{
    "case_number": "CAC-ADREU-001053",
    "time_of_filling": null,
    "domain_names": [],
    "case_administrator": null,
    "complainant": [],
    "complainant_representative": null,
    "respondent": [],
    "respondent_representative": null,
    "factual_background": "Article 10 (1) of Commission Regulation (EC) No 874\/2004 of 28 April 2004 (hereafter “Regulation 874\/2004”) states that only holders of prior rights which are recognised or established by national or Community law 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) of Regulation 874\/2004 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\nSection 19 (2) of the Sunrise Rules states that 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 the sign exclusively contains a name or if the word element is predominant, and can be clearly separated or distinguished from the device element. \r\n \r\nPursuant to article 14 of Regulation 874\/2004, the onus lies on the applicant to submit documentary evidence showing that he or she is the holder of the prior right claimed on the name in question. Based on this documentary evidence, the validation agent shall examine whether the applicant has prior rights on the name. \r\n \r\nArticle 11 of the ADR Rules states that the transfer and attribution will only be granted by the Panel if the Complainant is the next applicant in the queue for the domain name concerned and subject to the decision by the Registry that the Complainant satisfies all registration criteria. \r\n \r\nThe Complainant applied for the domain name SANTOS on 7 December 2005. The documentary evidence, including a completed and signed declaration form, was received on 10 January 2006, which was before the deadline. \r\n \r\nThe Complainant application was based on its claimed rights in the French registered trademark n°1435693. \r\n\r\nThe Registry concluded from its examination of the documentary evidence that the Complainant did not have a prior right on the SANTOS sign, and consequently rejected the Complainant’s application for the domain name <santos.eu>.",
    "other_legal_proceedings": "The Panel is not aware of any pending legal proceedings.",
    "discussion_and_findings": "Procedural Point\r\n\r\nWhile the Response was filed late, in the present case the content of the Response is merely to restate the basis for the decision to reject the Complainant’s application. In those particular circumstances, notwithstanding the fact that there is a special onus on the Respondent, as the Registry, to adhere to the time limits set in the procedural rules, the Panel has exercised its discretion to admit the Response.\r\n\r\n\r\nSubstantive Issues\r\n\r\nThe first issue to be addressed is whether the Complainant is in fact the owner of the Prior Right, being French Registered Trade Mark n°1435693, on which the application is based. The Complainant was initially incorporated as SANTOS s.a. and subsequently changed its name to ETS SANTOS. The application was filed in the name of \"Etablissements SANTOS\". This is clearly the same entity and while the Complainant quite correctly addressed it in anticipation of it becoming an issue in these preceedings, the Respondent has not put this in issue and it is possible to proceed on the basis that the Complainant, the owner of French Registered Trade Mark n°1435693 and the applicant for registration of the <santos.eu> domain are one and the same undertaking.\r\n\r\nThe Prior Right relied upon by the Complainant in its application for registration of the <santos.eu> domain name under the Sunrise Rules was said device mark being the French Registered Trade Mark n°1435693.\r\n\r\nArticle 10.2 of Commission 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 the principles governing registration, states:-\r\n\r\n” 2. 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\nThe detail of the methodology to be applied by the Respondent during the Sunrise Period is set out in the Sunrise Rules. Sub-section 19.2 of the Sunrise Rules in  particular addresses the manner in which the Respondent is obliged to deal with Prior Rights that consist of device marks.\r\n\r\nSub-section 19.2 of the Sunrise Rules provides:\r\n\r\n\r\n”2. Documentary Evidence must clearly depict the name for which a Prior Right is claimed. 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\r\n(i) the sign exclusively contains a name, or\r\n\r\n(ii) the word element is predominant, and can be clearly separated\r\nor distinguished from the device element,\r\n\r\nprovided that\r\n\r\n(a) all alphanumeric characters (including hyphens, if any) included\r\nin the sign are contained in the Domain Name applied for, in the\r\nsame order as that in which they appear in the sign, and\r\n\r\n(b) the general impression of the word is apparent, without any reasonable possibility of misreading the characters of which the\r\nsign consists or the order in which those characters appear.”\r\n\r\n\r\nIn the present case, the name to which the Prior Right is claimed is the sign registered as French trademark n°1435693. The sign is both figurative inasmuch as it contains a device or logo element and is composite inasmuch as it consists of both the figurative element and the word SANTOS.\r\n\r\nThe Complainant argues that Rule 19.2.(ii) applies and that there is a predominant word element being the word SANTOS and a figurative element being a stylised square device.\r\n\r\nIt is the Complainant’s case therefore that all alphanumeric characters 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 that the general impression of the word is apparent, without any reasonable possibility of misreading the characters of which the sign consists or the order in which those characters appear. \r\n\r\nThe Complainant submits that on that basis it was entitled to be registered as the owner of the <santos.eu> domain name during the Sunrise Period and that the Respondent’s decision to refuse registration should be annulled.\r\n \r\nOn the other hand the Respondent argues that Rule 19.2(i) applies and that the Respondent was correct to reject the Application on the ground that the Complainant\/Applicant applied for the word “SANTOS” when it should have applied for the letters “S SANTOS”.\r\n\r\nThe Respondent took the view that the sign exclusively contains the name i.e. the letters “ S Santos”, the letter “S” being incorporated in a device or figurative form.\r\n\r\nThe decision of the panel in this case therefore comes down to whether the French trademark registration n°1435693 is for the mark SANTOS and Device or S SANTOS and Device.\r\n\r\nBoth parties seem to accept that the word SANTOS is not included in the figurative element of the mark. \r\n\r\nThe Complainant submits that the device element consists of a square including two slim semicircles and a large slanting band. That is correct, but the device element is also quite clearly the letter “S” in a stylised form and it is quite clearly intended to be the letter “S”.\r\n\r\nThe Panel notes that the mark is described as “S SANTOS (semi figurative)” in some of the documents contained in the Documentary Evidence relied upon by the Complainant.\r\n\r\nThe Panel is however conscious that the Complainant’s case is not without merit. The Complainant is clearly is known as SANTOS. SANTOS is its company name. It appears to have common law rights in the name SANTOS. It has an Internet presence in its web site established at the <santos.fr> address. Third parties refer to the Complainant’s goods as SANTOS goods. While these do not amount to Prior Rights for the purposes of the first phase of the Sunrise Period, they do indicate that the Complainant has undoubtedly rights in the SANTOS trade mark. \r\n\r\nIt appears from the documents submitted that the Complainant does not use the word mark S SANTOS. \r\n\r\nFurthermore the Complainant has persuasively argued that the word element in the Prior Right relied upon is SANTOS and not S SANTOS and that when spoken the mark is SANTOS and not S SANTOS.\r\n\r\nThe Sunrise Rules however clearly require at Rule 19.2(ii)(a)  that:-\r\n\r\n “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”.\r\n\r\nSection 19.2(ii) of the Sunrise Rules refers to the “sign”. It applies to figurative or composite signs. In the present case the “sign” consists of the stylised letter “S” and the word SANTOS. \r\n\r\nSince the device element in the Prior Right relied upon by the Complainant is a stylised alpha numeric character, the letter “S” applying the methodology laid down in Rule 19.2(i) of the Sunrise Rules or even the methodology laid down in Rule 19.2(ii) that all alphanumeric characters (including hyphens, if any) included in the sign should be contained in the Domain Name applied for, in the same order as that in which they appear in the sign, it was reasonable that the Respondent should have rejected the application in those circumstances.\r\n\r\nThe Complainant’s application for the domain name <santos.eu> must fail.\r\n\r\nIn reaching this decision the Panel is conscious that the present case has certain similarities with the proceedings in O2 DEVELOPPEMENT v. EURid (Case 00470,  2006-07-05) where it would appear from the decision that the mark in issue was also composite sign, albeit where the all elements appear to have been clearly alphanumeric.  In the present case both parties seem to have accepted that there were two distinct elements in the mark viz. the device element and the word element SANTOS. Nonetheless the device element is an alphanumeric character for the purposes of Section 19 of the Sunrise Rules.\r\n\r\nFurthermore for completeness the Panel is of the view that the decision of the Court of First Instance of the European Communities (Judgment dated February 18, 2004 - Case T-10\/03) cited by the Complainant does not assist in the construction of the provisions of Sub-section 19 of the Sunrise Rules insofar as they relate to the issues in suit in these proceedings. \r\n\r\nAccordingly, the decision taken by Respondent to reject the Complainant’s application for the <santos.eu> domain name application does not conflict with the Regulation 874\/2004.",
    "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": "2006-07-13 00:00:00",
    "informal_english_translation": "In its application for registration of the domain name <santos.eu>, the Complainant relied upon a device mark being the French Registered Trade Mark n°1435693 as it’s Prior Right.\r\n\r\nSub-section 19.2 of the Sunrise Rules in  particular addresses the manner in which the Respondent is obliged to deal with Prior Rights that consist of device marks as follows:\r\n\r\n\r\n”2. Documentary Evidence must clearly depict the name for which a Prior Right is claimed. 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\r\n(i) the sign exclusively contains a name, or\r\n\r\n(ii) the word element is predominant, and can be clearly separated\r\nor distinguished from the device element,\r\n\r\nprovided that\r\n\r\n(a) all alphanumeric characters (including hyphens, if any) included\r\nin the sign are contained in the Domain Name applied for, in the\r\nsame order as that in which they appear in the sign, and\r\n\r\n(b) the general impression of the word is apparent, without any reasonable possibility of misreading the characters of which the\r\nsign consists or the order in which those characters appear.”\r\n\r\n\r\nThe sign relied upon by the Complainant sign is both figurative inasmuch as it contains a device or logo element and is composite inasmuch as it consists of both the figurative element and the word SANTOS.\r\n\r\nThe Complainant argues that Rule 19.2.(ii) applies and that there is a predominant word element being the word SANTOS and a figurative element being a stylised square device. The Complainant argued that all alphanumeric characters 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 that the general impression of the word is apparent, without any reasonable possibility of misreading the characters of which the sign consists or the order in which those characters appear. \r\n\r\nThe Respondent argues that Rule 19.2(i) applies and that the Respondent was correct to reject the Application on the ground that the Complainant  applied for the word “SANTOS” when it should have applied for the letters “S SANTOS”.\r\n\r\nThe Respondent took the view that the sign exclusively contains the name i.e. the letters “ S Santos”, the letter “S” being incorporated in a device or figurative form.\r\n\r\nThe Panel decided that in the present case the “sign” consists of the stylised letter “S” and the word SANTOS. \r\n\r\nSince the device element in the Prior Right relied upon by the Complainant is a stylised alpha numeric character, the letter “S” applying the methodology laid down in Rule 19.2(i) of the Sunrise Rules or even the methodology laid down in Rule 19.2(ii) that all alphanumeric characters (including hyphens, if any) included in the sign should be contained in the Domain Name applied for, in the same order as that in which they appear in the sign, it was reasonable that the Respondent should have rejected the application in those circumstances.\r\n\r\nThe Complainant’s application for the domain name <santos.eu> must be refused.",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}