{ "case_number": "CAC-ADREU-000394", "time_of_filling": null, "domain_names": [], "case_administrator": null, "complainant": [], "complainant_representative": null, "respondent": [], "respondent_representative": null, "factual_background": "Respondent accepted an application for the domain name based on the Benelux trademark FRANKF & URT (device). The Complainant is the city of Frankfurt, Germany. Contentions from the Complainant and the Respondent are included below.", "other_legal_proceedings": "", "discussion_and_findings": "According to Article 10.1 of Regulation (EC) No. 874\/2004 of 28 April 2004 laying down public policy rules concerning the implementation and functions of the .eu Top Level Domain and principles governing registration (Regulation 874\/2004) “Holders of prior rights recognised or established by national and\/or Community law and public bodies shall be eligible to apply to register domain names during a period of phased registration before general registration of .eu domain starts”.\r\n\r\nArticle 10.2 states that “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\nArticle 11 Par. 2 states that “Where the name for which 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. Special character and punctuations as referred to in the second paragraph shall include the following: ~ @ # $ % ^ & * ( ) + = < > { } [ ] | \\ \/: ; ' , . ?\r\n\r\nThe present case is the third of a series of similar cases that have interpreted Article 11 of Regulation 874\/2004. Therefore, it is appropriate to review the previous two decisions in order to ascertain to what extent they can be followed. This exercise is even more necessary in light of the evidence submitted in all three cases, which indicate the likelihood that further, similar cases will be filed in the future.\r\n\r\nIn Case 00398, the applicant requested the domain name based on the mark BARC & ELONA. The Panel understood that in Article 11 Par. 2 of Regulation No.874\/2004 the word “or” suggests that the applicant has an unfettered choice as to which of the 3 courses it should follow, whereas the words “if possible” tend to suggest that, if it is possible to re-write the name, that course should be followed. The Complainant has given a number of examples where brand owners have rewritten their name in this way of which the best is probably barnesandnoble.com. These, of course, are only illustrative of solutions which third parties have chosen to adopt. \r\n\r\nIn Case 00256, the applicant requested the domain name based on the mark LI & VE. In short, the Panel stated that the best decision has to be taken in order to maintain the identity rule between trademark and domain name, taking into consideration that, if possible, the domain should be rewritten in order to meet the identity rule.\r\n\r\nIt appears that, in both decisions, the interpretation of the words “if possible” is that, within the three alternatives provided for in Article 11 Par. 2, rewriting the symbols would be the preferred option. In other words, eliminating the symbol or replacing it with hyphens would be secondary options, only available when the symbol cannot be rewritten.\r\n\r\nAt least one member of this Panel agrees with that interpretation and is of the opinion that, in the present case, the symbol “&” in the trademark “FRANKF & URT” should have been substituted by “and” (or the corresponding word in another language). According to this panelist, the question is whether Article 11 of Regulation 874\/2004 can be understood as ordering the transcription of a sign like “&” to the word “and” or not. Of all the signs mentioned in this Article, “&” and “+” are the ones for which a transcription is not\r\nonly possible but, according to their meaning, is also the only logical way forward. As it is easily possible to transcribe “&” to “and”, EURid should, according to Article 11, have done so.\r\n\r\nHowever, the Panel is unanimous in the following reason for its decision:\r\nThe existence of “Prior Rights” in the .eu domain name applied for is the basic requirement to must be met when applying for such domain name during the Sunrise period. In view of the Panel, the owner of the mark “FRANKF & URT” does not have rights in the word “Frankfurt” (but only in “frankfandurt” or similar) and therefore, it is not eligible for the registration of the domain name since it does not fulfill Article 10.1. \r\n\r\nIt is incumbent on the applicant of a .eu domain name in the Sunrise period to request a domain name that consists of the complete name for which the prior right exists (cf. Article 10.2 Regulation 874\/2004). At the same time, validation agents should assess the right which is claimed in respect of a particular name, and subsequently allocated to the applicant, as provided for in Recital 12 of Regulation 874\/2004. The word “assess” implies at least some degree of judgment by the Respondent (or the validation agent) and not the automatic acceptance of the substitution of the symbols mentioned in Article 11 for any of the three options mentioned therein at the choice of the applicant. The Panel believes that in the present case such degree of judgment should have been exercised and the application for the domain name based on the mark “FRANKF & URT” rejected.\r\n\r\nIn view of the Panel, Article 11 is a technical provision and the priority of the three options included therein should be assessed by comparing the domain name applied for and the Prior Right on which it is based. In the present case, deleting the “&” symbol would grant rights to the applicant in a domain name for which it does not have prior rights according to Article 10.1 of Regulation 874\/2004. Thus, the other options i.e. a hyphen or, if possible, rewriting, should have been followed.", "decision": "For all the foregoing reasons, in accordance with Paragraph B11 (c) and (d)(2) of the Rules and as requested by the Complainant, the Panel orders that EURid’s decision be annulled.\r\n\r\nThe Panel is also satisfied that, in accordance with Article 10.3 of Regulation 874\/2004, the Complainant is eligible for the registration of the domain name and notes that it is the next applicant in the queue. Therefore, if permitted by the Procedural Rules, Registration Policy, Sunrise Rules and\/or the Terms and Conditions, the Panel orders that the domain name be attributed to the Complainant.", "panelists": [ null ], "date_of_panel_decision": "2006-06-01 00:00:00", "informal_english_translation": "The Respondent should not automatically accept any of the three options provided for in Article 11 of Regulation 874\/2004 in an application for a domain name, but should make an assessment of whether the particular option chosen is appropriate in light of the .eu domain name applied for and the Prior Right supporting that application.", "decision_domains": [], "panelist": null, "panellists_text": null }