{
    "case_number": "CAC-ADREU-001523",
    "time_of_filling": null,
    "domain_names": [],
    "case_administrator": null,
    "complainant": [],
    "complainant_representative": null,
    "respondent": [],
    "respondent_representative": null,
    "factual_background": "The Complainant in this administrative proceeding is the city of Cologne in Germany. Cologne (in German: Köln, in Dutch: Keulen, in Spanish and Italian: Colonia) is the fourth largest city in Germany and the largest city in North Rhine-Westphalia (which is the largest state in the Federal Republic of Germany. \r\n\r\nThe city of Cologne holds the domain name cologne.de, which is used by its tourism office to present the city in the English language to visitors from all over the world.  Among the other domain names it possesses are stadt-koeln.de, koeln.de, koeln.eu, koeln.com, koeln.info, keulen.de, keulen.eu, stadtkoeln.eu, stadt-koeln.eu,” and also colonia.eu. \r\n \r\nThis dispute concerns the decision of EURid (the Registry of .eu domain names) to register the disputed domain name within the first Sunrise phase in favor of Traffic Web Holding B.V., and therefore, EURid is the Respondent.\r\n\r\nTraffic Web Holding owns the Benelux Trademark “COL&OGNE”, a Picture Mark which has been registered under registration no. 0785175 at the Benelux Patent- and Trademark Office. Traffic Web Holding is also owns a vast number of other Benelux Picture Marks, many of which concern well-known cities, countries and geographical regions. These trademarks show a great number of similarities. They share the fact that they contain the ampersand symbol as part of the protected mark, they are all picture marks, and they use the same graphical illustration. \r\n \r\nThe Complainant requests the annulment of the disputed decision taken by EURid and requests to receive the domain name cologne.eu.",
    "other_legal_proceedings": "As far as known to the Panel, no other legal proceedings concerning the disputed domain name are pending.",
    "discussion_and_findings": "1.\tInterpretation of Article 11 of the Regulation\r\n\r\nIn this ADR Proceeding, the Complaint and Response contained two different approaches to the interpretation of Article 11 of the Regulation. The Complainant interpreted Article 11 with a strong reference to Article 10 (2) of the Regulation. This approach has been applied in a number of ADR Decisions, notably in the first of that line of cases, the BARCELONA case (ADR 398).  \r\n\r\nThe Respondent, on the other hand, interpreted Article 11 independently of Article 10 (2). As stated in the Response in relation to the wording of Article 11.2, when the word “or” is used, it means that one has an unrestricted option. The use of the words “if possible” merely refers to the third option, rewriting the special character when possible, that is when the characters can be rewritten.  This is an option, not a task which is automatically imposed.\r\n\r\nThe Respondent also referred to a number of previous ADR Decisions, most notably the OXFORD decision (ADR 1867) issued by a three-member Panel. In addition, in support of its interpretation of Article 11 the Respondent argued that “in contrast to the Panel’s decision in BARCELONA, the validation agent cannot be expected to determine how the relevant public understands a certain trademark.” The Respondent argued that neither the validation agent nor the Panel can assess issues related to the character or “appearance” of a trademark without giving chance to the trademark holder to express his views on this subject.\r\n\r\nIn the Panel’s view, Article 10 (2) of the Regulation is the principle rule governing the Sunrise-related domain name registrations. This provision summarizes the substance of the Sunrise, i.e., the registration of domain names which correspond to protected, existing prior rights. Indeed, in the absence of Article 10 (2), the first-to-file principle would be the only governing principle of .eu domain name registrations, and the Sunrise would not exist. Article 10 (2) of the Regulation is the main differentiator between domain name registrations of the Sunrise period and those coming afterwards or the “land-rush” domain name registrations. \r\n\r\nTherefore, the Panel thinks that Article 10 (2) of the Regulation represents a general rule in relation to Sunrise domain name registrations. It spells out the identicality principle between the prior right and corresponding domain name.  Article 11 is a specific provision which contains rules on how to implement the general principle contained in Article 10 (2), in situations where the names to be registered as domain names include, among other things, special characters. The first words of Article 11 states: “As far as the registration of complete names is concerned….,” which clearly refers to the general rule in Article 10 (2) of the Regulation. The issue is that special characters as such cannot be simply reproduced in a domain name. \r\n\r\nArt. 11, par. 1, of the Regulation reads as follows: “as far as the registration of complete names is concerned, where such names comprise a space between the textual or word elements, identicality shall be deemed to exist between such complete names and the same names written with a hyphen between the word elements or combined in one word in the domain applied for.\r\n\r\nTherefore when we have a trademark comprising two name with a space between them Art.11 states that identicality ( this is the word used by the legislator) is maintained when the domain name is written with a hyphen or combined in one word. In relation to other characters Art.11.2 applies. \r\n\r\nArt. 11, par. 2 of the Regulation reads “where the names for which prior rights are claimed contains special characters, spaces or punctuations, these shall be eliminated entirely from the corresponding domain name, replaced with hyphens or, if possible, rewritten”.\r\n\r\nWhen it is possible a domain name has to be rewritten otherwise those characters could be eliminated or replaced with a hyphen. In the second paragraph there is no “presumption of identicality” (as it was the case of Art.11.1) and therefore the three options offered by the second paragraph of art.11 have to be read in the light of the superior principle of identicality. Those solutions are possible as far as identicality between the trademark claimed and the domain name requested is maintained.\r\n\r\n& is one of those characters.\r\n\r\nFrom the above-mentioned laws it seems very clear that there must be “identicality” between trademarks and the requested domain names. The said provisions are guidelines to follow in order to achieve that aim: identity between prior rights and domain name. \r\n\r\nArt. 11 offers a choice of three solutions in order to convert a trademark which has special characters or punctuations as indicated in the same provision. & is one of those. In these instances, the special characters or punctuations have to be (i) eliminated entirely from the corresponding domain name, (ii) replaced with hyphens, or, if possible, (iii) rewritten.\r\n\r\nThe best decision has to be taken in order to maintain the identity rule between trademark and domain name, taking into consideration that, if possible, the domain should be rewritten in order to meet the identity rule.\r\n\r\nWhat does identity mean? In any dictionary one can find that identity means: “The quality or condition of being exactly the same; identicalness, oneness, sameness, selfsameness. Therefore, the “exact sameness of the things compared” needs to be stressed.\r\n\r\nA strict interpretation is consistent with the legal rationale of the sunrise provisions. The issue of identity was very clearly explained by the Advocate General, Mr. Jacobs, in his Opinion of 17 January 2002 in the European Court of Justice Case: C-291\/00 between S.A S.A. Société LTJ Diffusion vs. SA SADAS. In relation to art. 4 (1) and 581) (a), he declared that “in principle, any difference, whether it might be viewed as adding, removing or modifying any element, must involve loss of identity. And further “yet there may be slight differences between trade marks so that the two are not rigorously identical, but nonetheless remain difficult to distinguish from one another”.\r\n\r\nTherefore, the Panel believes that in this case, too, the concept of identity has to be construed strictly, but, at the same time, it should not take into account minimal or insignificant changes which are not noticeable. \r\n\r\nIn practical terms, if a trademark is composed of two names with autonomous meanings and recognition by an average person of their individuality, then keeping or eliminating the “&” character does not alter the identity rule. Procter & Gamble or ProcterGamble.eu are recognised as the same, on the contrary COL&OGNE and COLOGNE are different enough to be considered not identical.\r\n\r\nAs stated in the recent ADR Decision 2185 (ANTWERP, ANTWERPEN), “the list of typographical symbols listed in Article 11 (2) are accorded very different treatment in practice and no provision is made for this by the wording of the Article. In particular, some typographical symbols would be accorded much greater significance than others when determining what would constitute the “complete name” which is to form the basis of the registration of the prior right under Article 10.2.” The Panel in ADR 2185 then provides examples of different special characters such as “!” or “[” or currency symbols and discusses how the general public would understand such symbols in a mark. \r\n\r\nThe Panel then continues that “the use of the ampersand is generally accorded still greater significance than other types of special characters. It is not usually disregarded when considering what constitutes a complete name. To take a specific example, the leading UK retailer Marks & Spencer has its website at MarksandSpencer.com. It would generally be considered that its complete name is Marks & Spencer (or, perhaps, Marks and Spencer) but not MarksSpencer. To this extent, Article 10.2 and Article 11.2 are in conflict because Article 10.2 requires the registration of the complete name but Article 11.2 does not.  On the face of it, Article 11.2 reflects the fact that different typographical symbols will be accorded a different weight in determining what constitutes the complete name.” \r\n\r\nThe Panel agrees with these arguments. In the Panel’s view, it is possible to conclude that Article 11 represents a necessary exception to the general rule of correspondence between the domain name claimed and the protected prior rights. \r\n\r\nBeing an exception to the general rule, Article 11 of the Regulation should be interpreted restrictively so that it is as narrow as possible. Therefore, the Panel thinks that the interpretation of Article 11 proposed by the Complainant is more sound than the view of the Respondent. If Article 11 were to be interpreted as the Respondent suggests, the whole system of Sunrise registrations would become vulnerable, and the sole governing rule of domain name registrations would be the first-to-file principle. The Panel thinks that those who drafted the Regulation could not have had this in mind when writing Article 11.  \r\n\r\nThe Respondent also states that the validation agent cannot assess how the general public would understand the prior right trademarks without allowing the trademark owners to express their views. The main duties of EURid, as the Registry, are contained in the final paragraph of Article 14 of the Regulation 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 in accordance with the procedure set out in the second, third and fourth paragraphs.”\r\n\r\nAs follows from this provision, EURid must assess whether or not the applicant demonstrated his prior rights in accordance with the Regulation. This obligation on the Registry means that, inevitably, EURid must assess whether or not the desired domain name in the application for registration constitutes a complete name for which prior rights exist. \r\n\r\nThe Panel thinks that EURid has regularly assessed the “appearance” of a presented trademark against the domain name sought in accordance with the Regulation. For example with respect to figurative\/composite trademarks, such an assessment is performed by EURid and its validation agent. Inevitably, EURid has been assessing special characters as well. The purpose of ADR Proceedings against EURid is solely to decide whether or not EURid complied with this obligation. The Regulation defines two types of ADR Proceedings, one against the Registry and one against domain name holders. The Regulation defines these two types of ADR Proceedings in order to achieve the necessary efficiency and swiftness which is expected from domain name ADR. In the Panel’s view, the Respondent’s argument about the need for the trademark owners being a Party to the ADR Proceedings against the Registry is interesting but is not based on the Regulation.\r\n\r\nTherefore, the Panel concludes that EURid did not assess the application of Traffic Web Holding correctly and in line with Article 11 of the Regulation.\r\n\r\n2.\r\nFor the sake of completeness, the Panel also discussed the two additional grounds for annulling the disputed decision of EURid mentioned by the Complainant, namely that (i) the word element contained in the figurative trademark of Traffic Web Holding is not predominant feature of the trademark; and (ii) the domain name application by Traffic Web Holding was made in bad faith. In both instances, the Panel upheld the arguments proposed by the Respondent, considering both of the additional arguments by the Complainant not well founded in this ADR Proceedings.\r\n\r\n3.\r\nIn his Complaint, the Complainant requests that the EURid decision be annulled and the disputed domain name cologne.eu be registered in favor of the Complainant—being the next applicant in the queue. In accordance with Section 27 of the Sunrise Rules, the Panel cannot order the automatic registration of the disputed domain name for the Complainant because this issue must be decided by EURid, in accordance with the procedure set out in the Sunrise Rules.",
    "decision": "For all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the ADR Rules, the Panel orders that EURid’s decision be annulled and that the Registry, without delay, decide whether or not to register the domain name cologne.eu in the name of Stadt Koeln of Germany—being the next applicant in the queue.",
    "panelists": [
        null
    ],
    "date_of_panel_decision": "2006-10-15 00:00:00",
    "informal_english_translation": "The Complainant, the city of Cologne, filed a Complaint against a decision of EURid to register a domain name “cologne.eu” in favour of Traffic Web Holding B.V. based on its Benelux trademark “COL&OGNE”. The most important discussion in the present ADR Proceeding was about the interpretation of Article 10(2) and Article 11 of the Commission Regulation (EC) No 874\/2004 (Regulation). \r\n\r\nThe Panel thinks that Article 10 (2) of the Regulation represents a general rule in relation to Sunrise domain name registrations. It spells out the identicality principle between the prior right and corresponding domain name.  Article 11 is a specific provision which contains rules on how to implement the general principle contained in Article 10 (2), in situations where the names to be registered as domain names include, among other things, special characters. \r\n\r\nArt. 11, par. 1, of the Regulation reads as follows: “as far as the registration of complete names is concerned, where such names comprise a space between the textual or word elements, identicality shall be deemed to exist between such complete names and the same names written with a hyphen between the word elements or combined in one word in the domain applied for.\r\n\r\nTherefore when we have a trademark comprising two name with a space between them art.11 states that identicality ( this is the word used by the legislator) is maintained when the domain name is written with a hyphen or combined in one word. In relation to other characters Art.11.2 applies. \r\n\r\nArt. 11, par. 2 of the Regulation reads “where the names for which prior rights are claimed contains special characters, spaces or punctuations, these shall be eliminated entirely from the corresponding domain name, replaced with hyphens or, if possible, rewritten”.\r\n\r\nIn the second paragraph there is no “presumption of identicality” (as it was the case of art.11.1) and therefore the three options offered by the second paragraph of art.11 have to be read in the light of the superior principle of identicality. \r\n\r\nThose solutions are possible as far as identicality between the trademark claimed and the domain name requested is maintained.\r\n\r\nArt. 11.2 offers a choice of three solutions in order to convert a trademark which has special characters or punctuations as indicated in the same provision. & is one of those. In these instances, the special characters or punctuations have to be (i) eliminated entirely from the corresponding domain name, (ii) replaced with hyphens, or, if possible, (iii) rewritten. The best decision has to be taken in order to maintain the identity rule between trademark and domain name, taking into consideration that, if possible, the domain should be rewritten in order to meet the identity rule.\r\n\r\nThe Respondent also stated in its Response that the validation agent cannot assess how the general public would understand the prior right trademarks without allowing the trademark owners to express their views. The main duties of EURid, as the Registry, are contained in the final paragraph of Article 14 of the Regulation 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 in accordance with the procedure set out in the second, third and fourth paragraphs.”\r\n\r\nAs follows from this provision, EURid must assess whether or not the applicant demonstrated his prior rights in accordance with the Regulation. This obligation on the Registry means that, inevitably, EURid must assess whether or not the desired domain name in the application for registration constitutes a complete name for which prior rights exist. \r\n\r\nThe Panel thinks that EURid has regularly assessed the “appearance” of a presented trademark against the domain name sought in accordance with the Regulation. For example with respect to figurative\/composite trademarks, such an assessment is performed by EURid and its validation agent. Inevitably, EURid has been assessing special characters as well.\r\n\r\nThe Panel ordered that EURid’s decision be annulled and that the Registry, without delay, decide whether or not to register the domain name cologne.eu in the name of Stadt Koeln of Germany—being the next applicant in the queue.",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}