei and E. C. Kan, “Metal nanocrystal memories, Part I: device design and fabrication”, IEEE Trans. Electron Devices, vol. 49, no. 9, pp.1606-1613, Sept. 2002.
E. C. Kan, “Hardware-oriented security: Single particle effects from flash memory for random numbers, unclonable ID, steganography and authentication”, CMOS Emerging Technology Research Conference, Vancouver, Canada, May 22 – 24, 2015.
S. Q. Xu, W.-K. Yu, G. E. Suh and E. C. Kan, “Understanding sources of variations in Flash memory for physical unclonable functions”, International Memory Workshop, Taipei, Taiwan, May 17 – 19, 2014.
Y. Wang, W.-K. Yu, G. E. Suh and E. C. Kan, “Hiding information in Flash memory”, IEEE Symp. Security and Privacy, San Francisco, CA, May 19 – 22, 2013.
Y. Wang, S. Shuo, W.-K. Yu, G. E. Suh and E. C. Kan, “Flash memory for ubiquitous hardware security functions: True random number generation and device fingerprints”, IEEE Symp. Security and Privacy, San Francisco, May 20 – 23, 2012.
1. P. Prabhu, A. Akel, L. Grupp, W.-K. Yu, G. E. Suh, E. C. Kan and S. Swanson, “Extracting device fingerprints from flash memory exploiting physical variations”, 4th Intl. Conf. Trust and Trustworthy Computing (TRUST), Pittsburgh, PA, June 22 – 24, 2011.
K. Auluck and E. C. Kan, “Circuit models for ferroelectrics – Part I: Physics of polarization switching”, IEEE Trans. Elec. Dev., vol. 63, no. 2, pp. 631 – 636, Feb. 2016.
H. Raza and E. C. Kan, “Strain and field modulation in bilayer graphene band structure”, J. Phys: Condensed Matter, vol. 21, art. 102202, 2009.
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text:
The Complainant is Spielwarenmesse eG of Nürnberg, Germany, represented by Cöster & Partner - Rechtsanwälte, Germany.
The disputed domain name <spielwarenmesse.com> (the “Domain Name”) is registered with iRegistry Corp. (fka) Domain Name Sales Corp. (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 24, 2013. On April 24, 2013, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 24, 2013, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
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 May 3, 2013. In accordance with the Rules, paragraph 5(a), the due date for the Response was on May 23, 2013. The Response was filed with the Center on May 23, 2013.
The Center appointed Thomas Legler, Torsten Bettinger and Wolter Wefers Bettink as panelists in this matter on June 17, 2013. The Panel finds that it was properly constituted. Each member of 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, Spielwarenmesse eG, is a German cooperative which has been organising a trade fair for the toy industry on an annual basis since 1950.
On March 31, 2006, the Complainant filed the German trademark application No. 306213990 for SPIELWARENMESSE, for goods and services in classes 16, 35 and 41. However, the German Patent and Trademark Office rejected the application on the ground of lack of distinctive character. In addition, it was of the opinion that the mark was a descriptive indication to be kept available for general use.
On September 28, 2011, the Complainant filed again a German trademark application for SPIELWARENMESSE this time designating exclusively “organization of trade fairs in the field of toys” in class 35. That application No. 30 2011 053 981 was again rejected by the German Patent and Trademark Office. However, the German Federal Patent Court annulled that decision by order dated September 12, 2012. Consequently, that trademark was finally registered on January 7, 2013.
On May 23, 2013, the Respondent filed a petition for cancellation of said trademark registration No. 30 2011 053 981 SPIELWARENMESSE with the German Patent and Trademark Office.
The Complainant also owns the Chinese trademark registrations No. 8187940 and No. 8187939 for SPIELWARENMESSE designating respectively classes 35 and 38 and filed on April 28, 2011.
Furthermore, the Complainant is the owner of a large number of domain names featuring the word “Spielwarenmesse”, including <spielwarenmesse.be>, <spielwarenmesse.cn>, <spielwarenmesse.co.uk>, <spielwarenmesse.co.za>, <spielwarenmesse.de>, <spielwarenmesse.eu>, <spielwarenmesse.com.mx>, <spielwarenmesse.in>, <spielwarenmesse.jp>, <spielwarenmesse-eg.com>.
Little is known about the Respondent, Name Administration Inc. (BVI). It appears to be a company having significant domain name assets. The Respondent describes itself as being a leading company in the field of search advertising through its large portfolio of common words and phrases.
The Respondent has been the owner of the Domain Name <spielwarenmesse.com> since January 2002. At present, the landing page under the Domain Name shows some links in relation to various areas concerning toys.
It seems undisputed that at least in 2011, the Complainant contacted the Respondent, through their respective representatives (brokers), in order to receive a quote for the purchase of the Domain Name. These negotiations have failed.
When the Complainant was formed in 1950, it had the name of “Deutsche Spielwaren-Fachmesse eGmbH”. In 1958, the Complainant changed its name to “Spielwarenmesse” and in 1973 to “Spielwarenmesse eG”.
The Complainant has been doing business under its firm name with the firm name part “Spielwarenmesse” to a large extent and on a global basis since 1958.
Beginning only with German exhibitors in 1950, the toy trade fair became an international fair as from 1958. As from this point of time, the toy fair was called “Internationale Spielwarenmesse Nürnberg”. The fair reached 60 foreign exhibitors in 1958, 1,540 in 1994 and 2,747 in 2013 with 72,595 visitors from 113 countries all over the world. The Complainant shows an extensive promotion of its trade fair in Germany and abroad. Its advertising expenditure amounted to more than EUR 700,000 for the year 2013. According to the Complainant, it has been operating various representations abroad for several decades.
As regards the first Policy criterion, the Complainant considers that the Domain Name <spielwarenmesse.com> is identical and confusingly similar to the denomination “Spielwarenmesse” for which it enjoys protection. According to the Complainant, “Spielwarenmesse” is a well-known brand designating the famous international Nurnberg fair for the toy industry that it has been using since the 50’s. The Complainant argues that the trademark SPIELWARENMESSE has been the subject of an intensive use for that fair during several decades by providing the Panel with invoices and other documents showing the turnover of the annual trade fairs, the budget dedicated to their promotion along with a list of the current representations held abroad.
The Complainant considers that it is entitled to protection of the term “Spielwarenmesse” as it constitutes a part of its corporate name in the sense of Sec. 5 para. 2 of the German Trademark Law and Sec. 12 of the German Civil Code. It further invokes a copyright on the term “Spielwarenmesse” in the sense of Sec. 5 para. 2 of the German Trademark Law. In addition, the Complainant refers the Panel to its German Trademark Registration No. 30 2011 053 981 SPIELWARENMESSE filed on September 28, 2011 (see above) and to the Chinese trademark registrations No. 8187940 and No. 8187939 SPIELWARENMESSE designating respectively classes 35 and 38.
In addition, the Complainant points to its domain name <spielwarenmesse.de> registered since November 25, 1996 and used in relation to its toy fair since 1998.
The Complainant is finally of the opinion that the term “Spielwarenmesse” standing for its toy fair enjoys high name recognition for the Complainant also outside Germany. It indicates that this is shown by the reference to its toy fair in Nurnberg when one enters the search term “Spielwarenmesse” in the English version of Wikipedia. In order to demonstrate the high degree of recognition of the term “Spielwarenmesse” standing for the Nurnberg toy fair, the Complainant also refers to the above mentioned decision of the Federal Patent Court of September 12, 2012, making reference to a demoscopic poll where 62.2% of the interviewed individuals affirmed the question that “Spielwarenmesse” referred to the Complainant.
As regards the second criterion of the Policy, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name because (i) the Respondent has never acquired any trademark rights in the term “Spielwarenmesse”, (ii) the term “Spielwarenmesse” is not part of the Respondent’s company name and that (iii) a company located in the Cayman Islands can not have any interest in using that German term. In addition, the Respondent does not sell its own goods or services but only offers pay-per-click advertisements for, among others, toy dealers. Finally, the Respondent offers to sell the Domain Name, which proves that it does not intend to use it for own purposes in the future.
With regard to the third criterion of the Policy, the Complainant contends that the Domain Name was registered and is being used in bad faith. The Complainant considers that when the Domain Name was registered in 2001, the Complainant’s denomination “Spielwarenmesse” had already been intensively used all over the world since more than forty years. Thus, the Respondent cannot deny that it was aware of the Complainant’s activities under this denomination, especially as the word “Spielwarenmesse” has no significance in the English language.
Furthermore, the Complainant sees a case of paragraph 4(b)(i) of the Policy in the following line of events: In 2011, the Complainant approached the Respondent through its provider and bid for the acquisition of the Domain Name offering USD 5,100. The Respondent, through its broker, informed the Complainant's representative that the price for the Domain Name was USD 22,000. The Complainant indicated subsequently that it was not prepared to pay such a high amount. In an e-mail of March 16, 2011, the Respondent’s attention was drawn to the fact that the Complainant is the organizer of the globally leading and known “Spielwarenmesse International Toy Fair Nuremberg” and that the Domain Name may not be used by anybody else but the Complainant according to German law. The Complainant then asked the Respondent for a realistic price. The Respondent’s domain name broker informed the Complainant on March 21, 2011 that it was not prepared to offer another price and that this price remained valid for another two days, subsequently the price would double. The Complainant concludes from these facts that the Respondent wanted to prevent the Complainant from using the Domain Name and that this shows that it was registered and is used in bad faith.
Consequently, the Complainant requests that the Domain Name be transferred to it.
As regards the first criterion of the Policy, the Respondent argues that the term “Spielwarenmesse” is a generic word meaning “toy fair” in English. The Respondent underlines that online dictionaries and the German version of Wikipedia all distinguish the generic word “Spielwarenmesse” from the word “Nürnberger Spielwarenmesse” used to refer specifically to the Complainant’s toy fair. The term “Spielwarenmesse” itself has no other meaning than “toy fair” and is therefore a non-distinctive, descriptive and generic word. The Complainant consistently refers to the event as “Spielwarenmesse International Toy Fair Nuremburg” and does not use the unadorned term “Spielwarenmesse”.
Furthermore, the Respondent contends that the Complainant cannot rely on its registered corporate name “Spielwarenmesse eG” as a basis of the present Complaint given that the Policy and UDRP case law expressly limit administrative complaints to rights in a “trade or service mark”.
Moreover, the Respondent argues that the Complainant did not have any rights in the trademark SPIELWARENMESSE at the date of registration of the Domain Name. The Respondent reminds the Panel that the German Patent and Trademark Office refused in 2006 the Complainant’s application for SPIELWARENMESSE on the ground of lack of distinctive character and of descriptive indication to be kept available for general use. The Respondent considers that the fact that the trademark has been finally registered in 2011, probably due to acquired distinctiveness, does not alter the fact that this trademark was considered descriptive in 2006. As far as the 2011 registration is concerned, the Respondent submits a petition to the German Patent and Trademark Office by which it seeks cancellation of that registration. However, the Respondent admits that the 2011 registration may satisfy the threshold requirement of the first Policy criterion.
As regards the second Policy criterion, the Respondent argues that it uses the Domain Name <spielwarenmesse.com> in connection with paid search advertising relating to toys. Thus, the Respondent makes a legitimate use of the Domain Name composed of the generic German word for “toy fair” in connection with subjects relating to toys. In relation to whether the Respondent had an obvious intention to trade on the rights or reputation of a trademark owner in another part of the world, the Respondent notes that the Complainant has not established ownership of a trade or service mark right at the time the Respondent registered the Domain Name, and the Respondent, when contacted by the Complainant in 2008, became expressly aware that the Complainant’s claim had been refused in Germany.
With regard to the third Policy criterion based on bad faith, the Respondent indicates that it did not have the intention to prevent the Complainant from using the term “Spielwarenmesse” or to sell, rent or transfer the Domain Name to the Complainant at the date of the registration.
The Respondent argues that its principal (a German native but raised in Canada) was not aware of the Complainant’s event when he registered the Domain Name in 2001 (transferred to the Respondent in 2002), as he had left Germany when he was a small child.
The Respondent was aware that the Complainant’s trademark had been refused a first time by the German Patent and Trademark Office. The Respondent expressly referred to this circumstance in its communications with the Complainant in 2011.
Furthermore, the Respondent rejects the Complainant’s argument that its counter-offer of USD 22,000 in 2011 was a “bad faith price” as the Policy does not define what would be a “good faith” and what would be a “bad faith” price.
Finally, the Respondent poses the question whether this is not a case of laches as the Complainant has waited more than a decade to launch this proceeding. The Respondent therefore concludes that the Complainant has failed to demonstrate that the Domain Name was registered and used in bad faith.
Consequently, the Respondent requests that the Complaint be denied.
Under the first criterion of the Policy, the Complainant refers, among other things, to its name “Spielwarenmesse eG”, which constitutes its name as a cooperative under German law. While the UDRP does not specifically protect trade or company names as such, in situations where a trade name unregistered as a trademark is being used for trade or commerce, the complainant may be able to establish common law or unregistered trademark rights in that name. Whether such a particular case is given under the present circumstances can be left open as the Complainant is also the owner of the German trademark SPIELWARENMESSE No. 30 2011 053 981 registered in class 35 on January 7, 2013 (with priority of September 28, 2011). Although it appears that the Respondent has recently filed a petition for the cancellation of that trademark with the German Patent and Trademark Office (no decision has been filed by the Parties in this respect), the Panel is satisfied that the Complainant may refer to that trademark right under the first criterion of the Policy. The Respondent does not seem to contest that basic finding (see Response, at the bottom of p. 5). As the Domain Name and the said trademark consist of the same term “Spielwarenmesse”, the Panel finds that they are identical in the meaning of paragraph 4(a)(i) of the Policy.
The Domain Name containing the word “Spielwarenmesse” is comprised of the two generic German words “Spielwaren” (toys) and “Messe” (fair).
Even if it is a domain name comprised of a dictionary word or phrase, the respondent may nevertheless lack a legitimate interest in the domain name. Indeed, mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name.
Factors to look for when assessing whether there may be rights or legitimate interests include (i) the status and fame of the trademark, (ii) whether the respondent has registered other domain names containing dictionary words or phrases, and (iii) whether the domain name is used in connection with a purpose relating to its generic or descriptive meaning (e.g., a respondent may well have a right to a domain name “apple” if it uses it for a genuine site for apples but not if the site is aimed at selling computers or MP3 players, for example, or an inappropriate other purpose). See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.2.
As the Respondent has shown, its company engages in search advertising through its large portfolio of common words and phrases. This has been confirmed in at least two other administrative proceedings under the UDRP concerning the Respondent and quoted by the latter in its Response (DataServ, L.L.C. v. Name Administration Inc. (BVI), WIPO Case No. D2012-1538; Visa Europe Limited v. Name Administration Inc. (BVI), WIPO Case No. D2010-1531). Although the Respondent as a professional domain name registrant may have had some opportunistic awareness of a certain value of the selected Domain Name, the Complainant has not shown that the Respondent was aware of the existence of the Complainant at the time (2002) it acquired the Domain Name and that it would have targeted at any point of time the Complainant's toy fair in Nuremberg.
For the sake of completeness, the Panel wishes to address also the third criterion under the Policy.
It is not impossible that a domain name which was registered before the registration of the relevant mark may nevertheless have been selected in bad faith. One of the best-known cases is MADRID 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598, the “Madrid case”, wherein the respondent registered a number of domain names connected with the city of Madrid’s bid for the 2012 Olympic games. The complainant did not have trademark rights in the relevant terms at the time of registration of the domain names, but since the respondent only selected those domain names with the knowledge of the complainant’s impending rights, the registrations were determined to have been undertaken in bad faith. UDRP cases in this line include situations in which the relevant respondents registered domain names in light of impending commercial mergers, or where the respondent was otherwise known to have knowledge of the complainant’s mark (see, for example, Joyce Meyer Ministries Inc. v. Amjad Kausar, WIPO Case No. D2006-1555; Hydrobolt Limited v. Billington Bolt, WIPO Case No. D2008-1196; and Facebook Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT, WIPO Case No. D2007-1193).
In the present case however, there is no evidence showing that the Respondent had such knowledge of impending rights. Quite to the contrary as the Complainant’s fair is not apparently promoted in Germany and abroad under the name “Spielwarenmesse” but under the term “Spielwarenmesse International Toy Fair Nuremberg”.
In 2002, when the Respondent acquired the Domain Name, no trademark for “Spielwarenmesse” was registered. In addition, when the Complainant contacted the Respondent in 2008, the Respondent after a due trademark search became aware that the Complainant’s trademark had been refused by the German Patent and Trademark Office. The Respondent had therefore no reason to believe that neither its registration in 2002 nor its use in 2008 would constitute a violation of the Complainant’s trademark rights. It was only by decision of September 12, 2012 that the German Federal Patent Court admitted the second registration of the mark SPIELWARENMESSE (after having reversed the previous second refusal by the German Patent and Trademark Office), this time for the restricted use in class 35 for “the organisation of commercial specialist fairs in connection with toys” (free translation). Based on that decision, the respective trademark was registered on January 7, 2013. Under these circumstances, it would not be appropriate to assume an attitude of bad faith registration of the Respondent.
In relation to the above mentioned decision, the Panel noted that the German Federal Patent Court only granted protection to the mark SPIELWARENMESSE as it considered it as having acquired distinctiveness in Germany and only in relation to specialists in the field of trade and manufacture of toys (p. 7 and 8 of the decision filed by the Complainant). It is also worth mentioning that the Court held that the designation “Spielwarenmesse” is a descriptive term and as such basically to be kept free (“freihaltebedürftig”; p.7 of the decision). The Panel therefore concludes that even in 2013, the trademark at stake was only distinctive in Germany and in relation to specialists in the field and could not be considered as sufficiently well-known abroad or outside the circle of the mentioned specialists, i.e. for the average Internet user.
As to the Complainant’s hint to the Respondent’s offer to sell the Domain Name, the Panel recalls that offering to sell a domain name which a respondent has a free and clear right to own is not objectionable. As shown above, there are no other criteria which would lead to the assumption that the Respondent would not have been in possession of such a right.
Finally, the Panel notes that it finds it troubling that the Complainant has waited for almost a decade to file a complaint against the Respondent. Without assessing whether this constitutes a case of laches, the Panel finds that this fact adds to the above mentioned circumstances, i.e. to conclude that no bad faith has been shown for the Respondent’s acts in relation to registration and use of the Domain Name.

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application No. 306213990
application No. 30
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