{
    "case_number": "CAC-ADREU-001427",
    "time_of_filling": null,
    "domain_names": [],
    "case_administrator": null,
    "complainant": [],
    "complainant_representative": null,
    "respondent": [],
    "respondent_representative": null,
    "factual_background": "On December 7, 2005, the Complainant filed a request for registration of the domain name <bonollo.eu> in the name of “Distellerie Bonollo Spa”. \r\n\r\nOn January 4, 2006, the Respondent received documentary evidence consisting of a trademark certificate of the European (composite) trademark No 002109155.\r\n\r\nThe Respondent rejected the request for registration on the grounds that the Complainant did not have a prior right to the name BONOLLO due to an error in the transcription of the composite trademark.\r\n\r\nThe Complainant filed a Complaint against the Respondent which was received by the Czech Arbitration Court (“CAC”) on May 29, 2006. CAC notified the Complainant on June 19, 2006 that the hardcopy of the Complainant was not submitted on the prescribed form and did not identify the Registrar. The Complainant submitted an amended Complaint which was received by CAC on June 27, 2006. After the compliance review, CAC declared that the formal date of the commencement of the ADR proceeding was June 29, 2006.\r\n\r\nThe Respondent submitted a Response which was received by CAC on August 18, 2006.\r\n\r\nOn August 25, 2006 CAC appointed David Štros, Enrique Batalla and Johan Sjöbeck as panellists.",
    "other_legal_proceedings": "There are no other legal proceedings of which the panel is aware that are pending or decided and that relate to the disputed domain name.",
    "discussion_and_findings": "Article 22 of the Commission Regulation (EC) No 874\/2004 of 28 April 2004 states that in 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 of 22 April 2002 on the implementation of the .eu Top level Domain.\r\n\r\nThe Complainant’s application for the domain name <bonollo.eu> was rejected by the Respondent with reference to article 10(2) of Regulation (EC) No 733\/2002 which 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(1) of the Sunrise Rules states that “registration of a Domain Name on the basis of a Prior Right consists in the registration of the complete name for which the Prior Right consists, as manifested by the Documentary Evidence. It is not possible for an Applicant to obtain registration of a Domain Name comprising part of the complete name for which the Prior Right exists”.\r\n\r\nMoreover, Section 19(2) of the Sunrise Rules states that “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(ii) the word element is predominant, and can be clearly separated or distinguished from the device element,   \r\n\r\nprovided that   \r\n\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\r\n(b) 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 trademark upon which the domain name application was based consists of a composite sign including words and devices. More specifically, the trademark consists of 1) a graphic device element, 2) the word “BONOLLO” where the fourth letter “O” is enlarged and the words “DISTILLERIE BONOLLO S.p.A”. Thus, it is clear that the Complainant’s trademark can not be considered a sign that exclusively contains a name, as described in Section 19(2)(i).\r\n\r\nThe question therefore arises, whether the word “BONOLLO” can be considered the predominant word element which can clearly be separated of distinguished from the device element as described in Section 19(2)(ii). In addition to the condition above, Section 19(2) provides two additional conditions that must be fulfilled in order to register a domain name under the Sunrise Rules. One of these conditions is that 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\nThe words “Bonollo” and “Distillerie Bonollo S.p.A.” are part of the composite trademark but are not all contained in the domain name <bonollo.eu> that the Complainant applied for during the phased registration period. According to Section 19(4) of the Sunrise Rules, the company type may be omitted from the complete name for which the prior right exists. Thus, the company type “S.p.A.” could be excluded from the composite trademark. \r\n\r\nHowever, even if the company type “S.p.A.” is omitted from the complete name of the prior right, the words “Distillerie Bonollo” remain in the composite sign but are not contained in the domain name applied for. \r\n\r\nIt has been argued by the Complainant that only distinctive elements of a composite sign must be included in the domain name. This is contrary to the wording in Section 19(2) of the Sunrise Rules and Article 10(2) of Regulation (EC) No 733\/2002. If there would be exceptions in favour of the Applicant, allowing words of a descriptive and\/or informative character to be excluded from a composite trademark on a subjective basis, it would affect the legitimate expectancy of the next Applicant in the queue for the domain name in question and conflict with the first come first served principle set out in Article 14 of the Commission Regulation (EC) No 874\/2004.\r\n\r\nHaving all of the above in mind, the Panel finds that not all alphanumeric characters of the composite sign are contained in the domain name applied for and that the decision taken by the Respondent to reject the Complainants domain name application does not conflict with the Commission Regulation (EC) No 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": "2006-09-18 00:00:00",
    "informal_english_translation": "The Complainant’s application for the domain name <bonollo.eu> was rejected by the Respondent with reference to article 10(2) of Regulation (EC) No 733\/2002 which 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\nThe Complainant is the owner of a European composite trademark consisting of words and devices. The Complainant alleges that indistinctive elements of composite signs registered as trademarks may be registered as a part of the trademark as a whole, but there is no obligation to include them into the registration. The Complainant requests that the Respondent’s decision to reject the application of the domain name is annulled. \r\n\r\nThe panel finds that not all alphanumeric characters of the composite sign are contained in the domain name applied for and that the decision taken by the Respondent to reject the Complainant's domain name application does not conflict with the Commission Regulation (EC) No 874\/2004. Therefore, the Complaint is denied.",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}