{ "case_number": "CAC-ADREU-001802", "time_of_filling": null, "domain_names": [], "case_administrator": null, "complainant": [], "complainant_representative": null, "respondent": [], "respondent_representative": null, "factual_background": "This Complaint arises out of the interpretation and application of Commission Regulation (EC) No 874\/2004 of 28 April 2004 (“Regulation 874\/2004”) and the .eu Registration Policy and Term and Conditions for Domain Name Applications made during the Phased Registration Period (hereinafter “the Sunrise Rules”).\r\n \r\nArt. 10 (1) of said Regulation 874\/2004 provides that holders of prior rights recognised or established by national or Community law shall be eligible to apply to register domain names during a period of phased registration before general registration of .eu domain starts, and that prior rights shall be understood to include, inter alia, registered national and community trademarks.\r\n \r\nArt. 12(3) of said Regulation 874\/2004 provides that the request to register a domain name based on a prior right shall include a reference to the legal basis in national or Community law for the right to the name, as well as other relevant information, such as trademark registration number.\r\n \r\nRecital 12 of said Regulation 874\/2004 sets out the purpose of the phased registration period in the following terms: \r\n \r\n“In order to safeguard prior rights recognised by Community or national law, a procedure for phased registration should be put in place. Phased registration should take place in two phases, with the aim of ensuring that holders of prior rights have appropriate opportunities to register the names on which they hold prior rights. The Registry should ensure that validation of the rights is performed by appointed validation agents. On the basis of evidence provided by the applicants, validation agents should assess the right which is claimed for a particular name. Allocation of that name should then take place on a first-come, first-served basis if there are two or more applicants for a domain name, each having a prior right.”\r\n \r\nThe Sunrise Rules govern all applications during the phased registration period (vide Object and Scope).\r\n \r\nSection 3.1 (1) of the Sunrise Rules states that an application is only considered complete when the Applicant provides the Registry, via a registrar, with at least the following information, inter alia the full name of the Applicant.\r\n\r\nSection 11 (1) of the Sunrise Rules provides that \"[d]uring the first phase of the Phased Registration Period, only Domain Names that correspond to (i) registered Community or national trade marks or (ii) geographical indications or designations of origin, may be applied for by the holder ...of the Prior Right concerned…\"\r\n\r\nSection 13 (1) (ii) of the Sunrise Rules provides that \"[w]here the Prior Right claimed by an Applicant is a registered trademark, 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.\"\r\n \r\nSection 11 (3) the Sunrise Rules, the Applicant for a domain name must be the owner or licensee of the claimed Prior Right.\r\n \r\nThe Complainant is the Cantor Unternehmensberatung GmbH, a legal entity duly incorporated under the Laws of the Federal Republic of Germany. Its place of incorporation and principal place of business is Munich, Germany.\r\n\r\n\r\nThe Complainant is also holder of the German word mark “CANTOR” which has been registered for the Complainant under the registration no. 39849082.1 with priority from 27. August 1998. \r\n\r\n \r\nOn 13 December 2005, the Complainant applied to register the domain name during Phase I of the phased registration period.\r\n \r\nIn support of its application under the Sunrise Rules, the Complainant relied inter alia on said German word mark 39849082.1 “CANTOR as establishing its Prior Right. The Complainant's ownership of said word mark registration is not in dispute and the Complainant has submitted documentary evidence of said registration in the form of a copy of the original word Mark certificate in its possession. What is disputed is whether the documentary evidence submitted by BGC International, another applicant who submitted an application for on the 7th December, clearly evidences that the Applicant who submitted first (BGC International) did in fact have a prior right..\r\n\r\nThe Respondent refused to register the domain name in the name of the Complainant during the Sunrise Period on the grounds that on the basis of the first-come first serve rule, it had allocated the domain to BGC International on the basis that the documentary evidence furnished by BGC International had satisfied its validation agent", "other_legal_proceedings": "None that the Panelist is aware of", "discussion_and_findings": "The Panelist determines as follows:\r\n \r\nThe Panelist accepts the Complainant’s claim that it is the owner of the German word mark CANTOR . This material fact is not disputed by the Respondent. \r\n\r\nThe Panelist further accepts all arguments presented by the Complainant with respect to the inadequacy of a mere declaration that prior right exists (albeit signed by both parties) to satisfactorily prove prior right, which arguments are not contested by the Respondent.\r\n\r\nThe Panelist accepts the Respondent’s reasoning that the Applicant BGC International was eligible to apply for the domain name.\r\n\r\nThe Panelist further accepts the Respondent’s reasoning deeming irrelevan the Complainant’s allegation that the “application was an attempt at circumvention of EU regulation”\r\n\r\nThe Respondent did not address the main arguments raised by the Complainant by way of the two nonstandard communications of June and September 2006 that insufficient evidence was submitted to the validation agent since the licence agreement per se had not been produced and that the validation agent had relied on the declaration signed on 5th and 6th January 2006 to establish prior right for an application dated 7th December 2005.\r\n\r\n\r\nThe facts of the case demonstrate that the Complainant was the applicant during the phased registration period and that the Complainant is the owner of a Prior Right on which the application is based. The intended purpose of the phased registration period as set out in Recital 12 of said Regulation 874\/2004 was “to safeguard prior rights recognised by Community or national law”. \r\n \r\nIn the circumstances this Panelist is satisfied that on the particular facts of this case the Complainant complied with both the Regulation and the Sunrise Rules. On the other hand, the Respondent did not respond on the issue raised that a mere declaration form is insufficient evidence of the existence of a pre-existing license agreement granting prior right nor did it produce a copy of such licensing agreement dated prior to the 7th December 2005 as would be required by the regulations. \r\n\r\nIn the circumstances the decision of Respondent should be annulled and the Complainant’s requests accepted insofar as the domain name be made available for the next eligible applicant in the queue", "decision": "For all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the Panel orders that the EURID's decision be annulled and that the Registry without delay shall decide whether or not to register the domain name in the name of Unternehmensberatung GmbH of Germany as being the next applicant in the queue.\r\n \r\nThe above order by the Panel regarding registration of the domain name is explicitly given since the complainant has sought a direction pursuant to Section 27 of the Sunrise Rules that the Respondent’s decision be revoked and the panel allocate the Domain Name to the Complainant. In point of fact, the relevant paragraph of Section 27 (1) of the Sunrise Rules states:\r\n\r\nIf the ADR Proceeding concerns a decision by the Registry to register a\r\nDomain Name and the Panel or Panelist appointed by the Provider\r\nconcludes that that decision conflicts with the Regulations, then, upon\r\ncommunication of the decision by the Provider, the Registry will decide\r\nwhether or not to register the Domain Name in the name of the next\r\nApplicant in the queue for the Domain Name concerned, in accordance\r\nwith the procedure set out in these Sunrise Rules.\r\n\r\n\r\nUnder the circumstances, the Panel therefore cannot order automatic allocation of the domain name to the Complainant but restrict itself to the annulment of the decision regarding the application by BGC International. In terms of the relevant paragraph of 27 (1) as cited above, in the circumstances of the case, it is now at the discretion of the Registry to decide as to whether or not to register the domain name in the name of the Complainant even though the Panel is satisfied that prima facie the Complainant has adequately established prior right to that domain name in the course of the ADR proceedings", "panelists": [ null ], "date_of_panel_decision": "2006-10-05 00:00:00", "informal_english_translation": "The complainant challenged the acceptance by the Registry of the domain name application for “Cantor.eu” by BGC International and requested that the Registry’s decision be annulled and the domain name be made available to itself on account of its being the next eligible applicant in the queue.\r\n\r\nIn support of its application under the Sunrise Rules, BGC International relied on its licensing of Community trademarks for Cantor as establishing its Prior Right. The Complainant first objected that such trademark did not confer prior right to the domain name for the Applicant and should not have been accepted by the Registry. The Complainant further alleged that the applicant was a spin-off from a non-EU principal and that the application was an attempt to circumvent article 4 (2) (b) (i) of Regulation (EC) No 733\/2002 which requires that applicants be based in the EU.\r\n\r\nThe Panel considered that insufficient evidence was advanced to prove that the Validation Agent had in fact received adequate documentary evidence to establish the timely licensing of prior right to BGC International and accepted the Complainant’s contention that the documentary evidence establishing prior right to was insufficient and annulled the Registry’s decision. The Panel however held that, in the circumstances, the pertinent paragraph of 27 (1) of the Sunrise Rules did not grant the Panel the power to order automatic allocation of the domain name to the Complainant but left such registration at the discretion of the Registry in compliance with the same Sunshine rules.", "decision_domains": [], "panelist": null, "panellists_text": null }