{
    "case_number": "CAC-ADREU-001867",
    "time_of_filling": null,
    "domain_names": [],
    "case_administrator": null,
    "complainant": [],
    "complainant_representative": null,
    "respondent": [],
    "respondent_representative": null,
    "factual_background": "The Complainant is “The Chancellor Masters & Scholars of the University of Oxford, t\/a Oxford University Press”.\r\n\r\nThe Complainant first applied for the Domain Name on 07\/12\/2005 but, owing to an administrative error, it did not provide the Documentary Evidence supporting its application within the stated deadline.  Thus, this application expired.  \r\n\r\nThe Complainant applied again for the same Domain Name on 22\/03\/2006 (“the Second Application”) under the name Oxford University Press.\r\n\r\nThe Complainant applied again on 05\/04\/2006 (“the Third Application”) under the name The Chancellor, Masters & Scholars of the University of Oxford, t\/a Oxford University Press. (It must be stressed that based on Complainant’s explanation, ‘Oxford University Press’ on the one side, and The ‘Chancellor, Masters & Scholars of the University of Oxford, t\/a Oxford University Press’ on the other side, are one and the same).\r\n\r\nSadly enough for Complainant, in the intervening period between the expiration of the First Application and the making of the Second and Third Applications, Parknet, a Dutch company, applied for the Domain Name.  Parknet’s application was supported by a Benelux trade mark registration for “OXF & ORD”. This trade mark was applied for on 28\/2\/06 and granted on 2\/3\/06.  In other words, the trade mark was applied for and obtained during the Sunrise period. \r\n\r\nThe Complainant explains that it tried (directly or through its lawyers) to get in touch with Parknet without any success. The Complainant’s solicitors have written to Parknet twice to discuss the transfer of the Domain Name to the Complainant.  A letter was sent on 18 April 2006 and an email was sent on 12 June 2006.  The email was copied to Parknet’s Registrar.  Copies of these communications are at Annex 6 of the Complaint.  On June, 15th, Parknet’s Registrar contacted the Complainant’s solicitor by email and the Complainant’s solicitor telephoned Mr R. B. of the Registrar and explained that the Complainant was intending to file urgently a Complaint in relation to the Domain Name because there was an appeal deadline of 17 June 2006.  Mr R. B. said that ‘Mr Parknet’ did not speak very good English but that he could act as a go-between.  However, Mr Broekman advised that in the time available he would not be able to seek any instructions from ‘Mr Parknet’.  Complainant explains that in the circumstances, it has been left with no choice but to file this Complaint.\r\n\r\nWhois database shows that 7 different applications has been made for this domain name.\r\n\r\nThe first 4 applications expired.\r\n\r\nApplication #5 is in the name of Parknet’s.\r\n\r\nApplication #6 is in the name of Oxford University Press Ltd. \r\n\r\nApplication #7 is in the name of The Chancellor Masters & Scholars of the University of Oxford, t\/as Oxford University Press.",
    "other_legal_proceedings": "None",
    "discussion_and_findings": "This procedure is a Sunrise Appeal, and not a so-called “article 21” procedure in which the Complainant has to prove Domain Name holder’s absence of right or legitimate interest, or Domain Name holder’s bad faith.\r\n\r\nComplainant has persuasively argued that it was first incorporated in England by Royal Charter in 1357, and subsequently incorporated under the Oxford & Cambridge Act 1571 (13 Eliz C29).  Oxford University Press (“OUP”) is a department of The Chancellor, Masters and Scholars of the University of Oxford (“the University”) and is not a separate legal entity from the University.  “Oxford University Press” is a trade name of the Complainant used in relation to its diverse publishing program and on-line materials. OUP has been operating as a publisher since 1668 and claims to be now the largest university press in the world.  OUP publishes over 4,500 new books a year, has a presence in over 50 countries, and employs some 4,800 people worldwide.\r\n\r\nAs far as Complainant’s trade mark is concerned, Complainant has persuasively argued (and proved, notably with a Declaration of Roger Boning, former Chief Financial Officer of OUP, in support of Motion for Summary Judgment in the case of Babowal & Associates, Inc v University of Cambridge Local Examination Syndicate and Others in the United States District Court for the Northern District of California, San Jose Division; Case No C-00-20140 JF-RS) that the OXFORD mark was first used in around 1675 as an imprint on books produced by the University.  \r\n\r\nAlso, the Complainant has satisfactorily proven that it is the owner of several national trade marks for OXFORD (notably Community Trade Mark number 504589 in Community Member States which was registered on 29\/5\/00).\r\n\r\nAs a conclusion of this first part, the Panel is satisfied that Complainant has a prior right in the sense of the sunrise period.\r\n\r\nHaving underlined this, the Panel must also recall that EC Regulation created a phased registration system (the Sunrise period):\r\n\r\n-\tWhose philosophy is not “when two persons claim a prior right on the same domain name, who is best entitled to this name?” \r\n\r\n-\tBut whose philosophy is “when two persons claim a prior right on the same name, who was the first to apply?”\r\n\r\nAll members of the Panel express their sympathy for Complainant’s position. The Complainant is without any doubt a very serious candidate in a system where “the best person entitled to have the name” gets it.\r\n\r\nBut, the .eu system is far from this. Priority is given to the first applicant. Art. 11 (c) of the ADR Rules clearly provides that there are two conditions that must be met before the Panel may order the transfer of a domain name:\r\n\r\n-\tThe Complainant must be the next applicant in the queue for the domain name concerned. \r\n-\tThe Respondent must decide that the Complainant satisfies all registration criteria set out in the Regulation. \r\n\r\nAs a fact, the Panel must admit that Parknet comes before the Complainant in the List.\r\n\r\n(To be noted: facts would have been very different without the administrative error of the Complainant who first applied for the Domain Name on 07\/12\/2005 but, owing to an administrative error, did not provide the Documentary Evidence supporting its application within the stated deadline). \r\n\r\n\r\noOo\r\n\r\n\r\nThis said, the first applicant doesn’t always get the name. Regulation has created a verification process whose purpose is not, again, to check if the applicant is “a good person” for that name, but to assess whether or not the applicant has a “prior right”.\r\n\r\nIn the Panel view, Parknet trade mark is a valid one; the trade mark as such is not at stake.\r\n\r\nThe problem arises from the transliteration of that name into a domain name. \r\n\r\nThis is where article 11 of Regulation 874\/2004 is important.\r\n\r\n\r\nThe Panel can’t accept the position of the Complainant because it would imply that, in the interpretation and verification of the application of article 11 by an applicant, Respondent should take into consideration other applications made by other applicants, the fame of the name, or factual information implying third parties.\r\n\r\nThese elements are important in a procedure where bad faith is an issue, not in a procedure where the prior right (or the transliteration thereof) is at stake. \r\n\r\nThere is little doubt, in the Panel view, that Complainant would easily win its case against actual domain name holder in an article 21 procedure, but the mandate of the Panel in this procedure is different. (As reminded in 00449 CANDY, “… the sole object and purpose of an ADR proceeding against the Respondent is to verify whether the relevant decision adopted by the Respondent conflicts (or not) with the provisions of the Regulation). \r\n\r\n\r\n\r\nNeither can the Panel accept the position of Eurid of absolute non-intervention in the verification of the transliteration. This is going much too far. Even in the limited scope of article 11, Eurid (and\/or the verification agent) also has obligations. \r\n\r\nEurid’s general duty in the verification process has been expressed in 00642 (CRUX): \r\n\r\n“Reference is made, among others, to Recital 12 of the Regulation 874\/2004, under which the aim of the registration process is to ensure that holders of prior rights have appropriate opportunities to register names on which they hold prior rights. It further follows from this recital that validation agents should assess rights claimed for a particular name properly. Reference is further made to Article 14 of the Regulation No 874\/2004, under which the validation agent should examine the application. \r\n\r\nUnder Sunrise Rules, Article 21.3, the validation agent may, at his own discretion, conduct investigation into the circumstances of the respective application.\r\n\r\nThe Panel appreciates the high number of application received and processed by the Respondent, and the Panel also understands the tendency of the Respondent to apply those automated processes as mentioned in the Respondent’s response to the Complaint. The respective legal provisions cited above put the Respondent under clear legal obligation to examine the application (Art. 14 of the Regulation 874\/2004) and to assess the respective right of the applicant (recital 12 of the Regulation 874\/2004. \r\n\r\nIn the opinion of the Panel, these obligations to “examine”  and to “assess” are clearly in conflict with the absolute idea of an uncompromised automated process.”\r\n\r\n(End of quote)\r\n\r\nIn the Panel view, Respondent hasn’t been unreasonable when it decided to validate Parknet application, notably because the elimination of the special character is indeed one of the possibilities created by article 11 and because the elimination of the “&” symbol is as good as another solution for that trademark.\r\n\r\nOf course, one can argue that the huge problem arisen from article 11 is well known; that Parknet registered a great number of trademarks with special characters and obviously circumvented the aim of article 11; that various decisions found against companies doing the same, etc. \r\n\r\nHere again, the Panel sympathize with this, but it must insist on the fact that the verification process is about a specific application, made by a specific applicant, based on a specific prior right. All factual elements surrounding Parknet’s application might be important for an article 20 revocation by Eurid, or for an article 21 procedure launched by the Complainant, and the Panel would certainly welcome these arguments in such procedures, but it has no power to consider them in this procedure in which it has a different mandate.",
    "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": "2006-09-13 00:00:00",
    "informal_english_translation": "The Panel recall that EC Regulation created a phased registration system (the Sunrise period):\r\n\r\n-\tWhose philosophy is not “when two persons claim a prior right on the same domain name, who is best entitled to this name?” \r\n-\tBut whose philosophy is “when two persons claim a prior right on the same name, who was the first to apply?”\r\n\r\nAll members of the Panel express their sympathy for Complainant’s position. The Complainant is without any doubt a very serious candidate in a system where “the best person entitled to have the name” gets it. But, the .eu system is far from this. Priority is given to the first applicant, and as a matter fact, the Panel must admit that Parknet comes before the Complainant in the List.\r\n\r\n\r\n\r\nThis said, the first applicant doesn’t always get the name. Regulation has created a verification process whose purpose is not, again, to check if the applicant is “a good person” for that name, but to assess whether or not the applicant has a “prior right”.\r\n\r\nIn the Panel view, Parknet trade mark is a valid one; the trade mark as such is not at stake.\r\n\r\nThe problem arises from the transliteration of that name into a domain name and this is where article 11 of Regulation 874\/2004 is important.\r\n\r\n\r\nThe Panel can’t accept the position of the Complainant because it would imply that, in the interpretation and verification of the application of article 11 by an applicant, Respondent should take into consideration other applications made by other applicants, the fame of the name, or factual information implying third parties.\r\n\r\nThese elements are important in a procedure where bad faith is an issue, not in a procedure where the prior right (or the transliteration thereof) is at stake. \r\n\r\nThere is little doubt, in the Panel view, that Complainant would easily win its case against actual domain name holder in an article 21 procedure, but the mandate of the Panel in this procedure is different. (As reminded in 00449 CANDY, “… the sole object and purpose of an ADR proceeding against the Respondent is to verify whether the relevant decision adopted by the Respondent conflicts (or not) with the provisions of the Regulation). \r\n\r\n\r\nNeither can the Panel accept the position of Eurid of absolute non-intervention in the verification of the transliteration. This is going much too far. Even in the limited scope of article 11, Eurid (and\/or the verification agent) also has obligations. \r\n\r\nIn the Panel view, Respondent hasn’t been unreasonable when it decided to validate Parknet application, notably because the elimination of the special character is indeed one of the possibilities created by article 11 and because the elimination of the “&” symbol is as good as another solution for that trademark.\r\n\r\nOf course, one can argue that the huge problem arisen from article 11 is well known; that Parknet registered a great number of trademarks with special characters and obviously circumvented the aim of article 11; that various decisions found against companies doing the same, etc. \r\n\r\nHere again, the Panel sympathize with this, but it must insist on the fact that the verification process is about a specific application, made by a specific applicant, based on a specific prior right. All factual elements surrounding Parknet’s application might be important for an article 20 revocation by Eurid, or for an article 21 procedure launched by the Complainant, and the Panel would certainly welcome these arguments in such procedures, but it has no power to consider them in this procedure in which it has a different mandate.",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}