{
    "case_number": "CAC-ADREU-000188",
    "time_of_filling": null,
    "domain_names": [],
    "case_administrator": null,
    "complainant": [],
    "complainant_representative": null,
    "respondent": [],
    "respondent_representative": null,
    "factual_background": "1.\tThe Complainant company was incorporated in Ireland under corporation number 246049, in 1996.  The Complainant is a leading online insurance provider in Ireland, offering home, motor, travel and life insurance.  In furtherance of the Complainant’s insurance market activities, it is the owner of various registered trade marks, including:\r\n\r\ni)\tUK Trade Mark “123”, No. 2243533, filed on 25 August 2000, registered on 15 November 2000 for goods and services in Class 36, namely “Insurance; financial affairs; monetary affairs,  real estate affairs, insurance, financial affairs, monetary affairs and real estate affairs, all provided over the Internet”; and\r\n\r\nii)\tIrish Trade Mark 123.ie, No. 220654, registered on 25 February and published on 2 April 2003 for goods and services in Class 36 relating to insurance services, as set out at Annex 3 to the Complainant’s Complaint.\r\n\r\n2.\tThe disputed domain name is 123.eu.com.  The domain name offers internet users a website for buying and selling various goods including accessories, digital cameras, audio equipment and many other products.",
    "other_legal_proceedings": "",
    "discussion_and_findings": "19.\tThe Complainant has requested revocation of the disputed domain name from Etam SA and transference of <123.eu> to the Complainant, on the grounds that the Registry’s decision to award the disputed domain name is in contravention with section 19(2) of the Sunrise Rules and Articles 10(1) and 11 of the Regulation and that .  The Panelist will deal with each of these grounds in turn.\r\n\r\n\r\n\r\nSection 19(2) – Sunrise Rules\r\n\r\n20.\tSection 19(2) of the Sunrise Rules provides as follows:\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)\tall 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\r\n(b)\tthe 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\n21.\tThe Respondent’s application for the disputed domain is supported by CTM No. 000874719.  In awarding Etam SA the <123.eu> domain name, the Registry considered and determined that Etam SA had a prior right to the disputed domain name as the proprietor of a relevant CTM and that the “word” element of the said Mark “1.2.3” was sufficiently predominant and distinguishable from stylized blue, black and white device so as to accord with the provisions of section 19(2) of the Sunrise Rules.\r\n\r\n22.\tHaving regard to the Respondent’s CTM, the decision in Shaker di L. Laudato & C. SAS v. OHIM, and, having regard to the meaning of predominant as contained with the OED, in particular, those elements cited by the Complainant, the Panelist considers that assessing the Mark as a whole, the device is predominant.  The Panelist agrees with the reasoning put forward by the Complainant in this regard, namely, that: \r\n\r\no\tthe device encompasses over two-thirds of the height of the Mark and the word element appears below the device at the bottom of the Mark, rendering the device the main part of the Mark;\r\no\tthe device consists of a dynamic, non-geometric shape of significant distinctiveness.  The degree of stylization of the device, compared with the uniform font of the word element is such that anyone looking at it would first and foremost focus on the device.  The word element is not vivid or forceful in style in comparison with the device;\r\n\r\no\tthe device is white and the word element appears in black. Against the striking blue background of the mark, the reader is immediately drawn to the white device which is the most vivid and intense part of the Mark.  The word element therefore becomes secondary and as such the device is the strongest part of the Mark.  \r\n\r\n23.\tIn light of the above, the Panelist considers that the “word” element is neither predominant, nor is it distinguishable from the device and is not therefore the main or strongest element of the Mark. Even where it may be argued that the device is not the main part of the Mark, the Panelist considers that, in any event, the “1.2.3” part of the Mark is, at the very least, no more than of equal prominence, and is not therefore predominant.\r\n\r\n24.\tThe Complainant therefore succeeds on the first of its grounds.\r\n\r\n25.\tNotwithstanding that the Complainant has succeeded on the first ground, the Panelist finds in relation to the other two grounds a follows.\r\n\r\n\r\nArticle 11\r\n\r\n26.\tArticle 11 states that:\r\n\r\n“As far as the registration of complete names is concerned, where such names comprise a space between the textual or word elements, identicality shall be deemed to exist between such complete names and the same names written with a hyphen between the word elements or combined in one word in the domain name applied for.\r\n\r\nWhere the name for which the prior rights are claimed contains special characters, spaces, or punctuations, these shall be eliminated entirely from the corresponding domain name, replaced with hyphens, or, if possible, rewritten.\r\n\r\nSpecial character and punctuations as referred to in the second paragraph shall include the following:\r\n\r\n~ @ # $ % ^ & * ( ) + = < > { } [ ] l | ? : ; , . ?”\r\n\r\n\r\n27.\tThe provisions of Article 11 make clear that periods are to be regarded as “special characters” and their inclusion or otherwise within the disputed domain are therefore properly dealt with under the auspices of Article 11.  \r\n\r\n\r\n28.\tIt is evident from the second paragraph of Article 11 that periods are deemed within the Regulation to be “special characters”.  The Complainant contends that under the provisions of this second paragraph, when dealing with special characters which occur within a domain name which is the subject of an .eu application, there are two choices: either the special character in question must be eliminated and replaced with hyphens, it should be rewritten.\r\n\r\n29.\tThe Respondent contends that the Registry has acted in accordance with provisions of Article 11 on the basis that, by deleting the periods from the disputed domain name, the Registry has elected to rewrite the domain name.\r\n\r\n30.\tThe Panelist considers that in fact, there are three, not two, options which the Registry can adopt when dealing with the reworking or otherwise of special characters, namely:\r\n\r\n1.\tdelete the special character;\r\n2.\treplace the special character with hyphens; or\r\n3.\trewrite the special characters.\r\n\r\n31.\tThe layout of the relevant part of the paragraph does not include a conjugation, such as “and”, but a comma.  It follows therefore that the Regulation does not require that where a special character is eliminated it must be replaced with a hyphen.  The Panelist therefore agrees with the Registry’s decision not to replace the periods in the disputed name with hyphens.\r\n\r\n32.\tThe Complainant’s case is that same the figurative Mark cannot give rise to two different domain names, as this contravenes some of the fundamental principles of the EU Regulations, such as the complete name principle. There is no reason, however, why the same mark cannot give rise to two different domain names.  \r\n\r\n33.\tThe Complainant fails on this ground.\r\n\r\n\r\nArticle 10(2)\r\n\r\n34.\tArticle 10(2) provides:\r\n\r\n“2. The registration on the basis of a prior right shall consist of registration of the complete name for which the prior right exists, as written in the documentation which proves that such a right exists”.\r\n\r\n35.\tThe Panelist does not consider that the omission of the special characters (the two periods) from the disputed domain name is contrary to the requirements of Article 10(2).  Having regard to Article 11, the periods contained within the disputed domain fall under the category of “special characters”; as opposed to being the name element of the domain, and are properly dealt with under Article 11 (as to which see below).  As such, the Panelist considers that the disputed domain does in fact consist of the complete name, being 123, and therefore complies with Article 10(2).  \r\n\r\n36.\tThe Complainant therefore fails on this ground.",
    "decision": "For the reasons given above, and in accordance with Paragraphs B12(b) of the ADR Rules, the Panelist orders that \r\n\r\nthe Complaint is allowed.\r\n\r\n\r\nFor all the foregoing reasons, in accordance with Paragraph B12(b) of the Rules, the Panelist orders that EURid's decision be annulled.  \r\n\r\nThe Panelist has no jurisdiction to transfer the domain name, as requested, in view of the fact that the Complainant does not satisfy the requirements provided under Paragraph 11(c) of the Rules as it is not the next in line in respect of the disputed domain name according to the EURid Register.",
    "panelists": [
        null
    ],
    "date_of_panel_decision": "2006-05-18 00:00:00",
    "informal_english_translation": "The ADR Proceeding relates to a Complaint challenging the decision of the Registry to register the disputed domain name on the following grounds:\r\n\r\n1.\tthe word element in the disputed domain was not predominant nor was it capable of being clearly separated or distinguished from the device in the  Prior Right relied on;\r\n\r\n2.\tfailure of the disputed domain to contain the complete name of Mark as contained in the Prior Right relied on;\r\n\r\n3.\tfailure of disputed name to contain relevant special characters.\r\n\r\nThe Panelist disagreed with the assessment of the Registry that the word element of the disputed name complied with the requirements of section 19(2) of the Sunrise Rules in that the “123” was not the predominant element of the Mark and was not therefore capable of being separated and distinguished from the device as claimed in the Respondent’s CTM, Prior Right.\r\n\r\nThe Panelist agreed with the Registry, that the complete name of the Prior Right “123” was contained in the disputed name, notwithstanding the omission of the two periods from “1.2.3”.\r\n\r\nThe Panelist considered that the proper construction of paragraph 2 of Article 11 permitted the Registry to delete the special characters from the Prior Right Mark and was not bound to replace the deleted special characters with hyphens.\r\n\r\nThe Panelist allowed the Complaint.",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}