{
    "case_number": "CAC-ADREU-000219",
    "time_of_filling": null,
    "domain_names": [],
    "case_administrator": null,
    "complainant": [],
    "complainant_representative": null,
    "respondent": [],
    "respondent_representative": null,
    "factual_background": "The complainant, Institut Franco-Allemand de Recherches de Saint-Louis is, the owner of the registered French trademark \"ISL\" (no. 95 579 353). The trademark was initially registered on 4 July 1995 and the registration is valid for a period of 10 years according to the French Trademark Law. \r\n\r\nThe application for renewal of the trademark was filed and paid for on 24 June 2005. \r\n\r\nThe complainant applied for registration of \"ISL.eu\" on 7 December 2005 (first sunrise period) and the deadline for the submission of documentary evidence was on 16 January 2006. The complainant filed such documentary evidence on 11 January 2006 – a certificate of the trademark ”ISL” under the registration number 95579353.\r\n\r\nThe Registry has taken the decision to reject the complainants application due to the lack of proof of the existence of the claimed trademark right.",
    "other_legal_proceedings": "The Panel is not aware of any other Legal proceedings apart from this ADR proceeding.",
    "discussion_and_findings": "This case raises the issue of the burden of proof showing the existence of a prior right suitable for obtaining registration of the corresponding domain name in the sunrise periods.\r\n\r\nThe Panel must stress that it finds it very unsatisfying that the Respondent, being EURid, upon the Complainants request in this ADR proceeding has not disclosed the Complainants documentary evidence as received by the Respondent.\r\n\r\nHowever there seems to be a mutual understanding between the Complainant and the Respondent to the issue of what documentary evidence the Complainant had filed (in due time) – a trademark certificate but no renewal certificate.\r\n\r\nRespondent argues that the documentary evidence only showed a certificate of the trademark \"ISL\" under the registration number 95579353.\r\n\r\nThe trademark certificate showing the Complainants initial prior right provided under this ADR proceeding by the Complainant shows in accordance with the Respondents arguments that:\r\n\r\n“Registration is effective from the filing date of the application, for an indefinitely renewable period of ten years.”\r\n\r\nThe certificate furthermore states:\r\n\r\n“Filed as of: 4th July 1995”\r\n\r\nUnder this ADR proceeding the Complainant has provided the Panel with evidences (among others) showing:\r\n\r\n1.\tApplication for renewal of the trademark “ISL”.\r\n2.\tInvoice of the French Trademark Office (INPI) concerning the renewal fee.\r\n3.\tInvoice of the Paris Trademark Attorneys concerning the renewal fees.\r\n4.\tExtract of the French “icimarques”-database stating the renewal of the trademark “ISL” (no. 95 579 353).\r\n5.\tAffidavit signed by a legal practitioner confirming the renewal of the trademark “ISL” and the legal position.\r\n\r\nThese evidences  - together with the certificate of the initial trademark registration of “ISL” - are in the Panels opinion sufficient to show an existing prior right on which basis the domain name “ISL.eu” could and should have been awarded the complainant.\r\n\r\nHowever, these evidences was – to the knowing of the Panel – not in due time provided as documentary evidence before PriceWaterhouseCoopers (the validation agent) and\/or EURid (the Respondent), hence the application for the domain name “ISL.eu” was rejected as lack of proof of the prior rights existence.\r\n\r\nThe purpose of the Commission Regulation (EC) No. 874\/2004 is, inter alia, to grant domain names during the sunrise periods on first come first served basis provided that the applicant can demonstrate a right which is prior to the domain name application.\r\n\r\nArticle 10 paragraph 2 in the said Regulations states:\r\n\r\n“2. The registration on the basis of a prior right shall consist of the 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\nThe Panel is of the opinion that this clearly expresses the burden of proof of which an applicant shall prove that the right not only existed but also in fact exists according to the French Trademark law.\r\n\r\nArticle 14 in the said Regulation supports this interpretation.\r\n\r\nThe Panel must also refer to the said Regulation Article 12 paragraph 3 which states:\r\n\r\n“3. The request to register a domain name based on a prior right under the Article 10(1) and (2) shall include a reference to the legal basis in national or Community law for the right to the name, as well as other relevant information, such as trademark registration number, information concerning publication in an official journal or government gazette, registration information at professional of business associations and chambers of commerce.”\r\n\r\nSuch other relevant information are in the Panels opinion – in a case where an official renewal certificate is not available – the above mentioned evidences provided under this ADR proceeding by the Complainant supported by the necessary explanation on how the French Trademark law functions. \r\n\r\nUnfortunately to the Complainant the documentation and validation is not an issue for the Panel under an ADR proceeding.\r\n\r\nThe relevant documentary evidence must be submitted in due time to the validation agent (PriceWaterhouseCoopers) which hereafter examines the received material and notifies the Registry\/Respondent (EURid) of its findings and conclusion.\r\n\r\nHaving failed to submit such relevant documentary evidence in due time the Panel - based on the presentation of the case under this ADR proceeding - finds that the rejection made by the Respondent of the Complainants application regarding the domain name “ISL.eu” was correct.\r\n\r\nThe above said the Panel concludes that the burden of proof of an existing prior right lies upon the applicant (Complainant) for a domain name under the sunrise periods and neither the validation agent nor the Registry\/Respondent has any obligations to undertake further investigations of the (possible) existence of the prior right claimed in a situation as described under this ADR proceeding where there in the Panels opinion can be no doubt about what documentary evidence is sufficient. \r\n\r\nThe fact that the Complainant was in fact the holder of a sufficient (to obtain registration of the domain name “ISL.eu”) prior right cannot as the case is presented before the Panel lead to any other result. \r\n\r\nOne could argue that sympathy is overruled by the applicable Regulations serving among other purposes the (cost-effective) functionality of the phased registration and the principles hereof.",
    "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": "2006-06-20 00:00:00",
    "informal_english_translation": "The Complainant contested the rejection made by the Respondent (EURid) to the Complainants application for the domain name “ISL.eu” under the sunrise periods.\r\n\r\nRejection was based on the fact that the Complainant in the, in due time, filed documentary evidence did not proof that the trademark - on which the application was based – was in fact existing, hereunder renewed in due time.\r\n\r\nThe Panel concluded that the prior right was in fact existing but found that such documentary evidence proving such was not in due time presented before the validation agent hence the Respondent had the right to deny the Complainants application as the burden of proof is the Complainants.",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}