{
    "case_number": "CAC-ADREU-000012",
    "time_of_filling": null,
    "domain_names": [],
    "case_administrator": null,
    "complainant": [],
    "complainant_representative": null,
    "respondent": [],
    "respondent_representative": null,
    "factual_background": "The Complainant, together with Société Nationale des Chemins de Fer Français (\"SNCF\") and Société Nationale des Chemins de Fer Belges (\"SNCB\"), operates the well-known cross channel rail link connecting the UK with France and Belgium under the name EUROSTAR.  The Eurostar rail link has been operating continuously since it opened to the public on 14 November 1994 and is now the leading carrier from London to Brussels and Paris. In addition, it has the largest share of the rail\/air market on those routes with 71% of the London-Paris rail\/air market and 62% of the London-Brussels rail\/air market with an average of 25 trains running each day.  To date, the Eurostar rail service has carried more than 68 million passengers.\r\n\r\nThe Complainant, jointly with SNCF and SNCB (the Complainant, SNCF and SNCB together referred to as the \"Networks\"), is the registered proprietor of approximately 65 registered trademarks for the word EUROSTAR and approximately 200 registered trademarks for the EUROSTAR logo incorporating the word EUROSTAR worldwide, including the European Union.  \r\n\r\nThe agreement between the Networks setting out the nature of the joint ownership of all EUROSTAR trademarks is dated 30 July 1997.  The Complainant's application for the disputed domain name was made on behalf of the Networks.\r\n\r\nThe party who registered the disputed domain name, Eurostar Diamond Traders NV (\"EDT\") is a Belgian company which specializes in the selection, cutting and sale of diamonds and precious jewelry.  The first of two applications by EDT for the disputed domain name was received a few minutes before the application by the Complainant on the first day of the Sunrise period.\r\n\r\nThe Respondent, EURid, decided to register the disputed domain name for EDT on 23 January 2006.",
    "other_legal_proceedings": "The disputed domain name was the subject of proceedings in France before Monsieur de Baecque, President of the Tribunal de Commerce de Paris (case number 2005087382), who rendered a decision on 10 January 2006.",
    "discussion_and_findings": "The Complainant challenged the Registry’s decision to register the disputed domain name for EDT. The principle obligations of the Registry regarding its decisions to register .eu domain names during phased registration are regulated by Art. 14 of the Public Policy Rules, and especially by the last paragraph of Article 14 which states that the Registry shall register the domain name on a first-come-first-serve basis if it finds that the applicant has demonstrated a prior right in accordance with the procedure set out in the Article 14.\r\n\r\nIn order to examine whether or not the Registry acted contrary to these duties, it is necessary to mention what is understood as a prior right. As mentioned by the Registry in its Response, Section 19.2 of the .eu Registration Policy, referred to as the Sunrise Rules, published in accordance with Article 12.1 of the Public Policy Rules states: \r\n\r\n“A prior right claimed to a name included in figurative or composite signs (signs including words, devices, pictures, logos etc…) will only be accepted if \r\n(i)\tthe sign exclusively contains a name, or \r\n(ii)\tthe word element is predominant and can be clearly separated or distinguished from the device element \r\n\r\nprovided that \r\n\r\n(a) all alphanumeric characters (including hyphens, if any) included in the sign are contained in the domain name applied for, in the same order as that they appear in the sign, and \r\n(b) the general impression of the word is apparent, without any reasonable possibility of misreading the characters of which the sign consists or the order in which those characters appear.”\r\n\r\nThe Registry accepted that EDT had a prior right to the disputed domain name since it is the proprietor of a figurative trademark consisting of the word EUROSTAR with a diamond device in which the word EUROSTAR is predominant and can be clearly separated or distinguished from the diamond device. The alphanumeric characters included in the sign are all contained in the domain name in the same order as they appear in the sign, and the impression of the word is apparent without any possibility of misreading. \r\n\r\nThe Panel agrees with this assessment and therefore it agrees that EDT has a prior right in the domain name EUROSTAR alone in accordance with the Public Policy Rules. \r\n\r\nThe additional important question is whether or not the validation agent or the Registry are also obliged, before the decision on the registration of the domain name, to examine whether or not the application has been made in good faith. \r\n\r\nArticle 3 (c) of the Public Policy Rules states that each request for domain name registration shall include also “an affirmation by electronic means from the requesting party that to its knowledge the request for domain name registration is made in good faith and does not infringe any rights of a third party”. Article 3 of the Public Policy Rules then states that any material inaccuracy in the elements set out in the Article 3, including in paragraph (c), shall constitute a breach of the terms of registration.\r\n\r\nThe Public Policy Rules contain specific obligations of the Registry with respect to the breach of the terms of registration in Article 20. Article 20 provides that the Registry may (emphasis added) revoke domain names without submitting the dispute to ADR, on various grounds that include the holder’s breach of the terms of registration under Article 3. Article 20 also specifies that the Registry shall lay down a procedure in accordance with which it will decide about the revocation of domain names on these grounds, which “shall include a notice to the domain name holder and shall afford him an opportunity to take appropriate measures”. This requirement is evidently intended to ensure a minimum procedural protection of the domain name holder.\r\n\r\nThe Panel considers that this procedure should not be circumvented by treating a potential (emphasis added) breach of the terms of registration under article 3 of the Public Policy Rules as a decision of the Registry conflicting with them which may be challenged under their article 22(1)(b). Such an interpretation would conflict with the wording of article 22(1)(b), the purpose of article 20 and the structure of the Public Policy Rules.\r\n\r\nIf the Complainant had asked the Registry to revoke the disputed domain name under the procedure contained in Article 20, it might have been incumbent on the Registry to examine whether there was a material inaccuracy in EDT’s affirmation that the request for registration was made in good faith and did not infringe any third party rights. However, since the Registry has not been asked to take and has not taken any such decision, this issue does not arise.\r\n\r\nThe Registry simply and, in the Panel’s view correctly, upon notification of the findings by the validation agent that prior rights exist regarding the domain name that is first in line, has found that EDT has demonstrated a prior right in accordance with the procedure set out in article 14 of the Public Policy Rules, has accepted its application, and has registered the domain name on the first come, first served basis. \r\n\r\nAs the Registry correctly points out in its Response, it has no way of knowing whether the Coexistence Agreement is still valid, or has been superseded by some other agreement or court judgment. \r\n\r\nSimilarly, this Panel cannot, under the applicable procedural rules, join EDT to this proceeding.  Thus, the Panel cannot ascertain whether or not the Coexistence Agreement is still in force and is to be interpreted and applied as the Complainant contends. Nor can the Panel determine the rights of EDT fairly and in accordance with fundamental principles of law without affording it the opportunity of being heard.\r\n\r\nThese considerations emphasize the importance of adhering to the procedure provided by article 20 for addressing any breach of the terms of registration pursuant to article 3 of the Public Policy Rules.",
    "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 Complaint is Denied.",
    "panelists": [
        null
    ],
    "date_of_panel_decision": "2006-05-12 00:00:00",
    "informal_english_translation": "The ADR Proceeding related to a Complaint challenging the decision of the Registry to register the disputed domain name. The Complaint was based on two grounds:\r\n\r\n1.\tInadequate prior rights; and\r\n2.\tApplication in bad faith\r\n\r\nWith respect to the adequacy of prior rights of the holder of the disputed domain name the Panel agreed with the assessment of the Registry that the domain name holder demonstrated its prior right in accordance with Section 19.2 of the Sunrise Rules. The domain name holder is the proprietor of a figurative trademark consisting of the word EUROSTAR with a diamond device in which the word EUROSTAR is predominant and can be clearly separated or distinguished from the diamond device. The alphanumeric characters included in the sign are all contained in the domain name in the same order as they appear in the sign, and the impression of the word is apparent without any possibility of misreading.\r\n\r\nWith respect to a question whether or not the validation agent or the Registry are also obliged, before the decision on the registration of the domain name, to examine whether or not the application has been made in good faith, the Panel concluded that the Registry is not obliged to make such an assessment; any such examination should be conducted in accordance with the specific procedure provided under Article 20 which was not invoked in this case. \r\n\r\nThe Panel dismissed the Complaint.",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}