{ "case_number": "CAC-ADREU-000232", "time_of_filling": null, "domain_names": [], "case_administrator": null, "complainant": [], "complainant_representative": null, "respondent": [], "respondent_representative": null, "factual_background": "1.\tThe Complainant is DMC Design for Media and Communication GmbH a company registered and based in Austria. It was at the relevant times and remains the sole general partner of DMC Design for Media and Communication GmbH & Co KG (“DMC KG”). DMC KG is a limited partnership under the law of Austria.\r\n\r\n2.\tDMC KG is recorded as the owner of Austrian registered trademark AT 202430 for the word DMC (the “Austrian Trade Mark”).\r\n\r\n3.\tOn 7 December 2005 the Complainant filed for registration of (the \"Domain Name\"). On 27 January 2006 the Registry rejected the application for registration of the Doman Name because the name of the Domain Name applicant was not identical with the holder of the Austrian Trade Mark.", "other_legal_proceedings": "There are no other legal proceedings of which the Panel is aware that are pending or decided and that relate to the disputed domain name .", "discussion_and_findings": "1.\tIt is convenient first to address the Complainant’s assertions regarding licensing arrangements and the insufficient length of the text field for the name of the applicant in the relevant application. \r\n\r\n2.\tThe Complainant’s licensing argument can be dismissed relatively rapidly. Whilst evidence of the relevant licence is included with the Complaint it takes the form of a licence declaration dated 6 March 2006. As such it did not and could not have formed part of documentary evidence which was provided to the validation agent in connection with the Domain Name application.\r\n\r\n3.\tAs was stated by the Panel in BPW Bergische Achsen KG v EURid CAC Case No. 00127 :\r\n\r\n“In compliance with the Article 14 of Commission Regulation (EC) No 874\/2004 the .eu Registration Policy and the Terms and Conditions, (.eu Sunrise Rules), that apply for all applications during the phased registration period in accordance with art. 3 (d) of the said Regulation provides under Section 13.2, inter alia, that the documentary evidence must clearly evidence that the applicant is the reported owner of the registered trademark. \r\n\r\nIn other words, where the prior right claimed is a trade mark, the burden of proof is on the applicant (Complainant) side, ownership evidence inclusive.”\r\n\r\n4.\tIn this case the Complainant neither raised the issue of the licence nor provided the relevant evidence in relation to that licence at the relevant time. In the circumstances neither EURid nor the validation agent can be criticised for not taking the licence into account. This submission fails.\r\n \r\n5.\tThe text field complaint is not quite so straight forward. The Complainant alleged that the text field “Applicant” on the relevant registrar’s website was not long enough to enable the full name “DMC Design for Media & Communication GmbH & Co KG” to have been entered. At first sight this complaint seems similar to that in Pinel v Eurid CAC Case No. 00181 where a complainant encountered similar difficulties with its registrar. In that case the panel concluded as follows:\r\n\r\n“In the circumstances, this Panel is satisfied that on the particular facts of this case, a teleological or purposive interpretation of the legislation would classify the problem met by the Complainant in this case as being technical and not legal. The Complainant complied with both the Regulation and the Sunrise Rules insofar as it was possible so to do. The possibility of applying under an acronym was not available to it under either the Regulation or the Sunrise Rules.”\r\n\r\n6.\tA similar problem seems to have been faced by the complainant in Ernst Schoeller GmbH + Co. KG v EURid Case No. 00253 . In that case the panellist declared:\r\n\r\n“It would be an unreasonable expectation on the part of either the Validation Agent or the Registry to expect to see a name longer than the system then allowed”\r\n\r\n7.\tWhilst I can understand the reluctance to penalise a complainant as a result of a technical difficulty, I must confess to having some difficulty in following this reasoning. Both in Pinel and in this case the complaint appears to be about a limitation of the system operated by the relevant registrar, not the Registry (in Ernst Schoeller the panel talks about technical difficulties in abstract). The registrar and the Registry are not the same thing. The registrar is the commercial entity through which the domain name was registered (in the current case Globedom Datenkommuniktions GmbH). The Registry (i.e. EURid) is responsible for running the .eu domain and is responsible for processing applications made through registrars, of which over 1,000 are accredited. \r\n\r\n8.\tAs far as I am aware at the relevant time there was no technical limitation inherent in the way in which the Registry operated which would have prevented the Complainant from applying with a name as long as “DMC Design for Media & Communication GmbH & Co KG”. The Complainant does not suggest otherwise. I also note from a WHOIS search against the Domain Name that DMC KG appears to have been able to make subsequent applications in the sunrise period through other registrars using longer names than that of the Complainant.\r\n\r\n9.\tI therefore question whether the relevant legislation, whether interpreted teleologically, purposively or otherwise, really requires EURid to compensate for a technical problem that arose out of systems for which (as far as I am aware) EURid is not responsible or of which EURid may not have knowledge. \r\n\r\n10.\tHowever, my technical understanding may be wrong here and, unfortunately, EURid in its Response does not address the question of whether it was responsible for or aware of the 30 character limitation on applicant names that applied in this case. EURid appears also not to have addressed the issue either in Pinel v Eurid CAC Case No. 00181 or in Ernst Schoeller GmbH + Co. KG v EURid Case No. 00253. Therefore, had it been necessary to decide this issue in this case, I would have sought further clarification from EURid in accordance with my powers under paragraph 8 of the ADR Rules. \r\n\r\n11.\tFortunately this is not necessary on this occasion. The reason for this is that I do not believe that the case currently before me is really one in which the Complainant intended to make an application in the full name of DMC KG but was prevented from doing so. Whilst it maintains that it could not have applied in the full name of DMC KG had it wanted to, the main thrust of the Complainant case is somewhat different. This is that although the application was made in the name of the Complainant it was and is clear as a matter of Austrian law that in the circumstances of this case the application was for and on behalf of DMC KG. Therefore, it is asserted that EURid \/ the validation agent was wrong to have rejected this application. It is the correctness of this assertion that is the real issue to be decided in this case. \r\n\r\n12.\tArticle 4 (2)(iii) of EC Regulation 7334\/2002 provides that the Registry shall register domain names in the .eu TLD through any accredited .eu registrar requested by any:\r\n\r\n(i)\tundertaking having its registered office, centrally administration or principal place of business within the Community, or \r\n\r\n(ii)\torganisation established within the Community without prejudice to the application of national law, or\r\n\r\n(iii)\tnational person resident within the Community.\r\n\r\n13.\tThe Complainant contends, and EURid concedes, that given the operation of Austrian law both DMC KG and the Complainant form one single business undertaking or organisation for the purposes of the Public Policy Rules. \r\n\r\n14.\tEURid then goes on to state that “it is therefore clear” that the trade mark registration “although formally registered for [DMC KG] “is effective for the Complainant, …, which acted alone when filing the trade mark application and now for the domain name application”. Insofar as this is a concession that the Complainant was entitled to register the Domain Name, I think this somewhat misunderstands the Complainant’s primary contention i.e. that its application is effective on behalf of the DMC KG. However, whether or not that is so, EURid nevertheless appears to be conceding that the Complainant and DMC KG are capable of being treated as one for the purposes of a Domain Name application and prior rights verification. \r\n\r\n15.\tIn light of these concessions, the question becomes simply whether EURid and the Validation Agent should have been expected to know that the applicant and rights owner should be treated as one for the purposes of that application or whether the obligation was upon the Complainant to put forward evidence to this effect under Article 14 of the Public Policy Rules. As EURid puts it in its response:\r\n\r\n“The validation has to rely on the documentary evidence submitted by the applicant … It did not show that DMC Design for Media and Communication GmbH manages the KG, not that they are one business entity”. \r\n\r\n16.\tSection 21.2 of the Sunrise Rules state that the Validation Agent will “examine whether the Applicant has a Prior Right to the name exclusively on the basis of a prima facie review of the first set of Documentary Evidence received”. Generally an applicant should not expect the Registry or Validation Agent to engage in speculation and\/or embark upon its own enquiry in relation to the exact connection between two entities simply because they have similar names. A Validation Agent can under section 21(3) of the Sunrise Rules conduct its own investigations into an application but this, as the rules make clear, is at its “sole discretion”. \r\n\r\n17.\tFurther the assertion in BPW Bergische Achsen KG v EURid CAC Case No. 00127 that “where the prior right claimed is a trade mark, the burden of proof is on the applicant (Complainant) side, ownership evidence inclusive” would suggest that EURid’s contention here is correct. \r\n\r\n18.\tHowever, I do not believe the position in this case is quite the same as in BPW Bergische Achsen KG v EURid CAC Case No. 00127. Here the name of the applicant including its GmbH company type indicator (i.e “DMC Design for Media and Communication GmbH”) is to be found in full in the name of the prima facie rights holder (i.e. “DMC Design for Media and Communication GmbH & Co KG”). Common sense would suggest a very close connection between these “entities”. \r\n\r\n19.\tThe position appears to be even starker than this. The Complaint has not maintained that as a matter of Austrian law, an Austrian limited partnership must bear the same name of any limited liability company which is the “general partner of that limited partnership” with the addition “& Co KG”. However, it would appear that this is indeed the case. In the guide to starting business in Austria published by the Austrian Business Agency (and available at the time of this decision at http:\/\/www.austriantrade.org\/fileadmin\/f\/cs\/Firmengr__ndung\/StartingBusiness.pdf) a KG is described as follows:\r\n\r\n“.. in a KG there must be at least one partner with unlimited liability for the partnership’s debts (general partner – Komplementär), and at least one partner who is only liable for a specified maximum amount registered in the commercial register (limited partner – Kommanditist). Frequently, the general partner is a corporation, particularly a GmbH. This type of a mixed company is referred to as GmbH & Co KG and is often chosen for tax, liability, and management reasons.\r\n\r\nThe company name of a KG must contain the name of at least one general partner and an addition indicating the existence of a partnership. The general partners represent and manage the KG.\" \r\n\r\n20.\tIt might be said to be unreasonable to expect EURid and the Validation Agent to be familiar with the intricacies of the national laws of every European Member State. It is noteworthy in this respect that where prior rights other than those identified in sections 13 - 18 of the Sunrise Rules are relied upon, the Applicant is required to provide evidence that those rights are protected by the law of the relevant member state. \r\n\r\n21.\tNevertheless, I do not believe it is unreasonable to expect EURid and its validation agents to be familiar with the operation of the basic identifiers used to designate different company and business types in different member states. \r\n\r\n22.\tIn short, the relationship between the Complainant and DMC KG should on this occasion have been clear to EURid and the Validation Agent and I therefore conclude that there was sufficient evidence in this case before the Validation Agent to justify registration of the domain name in the name of DMC KG.", "decision": "For all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the Panel orders that the EURid's decision be annulled and the domain name be registered in the name of DMC Design for Media and Communication GmbH & Co KG.", "panelists": [ null ], "date_of_panel_decision": "2006-05-26 00:00:00", "informal_english_translation": "The Complainant is the sole general partner of an Austrian “KG” whose name comprised the full name of the Complainant with the addition “& Co KG”. \r\n\r\nThe Complainant’s Domain Name application was rejected by the Registry where the verification material provided gave the name of the Austrian KG and not the Complainant as the owner of the registered Austrian trade mark right relied upon to support the application. \r\n\r\nThe Complainant contended that:\r\n\r\n1.\tThe Complainant and the Austrian KG should be treated as a single organisation for the purposes of the application and that the Registry’s decision not to do so was “unnecessarily formal”; \r\n\r\n2.\tThe Complainant was entitled to register the Domain Name as a licensee of the relevant trade mark; and\r\n\r\n3.\tThe Domain Name could not have been registered in the full name of the Austrian KG given that the application form used limited the length of the applicant’s name to 30 characters and that the full name of the Austrian KG was longer than that.\r\n\r\nIn relation to these contentions the Panel held as follows:\r\n\r\nA.\tThe Complainant’s contentions so far as its licence was concerned were rejected. The Complainant bore the burden of proof under Article 14 of the Public Policy Rules to supply the Validation Agent with evidence of the relevant licence and no evidence as to this licence had been provided by the Complainant in this case.\r\n\r\nB.\tIt was not necessary to decide the issue whether the Registry’s decision should be annulled because of the technical limitation on the number of characters in the relevant application form. The reason for this was that it appeared that the Complaint had not intended to apply for the Domain Name in the full name of the Austrian KG but had applied for the Domain Name using its own name in the belief that this was sufficient. \r\n\r\nC.\tThe Registry had accepted in its Response that the Complainant, as the sole general partner of the Austrian KG, and the Austrian KG could be treated as one organisation for the purposes of Article 4(2)(b) of EC Regulation 7334\/2002 and for the purposes of the Complainant’s application. The name of the Austrian KG incorporated the full name of the Complainant (with the addition “& Co KG”) and it appeared that as a matter of Austrian law this of itself disclosed the nature of the legal relationship between the Complainant and the Austrian KG. In the circumstances, the trade mark certificate in the name of the Austrian KG provided by the Complainant comprised sufficient evidence of prior rights in this case to justify registration of the Domain Name. \r\n\r\nThe Panel therefore directed that the decision of the Registry be annulled and that the domain name be registered in the name of the Austrian KG.", "decision_domains": [], "panelist": null, "panellists_text": null }