{
    "case_number": "CAC-ADREU-001612",
    "time_of_filling": null,
    "domain_names": [],
    "case_administrator": null,
    "complainant": [],
    "complainant_representative": null,
    "respondent": [],
    "respondent_representative": null,
    "factual_background": "On December 21, 2005, 13:36:20.811, the Complainant has filed an application to register the disputed domain name “acer.eu”. The application took place during the so called “Phase I”, i.e. the first part of the phased registration (“Sunrise”) period. The Complainant’s application was second out of three to be received by the Respondent (EURid) for the domain name. As the first in the ranking has not managed to file the necessary documents in time, the Complainant got the first position in this registration process.\r\n\r\nThe Complainant claimed that it has a prior right on the term “ACER” because of a registered national trademark and submitted as documentary evidence via his Registrar VeriSign Digital Brand Management Services the Community trademark application 004373239 “ACER” and a licence declaration (stating, that the Complainant is licensee of the “registered” trademark). The documentary evidence was received by the Respondent on January 7, 2006, which was before the January 30, 2006 deadline. Following an assessment of the documentary evidence by the Validation Agent, the Respondent rejected the Complainant’s application for domain name.\r\n\r\nOn May 30, 2006, the Complainant filed his Complaint with the Czech Arbitration Court. On June 06, 2006, the Respondent submitted a Nonstandard Communication containing its answer to the request for verification and, as an attachment, the documentary evidence filed by the Complainant in support of his application. On July 25, 2006, the Respondent submitted its Response to the Czech Arbitration Court. On August 3, 2006, having received the Statements of Acceptance and Declaration of Impartiality, the Czech Arbitration Court appointed the members of the panel, to which the case file was transmitted on August 7, 2006.",
    "other_legal_proceedings": "None that the Panel is aware of.",
    "discussion_and_findings": "The central question of the case is whether a domain name application based on a trademark application which subsequently becomes registered prior to the decision of the Registry rejecting the domain name application, was in accordance with the applicable EC Regulations, and therefore the Respondent’s decision to reject the application was not in accordance with the Regulations. According to Art. 22 (1) (b) Commission Regulation (EC) No 874\/2004 (Public Policy Rules) a party is, following the decision by the Respondent to reject a domain name, entitled to initiate an ADR proceeding against the Registry on the grounds of non-compliance of that decision with the Regulations under Article 22 (11). Such an ADR proceeding against the Registry is limited to the question of whether or not the decision taken by the Registry conflicts with the Public Policy Rules or the Regulation 733\/2002.\r\n\r\nThe Domain Name “acer.eu” was applied for by the Complainant during of “Phase I”, i.e. the first part of the phased registration (“Sunrise”) period. The purpose of the phased registration period is according to statement 12 of the Public Policy Rules inter alia “…to safeguard prior rights recognised by community or national law.” Article 12 of the Public Policy Rules sets out the principles for phased registration and states that under Phase I Sunrise “…only registered national and Community trademarks, geographical indications, and the names and acronyms referred to in Article 10 (3), may be applied for as domain names by holders or licensees of prior rights and by the public bodies mentioned in Article 10 (1). During the second part of phased registration, the names that can be registered in the first part as well as names based on all other prior rights can be applied for as domain names by holders of prior rights on those names.”\r\n\r\nArticle 10 (1) of the Public Policy Rules states that “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. ‘Prior rights’ shall be understood to include, inter alia, registered national and community trademarks, geographical indications or designations of origin, and, in as far as they are protected under national law in the Member-State where they are held: unregistered trademarks, trade names, company names” etc.\r\n\r\nArticle 14 of the Public Policy Rules states that 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. 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. Paragraph 4 of Article 14 of the Public Policy Rules makes it clear that it is up to the domain name applicant to substantiate ownership of the prior right.\r\n\r\nArticle 12 (1) of the Public Policy Rules states, that the Registry (i.e. the Respondent) shall publish on its website a detailed description of all the technical and administrative measures that it shall use to ensure a proper, fair and technically sound administration of the phased registration period. These measures have been set out in the Sunrise Rules.\r\n\r\nAccording to Section 11 of the Sunrise Rules only domain names that correspond to either registered Community or national trade marks or geographical indications or designations of origin may be applied for during the first phase of the Phased Registration Period by the holder and\/or licensee of the prior right concerned. During the second phase of the Phased Registration Period, Domain Names that correspond to the types of prior rights listed in Section 11 (1) or other types of prior rights may be applied for by the holder of the prior right concerned. The applicant must according to Section 11 (3) be the holder (or licensee) of the prior right claimed no later than the date on which the application is received by the Registry, on which date the prior right must be valid, which means that it must be in full force and effect.\r\n\r\nSection 13 (1) (i) states that where the prior right claimed by an applicant is a registered trade mark, the trade mark must be registered by a trade mark office in one of the member states, the Benelux Trade Marks Office or the Office for Harmonisation in the Internal Market (OHIM), or it must be internationally registered and protection must have been obtained in at least one of the member states of the European Union. Section 13 (1) (ii) of the Sunrise Rules expressively states that a mere trade mark application is not considered a Prior Right. Section 13 (2) of the Sunrise Rules states that it is sufficient to submit as documentary evidence for a registered trade mark inter alia an extract from an official (on-line) database operated and\/or managed by the OHIM. \r\n\r\nComplainant’s documentary evidence contained an extract from the OHIM database showing that a CTM “ACER” has got the trademark Nr. 004373239 and was filed on April 5, 2005. The status of the trademark according to this filed document was “application published”. It is therefore clear, that the OHIM database extract supplied by the Complainant failed to substantiate a legally valid prior right for the reasons set out below.\r\n\r\nFurther, the OHIM database extract also details the date of publication of the CTM application as being September 26, 2005. Under Council Regulation (EC) No 40\/94 of December 20, 1993 on the Community trade mark (CTMR), and in particular Article 42 CTMR, there is a provision for a 3 month CTM opposition period from date of publication of the application in the Community Trade Mark Bulletin, during which time a CTM application may be opposed on the relative grounds for refusal. It is only following this 3 month period, and where no notice of opposition has been filed (or all oppositions have been rejected), that a CTM application may proceed to registration, on payment of the registration fee (Article 45 CTMR). Accordingly, as the publication date was September 26, 2005, then at the precise date of the domain name application, December 21 2005, the Complainant’s CTM application would still have been in the 3 month opposition period and could not have been considered by the validation agent to be a valid registered right that was in full force and effect. The Complainant itself admits that the CTM 004373239 “ACER” was registered on March 3, 2006, more than two month after the application for the disputed domain name.\r\n\r\nIt is widely accepted, inter alia by the Panels in case Nr. 119 “NAGEL” and case Nr. 404 “ODYSSEY”, that an applicant should comply with the Sunrise Rules. In case Nr. 404, the Panel examined a near-identical factual construction, where the domain name applicant had only submitted a domain name application as documentary evidence (although, also there, the trademark had been registered between the domain name application and the decision of the Respondent). The Panel in case Nr. 404 correctly decided, that a trademark application does not constitute a prior right, and it is irrelevant whether the trademark application has become a registered trademark after the domain name application. \r\n\r\nThe documentary evidence submitted by the Complainant shows that it did not own or is a licensee of a registered trademark at the date of its domain name application. The Complainant does not even dispute that he applied for domain name only on a basis of a trademark application at the date of his application. Contrary to the Complainant's assertions, the Regulation and Sunrise Rules clearly and expressly provide that only registered trademarks may be taken into account by the Respondent when assessing a domain name application.\r\n\r\nFurther, the wording of the Sunrise Rules is very clear: Section 11 (1) states that during the first phase of the phased registration period, only Domain Names that correspond to…(i) registered Community or national trade marks… may be applied for by the holder and\/or licensee of the prior right concerned. And Paragraph 3 of Section 11 states that the applicant must be the holder (or licensee) of the prior right claimed no later than the date on which the application is received by the Registry, on which date the prior right must be valid, which means that it must be in full force and effect.’ Further, Section 13 (1) (i) of the Sunrise Rules relating to “Registered Trade Marks” specifically states that “A TRADE MARK APPLICATION IS NOT CONSIDERED A PRIOR RIGHT”.\r\n\r\nAs the Complainant argues however that a trademark application confers on the applicant a right of priority from the date of such trademark application, the Panel finds that this does not constitute a prior right by the means of the neither the Public Pulicy Rules nor the Sunrise Rules. \r\n\r\nConcerning the Complainant’s argument that the vested legal expectancy evidenced by the October 10, 2005 online database extract of CTM 004373239 \"ACER\" should be treated in the same way as a non registered trademark with the documentary evidence being submitted from the verifiable database of a Community Authority (OHIM) being fully sufficient the Panel finds that neither has the Complainant claimed the disputed domain name specifically on the basis of such type of rights nor has it submitted the necessary evidence. Section 15 of the sunrise rules states that if an applicant claims a prior right to a name on the basis of either a well-known unregistered trade mark or an unregistered trade mark, it would be necessary to prove the existence of such prior right in accordance with Sections 12 (2) or 12 (3), without there being an obligation to provide the documentary evidence referred to in Section 12 (1). Section 12 (2) asks for a copy of a relevant final judgment by a court or an arbitration decision stating that the applicant has protection for the complete name for which a prior right is claimed. Section 12 (3) states that if, under the law of the relevant member state, the existence of the prior right claimed is subject to certain conditions relating to the name being famous, well known, … or the like, the applicant must submit either an affidavit signed by a competent authority, legal practitioner, or professional representative, accompanied by documentation supporting the affidavit or a relevant final judgment by a court or an arbitration decision stating that the name for which a prior right is claimed meets the conditions provided for in the law of the relevant member state in relation to the type of prior right concerned. As the Complainant has failed to submit such documentary evidence with its application he may not claim the disputed domain name on such grounds. The same goes for a claim based on company names, trade names, etc. for which the Complainant has failed to submit documentary evidence as declared necessary in Section 16 (4) and (5) of the Sunrise rules either.\r\n\r\nAs a result, the fact that the Complainant's CTM application had not reached registration on or before the application date meant that it was not a valid prior right for the purposes of validation of the domain name application under Phase I Sunrise. The Respondent and a registrar are two different entities in the framework of the registration process, so the Respondent can in the case in hand not be held responsible for mistakes which the Complainants’s registrar has made.\r\n\r\nHaving reviewed the documentary evidence supplied by the Complainant, and having considered all other documents in the case file in this Complaint, this Panel finds that the Respondent’s decision to reject the Complainant’s application for the disputed domain name “acer.eu” was correct, and that it was not in conflict with the Regulations. \r\n\r\nRemark: \r\nThe Respondent has mentioned in its Response that the filed trademark was applied with the “German Trademark and Patent Office”, which seems obviously to be a mistake. The Panel has investigated on this matter and found no “ACER” trademark application with the German Trademark and Patent Office in the relevant period of time. So this obvious mistake was not taken into account when the Panel reached its decision.",
    "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": "2006-09-01 00:00:00",
    "informal_english_translation": "The Complainant filed an application to register the disputed domain name “acer.eu” during Sunrise Period I. It then submitted within the 40 day deadline to the Validation Agent as documentary evidence. its application for a Community Trade Mark for “ACER” in Class 36 which pre-dated the domain name filing date. However, the Complainant’s CTM application had not reached registration by the filing date of the domain name application. As such, the evidence of the Complainant's CTM application was insufficient to substantiate a valid prior right for the purpose of validation of the domain name application. The fact that the Complainant’s CTM application has reached registration since the domain name application date is irrelevant. \r\n\r\nThe Panel agrees with the Respondent’s decision to reject the Complainant’s application for the domain name as the Registrant failed to substantiate a valid prior right. Article 12 of the Public Policy Rules makes it clear that, in cases such as this, the prior right in question must have been a registered trade mark. \r\n\r\nThe Respondent was correct in rejecting the Complainant’s domain name application, and its decision was not in conflict with the Regulations. \r\n\r\nThe Complaint is denied.",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}