{
    "case_number": "CAC-ADREU-001760",
    "time_of_filling": null,
    "domain_names": [],
    "case_administrator": null,
    "complainant": [],
    "complainant_representative": null,
    "respondent": [],
    "respondent_representative": null,
    "factual_background": "This decision arises from a complaint filed by the Dutch foundation Stichting Nederlands Normalisatie-Instituut (\"the Complainant\"), against the decision by EURid (\"the Respondent\"), to register the domain name nen.eu (“the disputed Domain Name”) to a third party, Citadel 01 B.V. (\"Citadel 01\").\r\n\r\nOn 07 December 2005 at 11:00:50 am, Citadel 01 applied for the disputed Domain Name under the first part of the phased registration period. The mark on which Citadel 01 relied was the Benelux trade mark registration No. 777 073 \"N=&\" (word), registered on 10 November 2005. Documentary evidence of the registered trademark was submitted by the Complainant in due time. According to the registration excerpt, the owner of the Benelux mark was a company called \"Citadel 01 B.V.\".\r\n\r\nThe Respondent accepted the application on the basis that the right of Citadel 01 to the name had been proven.\r\n\r\nOn 07 December 2005 at 11:22:17 am, the Complainant also applied for the disputed Domain Name under the provisions of the first part of the phased registration period. The Complainant is now the next applicant in the queue for the disputed Domain Name (position two).\r\n\r\nOn 08 June 2006, the Complainant filed a complaint with the Czech Arbitration Court, asking to cancel the decision of the Respondent in accepting the application for the disputed domain name filed by Citadel 01 and to attribute the disputed Domain name to the Complainant.\r\n\r\nOn 12 June 2006, the Czech Arbitration Court informed the Respondent about the complaint and requested it to disclose information and documentary evidence related to the disputed Domain Name. On 19 June 2006, the Respondent provided the requested information and evidence. \r\n\r\nOn 23 June 2006, the ADR proceedings commenced.\r\n\r\nOn 10 August 2006, the Respondent submitted its response with the Czech Arbitration Court.\r\n\r\nOn 15 August 2006, the Czech Arbitration Court appointed Mr. André Pohlmann as sole Panelist in this matter. \r\n\r\nOn 22 August 2006, the Panel sent a non-standard communication to both parties inviting them to submit observations as to whether the Benelux trade mark \"N=&\" invoked by Citadel 01 as basis for the registration of the disputed Domain name meets the criteria for the registration of the Domain name. The Panel requested both parties to submit their observations by Monday, 04 September 2006.\r\n\r\nThe Complainant submitted a non-standard communication in reply to the Panel's request on 01 September 2006. The Respondent sent a non-standard communication on 04 September 2006.\r\n\r\nThe Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence in compliance with Paragraph B5 of the ADR Rules and Paragraph B(5) of the Supplemental ADR Rules.",
    "other_legal_proceedings": "The Panel is not aware of other legal proceedings which are pending or decided and which relate to the disputed Domain Name.",
    "discussion_and_findings": "The Complainant’s application is made pursuant to Article 22(1)(b) of EC Regulation No. 874\/2004, which provides that an ADR procedure may be initiated by any party where a decision taken by the Registry conflicts with this Regulation or with EC Regulation No. 733\/2002. Pursuant to Article 22(11) second subparagraph of EC Regulation 874\/2004, the sole purpose of these proceedings is accordingly to determine whether the decision taken by the Respondent was in accordance with EC Regulation No. 874\/2004 or with EC Regulation No. 733\/2002.\r\n\r\n1. The validity of the request submitted by Citadel 01\r\n\r\nAccording to Article 3 of EC Regulation No. 874\/2004, the request for domain name registration shall include all of the following:\r\n\r\n\"(a) the name and address of the requesting party;\r\n\r\n(b) a confirmation by electronic means from the requesting party that it satisfies the general eligibility criteria set out in Article 4(2)(b) of Regulation (EC) No 733\/2002;\r\n\r\n(c) an affirmation by electronic means from the requesting party that to its knowledge the request for domain name registration is made in good faith and does not infringe any rights of a third party;\r\n\r\n(d) an undertaking by electronic means from the requesting party that it shall abide by all the terms and conditions for registration, including the policy on the extra-judicial settlement of conflicts set out in Chapter VI.\r\n\r\nAny material inaccuracy in the elements set out in points (a) to (d) shall constitute a breach of the terms of registration.\"\r\n\r\nIn the case at hand, the request for the disputed Domain Name was made on behalf of Citadel 01. Thus, the copy of the request provided by the Respondent states under the point \"Naam van de Aanvrager (\"Aanvrager\"): Citadel 01 B.V.\" (\"name of the applicant: Citadel 01 B.V.\"). There is no indication that the person signing the request was not authorised to do so on behalf of Citadel 01. The Complainant itself emphasised that the person \"behind\" the allegedly fictitious name \"A. Verlinden\" mentioned in the request was Mr. Barend Hohmann, the director of Citadel 01. Consequently, Mr. Hohmann was authorised to sign the request on behalf of Citadel 01 even if he did not reveal his name in the application form. The request therefore complies with Article 3 of EC Regulation No. 874\/2004.\r\n\r\n2. The prior right invoked by Citadel 01\r\n\r\nThe issue of whether or not the prior Benelux trade mark \"N=&\" constitutes a valid basis for the registration of the disputed Domain Name under the phased registration was not raised by the parties but by the Panel itself. The Panel submitted a non-standard communication to the parties in accordance with Rule B8 of the ADR Rules. According to Rule B7 of the ADR Rules, the Panel shall conduct the ADR Proceedings in such a manner as it considers appropriate in accordance with the Procedural Rules. The Panel is not obliged, but is permitted in its sole discretion, to conduct its own investigations on the circumstances of the case. The Panel considers that there is nothing in the Procedural Rules prohibiting the Panel from deciding an ADR Proceeding based also on arguments and findings which had not been submitted by the Parties.\r\n\r\nThe relevant provisions of EC Regulation No. 874\/2004 which require particular consideration are the following:\r\n\r\nArticle 10(2): \"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\nArticle 11: […] \"Where the name 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\nSpecial character and punctuations as referred to in the second paragraph shall include the following:\r\n\r\n~ @ # $ % ^ & * ( ) + = < > { } [  ] | \\ \/:; ',. ?\r\n\r\n[…]\"\r\n\r\nArticle 14 seventh paragraph: \"The 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\nAs stated in Article 14 of EC Regulation No. 874\/2004, it is the obligation of the validation agent to examine whether \"the applicant that is first in line to be assessed for a domain name\" has prior rights on the claimed name. Article 14 seventh paragraph indicates that the validation agent has to exercise a certain degree of judgment when \"assessing\" and \"examining\" the prior right. This is also confirmed by Recital 12 of Regulation No. 874\/2004 which states that the validation agents should assess the right which is claimed for the domain name on the basis of the evidence provided by the applicant. When comparing the prior right and the applied domain name, the validation agent has to evaluate whether the domain name is covered by the scope of protection of the prior right (see Decision No. 394 of 02 June 2006 [FRANKFURT]). The Panel takes the view that such an assessment should have been exercised by the validation agents and that the disputed Domain Name should not have been accepted on the basis of the prior Benelux trade mark \"N=&\".\r\n\r\nIt is clear from Article 10(2) of EC Regulation No. 874\/2004 that only the holders of prior identical rights shall be eligible to apply for a domain name during the phased registration. Article 11 of EC Regulation No. 874\/2004 contains the following three exceptions from the general rule of identity between the prior right and the requested domain name:\r\n\r\n- Signs containing a space between the word elements of a prior right may be written with a hyphen between the word elements or combined in one word (Article 11 first paragraph).\r\n- Special characters may be eliminated, replaced with hyphens, or, if possible, rewritten under the conditions of Article 11 second paragraph.\r\n- Finally, letters which cannot be reproduced in ASCII code may be reproduced without the additional elements of the letters or replaced by conventionally accepted spellings if the requirements of Article 11 fourth paragraph are met.\r\n\r\nBeing an exception to the general rule of identity, Article 11 has to be interpreted in a restrictive manner. Variations from the prior right can only be accepted if the result of the modification is still covered by the scope of protection of the prior right. The Panel takes the view that the scope of protection of the prior Benelux trade mark \"N=&\" does not cover the sign \"NEN\". The relevant public for the assessment of the scope of protection of the prior sign is the public of the territory where the earlier sign is protected (here: the Benelux). The consumers in the Benelux would not refer to \"NEN\" when being confronted with the sign \"N=&\". They may refer to \"N is en\" or \"N est et\" (meaning \"N is and\" in English) but not to \"NEN\". Since the relevant public would not be in a position to associate the disputed Domain Name (\"NEN\") with the prior Benelux trade mark (\"N=&\"), the scope of protection of the latter does not include the disputed Domain Name. \r\n\r\nConsequently, Citadel 01 was not eligible to apply for the disputed Domain Name during the first part of the phased registration on the basis of the claimed prior Benelux trade mark. The decision of the Respondent to accept the application was in conflict with Article 10(2) and Article 11 of EC Regulation No. 874\/2004.",
    "decision": "For the reasons given above, and in accordance with Article 22(11) second subparagraph of EC Regulation No. 874\/2004 and Paragraph B11(c) of the ADR Rules, the Panel decides that \r\n\r\n- the decision of the Respondent to allow the application for the domain name nen.eu filed by Citadel 01 B.V. shall be annulled, and\r\n- the domain name nen.eu be attributed to the Complainant – being the next applicant in line for the registration of the disputed Domain Name - subject to its compliance with the general eligibility criteria set out in EC Regulation No. 874\/2004 and in EC Regulation No. 733\/2002.",
    "panelists": [
        null
    ],
    "date_of_panel_decision": "2006-08-21 00:00:00",
    "informal_english_translation": "This case concerns the question whether the Benelux trade mark \"N=&\" meets the criteria for the registration of the domain name \"NEN\". The Panel takes the view that the Respondent should not have accepted any of the three options for replacing or eliminating special characters at the free choice of the party requesting the domain name. Article 11 of EC Regulation No. 874\/2004 rather requires the validation agents to exercise a certain degree of judgment when comparing the claimed prior right with the applied domain name. This assessment has also to take into account whether the scope of protection of the claimed prior right covers the requested domain name.",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}