{
    "case_number": "CAC-ADREU-006457",
    "time_of_filling": null,
    "domain_names": [
        "sberbank.eu"
    ],
    "case_administrator": "Lada Válková (Case admin)",
    "complainant": [
        "Sberbank of Russia ( )"
    ],
    "complainant_representative": null,
    "respondent": [
        "Sylux Sylwester Domitrz"
    ],
    "respondent_representative": null,
    "factual_background": "The Complainant – Sberbank of Russia: \r\n•\tis a bank based in Russia;\r\n•\toperates the websites www.sberbank.ru, sberbank.ua, sberbank.am, sberbank.ch, sberbank.at and sberbank.co.uk;\r\n•\tis the owner of several trademark registrations for the designation “SBERBANK”, which include the word-graphic trademark SBERBANK IR-1025684 registered on 22.12.2009 for financial services in class 36, and which has been accepted, among others, in Germany (the refusal period has expired and no notification of provisional refusal has been recorded in Germany). \r\n\r\nThe Co-Complainant - Sberbank Europe AG:\r\n•\tis a bank based in Austria and has been a 100 % affiliate of the Complainant since November 2012;\r\n•\tuses the designation SBERBANK in Europe for the business of financial services.\r\n\r\nThe Respondent – “Sylux” Sylwester Domitrz: \r\n•\tregistered the domain name sberbank.eu on July 22, 2010;\r\n•\toffered transfer of the domain name sberbank.eu to the Complainant for payment,\r\n•\tdoes not place any content on the website;\r\n•\thas been involved in similar ADR proceedings, which include cases nos. 05402 and 05544 concerning registration of the domain names toyotabank.eu and axabank.eu.",
    "other_legal_proceedings": "ADR proceedings number 05402 and 05544 involving the Respondent and similar circumstances.",
    "discussion_and_findings": "In the Complaint, there is imputed to the Respondent speculative and abusive registration of the domain sberbank.eu.\r\n\r\nUnder art. 21 (1) of Commission Regulation (EC) No. 874\/2004 (hereinafter “Regulation”) a registered domain name is to be revoked, under an appropriate extra-judicial or judicial procedure, when that name is identical or confusingly similar to a name in respect of which a right has been recognized or established by national or Community law, such as the rights mentioned in article 10(1), and when it:\r\n(a) has been registered without there being a right or legitimate interest in the name, or\r\n(b) has been registered, or is being used, in bad faith.\r\n\r\nUnder ADR procedure, if there is an allegation of speculative and abusive registration, a complainant has to demonstrate that it has a right to the name under national or Community law, the domain in dispute is identical or confusingly similar, and that the respondent lacks a right to and a legitimate interest in the disputed domain, or acts in bad faith.\r\n\r\nProcedural issues\r\n\r\nStanding of non-EU-entities in the proceedings \/ Co-complainant \/ possible remedies \r\n\r\nHowever, prior to an assessment of the merits, the procedural issue raised by the Respondent needs to be considered. The Respondent claims that the Complaint is to be rejected “…due to formal mistakes” because, among others, the Complainant is based in Russia and is not entitled to register an .eu domain. \r\n\r\nThe question arises whether non-EU-entities have standing in ADR .eu proceedings.\r\n\r\nUnder art 22 (1) of the Regulation and paragraph B 1 (a) of the ADR Rules, any person or entity can commence ADR proceedings; therefore, non-EU-entities have standing in ADR .eu proceedings. There is, however, a consensus among panels that those entities cannot request transfer of a domain name, but only revocation of it (see relevant decisions in cases CAC 2300, CAC 5325, CAC 5332, CAC 5405).\r\n\r\nPanels have usually accepted joint complaints by non-EU rights holders and EU subsidiaries, or other entities related to them. If a transfer was requested to an EU entity it was usually granted (see relevant decisions in cases CAC 4588, CAC 4955).\r\n\r\nUnder art. 22 (11) of the Regulation, in a claim against a domain name holder, the ADR Panel is to decide that the domain name is to be revoked, if it finds that the registration is speculative or abusive, as defined in article 21. The domain name would then be transferred to the complainant if the complainant applies for the domain name and satisfies the general eligibility criteria listed in article 4(2)(b) of Regulation (EC) No 733\/2002.\r\n\r\nArticle 4(2)(b) of Regulation (EC) No 733\/2002 provides that the registry is to register domain names in the .eu TLD through any accredited.eu registrar that is requested by either (i) an undertaking having a registered office, central administration, or principal place of business within the Community, or (ii) an organization established within the Community without prejudice to the application of national law, or (iii) a natural person resident \/ domiciled within the Community.\r\n\r\nTherefore, the Panel can only reach the conclusion that the Complaint filed by both Complainant and the Co-Complainant is valid, but: \r\n-\tthe Complainant (a non-EU entity) can only demand revocation of the domain name; \r\n-\ttransfer of the domain would only be possible to the Co-Complainant (an Austrian affiliated company of the Complainant).\r\n\r\nIt may be trite to say, but a complaint can only succeed if the complainant has a right and an interest in the subject of the compliant. In this matter, to be able to order transfer of the domain, it would have to be found that the Co-Complainant has own prior rights recognized or established by national or Community law. Otherwise, if a right and interest only lies with the Complainant, it would only be possible to revoke the domain. \r\n\r\nSunrise period inactivity\r\n\r\nThe Respondent also claimed that that the Complaint is to be rejected because neither the Complainant nor the Co-Complainant participated in the “Sunrise period”.\r\n\r\nPanels are in consensus that even if the complainant did not try to register a domain name during the Sunrise period he can initiate the ADR procedure, under art. 21 (1) of the Regulation without limitation. There is no obligation on rights holders to register domain names in a Sunrise period.\r\n\r\nTherefore, the Panel can only reach the conclusion that the lack of complainant action during the Sunrise period is irrelevant and does not deprive a complainant of being able to act to protect the IP rights that it has.\r\n\r\nStandard of proof \/ burden of proof\r\n\r\nBefore further elaboration is provided on the merits of the matter, it also has to be stated that under paragraph B 7 (a) of the .eu Alternative Dispute Resolution Rules (hereinafter “ADR Rules”) a Panel is to conduct ADR evidentiary proceedings in such manner as it considers to be appropriate, but in accordance with the Procedural Rules. A Panel has a discretion, but not an obligation, to conduct an own investigation of the facts.\r\n\r\nParagraph B 1 (b), of ADR Rules provides that a complaint is to annex any documentary or other evidence, which includes evidence of the right upon which a complaint relies. \r\n\r\nThe standard of proof in the opinion of the majority of panelists, with which this Panel concurs, is that an assertion is to be proven on the balance of probabilities (more likely to be true than to be false). \r\n\r\nFinally, as to the burden of proof regarding the lack of a legitimate rights or interest and bad faith, the majority opinion of the Panel, with which this Panel concurs, is that the complainant only needs to establish a prima facie lack of a legitimate right or interest. Then, the onus probanti would shifts to the respondent to rebut the prima facie finding. It is similar for bad faith; the complainant only has to establish a prima facie case; it would be for the Respondent to rebut the finding.\r\n\r\nMerits\r\n\r\nPrior rights \r\n\r\nThe first requirement under art. 21 (1) of the Regulation is to determine whether the name of the domain is identical or confusingly similar to a name in respect of which a Complainant or Co-complainant has a right recognized or established by national or Community law, such as the rights mentioned in article 10 (1). Article10 (1) of the Regulation indicates prior rights recognized or established by national or Community law include registered national and community trademarks, geographical indications or designations of origin, and, in as far as they are protected under national law in the Member-State where they are held unregistered trademarks, trade names, business identifiers, company names, family names, and distinctive titles of protected literary and artistic works.\r\n\r\nThe Complainant led evidence that it owns several trademark registrations for the designation SBERBANK, which includes the word-graphic trademark SBERBANK IR-1025684, registered on 22.12.2009 and which has been recognized in Germany before the date of filling the Complaint. The Complaint indicates that on the date of filling the Complaint the refusal period had had expired and no notification of provisional refusal was recorded. Therefore, the Complainant has evidenced international trademark registration of SBERBANK, which was protected under the national law of a Member-State on the date of registering the domain and filling the complaint. The domain name in dispute is obviously confusingly similar to the Complainant’s registered trademark within the meaning of the art 21 (1) of the Regulation. The remaining trademarks provided by the Complainant have later priority or have been registered outside of the EU and have not been taken into consideration.\r\n \r\nThe Co-complainant claims that by using SBERBANK in Europe for the business of financial services it acquired its own right to the designation SBERBANK. \r\n\r\nHowever, the types of right that the Co-complainant acquired has not been clarified (unregistered trademark, trade name, business identifier, company name) and it has not been evidenced that that right is protected under the national law in the Member-State in which the right applies. \r\n\r\nAlso, there is a lack of persuasive evidence that the Co-complainant has used SBERBANK. The fact alone of acquisition of the company is not sufficient evidence of use. Even the website sberbank.at (national Austrian domain) is claimed to be operated by the Complainant and check in the whois database shows that it is registered to the Saving Bank of the Russian Federation JSC. \r\n\r\nThe Panel finds that the Co-complainant has not evidenced (under the rules of standard of proof \/ burden of proof described above) that it in itself has a right to file a complaint.\r\n\r\nAlso, the fact that the Co-Complainant was acquired by the Complainant and changed company name only in November 12, 2012 would require further consideration for the issue of priority.\r\n\r\nLack of rights or legitimate interest \/ bad faith\r\n\r\nThe trademark rights of the Complainant, however, allow further consideration of whether the domain: \r\n(a) has been registered without there being a rights to, or legitimate interest, in the name, or\r\n(b) has been registered, or is being used, in bad faith.\r\n\r\nThe facts of this matter show at least one of the two applies: the lack of a legitimate interest in the domain name.\r\n\r\nThe Respondent registered the domain name without having a right to the trademark\/designation or to the name SBERBANK. The documents provided show that the Respondent has offered to sell, or rent, the domain name. A check of the website under the domain shows that the Respondent is not using the domain and there was no evidence to suggest that he is preparing to use it. That also seems to be confirmed by the Respondent’s statements; he did not deny lack of content under the domain name and explained that he was not obliged to display content.\r\n\r\nThe Panel can only reach the conclusion that there is no evidence that the Respondent: used the website to offer goods or services, has been commonly known by the domain name, or was using it legitimately, non-commercially, and fairly within the meaning of art. 21 (2) (c) of the Regulation.\r\n\r\nTherefore, the lack of a right or legitimate interest in the domain name is proven. \r\n\r\nEven though a finding of a lack of a legitimate interest means bad faith does not need to be proven, it seems that facts would warrant a finding that the Respondent acted in bad faith when registering the domain.\r\n\r\nThere are ample facts to lead to the conclusion that the primary reason for registering the domain registration was sale, rental, or transfer of it to another, see:\r\n-\tthe offer to sell, or to rent, the domain to the Complainant; \r\n-\tthe domain was not used after it was registered;\r\n-\tthe Respondent seems to act in the business of registering domain names and offering them for sale or rental – the Respondent was a party to other two ADR proceedings in which panelists awarded transfer of domain names registered by the Respondent to other trademark owners - financial institutions.\r\n\r\nThe domain name sberbank.eu is confusingly similar to the Complainant’s registered trademark and registration of the domain was an abuse and speculative. However, the Panel does not find that the Complainant is entitled to request transfer of the domain name in dispute. The Complainant is a Russian company. It, therefore, does not satisfy the general criteria under paragraph 4(2)(b) of Regulation (EC) No 733\/2002 or article 22.11 of the Regulation. The fact that the Complainant has an affiliated entity in Austria, the Co-complainant, which is a separate legal entity, does mean that the Complainant has met the condition on having an origin in the EU. But, at the same time, the Co-complainant is not able to apply for the transfer as it did not evidence any right that would allow for that.\r\n\r\nFor all the reasons aforesaid the Panel orders that the domain name sberbank.eu be revoked.",
    "decision": "For all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the Panel orders that the domain name sberbank.eu be revoked.",
    "panelists": [
        null
    ],
    "date_of_panel_decision": "2014-01-20 00:00:00",
    "informal_english_translation": "I.\tDisputed domain name: sberbank.eu\r\nII.     Country of the Complainant: Russia and Co-Complainant: Austria, country of the Respondent: Poland\r\nIII.    Date of registration of the domain name: 22 July 2010\r\nIV.    Rights relied on by the Complainant (Art. 21 (1) Regulation (EC) No 874\/2004) on which the Panel based its decision:\r\n        1.   SBERBANK word-graphic International trademark registration recognized in Germany, reg. No. IR-1025684 registered on 22 December 2009 in respect of goods and services in class 36\r\nV.    Response submitted: Yes\r\nVI.   Domain name is confusingly similar to the protected right of the Complainant\r\nVII.  Rights or legitimate interests of the Respondent (Art. 21 (2) Regulation (EC) No 874\/2004):\r\n        1. No\r\nVIII. Bad faith of the Respondent (Art. 21 (3) Regulation (EC) No 874\/2004):\r\n        1. Yes\r\n        2. Why: primary reason for registering the domain registration was sale, rental, or transfer of it to another\r\nIX.   Other substantial facts the Panel considers relevant: - \r\nX.    Dispute Result: Revocation of the disputed domain name \r\nXI.   Procedural factors the Panel considers relevant: - \r\nXII.  If transfer to Complainant Is Complainant eligible? No",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}