{
    "case_number": "CAC-ADREU-000398",
    "time_of_filling": null,
    "domain_names": [],
    "case_administrator": null,
    "complainant": [],
    "complainant_representative": null,
    "respondent": [],
    "respondent_representative": null,
    "factual_background": "This decision arises from an appeal by the Complainant, Ajuntament de Barcelona (Barcelona City Council),  against the decision by the Respondent, EURid, to register the domain name barcelona.eu (“the Domain Name”) to a third party, TRAFFIC WEB HOLDING BV (\"Traffic\").\r\n\r\nOn 7th December 2005, Traffic applied for the Domain Name under the phased registration (“Sunrise”) period which is described in greater detail below.. The mark on which it relied was a Benelux trademark, number 0780458 which was applied for on 28th November 2005 and granted on 30th November 2005. The form of the trade mark comprises the words BARC & ELONA, in blue and in a stylised upper case, the words being placed in between two parallel horizontal lines, each line being comprised of small red squares. \r\n\r\nIt can be seen that, if the symbol “&” (the ampersand) and the spaces are removed, the word element of the mark will be read as BARCELONA. Other Benelux marks for other European cities were lodged in a similar form by Traffic for many other European cities, such as AMST & ERDAM, ATH & ENS, BIRM & INGHAM and so on. Similar applications were made  for the names of various countries (BEL & ARUS, BO & OSNIA etc). \r\n\r\nArticle 3 (c ) of Commission Regulation (EC) 874\/2004 provides that the requesting party must affirm that the request for domain name registration is made in good faith and does not infringe any rights of a third party. It is provided that a material inaccuracy will constitute a breach of the terms of the registration.\r\n\r\nThe Complainant is a public corporation and describes itself as “the top governing authority in the city of Barcelona (Spain) and the defender of the general interest for the city’s inhabitants”.  On 14th December 2005 the Complainant also applied for the Domain Name under the provisions of the Sunrise period The registration on which the Complainant relied is a word-only Community Trade Mark for BARCELONA, number 001619709 which was filed on 19th April 2000 and registered on 12th July 2001.\r\n\r\nArticle 3.2 of the Sunrise Rules (see below) provides that the Registry registers Domain Names on a first come, first served basis where it finds that an Applicant has demonstrated a Prior Right - in this case, the Benelux trademark described above. The Respondent determined that Traffic’s trademark demonstrated a Prior Right in the Domain Name and Traffic’s application, being 7 days earlier than that of the Complainant, was thus accepted rather than the Complainant’s. The Complainant is now the next applicant in the queue for the Domain Name.\r\n\r\nThe Complainant’s application is made pursuant to Section 22.2 of the Sunrise Rules which provides that, following a decision by the Registry to register a Domain Name, an interested party may initiate an ADR proceeding against the Registry on the grounds of non-compliance of that decision with the Regulations.   Pursuant to the provisions of B11 (d) (2) of the .eu Alternative Dispute Resolution Rules and Article 22.11 of Regulation 874\/2004, the sole purpose of these proceedings is accordingly to determine whether the decision taken by the Registry was in accordance with the applicable European Union Regulations. \r\n\r\nThe relevant regulations which require particular consideration are as follows;\r\n\r\n(1) Commission Regulation (EC) No 874\/2004 the material provisions of which are;\r\n\r\nArticle 10.2:\r\n\r\n\t“The registration on the basis of a prior right shall consist of the registration of the complete name for \twhich the prior right exists, as written in the documentation which proves that such a right exists.”\r\n\r\nArticle 11, the material part of which is as follows:\r\n\r\n\t“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 prior rights are claimed contains special characters, spaces, or punctuations, these shall be eliminated entirely from the corresponding domain name, replaced with hypens, 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\t\t~@#$%^&*()+=<>{}[]|\\\/:;’,.?........”",
    "other_legal_proceedings": "",
    "discussion_and_findings": "Article 10.2, which requires “registration of the complete name for which the prior right exists” needs to be read in conjunction with the material wording of Article 11 of Regulation 874\/2004  -   “Where the name for which prior rights are claimed contains special characters…., these shall be eliminated entirely from the corresponding domain name, replaced with hyphens, or, if possible, rewritten”. \r\n\r\nThe provision is not free from ambiguity.  First, it is unclear whether the decision as to which course is adopted is that of the Registry or the applicant for registration. The only sensible construction, however, is that the decision is that of the applicant. \r\n\r\nSecond, it is unclear as to whether the applicant is obligated to choose any particular course in preference to another.  The Complainant draws attention to the use of the words “if possible” as tending to suggest that, if the special characters can be re-written, they should be and that the other courses should only be followed if this is not possible. \r\n\r\nThe relevant phrase points both ways.  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\nIf the Article were  construed in a  manner which gave an Applicant an unfettered choice, it could lead to some surprising results. For example, the owner of a trademark for B&A&R&C&E&L&O&N&A could have chosen to use it as the basis of a sunrise application for BARCELONA. eu.  It should be presumed that the words “if possible” are not otiose. They must be intended to affect the meaning of a phrase which would otherwise give the applicant an entirely free hand,  by requiring it to rewrite the name to deal with special characters where that is possible. The position as to what is possible may depend on the Prior Right and the particular special character under consideration but it is considered that it was possible on these facts to rewrite the name  and that, on these facts,  the Prior Rights should have been rewritten as BARCANDELONA.  Accordingly, it is not considered that the Respondent’s decision in this respect was in accordance with the Regulations.\r\n\r\nIn the light of the above finding, it is not necessary to consider the Complainant's other contentions.\n",
    "decision": "For all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the Panel orders that EURID's decision be annulled.\r\n\r\nThe Complainant has sought a direction pursuant to Section 27 of the Sunrise Rules that the Respondent’s decision be revoked and the panel allocate the Domain Name to the Complainant. In point of fact, Section 27 of the Sunrise Rules does not appear to empower the panelist to make a direction for transfer although the power to order transfer in appropriate cases seems to be granted by both B 11 (c ) of the ADR Rules and Article 22.11 of Regulation 874\/2004 \r\n\r\nIn view of the uncertainty as to the extent of the panelist’s powers, the panelist declines formally to order transfer although that is the desired, sensible and seemingly inevitable result of this decision. If this course is to be followed, it should be implemented as soon as possible.",
    "panelists": [
        null
    ],
    "date_of_panel_decision": "2006-05-18 00:00:00",
    "informal_english_translation": "The decision of the Respondent  to accept a composite mark including the word BARC & ELONA as a Prior Right in an application for the Domain Name Barcelona.eu should be annulled as not in accordance with the provisions of Article 11 of Commission Regulation (EC) No 874\/2004. \r\n\r\nArticle 11 requires  that,  where the name for which prior rights are claimed contains special characters, these shall be eliminated entirely from the corresponding domain name, replaced with hyphens or, if possible, rewritten. The words 'if possible' mean that if the name can be rewritten without the use of special characters, that course should be followed. By substituting the word 'and' for the special character '&' it was possible, on the facts of this case, to have rewritten the name element within the  prior right claimed as barcandelona. This word would not have been accepted as a Prior Right in an application for the domain name Barcelona.eu.\n",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}