{ "case_number": "CAC-ADREU-001422", "time_of_filling": null, "domain_names": [], "case_administrator": null, "complainant": [], "complainant_representative": null, "respondent": [], "respondent_representative": null, "factual_background": "History of Application for Registration\r\n\r\nThe Complainant applied for registration of the domain name on 7 December 2005. The Validation Agent received the documentary evidence on 26 December 2005 within the deadline set by the the .eu Registration Policy and Term and Conditions for Domain Name Applications made during the Phased Registration Period (hereinafter “the Sunrise Rules”)\r\n\r\nThe Complainant was at all material times the owner of certain registered trade marks that would have satisfied the registration criteria under the Sunrise Rules viz. CTM 000774554 “PORTAS” registered as a figurative mark on 20 August 20, 2001 and German Registered Trade Mark 39815196.2 “PORTAS” which has been registered at the German Patent- and Trade Mark Office on 5 August 1998. \r\n\r\nHowever, due to a lack of expertise on the part of the Complainant, the documentary evidence with which the Validation Agent was provided, contained only an extract of the Companies Register which was evidence of the Complainant’s rights in its trade name but did not provide any evidence of rights in any national or Community trade mark as required to provide priority under the first phase of the sunrise period.\r\n\r\nNo investigation of the Complainant’s rights was carried out by either the Validation Agent or the Respondent.\r\n\r\nThe Respondent rejected the Complainant's application on the grounds that the Complainant had failed to submit documentary evidence which showed that it is the holder of a Prior Right.\r\n\r\n\r\nHistory of ADR Proceedings\r\n\r\nOn 17 May 2006 the Complaint was filed and an Acknowledgement of Receipt of Complaint was filed on 23 May 2006 On 23 May 2006 a Request for EURid Verification was made and a reply was received by way of Nonstandard Communication on 29 May 2006.\r\n On 31 May 2006, following a Complaint Check, a notice of Commencement of ADR Proceeding was filed on 31 May 2006. The Date of Receipt of Notification of Complaint was 31 May 2006.\r\n\r\nOn 22 July 2006, a late Response was filed by the Respondent and a Notification of Respondent Default was posted on 26 July 2006.\r\n\r\nOn 28 July 2006, the Complainant filed a NonStandard Communication in accordance with Paragraph A2 (k) of the ADR Rules.\r\n\r\n\r\nOn 2 August 2006 the Panellist was selected and having received a Statement of Acceptance and Declaration of Impartiality and Independence from the Panellist on 3 August 2006, the Notification of Appointment of the ADR Panel and Projected Decision Date was posted on 3 August 2006 and the case file was transmitted to the ADR Panel on 7 August 2006. \r\n\r\n\r\nThe Parties\r\n\r\nThe Complainant is a German body corporate. For more than 30 years the Complainant has developed a large range of products and services providing home renovation solutions e.g. door renovation, kitchen renovation, staircase renovation and window renovation. \r\n\r\nThe Complainant is the owner of the CTM 000774554, PORTAS which has been registered as a figurative mark on 20 August 2001.\r\n\r\nThe Complainant also is the owner of the German Registered Trade Mark PORTAS, registration number 39815196.2 which was registered on 5 August 1998. \r\n\r\nIn addition to its registered trade mark rights the Complainants has rights in its name PORTAS. The Complainant company has been known by the name “PORTAS” ever since its establishment and the name of the company is protected under German national law by Section 12 of the German Civil Code. \r\n \r\nFurthermore the Complainant carries on business throughout the European Community and owns a number of ccTLDs and gTLDs, including ; ; ; ; ; ; ; ; ; ; ; ; ; ; ; ; ; and .\r\n\r\nThe Respondent is EURid.", "other_legal_proceedings": "The Panel is not aware of any pending or decided legal proceedings which relate to the disputed domain name.", "discussion_and_findings": "Preliminary Procedural Matter - Admission of Late Response\r\n\r\nFirstly to address the Complainant’s submission that the late Response should not be admitted.\r\n\r\nIn ESGE (ADR EU Case No. 325), addressing the obligation on the Respondent during the Sunrise Period to comply with the time limits, the panel refused to admit a late response in the following terms:\r\n\r\n“Applicants for domain name are themselves subject to official deadlines which they must necessarily comply with, save for being subject to the loss of their rights. \r\n\r\nThe Panel is of the opinion that the Respondent, even though it has been afforded sufficient time and opportunity to respond to the Complainant, has ignored the official time limits imposed by the Rules and filed arguments lately. \r\n\r\nIt seems fair to the Panel therefore to consider that the Respondent’s arguments must be found inadmissible and must not be taken into account in the present proceedings.”\r\n\r\nThat view was stated very strongly in LUMENA where the panel stated:\r\n\r\n” Should the Panel take into consideration the contents of the Respondent's NonStandard Communication, the Panel would violate the duty provided for by Paragraph 7(b) of the ADR Rules, to treat the parties fairly and with equality.”\r\n\r\nIt seems however to this panellist, that the approach to a late response should be taken on a case by case basis. It is important not to fetter the discretion but it also important that the panellists discretion should not be at large or arbitrary and the discretion should be exercised on the basis of a principled approach. \r\n\r\nThe difficulty facing panellists in these early cases in the ADR EU is that the principles that panellists should apply in ADR EU cases and many other conventions are still in the process of being formed. In an earlier decision, CORK, ADR EU Case No. 504, this Panellist, as a member of a three person panel, refused to admit the late response but took notice of the content. This has been the approach of a number of panelists. The panel in that case also agreed “that Article 22(10) of the Commission Regulation (EC) No 874\/2004 does not mean that the belated Response will automatically result in a successful Complaint, but that the Panel will rather apply the law as it stands to the facts put forward by the Complainant (see Raad voor Rechtsbijstand v. Traffic Web Holding and EURid, Case No. 335 – MEDIATION.eu).”\r\n\r\nIn the view of this Panel, there is a qualitative distinction between the time limits set for pleadings in an ADR process and the time limits imposed on an applicant to furnish evidence of its Prior Rights during the Sunrise Period. In the former case the primary issue should be whether the delay has prejudiced the other party whereas in the latter case the time limits were imposed to allow the .eu domain to be efficiently launched with due regard to owners of Prior Rights.\r\n\r\n\r\nSubstantive Issues\r\n\r\nThis Complaint arises out of the interpretation and application of Commission Regulation (EC) No 874\/2004 of 28 April 2004 (“Regulation 874\/2004”) and the .eu Registration Policy and Term and Conditions for Domain Name Applications made during the Phased Registration Period (hereinafter “the Sunrise Rules”) \r\n\r\nArt. 10 (1) of said Regulation 874\/2004 provides that holders of Prior Rights 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, and that prior rights shall be understood to include, inter alia, registered national and community trademarks. \r\n\r\nArt. 12(3) of said Regulation 874\/2004 provides that the request to register a domain name based on a Prior Rights shall include a reference to the legal basis in national or Community law for the right to the name, as well as other relevant information, such as trademark registration number. \r\n\r\nArt. 14 said Regulation 874\/2004 provides for the validation and registration of applications received during the phased registration period:\r\n\r\n“Article 14\r\nValidation and registration of applications received during phased registration\r\n\r\nAll claims for prior rights under Article 10(1) and (2) must be verifiable by documentary evidence which demonstrates the right under the law by virtue of which it exists…\r\n\r\nEvery applicant shall submit documentary evidence that shows that he or she is the holder of the prior right claimed on the name in question. The documentary evidence shall be submitted to a validation agent indicated by the Registry. The applicant shall submit the evidence in such a way that it shall be received by the validation agent within forty days from the submission of the application for the domain name. If the documentary evidence has not been received by this deadline, the application for the domain name shall be rejected…\r\n\r\nValidation agents shall examine applications for any particular domain name in the order in which the application was received at the Registry.\r\n\r\nThe relevant validation agent shall examine whether the applicant that is first in line to be assessed for a domain name and that has submitted the documentary evidence before the deadline has prior rights on the name. If the documentary evidence has not been received in time or if the validation agent finds that the documentary evidence does not substantiate a prior right, he shall notify the Registry of this… \r\n\r\nThe Registry shall register the domain name, on the first come first served basis, if it finds that the applicant has demonstrated a prior right in accordance with the procedure set out in the second, third and fourth paragraphs.\r\n\r\nSection 21.2 and 21.3 of the Sunrise Rules provide:\r\n\r\n“2. The Validation Agent examines whether the Applicant has a Prior Right to the name exclusively on the basis of a prima facie review of the first set of Documentary Evidence received and scanned by the Processing Agent (including the Documentary Evidence received electronically, where applicable) and in accordance with the provisions of these Sunrise Rules.\r\n\r\n3. The Validation Agent is not obliged, but it is permitted in its sole discretion, to conduct its own investigations into the circumstances of the Application, the Prior Right claimed and the Documentary Evidence produced.”\r\n\r\nOn the Complainant’s own admission the application for registration of the domain name under the Sunrise Rules was incomplete and while the Complainant did in fact have trade mark rights that would have satisfied the requirements for Prior Rights under the Sunrise Rules, the documentary evidence with which the Validation Agent was provided, only contained an extract of the Companies Register, that was only evidence of the Complainant’s rights in its trade name, as distinct from rights in a national or Community Trade Mark as required by the Sunrise Rules.\r\n\r\nWhen considering the approach to be taken by a panel where an application has been refused under the Sunrise Rules because the applicant for registration of the domain name has been deemed defective because an applicant has failed to furnish the correct or adequate information, ADR panels have focused on the extent to which there is an onus on an applicant to ensure that the application was correct and also on the extent to which the Validation Agent has an obligation to investigate the basis of the application.\r\n\r\nThe onus on the applicant to make a correct application was addressed in ULTRASUN (ADR EU Case No541), where the decision of the learned panel is authority for the proposition that not only does the onus rest on the applicant to provide the necessary documentation, but that the documentation must have been produced during the Sunrise Period. The panel stated as follows: \r\n\r\n“ In accordance with Article 14 of the Public Policy Regulation, the applicant must show that the applicant itself is the owner (or licensee) of the prior right and this must be the case at the time of the application for the domain name. This view is consistent with the view of the Public Policy Regulation taken by the learned Panelist in Case No. 119 (Nagel).”\r\n\r\nIn FESTOOL (ADR EU Case No. 1047), the panel emphasised the onus that rests on the applicant to ensure that “a complete, technically correct request for a Domain Name registration” is submitted “which complies with all the requirements provided for in (a) Section 3 of these Sunrise Rules and (b) the Registration Guidelines” and citing the panel in COLT (ADR EU Case No. 294), held that the respondent was correct to reject the application because according to Section 21.2 of the Sunrise Rules, the examination of whether the applicant has a prior right to a domain name is exclusively carried out based on a prima facie review of the first set of Documentary Evidence received.\r\n\r\nIn NAGEL (ADR EU Case 119), where the applicant for registration of the domain name and the owner of the trademark for which the Prior Right was claimed were different entities, it was held that the complainant did not prove the timely substantiation of its Prior Right.\r\n\r\nIn OSCAR (ADR EU Case 181), due to technical limitations in the automated application system provided by the Registrar, the complainant was unable to include all characters in its long name Société Cooperative Agricole des Producteurs de Kiwifruits de France. The application received by the Registry referred to the applicant for this domain name as being the \"SOCIETE COOPERATIVE AGRICOLE D\" and the application was refused. The Panel held that the error was technical and annulled the decision of the Registry.\r\n\r\nIn ATOLL (ADR EU Case 192), there was a “discrepancy” between the name of the applicant for the domain name and the name of the trademark owners, the Panel found that no documentary evidence was provided substantiating Prior Right of the applicant for the domain name during the application and validation period and, in refusing to annul the decision of the registry, held that the respondent had not erred in its decision to reject the domain name application.\r\n\r\nIn ISL (ADR EU Case 219), the complainant was the applicant for registration of a domain name and the complainant relied upon a French registered trade mark as its Prior Right. As Documentary Evidence the applicant had produced a registration certificate of the trademark ISL issued by the Institut National de la Propriété Industrielle, a competent trademark office, under registration number 95579353. However, the certificate of registration certified only that the trademark was valid for a renewable period of 10 years as of 12 April 1996. No certification or evidence of renewal had been submitted during the application period. Refusing the complainant’s application for annulment of the Registry decision, the panel concluded that \r\n\r\n“the burden of proof of an existing prior right lies upon the applicant (Complainant) for a domain name under the sunrise periods and neither the validation agent nor the Registry\/Respondent has any obligations to undertake further investigations of the (possible) existence of the prior right claimed in a situation as described”.\r\n\r\nIn CAPRI (ADR EU Case No. 396), while there were many mistakes in the application, refusing to take a formalistic approach, the panellist found that by conducting a more accurate review of the application, the Registry could have easily removed all relevant discrepancies..\r\n\r\nThe panellist in CAPRI stated that the justice should always rule over the formalistic approach and held:\r\n\r\n”• The complainant has finally proven that he is and was before filing the .eu domain name application an owner of the relevant Community trademark CAPRI, No. 000276113, he therefore properly claimed his prior right for the relevant .eu domain name. \r\n\r\n• It has to be stated that the complainant has made many mistakes in its application which were very confusing and could have let the registry to believe that the complainant has not proven its right. \r\n\r\n• The registry had, however, all possible means and rights to validate properly the prior rights. The registry is not only allowed but even obliged to obey all respective relevant regulations and obligations from these regulations to provide fair and complete validation process. The registry could have done the same validation process as the Panel\/the Panelist did which would allow the registry to review more deeply the application and easily remove all relevant discrepancies in the .eu domain name application. \r\n\r\n• They are many technical issues which do not give the applicants appropriate possibilities and space to fill fully and without any mistake the applications. The technique can not be an obstacle to register properly the .eu domain name and grant the priority rights. \r\n\r\n• To conclude, the complainant\/the applicant has proven his priority rights based on the Community trademark. He is therefore entitled to get the “CAPRI” EU domain name.”\r\n\r\n\r\nDivergent views have emerged among panelists as to whether the Validation Agent has an obligation to investigate. Some panelists have gone so far as to impose a high duty on the validation agents. In other cases the panelists have pointed out that the obligation on the validation agent is only to carry out a prima facie review with a power, but no duty, to investigate, and have put the emphasis on the discretion afforded to the Validation Agent in this regard.\r\n\r\nIn COLT (ADR EU Case No. 294) , the Panel stated that \r\n\r\n“the attention must be drawn on section 21.2 of the Sunrise Rules that expressly states that the Validation Agent will examine whether the applicant has a prior right to the name exclusively on the basis of a prima facie review of the first set of Documentary Evidence received. It means that an applicant should not expect the Respondent or Validation agent to engage in speculation and\/or embark upon its own enquiry in relation to the exact connection between two entities”\r\n\r\nIn SCHOELLER (ADR EU Case 0253), on the other hand, the panel took the view that there was a high degree of duty on the validation agents during the Sunrise Period to carry out investigations where there were apparent discrepancies between the details of the applicants and the holders of the claimed Prior Rights:\r\n\r\n “While the same section 21 (3) of the Sunrise Rules grants the Validation Agent “sole discretion” to carry out such investigations, it is a fundamental principle of justice that, when granted such discretion, the Validation Agent is not exempted from the requirement to act reasonably. Indeed, it may be argued that the extent of the discretion granted to the Validation Agent implies a higher standard of care and reasonableness. In the circumstances of the case, the Validation Agent could have easily cleared up any doubts by seeking and obtaining further proof of identity despite change of address and a slightly abbreviated name. It would be unreasonable for the Validation Agent not to have expended the minimum of effort required to clear any small doubt. For it is clearly the intention of the .eu Sunrise Rules that the role of the Validation Agent should go far beyond that of a mere clerical function, otherwise it would not have endowed this office with such wide and important investigative powers.”\r\n\r\n\r\nIn LAST-MINUTE (ADR EU Case No. 328), the complainant was lodged by a third party alleging that by carrying out an investigation into the applicants Prior Rights, where the application had been incomplete, the validation agent had unfairly provided the applicant with an advantage. The panelist described the nature of the validation agent’s discretion in the following terms:\r\n\r\n“The Validation Agent is permitted in its sole discretion to conduct its own investigation, and therefore it is permitted to determine the Prior Right claimed by the domain name applicant. By conducting a limited formal investigation of the application and of the Prior Right claimed, through the documentary evidenced received in accordance with the Sunrise Rules, the Validation Agent determined that L’Tur is the registered owner of the trademark “Last Minute” for which Prior Right is claimed.”\r\n\r\nFurthermore as to the nature of the obligation on the validation agent to carry out an investigation, in ULTRASUN (ADR EU Case No541), the panellist stated that the obligation on the validation agent to investigate an application is discretionary and not mandatory in the following terms:\r\n\r\n “The Complainant submits that the validation agent should have conducted an investigation pursuant to Section 21.3 of the Sunrise Rules to satisfy itself as to ownership of the prior right. However the Panel is of the view that the wording of the relevant section makes it clear that such an investigation is discretionary on the part of the validation agent and by no means mandatory. This interpretation is consistent with previous .eu ADR decisions including Case No. 127 (BPW) and Case No. 294 (Mitsubishi Motors).\r\n\r\nFurther, Section 21.2 of the Sunrise Rules makes it clear that the validation agent is to carry out a prima facie review of the first set of the documentary evidence received from the applicant to establish whether a prior right exists and Section 21.1 confirms that neither the validation agent nor the Respondent are obliged to notify the applicant if it does not comply with the documentary requirements – in this case failing to submit the required licensee declarations….”\r\n\r\nThe panel in ULTRASUN furthermore noted the decisions in. SCHOELLER (ADR EU Case No. 253) and CASHCONTROL, (ADR EU Case No. 431) where the Panelists held that the validation agent should have further investigated the documentary evidence supplied by the applicant, but stated that these cases are distinguishable on their facts - unlike in ULTRASUN itself, they involved situations where the name of the applicant and the holder of the prior right were almost identical and in the former case involved a system limitation restricting the Complainant’s ability to specify its full name so as to correspond with the documentary evidence submitted.\r\n\r\nHaving considered the Regulations, the Rules and the decisions of other panellists, this Panellist is of the view that the principal obligation during the Sunrise Period rested on the applicant to ensure that the application was correct and while it is not appropriate in the present case to endeavour to identify an overall principle governing the exercise of Validation Agent’s decision as to whether or when it should further investigate an application under the Sunrise Rules, (in the present case no such obligation arose), it is possible that the question may well come down to a question of reasonableness on a case by case basis. In the present case, the Complainant has admitted that its application was incorrect and that the errors were not due anything or anyone other than the lack of expertise on the part of the Complainant in making the application.\r\n\r\nThis was not a case of a technical error or an incomplete application due to technical limitations of the system. The error on this case was due to a lack of understanding of what was required for an application to succeed in the first phase of the Sunrise Period. It is not permissible for the Complainant to endeavour to “mend its hand” by endeavouring to bring further evidence in ADR proceedings.\r\n \r\nOne must ask was it reasonable to expect that the Validation Agent should carry out a search of the German Trade Marks Register and the OHIM database when presented with the Complainant’s application ? In the view of this Panel, in the circumstances that have been outlined in the present case, where the Complainant furnished only evidence of its company name, it was quite reasonable for the Validation Agent not to investigate further. Despite the standard warranties and statements that accompanied the application and that were relied upon by the Complainant in this case, there was no hint to the Validation Agent that the applicant was the owner of a particular German Registered Trade Mark or a CTM registration. In such circumstances, it would be too much to impose an obligation on the Validation Agent to investigate further.\r\n\r\nThis is not a case where the Panel is asked to decide whether a Priority Right exits or not, as suggested by the Complainant. Neither is it a question of whether formalistic rules should win over justice, as the Complainant also suggested. The questions are whether the Validation Agent had a duty to investigate and also whether the Complainant should be given the opportunity to mend its hand, having made an error?\r\n\r\nThe Panel therefore determines that the Respondent was correct in its decision to refuse the Complainant’s application for registration under the Sunrise Rules and the Complaint is denied.\r\n\r\nFor completeness, as pointed out by the learned panellist in FESTOOL (ADR EU Case No. 01047) under s 26.2 of the Sunrise Rules, it is stated that “[t]he sole object and purpose of an ADR Proceeding against the Registry is to verify whether the relevant decision by the Registry conflicts with the Regulations.” In the definitions provided in the Sunrise Rules, “Regulations” are defined as “the .eu Regulation and the Public Policy Rules,” the former meaning EC Regulation 733\/2002 and the latter EC Regulation 874\/2004. Furthermore Article 22.11, second paragraph, of EC Regulation 874\/2004 also states that “[i]n the case of a procedure against the Registry, the ADR panel shall decide whether a decision taken by the Registry conflicts with this Regulation or with Regulation (EC) No 733\/2002.”\r\n\r\nIt would seem to follow that it is not within the jurisdiction of this Panel to address the claim that the Complainant makes to be entitled to registration of the domain name on the basis of the first-come-first-served principle.", "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": "2006-08-22 00:00:00", "informal_english_translation": "The Complainant was at all material times the owner of registered trade marks that would have satisfied the registration criteria under the Sunrise Rules viz. CTM 000774554 “PORTAS” registered as a figurative mark on 20 August 20, 2001 and German Registered Trade Mark 39815196.2 “PORTAS” which has been registered at the German Patent- and Trade Mark Office on 5 August 1998. \r\n\r\nHowever, due to a lack of expertise on the part of the Complainant, the documentary evidence with which the Validation Agent was provided contained only an extract of the Companies Register which was evidence of the Complainant’s rights in its trade name but not in any trade mark.\r\n\r\nNo investigation of the Complainant’s rights was carried out by either the Validation Agent or the Respondent.\r\n\r\nThe Respondent rejected the Complainant's application on the grounds that the Complainant had failed to submit documentary evidence which showed that it is the holder of a Prior Right.\r\n\r\nThe panel found that it was quite reasonable for the Validation Agent not to investigate further. There was no hint to the Validation Agent that the Complainant was the owner of Prior Rights in the form of a German Registered Trade Mark or a CTM registration, in such circumstances, it would be too much to expect the Validation Agent to investigate further.\r\n\r\nThe Panel therefore determined that the Respondent was correct in its decision to refuse the Complainant’s application for registration under the Sunrise Rules and the Complaint was denied.", "decision_domains": [], "panelist": null, "panellists_text": null }