{
    "case_number": "CAC-ADREU-007416",
    "time_of_filling": null,
    "domain_names": [
        "incose.eu"
    ],
    "case_administrator": "Aneta Jelenová (Case admin)",
    "complainant": [
        "GfSE (Gesellschaft für Systems Engineering e.V. German Chapter of INCOSE)"
    ],
    "complainant_representative": null,
    "respondent": [
        "Marc Custers (Loft 33 \/ Groep Securex)"
    ],
    "respondent_representative": "Johan Vandendriessche (Erkelens Law)",
    "factual_background": "The Complainant is the German Chapter of the International Council on Systems Engineering, with the acronym INCOSE. It is a non-profit membership organization founded to develop and disseminate the interdisciplinary principles and practices that enable the realization of successful systems (www.incose.org). The Complainant was founded in 1997. The Complainant is owner of Union TM word: 004 587 846 INCOSE since Oct. 16th 2006 which is in use as Complainants website shows. The Complainant's Union trademark \"INCOSE\" is protected for goods in class 16 and services in classes 41 and 42; among others for the services \"arranging and conducting of conferences, congresses and symposiums\" and for the goods \"books\". \r\n\r\nThe Respondent is an event organizer. Respondents name INCOSE stands for “International Conference on Sustainable Employability”. The Respondent is the registered owner of the disputed domain name since July 8, 2015. This contested domain was and is used for commercial purposes, for marketing an International Conference on Sustainable Employability which took place on September 14 to 16, 2016 in Brussels and for which a \"Book of Abstracts\" is still offered for free.",
    "other_legal_proceedings": "The Panel is not aware of other legal proceedings. The requested suspension for negotiations between the parties was granted. The Complainant informed that the negotiations ended without an arrangement. The Respondent was given extra time to react to the Complainant´s conclusion. The Respondent didn't submit a further statement.",
    "discussion_and_findings": "1. According to Article 22 (11) of the Regulation (EC) No 874\/2004 an ADR procedure may be initiated by any party where the registration is speculative or abusive within the meaning of Article 21 of the aforementioned or the decision taken by the Registry conflicts with this Regulation or with Regulation (EC) No. 733\/2002.\r\n\r\nIn the present case, the Complaint has been brought against the Registrant. Therefore, the question is whether the use of the domain is speculative or abusive within the meaning of Article 21 the Regulation (EC) No 874\/2004. According to this disposition and Paragraph B 11 (d) (1) of the ADR.eu Alternative Dispute Resolution Rules (the “ADR Rules”) the Complainant bears the burden of proving the following:\r\n\r\n (i) The domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and\/or Community law and; either \r\n\r\n(ii) The domain name has been registered by the Respondent without rights or legitimate interest in the name; or \r\n\r\n(iii) The domain name has been registered or is being used in bad faith.\n\r\nThe Complainant contends and provides evidence that it is the owner of a EUTM 004587846 INCOSE, registered on October 16, 2006. The disputed domain name consists of the word “incose” and the suffix .eu. Thus, the Panel holds that the disputed domain name is identical to a name in which the Complainant has legitimate right recognised by the national law of Germany as well as by the Community law.\r\n\r\nWith respect to the alleged registration of the disputed domain name without rights or legitimate interest, the Panel holds as follows:\r\nThe Respondent did not prove any formal or other positive right to a INCOSE denomination. The registration itself is no right and creates none without perceptible use or preparing measures.\r\n\r\nThe disputed domain name is the Complainant’s name of firm and is registered and used as a trade name. Hence, “INCOSE” is a name for which the following rights are recognised within the German legal system. The protection of trade names is granted under §§ 5, 15 Markengesetz (Trade Marks Act) whereas the registered name of a company is protected by §§ 17 et seqq. of the Handelsgesetzbuch (German Commercial Code). \r\n\r\nThe term INCOSE is an acronym and for that distinctive and fulfils the function of a name. In this regard, distinctiveness means that the firm name is capable of creating the association with a specific company amongst others (Baumbach\/Hopt, HGB, § 18, No. 4). Nevertheless the nature of an acronym inhabits that it could have a different sense. To solve the conflict the rule of priority especially in trade name and trademark law is established.\r\nTherefore, the Panel holds that the Respondent registered the disputed domain name without rights or legitimate interest within the meaning of Article 21, paragraph 1, letter a) of the the Regulation (EC) No 874\/2004. The present case is different to acronym domain names caseS like no. 05282 KEDKE,  and no. 05374 CARIVE. where a classical domaingrabber was Respondent.\r\nHere the Complainant insists that the Respondent registered the disputed domain name not only without rights and legitimate interest but in bad faith and that, therefore, such registration is speculative and abusive within the meaning of Article 21 of the the Regulation (EC) No 874\/2004. Even if the intention of creating a likelihood of confusion of the Respondent is not obvious, it is evident that the Respondent disregarded the Complainant’s European Union trademark 004 587 846 INCOSE, which was registered prior to the disputed domain name. The Complainant uses this trademark in the identical commercial field to offer simmilar goods such as books and similar services such as conference organisation. If the Respondent had used the disputed domain name for non-commercial purposes or for different goods then it would have been no bad faith. However, it is possible to create an acronym of the name “International Conference on Sustainable Employability” in a different way, e.g. with the first letters of each word ICOSE. Thus, the cited ECJ decisions are not applicable in the present case. On the other hand the disputed domain name is not to transfer because the acronym INCOSE could be used in a different way so the Complainant´s interests are sufficient protected if INCOSE.eu is not used by the Respondent for purposes in the trademark classes 16 and 41.\r\n\r\n2. Conclusion\r\n\r\nThe parties attached to Complaint\/Response relevant documentation supporting and proving its arguments. \r\n\r\nGiven the foregoing, the Panel holds that indications and evidence exist that the disputed domain name was registered for the evident purpose without rights or legitimate interest in the disputed domain name and in bad faith. But there exists no legitimate Complainant's interest in transferring the disputed domain name. A fair use of the disputed domain is still possible far of the protected goods and services the Complainant holds a word trademark. Hence, a legitimate use of a third party or the domain name holder beyond the context of international trademark classes 16 and 41 is possible. Whatsoever the Complainant has already an identical domain name. Though there is no blockade of using the Complainant’s company name or his trademark in the internet. Therefore, the Respondent is not to treat like a domaingrabber.",
    "decision": "For all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the Panel orders that\r\n\r\n\r\nthe disputed domain name shall be revoked.",
    "panelists": [
        null
    ],
    "date_of_panel_decision": "2017-06-22 00:00:00",
    "informal_english_translation": "I.      Disputed domain name: incose.eu\r\n\r\nII.     Country of the Complainant: Germany, country of the Respondent: Belgium\r\n\r\nIII.    Date of registration of the domain name: July 8, 2015\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        1.   [word] trademark registered in [European Union], reg. No. 004 587 846, for the term [incose], registered on October 16, 2006 in respect of goods and services in classes [16, 41 and 42]\r\n\r\nV.    Response submitted: Yes\r\n\r\nVI.   Domain name is identical to the protected right\/s 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 right to create an acronym is limited when a prior right for the same business purposes\r\n\r\nVIII. Bad faith of the Respondent (Art. 21 (3) Regulation (EC) No 874\/2004):\r\n        1. Yes\r\n        2. Why: the Respondent violated his obligation to search for identical Domains and Trademarks because he used the contested domain for the same commercial purposes as the Claimant is using its trademark.\r\n\r\nIX.   Other substantial facts the Panel considers relevant: None.\r\n\r\nX.    Dispute Result: Revocation of the disputed domain name\r\n\r\nXI.   Procedural factors the Panel considers relevant: suspension requested by the Complainant\r\n\r\nXII.  If transfer to Complainant Is Complainant eligible? Yes\/No",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}