Panel Decision for dispute CAC-ADREU-008776

The Panel is not aware of any other legal proceedings which are pending or decided and relate to the disputed domain name.

The disputed domain name was registered by the Respondent on 26 April 2021, according to the Registry Verification provided by EURid at the request of the CAC Case Administrator.

The Complainant submitted a copy of his French national identity card, which the Panel inspected during its routine scrutiny of the Case File. The Panel found that the card appears to be in good order including as to the age of the Complainant for the purposes of submitting a Complaint on his own behalf.

The Complainant adduced screenshot evidence to show that the disputed domain name <roque.eu> has been displayed on a domain name resale site for several years with the Respondent's current asking price being 2,999 EUR.

1. Rights invoked by the Complainant pursuant to Art. 4(4) of Regulation (EU) 2019/517

Art. 4(4) requires the Complainant in first place to show that the disputed domain name is identical or confusingly similar to a name in respect of which a right is established by the national law of a Member State and/or EU law.

The Complainant invokes his own surname, "Roque", and, as noted under Factual Background, has furnished as evidence for his holding the name a copy of his French identity card.

With respect to the official recognition given to a surname (and first names) in the French Republic, the Complainant transmitted to the Panel an extract from the French Civil Code, Art. 57, duly linked to the official government register of legislation online. In Art. 57, the Code states the modalities for the issue of an official birth certificate which includes a statement of the family name.

The Complainant also provides in the same manner an extract from Chapter 1 (Moral Rights) of the French Intellectual Property Code, Art. L121-1, which lays down an author's right to enjoy respect for his or her name, its quality and its work, with such right being perpetual, inalienable and indefeasible as well as transmissible upon death to the author's heirs. A further article from this Code is included in evidence, Art. L711-4, which forbids registration or employment of any trademark that subsists in a "sign" that infringes prior rights, including, among others, that of a third person's right of personality (droit de la personnalité), notably his or her family name (nom patronymique), his or her pseudonym or his or her image.

Finally, the Complainant asserts his eligibility under Regulation (EU) 2019/517 to be the registrant of a <.eu> name.

2. The Respondent's lack of demonstrable interest and/or bad faith

The Complainant contends that the circumstances of this case satisfy both of these conditions:

a) The website to which the disputed domain name resolves is a third-party resale page. The disputed domain name is a personal family name unrelated to the Respondent. "Roque" is not a generic word nor one related to its current use, which is moreover clearly for commercial gain. Consequently, the Respondent has no right or legitimate interest in respect of the disputed domain name.

b) It is evident that the Respondent registered the disputed domain name for speculative commercial resale reasons, as is also evident from his resale pricing for it and thus this constitutes bad faith.

3. Conclusion and request for transfer

The domain being identical to the Complainant's last name "Roque", which, as shown, is afforded legal protection as a right under French law, this prior right cannot be overridden even in circumstances of intellectual property because the right of personality to specifically the family name is explicitly protected. Being eligible to be a <.eu> domain name holder, the Complainant also concludes that all conditions set out in the Regulation are fulfilled and thus requests transfer of the disputed domain name <roque.eu> to himself.

1. Governing framework for .EU disputes

The Respondent refers to Art. 3(a) of Regulation (EU) 2019/517 to assert that all European Union citizens are eligible to register <.eu> domain names, regardless of residence and, by reference to Art. 4(1), to claim that domain names are registered in the order of the first technically correct applicant. The Respondent further asserts that the burden of proof lies "wholly" with the Complainant in domain name dispute resolution (citing the CAC Overview of Panellists' Views, Version 2.0) and notes that, in <.eu> disputes, either lack of a Respondent's right or legitimate interest in the disputed domain name must be shown or the Respondent's bad faith, whereas the UDRP procedure requires showing both.

2. The Complainant's alleged family-name rights

The Respondent contends that, when a Complainant makes a claim in this connection, the Complainant must prove that the family name “is actually protected under the national law relied on”, noting that the Complaint in Case CAC-ADREU-008622 <Willey.eu> did not succeed because no proof was adduced.

The Respondent then notes that other panels have decided that a family name that is also a generic word does not prevail over another's legitimate use, while, for its part, French law does not afford absolute protection. The Respondent cites here Art. L711-4 of the French Code of Intellectual Property, which, while it bars trademarks that infringe a third party’s surname, does not, the Respondent claims, grant a single name bearer exclusivity over all uses. Thus, the Complainant in this case, the Respondent contends, must adduce concrete evidence showing that French (or another) law grants the Complainant an exclusive right to "Roque" across the EU. For this reason, the Respondent concludes that the Complainant has difficulty already in surmounting the first requirement of the <.eu> two-part test.

3. Domain-name investment as constituting a legitimate interest on the Respondent's part

The Respondent then asserts that domain-name trading is lawful, citing Case CAC-ADREU-008534 <circulate.eu>, which recaps certain earlier Decisions and paraphrases CAC.EU Overview 2.0 for the proposition that "there is nothing wrong per se with selling domain names and that merely offering a name for sale does not prove bad faith nor a lack of legitimate interest".

Rather, the Respondent concludes, investment in domain names -- his business model -- amounts to a legitimate interest in itself. Without specifying the actual Decision(s) concerned, the Respondent contends that panels have ruled that “being in the business of registering, buying and selling generic domain names in itself constitutes a legitimate interest,” so long as no goodwill of another is targeted. UDRP panels moreover, the Respondent adds, have upheld investors’ rights where no trademark is targeted (e.g. Case NAF FA190312 <tips.com>). Nor does “passive holding” necessarily constitute bad faith that might call the Respondent's legitimate interest into question. The Respondent hence concludes that his business model satisfies the “rights or legitimate interest” test for a defence based on Art. 4(4)(a) of Regulation (EU) 2019/517.

4. Absence of bad faith

The Respondent denies that employing a parking page to advertise an asking price of 2 999 EUR is evidence of bad faith, again citing the above-mentioned Case CAC-ADREU-008534 <circulate.eu>, in which it was found that merely offering a domain -- even at 25 000 EUR, as in that case -- “does not imply bad faith”. Furthermore, ADR is not a substitute for commercial negotiation, as indicated in the same decision and others (CAC-ADREU-008448 <mensik.eu> and CAC-ADREU-008449 <maro.eu>). As to passive holding specifically, the Respondent contends that bad faith is to be inferred only where the name targets a trademark or blocks its owner (see cases CAC-ADREU-007628 <pictetgroup.eu> and CAC-ADREU-008476 <violifefoods.eu>); no such trademark is in question here.

Turning to the quality of the right claimed by the Complainant, the Respondent contends that "Roque" is a common surname with no demonstrated trademark or unique association to the Complainant, and there is no evidence of targeting, confusion or free-riding on the Respondent's part. Moreover, the disputed domain name <roque.eu> was registered in 2021, long before any objection by the Complainant, who showed no evidence of even being aware of the disputed domain name's existence. The family name “Roque” is indeed generic, by being shared by thousands of people across Europe, such as the journalist Raquel Roque and the footballer Julio Roque.

Lastly, the Respondent contends that he has been transparent by placing the disputed domain name for sale on the Sedo website, an open marketplace with a listing at a fixed price, which is standard industry practice. No surreptitious approach was made to the Complainant.

1. The governing legal framework for <.eu> TLD disputes

The 2022 CAC <.eu> ADR Rules open by making clear that: "The interpretation and application of these ADR Rules shall be conducted in the light of the EU legal framework, which shall prevail in the event of conflict." Next, the Rules define applicable "European Union Regulations" as two instruments of EU secondary legislation which, being Regulations, have direct applicability and effect as law throughout the EU. These are:

- Regulation (EU) 2019/517 of the European Parliament and of the Council of 19 March 2019 on the implementation and functioning of the .eu top-level domain name; and

- European Commission Implementing Regulation (EU) 2020/857 of 17 June 2020 laying down the principles to be included in the contract between the European Commission and the .eu top-level domain Registry in accordance with Regulation (EU) 2019/517.

While these Regulations create the basis for the <.eu> system and its functioning, they, in their turn, receive their force from and refer to EU primary law, particularly the 2009 Treaty of the Functioning of the EU, which contains the policies, principles and values that govern the entire EU legal framework. In so far as human rights are concerned, primary law also includes the 2000 Charter on Fundamental Rights.

Among primary EU law’s values pertinent to the <.eu> name system are respect for human dignity, family life, the protection of each individual’s personal data and intellectual property. They thus form part of the <.eu> system's governing framework and are reflected in Regulation (EU) 2019/517, which required the European Commission to establish policies for speculative and abusive <.eu> registrations. The Commission did so in its Implementing Regulation (EU) 2020/857, whose Art. 9 requires the Registry to "have policies and procedures in place to actively mitigate speculative and abusive domain names registrations in the .eu TLD", taking into consideration "at least the intellectual property rights ... including copyright, trademarks, and geographical indications provided in Union or national law, and, in as far as they are protected under national law in the Member States where they are held: unregistered trademarks, trade names, business identifiers, company names, family names, and distinctive titles of protected literary and artistic works".

As to the extension <.eu>, Regulation (EU) 2019/517 establishes what its nature is. Art. 1(1) proclaims that the goal is “to build an online Union identity and to encourage cross-border online activities”, a goal which is clarified by Recital (2)’s explanation that: “The purpose of the .eu TLD is, through good management, to help enhance the Union identity and promote Union values online, such as multilingualism, respect for users' privacy and security and respect for human rights, as well as specific online priorities.” The <.eu> extension must therefore not be regarded as merely a technical or similar adjunct.

Moreover, consistent with Art. 1(1), Art. 3 sets down strict eligibility criteria for becoming a <.eu> registrant, the pertinent criterion for this proceeding being that the Complainant is “(a) a Union citizen, independently of their place of residence”. The Complainant has, by supplying his French identity card bearing his French nationality in a card format also bearing the EU flag indicating Union citizenship as well, shown that he fully meets this criterion. In its own right, Art. 3 underlines that a higher standard applies in order for a registrant to acquire and keep a <.eu> domain name than is required in relation to many other TLD domain names, especially the generic ones that are most often the subject of UDRP proceedings and the Decisions that ensue from them.

In other words, the quality of a <.eu> domain name as relating to eligible entities makes this domain name harder to acquire than many other TLD domain names; equally, though, the value of the domain name for eligible entities is enhanced through the lower standard of proof they face if they need to challenge a registration. This is accomplished by the disjunctive requirement for a Complainant in an ADR proceeding only to prove, under Art. 4(4) of Regulation (EU) 2019/517, either the Respondent's lack of legitimate interest or bad faith in respect of the disputed domain name. This offers greater practical legal protection, tipping the balance in favour of Complainants relative to the more demanding UDRP three-part cumulative test and de facto serves to strengthen the Regulation's policy of combatting speculative and abusive registrations.

As entities concerned with the application and interpretation of the legal framework just described, it is incumbent on the TLD Registry EURid and each ADR Panel established by the CAC to abide by the full framework’s policies, principles and values taking account, of course, of technical requirements, administrative factors and the circumstances of implementation.

2. The issues in this proceeding

This proceeding involves a contest between these positions on points of principle:

- the Complainant contends that he benefits under Regulation (EU) 2019/517 from protection of his family name under French law and that, being a European Union as well as French citizen, he is eligible both to claim the disputed domain name because it is identical to his family name and to have it transferred to him, given that the Respondent has no right or legitimate in the disputed domain and/or is acting in bad faith;

- the Respondent contends that his business model of buying a set of domain names and trading them at whichever prices the market will bear is a legitimate form of investment. Fortified by this claim, he casts doubt on the Complainant's alleged right: it merely concerns a “generic” species of family name and a number of prior panels' Decisions have found against Complainants invoking similar arguments.

Bearing in mind the governing legal framework explained above, the Panel will now apply it to these positions.

3. The Complainant's rights in his family name "Roque" under the governing framework and applicable law

In regard to whether the Complainant has a qualifying right to challenge a <.eu> registration, the Panel reaffirms that the Complainant has provided the Panel with adequate proof, for the purposes of Art. 9 of Implementing Regulation (EU) 2020/857, of his family name “Roque” in the form of a copy of his identity card and it is clear that the stem of the disputed domain name is identical to this.

He has also provided adequate proof of the legal protection of the Complainant’s family name in France in the form of references to the Civil Code and the Intellectual Property Code summarized in the section on the Complainant’s Contentions above.

It is important to observe here that, in the ADR Case CAC-ADREU-008622 <willey.eu>, relied on by the Respondent, the Complainant failed because adequate proof was lacking in this or other respects, such as by failing to provide a copy of an official national identity document. None of these circumstances exist in the present proceeding, in which the Complainant can rely on robust protection of his family name.

Based on this evidence, the Panel FINDS that, in France, the protection given affords the Complainant in particular the positive freedom to enjoy his name’s use including permanent, inalienable and indefeasible moral rights associated with it that he can pass on to his heirs, as well as a negative freedom, under Art. L711-4 of the French Intellectual Property Code, against a family name being the subject of a trademark interference by others. Whereas it is true that a domain name is not a species of intellectual property -- it is instead a technical facility subject to contractual terms and conditions -- the approach taken in Art. L711-4 is only explicable by a wider notion of protection in French law, which is to be found in the doctrine of the right of personality (droit de personnalité) that the Complainant also invokes.

The Panel here observes that one’s name, honour and reputation are furthermore the subject of related development in European human rights law connected to questions of the protection of human dignity, privacy and family life. The Panel notes in this regard in particular the European Court of Human Rights judgment in the Burghartz v. Switzerland, Case 16213/90 (1994) in which it was recognized that family names fall under the right to respect for private and family life under Art. 8 of the European Convention on Human Rights (ECHR). This right has, moreover, been incorporated into EU law by Art. 7 of the 2000 EU Charter of Fundamental Rights.

The Panel nevertheless remarks in this connection, taking account of an observation made by the Respondent in relation to intellectual property, that (unlike the positive freedom French law provides for authors' moral rights) rights of this nature are more generally not absolute in nature and a balancing exercise must be performed. This was so in Burghartz v. Switzerland itself (administrative factors needed to be balanced against the Claimant’s Art. 8 ECHR rights) and subsequent judgments of the European Court of Human Rights.

In the <shell.de> case, a prominent one in domain name jurisprudence decided by the German Federal Court of Justice in Case No. 87/2001, the court – in another jurisdiction which recognizes the doctrine of the right of personality (Persönlichkeitsrecht) -- held that the domain name registrant Andreas Shell’s mere first registration did not, after application of a balancing test based on the circumstances of the oil company Shell Deutschland GmbH’s rights, services and notoriety, have a sufficient interest to continue to hold the name and thus his registration was revoked by the court. The court did not, on the other hand, order transfer of the name to Shell Deutschland GmbH, leaving the door open to registration by a third party with a (qualitatively) equal or better right.

However, the context in this case is very different thanks to the recognition afforded to the Complainant under Art. 4(4) of Regulation (EU) 2019/517 and his eligibility for transfer to him.

In conclusion on this point, the above discussion permits the Panel to FIND that the Complainant has fully substantiated his right recognized under national or EU law to the family name “Roque” reproduced identically in the disputed domain name. The Panel will now examine the issue of the Respondent’s legitimate interest, and, if found to exist, will then proceed to any necessary balancing exercise relative to the Complainant’s demonstrated rights.

3. The Respondent’s claim to have a legitimate interest in the disputed domain name.

The Complainant can discover no legitimate interest on the Respondent’s part, and considers the commercial behaviour concerned to be indeed evidence of bad faith because the primary intent is to sell to someone, like the Complainant, who does have a right to the name and wishes to use it. Yet, the Respondent replies, citing Case CAC-ADREU-008534, there is actually “nothing wrong” about selling domain names per se. To the contrary, “the business of registering, buying and selling generic domain names in itself constitutes a legitimate interest in such names, insofar as it does not attempt to benefit from the goodwill or positive image of a third party's trade mark or sign”.

Closer examination reveals, however, that Case CAC-ADREU-008534, in which the disputed domain name was <circulate.eu>, dealt with the distinct question of generic domain names, i.e. words picked from a dictionary to which none of the rights and interests mentioned in Art. 9 of European Commission Implementing Regulation (EU) 2020/857 apply. In the <circulate.eu> case the Panellist was, moreover, careful to point out that: “The word 'circulate' is a very common and generic word in both English, Spanish and Italian, has a low distinctiveness, and is hence a descriptive name rather than a brand name.”

A further prior Decision on which the Respondent relies is Case CAC-ADREU-007159 <jurista.eu>. There, a Czech Complainant seeking to invoke protection of his family name “Jurista”, which was capable in principle of being protected under Czech law, indeed did fail in his claim. This time, closer examination shows that the panellist, a Finn, took the view that “Jurista” was a generic word meaning lawyer in Latvian and that as a result, despite the Complainant having duly established his right to protection in the Czech Republic, the sale of that disputed domain name as a generic domain name was legitimate and also not in bad faith.

In the present Panel’s view, some form of balancing exercise may have influenced the <jurista.eu> Decision and it is likely that this was connected to the fact that the word “jurist” is shared across so many languages. Further, because, in contrast to the detailed analysis of factors influencing the German Federal Court of Justice in the <shell.de> case, the Panel in the <jurist.eu> left little account of its detailed reasoning for later Panels to consider other than to reiterate that “There is nothing per se wrong in selling domain names.”

In the present proceeding, it is significant that, in contrast to the <jurista.eu> case, “Roque” is not as such alleged to be a generic term, thereby separating the two cases' salient circumstances from each other.

The Panel also observes that the April 2016 <jurist.eu> Decision is listed in the August 2016 CAC.EU Overview among 17 cases for Panellists’ views on the question “Does an offer to sell a domain constitute bad faith?”, for which the answer is that it is “not necessarily a proof for bad faith, but can be an indication of bad faith combined with other circumstances of bad faith, e.g. the lack of use of the disputed domain name. There is nothing per se wrong in selling domain names”. But it is not referred to for its main point, evident from the description given above, in the pertinent sections of the Overview, namely, Section I, Procedural Questions and Section II. Relevant Rights of the Complainant, where in its Paragraph 9 (not 10, as referred to by the Respondent), the Overview states the contrary conclusion that: “The fact that a family name coincides with a generic word descriptive of a trade or occupation does not detract from any right that person has in their family name.”

Recalling the peculiar question the Panellist faced in the <jurista.eu> case, it is also helpful to consider the sole case that is referenced by the Overview relative to family names, namely, Friedrich Miller v. Frank Heilmann, CAC-ADREU-006858, <miller.eu>. In that case, the Complainant successfully obtained a transfer. It is valuable to include here the reasoning the Panellist applied there: “The fact that numerous persons may possess the family name Miller does not detract from the Complainant’s right to bring this proceeding. The Panel finds the disputed domain name to have been registered and used by the Respondent in bad faith under Article 21(3)(a) of the Regulation.” It is furthermore noteworthy that the Respondent in that case did not deny domain name trading while the Panel investigations revealed in this regard “the Respondent’s interest in buying and selling domain names selectively. The Respondent expressed a particular focus on.EU domain names.” As concerns any legitimate right, the panelist found that “the corresponding website is provided with token content for the real purpose of sale or renting and such use is found in this case to be outside the meaning of fair use under Article 21(2)(c) of the Regulation”, the predecessor to Regulation (EU) 2020/857.

Nor does the <miller.eu> case by any means stand in isolation, either before the 2016 .EU Overview 2.0 or subsequently. A similar finding in similar circumstances was made in the CAC-ADREU-006743 Case <stein.eu> and under the 2020 Regulation in the 2024 Decision CAC-ADREU-008611 Case <fach.de>, a later case than the <ciculate.eu> Decision the Respondent most relies on and a case that is firmly on point, also because the pricing level (half that of what the Respondent asks for <roque.eu>) for a domain identical to a common family name plainly indicates pricing “in excess of any out-of-pocket costs directly related to the disputed domain name”, thereby also setting a test for what may be “speculative” pricing conduct in the sense of the Regulations, an aspect not defined there or in the Rules.

Against this background it is the moment to recall that, not merely abusive (e.g. cybersquatting and phishing) domain name behaviour but also specifically “speculative” domain name registration is targeted by the Regulations. The wording they respectively use varies between “fighting” and “combatting” such registrations but both words make clear that such registrations are considered to be a known problem to be countered, not a legitimate business model.

It is perfectly true that the sale of one or more domains is not in itself illegitimate. What makes it illegitimate is who is affected. If it is another speculator wishing to pick a purely fanciful generic name, that may be one thing but even this must be assessed in light of the evidence of possible rights that may prevail in such a situation. If, in contrast, a demonstrable right protected under EU or national law is affected, then the speculator must not register the domain name in question on pain of likely transfer to an eligible Complainant who is diligent enough at any moment to prove their rights and point out circumstances sufficiently showing the Respondent’s lack of rights or legitimate interest or bad faith.

Thus, the business model of the speculator – i.e. anyone who buys up domain names in order to trade them at a margin above out-of-pocket costs – is intrinsically precarious. There is an entirely legitimate resale market available, of course, where a registrant with rights or legitimate interest wishes to dispose of a domain name they hold at a profit. But this is certainly not what the Respondent’s business model is built on, and which resembles what the panelist in Case CAC-ADREU-003108 <sport1.eu> concerning a non-family name registration described simply as a “domain grabbing”.

To explain further, unlike a real investment model, speculative trading is founded on assets intrinsically worthless to the speculator whose real value to the speculator consists in demand on the part of those deprived of the opportunity to use a resource ear-marked for them – by the EU in establishing the <.eu> TLD – so that they and the EU itself as an entity might flourish together under their combined domain-name identity. The theoretical option of allowing predatory intermediation, which is what speculative registration is, would by contrast hold back for sometimes very long periods (as in this proceeding) a utility resource from productive social and economic use. This would frustrate <.eu>’s utility purpose. It is for this reason that, under the governing legal framework, speculative registration must instead be combatted, including by ADR panels.

And one must lastly underline that, whereas to the speculator, domain names of any TLD may seem like a commodity, they are by their individually distinctive nature not. And this is most intimately so of personal family names. Moreover, as cases like <fach.eu> show, there is no such thing as a “generic” kind of family name. Each family name is individual to its bearer from cradle to grave.

Thus, the Complainant too has the right to expect that his particular family name is respected as such and, by his initiative in this proceeding, then to be able to enjoy that name for his and perhaps other family members’ benefit.

Having considered and denied the Respondent’s principal contention in this case, and there being no other claims of legitimate interest on his part to consider, the Panel accordingly FINDS that the Respondent enjoys no rights or legitimate interest in the disputed domain name.

4. Bad faith

The Panel is not obliged to rule on the question of bad faith in this case under the procedural requirements for <.eu> disputes. It notes furthermore that the Complainant has directed most of his contentions at the issue of the Respondent’s lack of legitimate interest.

The Panel therefore DECLINES to decide on this point. In doing so, the Panel notes that the Respondent made a spirited defence of his position that rested in part on utterances made by prior panels that might be subject to over-broad interpretation. It also observes that, in several prior Decisions affirming the right to protection of family names, the Panels' attention was directed most often to the aspect of bad faith and not that of lack of a Respondent's legitimate interest. The present Decision hence seeks to elaborate on the latter aspect, especially in light of the Respondent's main contention.

5. ORDER

The Panel, having found that the Complainant has shown his rights to the family name “Roque” and has sufficiently shown that the Respondent has no rights or legitimate interest in the disputed domain name <roque.eu>, ORDERS  transfer of <roque.eu> to the Complainant.

For the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the domain name <roque.eu> is to be transferred to the Complainant.