ADR Center for .eu attached to the Arbitration Court attached to the Economic Chamber of the Czech Republic and Agricultural Chamber of the Czech Republic (Czech Arbitration Court)
§ B12 of the .eu Dispute Resolution Rules (ADR Rules)
Case No.: 03565 Time of Filing: 2006-10-24 16:04:46 Administrative Contact: Tomáš Paulík Complainant Name: Hans Beckhoff Complainant's Authorized Representative Name: Patentanwaltskanzlei Wilhelm & Beck, Jürgen Wilhelm Respondent Name: OEEO NETWORKS LIMITED, Michael Kopinski Respondent's Authorized Representative Name: Domain Name(s): ETHERCAT Other Legal Proceedings There are no other legal proceedings of which the panel is aware that are pending or decided and that are related to the disputed domain name. English summary of the decision: English summary of this Decision is hereby attached as Annex 1 Factual Background 1. The Complainant is Hans Beckhoff, a citizen of the Federal Republic of Germany.
2. The Complainant is owner of the Community Trademark 003122736 "Ethercat" (cf. annex 1), subject to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark.
3. The Respondent has not responded to the Compaint.
- ComplainantThe Complainant contends as follows:
Registration and use of the Domainname “ethercat.eu” by the respondent infringes the trademark rights of the complainant. The complainant is the owner of the trademark right. It is assumed that the respondent has no proper rights or legitimate interests in the sign “ethercat”.
The complainant seeks the transfer of the domain “ethercat.eu” by the respondent.
- RespondentThe Respondent has not responded to the Complaint.
Discussion and Findings 1. To succeed in its Complaint, the Complainant must show that the requirements of Article 21(1) of the Regulation have been complied with. That paragraph reads as follows:
" A registered domain name shall be subject to revocation, using an appropriate extra-judicial or judicial procedure, where that name is identical or confusingly similar to a name in respect of which a right is recognised or established by national and/or Community law, such as the rights mentioned in Article 10(1), and where it:
(a) has been registered by its holder without rights or legitimate interest in the name; or
(b) has been registered or is being used in bad faith."
2. Paragraph B.10(a) of the ADR rules provides that:
In the event that a Party does not comply with any of the time periods established by these ADR Rules or the Panel, the Panel shall proceed to a decision on the Complaint and may consider this failure to comply as grounds to accept the claims of the other Party.
3. However, this does not mean that the Complainant is entitled to a default judgment in a case, such as this, where no Response is filed. As paragraph B.11(d) of the ADR Rules makes clear, it is for the Complainant to prove that the requirements of Article 21(1) of the Regulation are satisfied.
4. The panel therefore deals with each of the three constituent parts of Article 21(1) of the Regulation in turn:
IDENTICAL OR CONFUSINGLY SIMILAR DOMAIN NAME
5. The Complainant has asserted that it is the proprietor of (and has provided details of) numerous registered trademarks in the mark ETHERCAT.
These assertions are not contradicted by the Respondent.
The Complainant has, therefore, satisfied the requirements of the first paragraph of Article 21(1).
NO RIGHTS OR LEGITIMATE INTERESTS
6. The Complainant has expressly asserted that in the circumstances described the respondent has no legitimate interest in the name. Therefore, the Complainat has - prima facie - proven that the Respondent has no rights or legitimate interests in the domain name in issue.
These assertions are not contradicted by the Respondent.
In the absence of any submission on the issue from the Respondent, the Complainant has therefore satisfied the requirements of Article 21(1)(a). Because Complainant needs to show either
- a lack of rights or legitimate interest on the part of the Respondent
- bad faith registration or use and given the finding on rights and legitimate interests set out above it is not necessary in this case to go on to consider the Complainant’s assertions in relation to bad faith registration or use.
Decision For all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the Panel orders that
the domain name ETHERCAT be transferred to the Complainant
- Friedrich Kurz
Date: 2007-02-05 Annex 1 The Complainant brought proceedings against the Respondent alleging that the Respondent’s registration of the Domain Name (i.e. <ethercat.eu>) was speculative or abusive, Art. 21(1) a) and b) of Commission Regulation (EC) No. 874/2004..
The Complainant maintained that he was the proprietor of European trade mark rights incorporating or comprising the word ETHERCAT.
The Respondent failed to file a Response.
The Panel held:
(1) The Complainant had managed to prove - prima facie - to the Panel that the requirements of Article 21 of the Regulation were satisfied in this case.
(2) That the Complainant has managed to make out a prima facie case that the Respondent had no legitimate rights or interests in the Domain Name.
(3) Given the Panel’s finding on the question of rights and legitimate interests, it was not necessary to address the Complainant’s allegation of bad faith registration. The Complainant had satisfied the requirements of Article 21 of the Regulation.
(5) The Complainant, being a German citizen, also satisfied the criteria for eligibility for a .eu TLD set out in Article 4(2)(b) of regulation (EC) No. 733/2002.
Accordingly, the Panel ordered the transfer of the Domain Name to the Complainant.