{
    "case_number": "CAC-ADREU-001518",
    "time_of_filling": null,
    "domain_names": [],
    "case_administrator": null,
    "complainant": [],
    "complainant_representative": null,
    "respondent": [],
    "respondent_representative": null,
    "factual_background": "On December 7th, 2005 Barry Callebaut Services N.V (hereinafter “the Complainant”) filed a request for registration of the domain name “vanhouten.eu”. \r\n\r\nThe application was allegedly based on a right to a Community Trademark. The Complainant was granted this right by virtue of a license agreement between Complainant and Van Houten GmbH & Co. KG (hereinafter “the Licensor”).\r\n\r\nAccording to EURid (hereinafter “the Respondent”) they received the documentary evidence on 2 January 2006 consisting of an extract from the CTM-ONLINE database showing that the Licensor had applied for registration of a Community Trademark with the name of “Van Houten” (application no. 4 299 046 filed on 21 February, 2005). \r\n\r\nFurthermore, a License Declaration for the Community trademark application for “Van Houten” dated 12 January 2006 was submitted to the Respondent. \r\n\r\nThe Respondent rejected the request for registration of the domain name on the grounds that the documentary evidence submitted by the Complainant did not prove that the Complainant owned rights to a registered trademark.\r\n\r\nOn June 6th, 2006 Complainant filed a complaint to the Czech Arbitration Court. With the complaint the Complainant has submitted new documentary showing evidence that it held rights to several national trademark registrations of “Van Houten” when filing for registration of the disputed domain name.\r\n\r\nRespondent submitted the Response on August 8th, 2006, which was within the deadline of thirty working days after the delivery of the Complaint to the Respondent.",
    "other_legal_proceedings": "The Panel is not aware of any other legal proceedings relating to the disputed domain name.",
    "discussion_and_findings": "The present case raises the issue of whether or not an application for a CTM registration is sufficient evidence of the existence of a prior right and whether or not the Complainant can be allowed to submit new documentary evidence during the ADR-procedure.\r\n\r\nInitially, the Panel must stress that it has not received a copy from the Respondent of the documentary evidence originally submitted by the Complainant.\r\n\r\nHowever, the Panel understands that the documentary evidence submitted by the Complainant within the 40 days deadline consisted of an application for registration of the Community trademark “VAN HOUTEN” (no. 4 299 046, filed on 21 February, 2005 by Van Houten GmbH & Co. KG). Moreover, the Complainant did also submit additional evidence showing that the Complainant was the Licensee of the said trademark application. This License Declaration was signed on 12 January 2006 and received by Respondent on 13 January 2006.\r\n\r\nThe Complainant argues that the application for the trademark registration and the License Declaration together with the documents submitted during the course of this proceeding are evidence that Complainant holds a prior right to the name “Van Houten”.\r\n\r\nAccording to Article 10 (1) of the Regulation, “holders of prior rights recognised or established by national and\/or Community law and public bodies 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\nPursuant to Article 14 of the Regulation, “all 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\nFurthermore according to Article 14 of the Regulation, “every applicant shall submit documentary evidence that shows that he or she is the holder of the prior right claimed on the name in question”.\r\n\r\nPursuant to section 11 of the Sunrise Rules, the applicant must be the holder or Licensee of the prior right claimed no later than on the date on which the Application is received by the Registry.\r\n\r\nSection 13 (1) (ii) of the Sunrise Rules expressly emphasize that a trademark application is not considered a prior right.\r\n\r\nThis is supported by a number of cases including e.g. case no. 404 (ODYSSEY) in which the Panel agrees with the Respondent to reject the Complainant’s application for the domain name because the Complainant could only show evidence consisting of a Community trade mark application that had not reached registration before the filing date of the domain name application. In regard to this matter the Panel also refers to case no. 1407 (LEXOLUTION).\r\n\r\nThe documentary evidence, which the Complainant sent to the Respondent, did only consist of a trademark application, and a license agreement regarding the rights to this application. This evidence does not meet the requirements in the Regulation, and is therefore not sufficient evidence to prove a prior right to the domain name.\r\n \r\nThe fact that the trademark is now registered does not change the Panel’s view hereof.\r\n\r\nThe Complainant has subsequently during the ADR-procedure provided evidence proving that the Claimant actually is the holder of several national trademark registrations to the name “Van Houten” at the time of the application for the domain name. Complainant argues that the Complainant had a prior right - on the date of the application of the disputed domain name - by virtue of these national trademark registrations.\r\n\r\nThe submission of the new evidence raises the issue as to whether the Complainant should be allowed to present this new material to the Panel and whether the Panel can take the material into consideration when making its decision. Basically, the problem is whether it is the Panel’s role to determine if the Complainant did in fact have a right to vanhouten.eu based on the new material presented to the Panel, or whether it is to determine if the Respondent and the validation agent has complied with the Regulation based on the material which was presented to the Respondent and its agent.\r\n\r\nIt is the Panel’s view that the role of the Panel is to determine whether the Respondent has complied with the Regulation. Consequently, if the Panel admitted the new material as documentary evidence it would conflict with the first-come-first served principle and conflict with the legitimate expectations of the potential next applicant in line for the domain name. The Panel is aware that no applicant is in queue for the said domain name. However, this does not change the Panel’s view of the matter. Finally, it is the Complainant who has the burden of evidence for proving a prior right to the domain name, and the Complainant could have submitted the said new evidence of national trademark registrations within the 40 day period. The risk of not doing so must lie with the Complainant.\r\n\r\nThe Panel also refers to cases no. 219 (ISL), no. 294 (COLT), no. 706 (AUTOWELT), no. 865 (HI), no. 954 (GMP), no. 1275 (THUN) and no. 1549 (EPAGES).\r\n\r\nFor these reasons the Panel cannot admit the new evidence from the Complainant when making its decision.",
    "decision": "For all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the Panel orders that\r\n\r\nthe Complaint is Denied",
    "panelists": [
        null
    ],
    "date_of_panel_decision": "2006-09-05 00:00:00",
    "informal_english_translation": "On December 7th, 2005 the Complainant filed a request for registration of the domain name “vanhouten.eu”. \r\n\r\nThe Complainant was the first applicant in queue for the domain name.\r\n\r\nThe Prior right claimed was based on a license agreement to an application for a Community trademark.\r\n\r\nThe Respondent rejected the request for registration of the domain name on the grounds that the documentary evidence submitted by the Complainant did not prove that the Complainant owned rights to a registered trademark.\r\n\r\nOn June 6th, 2006 Complainant filed a complaint to the Czech Arbitration Court. With the complaint the Complainant has submitted new documentary showing evidence that it held rights to several national trademark registrations of “Van Houten” when filing for registration of the disputed domain name.\r\n\r\nThe Panel ordered the complaint to be denied, since a trademark application did not constitute a prior right according to the Regulation.\r\n\r\nFinally, the Panel did not admit the new evidence from the Complainant presented during the ADR procedure. Thus, it is the Panel’s view that the role of the Panel is to determine whether the Respondent has complied with the Regulation. Consequently, if the Panel admitted the new material as documentary evidence it would conflict with the first-come-first served principle and conflict with the legitimate expectations of the potential next applicant in line for the domain name. Finally, it is the Complainant who has the burden of evidence for proving a prior right to the domain name, and the Complainant could have submitted the said new evidence of national trademark registrations within the 40 day period. The risk of not doing so must lie with the Complainant.",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}