{
    "case_number": "CAC-ADREU-000814",
    "time_of_filling": null,
    "domain_names": [],
    "case_administrator": null,
    "complainant": [],
    "complainant_representative": null,
    "respondent": [],
    "respondent_representative": null,
    "factual_background": "On December 7, 2005, Mrs. Dolores REBELO (hereinafter: \"Mrs. REBELO\") filed an application for the domain name <telepac.eu> (hereinafter: \"Domain Name\"). The application was made under the .eu Registration Policy and Terms and Conditions for Domain Name Applications made during the Phased Registration Period (hereinafter: \"Sunrise Rules\"). \r\n\r\nMrs. REBELO based her application on the Portuguese registered trademark \"TELEPAC PORTUGAL\", applied for on June 11, 1981 and registered under No. 212.040 on November 21, 1988 for class 38 (i.e. telecommunications and transmission and data communication) (hereinafter: \"Prior Right\").   \r\n\r\nMrs. REBELO transmitted all the required documents in due course and well before the deadline of January 16, 2006.\r\n\r\nMrs. REBELO's application for the Domain Name was the first in a queue of applications for the Domain Name.\r\n\r\nThe Documentary Evidence provided by the Mrs. REBELO consisted of a copy of the Original Certificate of Registration of the Prior Right, issued by the Portuguese Trademark Office (hereinafter: \"I.N.P.I.\"), on 21 November 1988, containing the name of the trademark, the name of the original trade mark applicant (i.e. CORREIOS E TELECOMUNICAÇÕES DE PORTUGAL), the filing date, as well as the registration date, the services for which the trade mark was applied for, and several endorsements of assignments and changes of name of the owner of the trade mark. \r\n\r\nThe endorsements show that there has been (i) a first change of name of the owner of the Prior Right, namely from CORREIOS E TELECOMUNICAÇÕES DE PORTUGAL to TELECOM PORTUGAL S.A., registered on November 18, 1993; (ii) a second change of name of the owner of the Prior Right, namely from TELECOM PORTUGAL S.A.\" to \"PORTUGAL TELECOM S.A.\", registered on June 21, 1995; (iii) an assignment of the Prior Right from PORTUGAL TELECOM S.A. to TELEPAC SERVIÇOS DE TELECOMUNICAÇÕES S.A., registered on April 27, 1998; and (iv) an assignment of the Prior Right from TELEPAC SERVIÇOS DE TELECOMUNICAÇÕES S.A. to TELEPAC II COMUNICAÇÕES INTERACTIVAS S.A., registered on June 30, 2000.\r\n\r\nThe Documentary Evidence also contained a copy of the official receipt, dated April 18, 2005, regarding the assignment of the Prior Right from TELEPAC II COMUNICAÇÕES INTERACTIVAS S.A. to PT.COM, S.A. – COMUNICAÇÕES INTERACTIVAS, Complainant and actual owner of the Prior Right.\r\n \r\nThe Documentary Evidence was filed in the Portuguese language, with an certified translation into English.\r\n\r\nOn March 9, 2006, Mrs. REBELO received a notification from the Registry informing that the application to the Domain Name had been rejected, due to the fact that the Documentary Evidence did not constitute sufficient ground to guarantee the Prior Right claimed.\r\n\r\nComplainant does not agree with the decision of the Registry and filed a Complaint under the .eu Alternative Dispute Resolution Rules (hereinafter: \"ADR Rules\"). Complainant requests the annulment of the rejection decision taken by the Registry and the attribution of the Domain Name to Mrs. REBELO.\r\n\r\nOn May 19, 2006, Respondent filed its Response to Complaint as provided under § B3 of the ADR Rules, acknowledging that the Validation Agent has made a mistake since the Prior Right had not yet expired and the name of the owner of the Prior Right had been changed.",
    "other_legal_proceedings": "None, at the best knowledge of the Panel.",
    "discussion_and_findings": "Article 22.11. of the Regulation 874\/2004 provides that in case of a procedure against the Registry, the ADR panel shall decide whether a decision taken by the Registry conflicts with the Regulation 874\/2004 or with the Regulation 733\/2002. \r\n\r\nIt results from the Case File that, during the application procedure for the Domain Name,  EURid's model declaration \"Licence Declaration of a Registered Trade Mark (.eu Phased Registration)\", duly complete, dated and signed by all involved parties, has been submitted in due time. According to this declaration, Licensor (i.e. Complainant), authorises Licensee (i.e. Mrs. REBELO) to apply during the Sun Rise period for the Domain Name in accordance with the ADR Rules and acknowledges that the Domain Name shall be registered in the name of Licensee. \r\n\r\nAn ADR procedure may be initiated by any person or entity by submitting a Complaint (Article 22.1. of the Regulation 874\/2004 and § B.1 (a) of the ADR Rules). In the present case, the Complaint has been submitted by Complainant, owner and Licensor of the Prior Right. Complainant thus has a legitimate interest to request the annulment of the decision of Respondent to reject the application of Mrs. REBELO, Licensee, for the Domain Name and that the Domain Name is attributed to Mrs. REBELO.\r\n \r\nArticle 10.1. of the Regulation 874\/2004 provides that \"Holders of prior rights recognized or established by national (…) law (…) shall be eligible to register domain names during a period of phased registration before general registration of .eu domain starts. \r\n\r\n'Prior rights' shall be understood to include, inter alia, registered national (…) trademarks.\"\r\n\r\nArticle 10.2. of the Regulation 874\/2004 reads as follows: \"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 such a right exists.\"\r\n\r\nAs Respondent pointed out correctly, only a registered national or Community trademark which has not yet expired shall be considered as a Prior Right mentioned in Article 10.1. of the Regulation 874\/2004.\r\n\r\nIn this respect, there is no discussion between Complainant and Respondent regarding the submission in due time of the Documentary Evidence relating to the Prior Right.\r\n\r\nRespondent acknowledges that Mrs. REBELO applied for the Domain Name on December 7, 2005 and that the Documentary Evidence, including a licence declaration, was submitted before the deadline of January 16, 2006.\r\n \r\nMoreover, Respondent admits that the Validation Agent has made a mistake. Respondent acknowledges also that it clearly results form the Documentary Evidence that the Prior Right had not yet expired and that the name of the owner of the Prior Right had been changed.\r\n\r\nIn its Response to Complaint, Respondent does not request the Panel to dismiss nor to sustain the Complaint.\r\n\r\nIt results from the Response to Complaint submitted by Respondent that Respondent acknowledges that the Prior Right has been renewed in time and, as a consequence, has not yet been expired. \r\n\r\nIn its Response to Complaint Respondent also acknowledges that Complainant is the owner of the Prior Right. \r\n\r\nAs a result, the Panel finds that the decision to reject the application by Mrs. REBELO, Licensee of the Prior Right, and legitimate applicant according the \"Licence Declaration of a Registered Trade Mark (.eu Phased Registration)\", as provided by Chapter V, Section 20.1. of the Sun Rise Rules, conflicts with Regulation 874\/2004 and\/or with the Regulation 733\/2002.  \r\n\r\nIn its Complaint, Complainant contends also that, notwithstanding the fact that the Prior Right consists of the words \"TELEPAC PORTUGAL\", the Domain Name fully complies with the provisions of Article 10.2. of the Regulation 874\/2004 and that the Domain Name corresponds exactly to the complete name for which the Prior Right exists. According to Complainant, the term PORTUGAL cannot be considered as being a part of the trademark. In this respect, Complainant refers to Article 78º, §4° of the Portuguese Industrial Property Code of August 24, 1940 (hereinafter: \"P.I.P.C.\"), which was applicable at the time of application for and registration of the Prior Right. According to Article 78°, §4° of the P.I.P.C., trademarks related to national products must include the term \"PORTUGAL\". \r\n\r\nThe Panel notes that Respondent invokes article 10.2 of the Regulation 874\/2004 as one of the legal grounds for its decision to reject the application by Mrs. REBELO for the Domain Name, but does further in its Response to Complaint not explain nor motivate its decision to reject the application by Mrs. REBELO for the Domain Name on this ground. As a consequence, the Panel concludes that Respondent does not longer persist in its argumentation in this respect.  \r\n\r\nMoreover, the Panel refers in this respect to Chapter V, Section 19.3. of the Sun Rise Rules, stating \"For trade marks, the references \"TM\", \"SM\", \"®\" and the like do not form part of the complete name for which the relevant Prior Right exists.\". From the wording of Chapter V, Section 19.3. results that the enumeration of the \"references\" mentioned herein is not exhaustive. \r\n\r\nAs proved by Complainant, and not contested by Respondent, the inclusion of the term \"PORTUGAL\" was mandatory for trade marks related to national products\/services. As results from the Case File, this was the case for telecommunications and data communication at the time the initial trade mark holder applied for the Prior Right. Therefore, the Panel finds that the inclusion of the word \"PORTUGAL\" in the Prior Right can be considered as a reference that does form part of the complete name for which the relevant Prior Right exists.    \r\n\r\nAs a result, the Registry should have accepted Mrs. REBELO's application for the Domain Name in accordance with Article 14 of the Regulation 874\/2004 which states: “The Registry shall register the domain name, on the first come, first served basis, if it finds that the applicant has demonstrated a prior right”. \r\n\r\nGiven the above, and since the sole object and purpose of an ADR Proceeding against the Registry is to verify whether the relevant decision by the Registry conflicts with the Regulation 874\/2004 and\/or with the Regulation 733\/2002, the Panel unanimously concludes that the rejection by Respondent of the application for the Domain Name by Mrs. REBELO conflicts with the aforementioned Regulations.",
    "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 <telepac.eu> be transferred to the Applicant, Mrs. Dolores REBELO.",
    "panelists": [
        null
    ],
    "date_of_panel_decision": "2006-08-02 00:00:00",
    "informal_english_translation": "Complainant is licensor of the Portuguese trademark \"TELEPAC PORTUGAL\" (hereinafter: “Prior Right”). During the Sunrise Period, licensee (i.e. Mrs. Dolores REBELO, hereinafter: “Mrs. REBELO”) applied for the domain name <telepac.eu> (hereinafter: \"Domain Name\").  \r\n\r\nThe Registry rejected the application for the Domain Name essentially because he found that the trademark was expired and that only a registered national or Community trademark which has not yet expired can be considered as a prior right mentioned in Article 10.1. of the Regulation 874\/2004. \r\n\r\nComplainant contends that the decision of the Registry to reject the application for the Domain Name is in conflict with the EC Regulations on .eu domain names.\r\n\r\nAs regards the initiating of an ADR procedure, the Panel finds such procedure may be initiated by any person or entity by submitting a Complaint (Article 22.1. of the Regulation 874\/2004 and § B.1 (a) of the ADR Rules). In the present case, the Complaint has been submitted by Complainant, owner and licensor of the Prior Right. Complainant thus has a legitimate interest to request the annulment of the decision of Respondent to reject the application for the Domain Name by Mrs. REBELO.\r\n\r\nThe Panel notes that Respondent admits that the Validation Agent has made a mistake and that Respondents acknowledges that it clearly results form the Documentary Evidence that the Prior Right had not yet expired and that the name of the owner of the Prior Right had been changed.\r\n\r\nMoreover, in its Response to Complaint, Respondent does not request the Panel to dismiss nor to sustain the Complaint.\r\n\r\nRespondent initially also contended that the conditions of article 10.2 of the Regulation 87\/2004 were as not met. However, in its Response to Complaint Respondent did not explain nor motivate its decision in this respect. Therefore, the Panel concludes that Respondent does not longer maintain this ground for rejection.  \r\n\r\nMoreover, the Panel refers in this respect to Chapter V, Section 19.3. of the Sun Rise Rules, stating \"For trade marks, the references \"TM\", \"SM\", \"®\" and the like do not form part of the complete name for which the relevant Prior Right exists.\". From the wording of Chapter V, Section 19.3. results that the enumeration of the \"references\" mentioned herein is not exhaustive. \r\n\r\nAs proved by Complainant, and not contested by Respondent, the inclusion of the term \"PORTUGAL\" was mandatory for trade marks related to national products\/services. As results from the Case File, this was the case for telecommunications and data communication at the time the initial trade mark holder applied for the Prior Right. Therefore, the Panel finds that the inclusion of the word \"PORTUGAL\" in the Prior Right can be considered as a reference that does form part of the complete name for which the relevant Prior Right exists.    \r\n\r\nAs a result, the Registry should have accepted Mrs. REBELO's application for the Domain Name in accordance with Article 14 of the Regulation 874\/2004.\r\n\r\nGiven the above, and since the sole object and purpose of an ADR Proceeding against the Registry is to verify whether the relevant decision by the Registry conflicts with the Regulation 874\/2004 and\/or with the Regulation 733\/2002, the Panel unanimously concludes that the rejection by Respondent of the application for the Domain Name by Mrs. REBELO conflicts with the aforementioned Regulations. Therefore, the Panel orders that the EURid's decision be annulled and the domain name <telepac.eu> be transferred to the Applicant, Mrs. Dolores REBELO.",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}