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)

Panel Decision

§ B12 of the .eu Dispute Resolution Rules (ADR Rules)

Case No.: 00532
Time of Filing: 2006-04-07 09:54:57
Administrative Contact: Josef Herian
 
Complainant
Name: Cervos Enterprises LTD.
 
Complainant's Authorized Representative
Name: Boris Hoeller
 
Respondent
Name: EURid
 
Respondentt's Authorized Representative
Name:
 
Domain Name(s): URLAUB
 
Other Legal Proceedings
The Panel is not aware of other legal proceedings which are pending or decided and which relate to the disputed domain name.
 
English summary of the decision: English summary of this Decision is hereby attached as Annex 1
 
Factual Background
On December 7th 2005, the company “info.at Internet GmbH”, located in Austria, applied for registration of the disputed domain name “URLAUB.EU” pursuant to article 10 (1) of Commission Regulation EC n. 874/2004, April 28, 2004 (phased registration).

info.at Internet GmbH is owner of the German trademark “u*r*l*a*u*b” filed on July 7th 2005 and registered by the German Trademark Office on September 1st 2005 under No. 305 39 747, International Classes 21 and 35.

The domain URLAUB.EU in the name of info.at Internet GmbH was successfully approved by the Validation Agent on December 21st 2005 pursuant to Article 14 (7) on a first come, first served basis.
The acceptance within the first phase registration (Sunrise period), on the basis that the right of info.at Internet GmbH to the name had been proven, is the subject of the dispute.

On April 5th 2006 the Complainant filed a complaint with the Czech Arbitration Court against the validation of the domain “URLAUB.EU”.

The formal date of commencement of the ADR proceeding was April 21st 2006.

The ADR proceeding was commenced pursuant to the Regulations (EC) No. 733/2002 and No. 874/2004 (the Regulations).
In accordance with Paragraph B2 (a) of the EU Dispute Resolution Rules (ADR Rules), the Czech Arbitration Court has verified that the complaint satisfies the formal requirements of the ADR Rules and ADR Supplemental Rules of the Czech Arbitration Court.

Cervos Enterprises Ltd. opted to have the dispute decided by a single-member panel.

The undersigned Mr. Davide Luigi Petraz was chosen as panelist for the present case, and accepted the Statement of Acceptance and Declaration of Impartiality and Independence.
 
Parties’ Contentions
  1. Complainant
    Cervos Enterprises Ltd. in its complaint observed that:
    

    1) The trademark “u*r*l*a*u*b” was registered by info.at Internet GmbH in bad faith and is solely descriptive, to achieve a formal position to be able to claim to be a holder of a prior right due to Article 10 of EC Regulation No. 874/2004.
    2) info.at Internet GmbH has violated article 3 (c) of EC Regulation No. 874/2004 by having stated they were in good faith, but really aiming to jump the queue in a bad faith manner.
    3) Moreover, at the time of commencement of the proceeding, there was a “proceeding for a declaration of invalidity of trademark” filed with Deutsches Patent und Markenamt (German Patent and Trademark Office), Case no. 305 39 747.8/35 - S 72/06 Lösch.

    Therefore, Complainant requests that the decision by EURid, considering info.at Internet GmbH to be the "first-comer" is wrong, and has to be annulled according to article 20 of EC Regulation No. 874/2004.
  2. Respondent
    Respondent argues that:
    

    1) The application of info.at Internet GmbH for the domain name “URLAUB.EU” was made on the ground of a registered national trademark and was submitted in due time.
    2) Complainant asks for the revocation of the disputed domain name on the basis of Article 20 of EC Regulation No. 874/2004, which states that the Registry may revoke a domain name on its own initiative and without submitting the dispute to any extrajudicial settlement on certain limited grounds. However, in the case at hand the Registry did not make a decision pursuant to article 20 of the Regulation. Therefore, the present ADR proceedings are groundless and the Complaint must be rejected.
    3) During the phased registration period, the decision by the Registry whether or not to register the domain name can only be taken on the ground of the findings whether or not the applicant has demonstrated a prior right; there is no legal ground in the Regulation for the Registry to reject an application for a domain name on the presumption that the application may have been made in bad faith or for speculative reasons, as argued by Complainant.
    4) Moreover, Complainant does not dispute that the Applicant is the holder of a registered trademark, but instead that a trademark opposition proceeding has been initiated and may lead to the revocation of the trademark.
    It is well-accepted that the mere initiation of opposition proceedings does not affect the legal status of the trademark. The Applicant was the holder of a registered trademark at the time of the validation, which, pursuant to article 14 (7) of EC Regulation No. 874/2004, led the Registry to register the domain name.

    For the reasons mentioned above, Respondent claims that the complaint must be rejected.
 
Discussion and Findings
The Complaint is based on two main grounds:

1) Trademark used by Applicant is under opposition by Deutsches Patent und Markenamt (German Patent and Trademark Office), so it should not be considered a valid qualification to register the domain name “URLAUB.EU”
2) Applicant did not respect EC Regulation No. 874/2004, filing and obtaining a trademark for the only use to register a domain name, thus in bad faith.

1) On trademark validity and status
At the time of filing the registration for the disputed domain name URLAUB.EU, info.at Internet GmbH was owner of the German trademark “u*r*l*a*u*b” filed on July 7th 2005 and registered by the German Trademark Office on September 1st 2005 under No. 305 39 747, International Classes 21 and 35.
Application to register domain name URLAUB.EU, and further documentary evidence submitted, has been made in respect to Articles 10 (1) and 14 (7) of EC Regulation No. 874/2004.

As the trademark activated to register the disputed domain name contains the symbols “*”, that have been removed on the domain name requested by the Applicant, it is necessary to refer to the following provision from Article 11 (2) of EC Regulation No. 874/2004: “where the name for which prior rights are claimed contains special characters, spaces or punctuations, these shall be eliminated entirely from the corresponding domain name, replaced with hyphens or, if possible, rewritten.”
As discussed on ADR Cases no. 265 (LIVE.EU, trademark “LI&VE”), no. 394 (FRANKFURT.EU, trademark “FRANKF & URT”) and no. 398 (BARCELONA.EU, trademark “BARC & ELONA”), the most common reading of the above mentioned Regulation paragraph seems to prefer a rewriting of a symbol element, instead of its annulment from the domain name.
In the case at hand, there’s a use of a symbol that has not a unique transliteration or definition (it could be referred as “asterisk” as well as “star” and “wildcard”), so a rewriting seems not the straightforward decision. On the matter, Panelist on Case no. 188 (123.EU, figurative trademark “1,2,3”) dealt with a trademark with a “,” (comma) symbol, that has not a unique transliteration as well, and confirmed that “The layout of the relevant part of the paragraph does not include a conjugation, such as “and”, but a comma.  It follows therefore that the Regulation does not require that where a special character is eliminated it must be replaced with a hyphen.  The Panelist therefore agrees with the Registry’s decision not to replace the periods in the disputed name with hyphens.”
Panelist finds that the transliteration of the trademark “u*r*l*a*u*b” to “URLAUB” seems correct and comply to EC Regulation No. 874/2004. As per the above mentioned Regulation, identity of the trademark with the domain name requested is satisfied.

The fact that the cited trademark No. 305 39 747 is now the object of an opposition cannot invalidate the ownership of the domain name URLAUB.EU, at least in the current state of events.
Indeed, the opposition cannot invalidate the acquired right to the trademark until and if a decision is taken to totally revoke it.
In fact, the opposition procedure may also conclude with the confirmation of the registration, or with only a partial revocation for the products and services claimed in said trademark.

2) On bad faith
Apart from the assumptions alleged by Cervos Enterprises Ltd., there is no evidence that info.at Internet GmbH filed the Application for URLAUB.EU domain name in bad faith. Argumentations made by Cervos Enterprises Ltd. find no confirmation in the documentary evidence brought with complaint.
Moreover, as correctly stated by Respondent, EURid has no discretional functions to discern applications filed in bad faith, as its main duty is to verify the compliance of documentary evidence brought by Applicants.
 
Decision
For all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the Panel orders that the Complaint is Denied.
 
Panelists
  • Davide Luigi Petraz
Date: 2006-07-12
Annex 1
info.at Internet GmbH, owner of the German trademark “u*r*l*a*u*b” filed on July 7th 2005 and registered by the German Trademark Office on September 1st 2005 under No. 305 39 747, International Classes 21 and 35, applied to register domain name URLAUB.EU.

Application and further documentary evidence submitted has been made in respect to Articles 10 (1) and 14 (7) of EC Regulation No. 874/2004.

The Complaint made by Cervos Enterprises Ltd. against EURid decision to assign the domain name to the first applicant in queue (info.at Internet GmbH) is based on two main grounds:
1) Trademark used by Applicant is under opposition by Deutsches Patent und Markenamt (German Patent and Trademark Office), so it should not be considered a valid qualification to register the domain name “URLAUB.EU”:
The fact that the cited trademark No. 305 39 747 is now the object of an opposition cannot invalidate the ownership of the domain name URLAUB.EU, at least in the current state of events.
Indeed, the opposition cannot invalidate the acquired right to the trademark until and if a decision is taken to totally revoke it.
In fact, the opposition procedure may also conclude with the confirmation of the registration, or with only a partial revocation for the products and services claimed in said trademark.
Moreover, Panelist finds that the transliteration of the trademark “u*r*l*a*u*b” to “URLAUB” seems correct and comply to EC Regulation No. 874/2004, as there’s a use of a symbol that has not a unique transliteration or definition (it could be referred as “asterisk” as well as “star” and “wildcard”), so a rewriting seems not the straightforward decision. As per the above mentioned Regulation, identity of the trademark with the domain name requested is satisfied.

2) Applicant did not respect EC Regulation No. 874/2004, filing and obtaining a trademark for the only use to register a domain name, thus in bad faith.
Apart from the assumptions alleged by Cervos Enterprises Ltd., there is no evidence that info.at Internet GmbH filed the Application for URLAUB.EU domain name in bad faith. Argumentations made by Cervos Enterprises Ltd. find no confirmation in the documentary evidence brought with complaint.

For all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the Panel orders that the Complaint is Denied.