{
    "case_number": "CAC-ADREU-007033",
    "time_of_filling": null,
    "domain_names": [
        "leebaron.eu"
    ],
    "case_administrator": "Lada Válková (Case admin)",
    "complainant": [
        "Peter Lee (Lee Baron Fashions Ltd.)"
    ],
    "complainant_representative": null,
    "respondent": [
        "Alex Rasmussen (Lee Baron Denmark)"
    ],
    "respondent_representative": null,
    "factual_background": "The Complainant is a tailoring business which was founded in 1962 in Hong Kong by Peter Lee and Jimmy Baron, and has operated under the trademark LEE BARON since then.\r\n\r\nComplainant has used the trademark LEE BARON for its tailoring business in Denmark and Sweden for more than 20 years, and has through this use acquired rights to the said trademark according to Article 3(1)(2) of the Danish Trademark Law.\r\n\r\nThe Respondent is a Danish citizen who owns the Danish company \"Lee Baron IVS\".\r\n\r\nThe Disputed domain name was registered on 5 November 2009.",
    "other_legal_proceedings": "None as far as the .eu domain name is concerned but the parties have informed the Panel of the decision on the leebaron.se domain name dispute and of the pending leebaron.dk domain name dispute.",
    "discussion_and_findings": "\nFirstly, the Panel would like to deal with procedural issues raised during the proceedings. In nonstandard communication dated 29 September 2015 the Complainant requested to change the remedies sought. In particular, the Complainant requested to revoke the disputed domain name. For the Complainant does not satisfy the general eligibility criteria for registration set out in Article 4(2)(b) of Regulation (EC) No 733\/2002 and in accordance with article B 7 (a) and B 11 (b) of the ADR Rules the Panel approves this change.\r\n\r\nFurthermore, the Respondent submitted a supplemental filling on 6 October 2015 and the Complainant replied to this Respondent´s submission on 9 October 2015 via nonstandard communication. Pursuant to paragraph B 8 of the ADR Rules it is sole discretion of a Panel to admit further statements or documents from either of the Parties. In that regard, supplemental fillings can be accepted only under specific circumstances (i.e. evidence could not possibly have been presented earlier, principle of fairness is at stake etc.). The Panel  has accepted both supplemental filings but has found that supplemental filling submitted by the Respondent and the response to this filling by the Complainant is of no relevance to this proceeding.\r\n\r\nAccording to article 21(1) of Commission Regulation (EC) No 874\/2004 and paragraph B 11 (d) of the ADR Rules a registered domain name shall be subject to revocation provided that each of the three following elements are satisfied: \r\n\r\n(A) The domain name is identical or confusingly similar to a trademark or service     \r\n     mark in which the Complainant has rights that are recognised or established by national  a   \r\n     and\/or Community law;  and \r\n(B) Respondent has no rights or legitimate interests in respect of the domain name;  and \r\n(C) The domain name has been registered or is being used in bad faith. \r\n\r\n\r\nA. Identical or Confusingly Similar to a trademark in which the Complainant has rights \r\n\r\nUnregistered trademarks are recognized as a right under Article 10(1) of Regulation 874\/2004 \r\n\r\nIn its Complaint, the Complainant submitted evidence that according to Danish Trademark Law it has rights in unregistered trademark LEE BARON. In particular, the Complainant submitted translation of relevant provision of Danish Trademark Law (i.e. Article 3(1)(2) of the Danish Trademark Law) which stipulates:\r\n\r\n“A trade mark right may be established either \r\n1) by registration of a trademark in accordance with the rules of this Act for the goods or services comprised by the registration or\r\n2) by commencement of use of a trade mark in this country for the goods or services for which the trademark has commenced to be used and for which it is continuously used.“\r\n\r\nThere are no specific statutory requirements regarding the intensity or duration of the use, but based on the level of use that Danish courts have accepted as sufficient use the Panel is satisfied that the submitted material demonstrates that the Complainant has established rights to the trademark LEE BARON in Denmark in accordance with the above cited provision. \r\n\r\nThe contested domain name contains the Complainant’s distinctive and protected trademark LEE BARON in its entirety.For sake of completeness, the Panel asserts that the top-level suffix in the domain name (i.e. the “.eu“) must be disregarded under the identity and confusing similarity tests as it is a necessary technical requirement of registration. Therefore, the disputed domain name and the Complainant’s trademark are confusingly similar.\r\n\r\nConsequently, the Panel finds that the disputed domain name is identical to a trademark in which the Complainant established to have rights.\r\n\r\n\r\nB. Rights or Legitimate Interests \r\n\r\nThe Complainant alleges that the Respondent has no rights or legitimate interests in the domain name.\r\n\r\nThe Respondent has not disputed the information but forward by the Complainant and the Panel therefore finds that it has been proven that the Respondent worked as an agent and seller for the Complainant from 2009 until 2014 and that the disputed domain name was registered on behalf of the Complainant to be used for promotion of the goods tailored by Complainant under the brand name LEE BARON.\r\n\r\nIn the view of this Panel, it is a recognized principle of European trademark law that an agent or reseller that is engaged in the legitimate sale and distribution of trademarked goods does not per se have any rights to register the said trademark as its trademark, business name or domain name without explicit consent of the trademark owner, cf. the principles of Article 6 of the Paris Convention. \r\n\r\nIn this case the initial consent to register and hold the disputed domain name has been explicitly withdrawn. \r\n\r\nEven if the Respondent was to be engaged in legitimate albeit unauthorized sales of Complainants products, as was the expressed intention in the Respondents reply to the Complainant´s cease and desist type letter of March 2015, the Respondent´s legitimate interests and rights to use the trademark for promoting these goods, does not establish such rights or legitimate interest for the purpose of these proceedings that may legitimize registration of the disputed domain name. The Panel explicitly notes that the principle of exhaustion under European trademark law cannot legitimate the registration and use of the disputed domain names either.\r\n\r\nThe Respondent has registered the company name LEE BARON DANMARK IVS. According to the provided information this registration took place on 22 April 2014. Since the establishment itself does not predate the Complainant´s trademark rights and since the Complainant has raised objections against the Respondent´s use of LEE BARON as company name, the registration of the company name does not constitute a right or legitimate interest for the Respondent.\r\n\r\nThe Panel therefore finds that the Respondent has no rights or legitimate interests in the disputed domain name.   \r\n\r\nC. Registered or Used in Bad Faith \r\n\r\nAs mentioned above the Respondent has not rebutted the substantiated allegations put forward by the Complainant. \r\n\r\nBased on this information the Panel finds that the disputed domain name was initially registered in good faith.  It was also used in good faith for a number of years namely for the promotion of the Complainant´s goods and services.\r\n\r\nHowever, shortly after the de facto termination of the cooperation between the parties the Respondent started using the domain name to redirect internet users to the Respondent´s own website from which he offered competing goods and services to those of the Complainant. This use, which was clearly bad faith use, has ceased and the domain name is now inactive in the sense that there is no active website using the domain name as URL.\r\n\r\nThis passive holding not only prevents the Complainant from offering its goods and services from the .eu website but may also lead users that are looking for information on the Complainant to believe  that the Complainant is no longer conducting business within the EU.\r\n\r\nTaking all the facts of the present case into consideration the Panel finds that the disputed domain name is being used in bad faith.   \r\n\r\n\r\nIn conclusion, considering all the facts and evidence, the Panel finds that all the requirements of paragraph 21 (1) of the PPR and of paragraph B 11(d) of the ADR Rules are met.\r\n\r\nAs to the Respondent´s request for compensation the Panel notes that such requests falls outside the scope of these proceedings.",
    "decision": "For all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the Panel orders that\r\n\r\nthe domain name LEEBARON be revoked",
    "panelists": [
        null
    ],
    "date_of_panel_decision": "2015-10-18 00:00:00",
    "informal_english_translation": "I.      Disputed domain name: leebaron.eu\r\n\r\nII.     Country of the Complainant: Hong Kong, country of the Respondent: Denmark\r\n\r\nIII.    Date of registration of the domain name: 05 November 2009\r\n\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        7.   unregistered trademark: LEE BARON\r\n        \r\nV.    Response submitted: Yes\r\n\r\nVI.   Domain name is identical to the protected right of the Complainant\r\n\r\nVII.  Rights or legitimate interests of the Respondent (Art. 21 (2) Regulation (EC) No 874\/2004):\r\n        1. No\r\n        2. Why: The Respondent acted as the Complainant´s agent when the domain name was registered, but refused to transfer or cancel the domain name when the cooperation between the parties was terminated.\r\n\r\nVIII. Bad faith of the Respondent (Art. 21 (3) Regulation (EC) No 874\/2004):\r\n        1. No\r\n        2. Why:\r\n\r\nIX.   Other substantial facts the Panel considers relevant: The fact that the Respondent registered a company name that incorporates the trademark after the termination of the parties cooperation and against which the Complainant objects does not constitute a right or legitimate interest in the disputed domain name.\r\n\r\nX.    Dispute Result: Revocation of the disputed domain name\r\n\r\nXI.   Procedural factors the Panel considers relevant: Since the Complainant resides outside of the EU the domain name cannot be transferred to the Complainant. The Complainant amended the originally filed Complaint accordingly.  \r\n\r\nXII.  Is Complainant eligible? No",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}