{
    "case_number": "CAC-ADREU-000487",
    "time_of_filling": null,
    "domain_names": [],
    "case_administrator": null,
    "complainant": [],
    "complainant_representative": null,
    "respondent": [],
    "respondent_representative": null,
    "factual_background": "On December 7, 2005 Bentley Systems Europe (“the Applicant”), a computer software company residing in the Netherlands, applied to the Respondent to register the domain name BENTLEY.EU. The Applicant’s documentary evidence, filed within time on January 16, 2006, showed the Applicant to be the licensee of Bentley Systems Incorporated of Pennsylvania, U.S.A., the registered proprietor of OHIM registered trade mark No. 003041761, a composite mark comprising the word BENTLEY preceded by the stylized letter “B”, registered on February 27, 2004.\r\n\r\nThe Complainant applied for the domain name BENTLEY.EU on January 27, 2006 and claims to be next in line to the Applicant. The Complainant seeks annulment of the Respondent’s decision to accept the Applicant’s application for the domain name, the transfer or attribution of the domain name to the Complainant and that the Respondent pay the Complainant’s costs.",
    "other_legal_proceedings": "None of which the Panel is aware.",
    "discussion_and_findings": "Article 10.2 of the Regulation, the terms of which appear above, compels the conclusion that the documentation proving an Applicant’s right to the trademark (in this case as licensee) must prevail over any error in the description of the trademark made by the Applicant in forwarding the documentary evidence. In any event, the Panel considers that the description made by the Applicant in this case is not an error since it merely enumerates the different elements of the composite trademark.\r\n\r\nArticle 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) the sign exclusively contains a name, or\r\n(ii) the word element is predominant, and can be clearly separated or distinguished from the device element, provided that\r\n(a) all alphanumeric characters (including hyphens, if any) included in the sign are contained in the Domain Name applied for, in the same order as that in which they appear in the sign, and\r\n(b) the general impression of the word is apparent, without any\treasonable possibility of misreading the characters of which the sign consists or the order in which those characters appear.”\r\n\r\nAccording to article 19.1 of the Sunrise Rules an applicant may not obtain registration for part of the complete name for which the prior right exists.  Article 19(2) enables the complete name for which the prior right exists to be identified where it is included in a figurative or composite sign.  In the present case article 19.2(i) does not apply because the sign does not exclusively contain a name but also a logo, the stylised letter “B” on a black square.  So far as Article 19.2(ii) is concerned the word element “Bentley” is undoubtedly predominant and can be clearly separated or distinguished from the device element (which, according to Article 19.1, may consist in a logo).\r \n\r\nThere are two conditions attached to Article 19.2(ii). As to condition (a), the “Bentley” trademark (sign) does not contain an alphanumeric character, since the composite mark comprises two distinct elements i.e. the word “Bentley” and a logo being a stylised letter “B” within a square.  Accordingly, this condition is satisfied. Condition (b) is also satisfied because there is no risk of misreading. Accordingly, the trademark meets the requirements of the Section 19.2 of the Sunrise rules.\r\n\r\nThe Registry has respected the Regulations, therefore the complaint must be dismissed.",
    "decision": "For all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the Panel orders that the Complaint is Denied.",
    "panelists": [
        null
    ],
    "date_of_panel_decision": "2006-07-26 00:00:00",
    "informal_english_translation": "The Applicant applied to the Respondent to register the domain name BENTLEY.EU. The documentary evidence showed the Applicant to be the licensee of OHIM registered trade mark No. 003041761, comprising the word BENTLEY preceded by the stylized letter “B”.\r\n\r\nThe Complainant objects that the Applicant made a fatal error in its application when submitting its documentary evidence, namely that it entered in the “prior right on name” field of the standard form “BENTLEY & B Design”. \r\n\r\nThe Respondent says the Applicant merely enumerated the different elements of the composite mark, which meets the requirements of Art. 19(2) of the Sunrise Rules and says the Registry must compare the domain name with the documentary evidence and is not bound by the “prior right on name” field in the covering letter.\r\n\r\nThe Panel considers that Article 10.2 of Commission Regulation (EC) No 874\/2004 of 28 April 2004 compels the conclusion that the documentation proving an Applicant’s right to the trademark (in this case as licensee) must prevail over any error in the description of the trademark made by the Applicant in forwarding the documentary evidence. In any event, the Panel considers that the description made by the Applicant in this case is not an error since it merely enumerates the different elements of the composite mark.\r\n\r\nAccording to article 19.1 of the Sunrise Rules an applicant may not obtain registration for part of the complete name for which the prior right exists.  Article 19(2) enables the complete name for which the prior right exists to be identified where it is included in a figurative or composite sign.  In the present case article 19.2(i) does not apply because the sign does not exclusively contain a name but also a logo, the stylised letter “B” on a black square.  So far as Article 19.2(ii) is concerned the word element “Bentley” is undoubtedly predominant and can be clearly separated or distinguished from the device element (which, according to Article 19.1, may consist in a logo).\r \n\r\nThere are two conditions attached to Article 19.2(ii). As to condition (a), the “Bentley” trademark (sign) does not contain an alphanumeric character, since the composite mark comprises two distinct elements i.e. the word “Bentley” and a logo being a stylised letter “B” within a square.  Accordingly, this condition is satisfied. Condition (b) is also satisfied because there is no risk of misreading. Accordingly, the trademark meets the requirements of the Section 19.2 of the Sunrise rules.\r\n\r\nThe Registry has respected the Regulations, therefore the complaint must be dismissed.",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}