{
    "case_number": "CAC-ADREU-001878",
    "time_of_filling": null,
    "domain_names": [],
    "case_administrator": null,
    "complainant": [],
    "complainant_representative": null,
    "respondent": [],
    "respondent_representative": null,
    "factual_background": "Within the Phased Registration Period (“Sunrise Period”), the Complainant applied for the registration of five domain names in the .eu space namely, “rosbacher.eu”, “bizzl.eu”, “hassia-sprudel.eu”, “hassia-gruppe.eu” and “elisabethen.eu”. Together with the necessary application forms, the Complainant submitted a copy of the extracts of the German Patent and Trade Mark Office and a copy of the form “Registering a Transfer of Right in the Trade Mark” as a documentary evidence that the Complainant is the trade mark proprietor in the words “rosbacher”, “bissl”, hassia-sprudel”, “hassiagruppe” and “elisabethenquelle”. Therefore, the Complainant alleges that they should have been entitled to register the domain names during the Sunrise period.\r\n\r\nThe Complaint was filed on 23rd June, 2006 in English, which is the official language of the proceedings, along with the relevant annexes, which were both in German and English. On 30th June 2006, according to paragraph B1 (d) of the .eu Dispute Resolution Rules (the ADR Rules), the Czech Arbitration Court acknowledged receipt of the Complaint.\r\n\r\nThe Respondent filed his response on 12th September 2006 and the Czech Arbitration Court acknowledged receipt of the Response on the same day. On 12th September 2006, the Provider appointed the selected Panellist and on the same day the Provider received his Statement of Acceptance and Declaration of Impartiality and Independence.",
    "other_legal_proceedings": "The Panel is not aware of any other legal proceedings.",
    "discussion_and_findings": "The Complainant’s application is made pursuant to article 22 (1) (b) of EC Regulation 874\/2004, which provides that an ADR procedure may be initiated by any party where a decision taken by the Registry conflicts with EC Regulation 733\/2002. Pursuant to article 22 (11) 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 874\/2004 and EC Regulation 733\/2002.\r\n\r\nThe Complainant seeks to annul the decision taken by the Respondent (EURid) to reject registration for the following domain names: ‘rosbacher.eu’, ‘bizzl.eu’, ‘hassia-sprudel.eu’, ‘hassia-gruppe.eu’ and ‘elisabethen.eu’.\r\n\r\nFirst of all, the Panel would like to clarify that a lot of the issues appearing in the specific dispute fall outside the jurisdiction of the ADR Panel as well as the disputes that the .eu Alternative Dispute Resolution Process is meant to solve. Therefore, the Panel has decided to not deal with those issues. \r\n\r\n1.\t‘rosbacher.eu’ and ‘bizzl.eu’\r\n\r\nTo verify that the Complainant is entitled to ‘rosbacher.eu’ and ‘bizzl.eu’ as the owner of the identical trade marks, the Complainant submitted two extracts from the online database of the German Patent and Trade Mark Office regarding the trade marks ‘rosbacher’ and ‘bizzl’. Because these extracts do not show the Complainant as the owner of the trade marks, the Complainant also submitted a copy of the form “Registering a Transfer of Rights in the Trade Mark”. With this form, the Complainant informed the German Patent and Trade Mark Office that they are the (legal) successor and therefore the owners of the trade marks.\r\n\r\nThe Respondent argued that the burden of proof lies with the Complainant to demonstrate that they are the holder of a prior right for the domain names ‘rosbacher.eu’ and ‘bizzl.eu’.  The Respondent states that in the present case the name of the Complainant is ‘Hassia Mineralquellen GmbH’. However, the name of the trade mark holder is “VHM Mineral und Heilquellen GmbH & Co. KG’ for the trade mark ‘rosbacher’ and ‘Bad Vilber UrQuelle Mineralbrunnen GmbH & Co. KG’ for the trade mark ‘bizzl’. Despite the different names, the Complainant failed to submit the acknowledgement and declaration from duly completed and signed by both the transferor of the relevant prior right and the Complainant pursuant to section 20.2 of the Sunrise Rules. Therefore, the Respondent decided not to take these documents into consideration; they also state that the forms were submitted at a date after the application for the domain names were made; finally, the Respondent asserts that the difference in names indicates that the Complainant and the Complainant are a different legal entity.\r\n\r\nNevertheless, on 30th June 2006, the Complainant filed a non standard communication document. In the annexes attached the Complainant proved that the German Patent and Trade Mark Office recorded the change of ownership regarding the trade marks ‘rosbacher’ and ‘bizzl’.\r\n\r\nThe Panel is of the opinion that an ADR mechanism is in place in order to give the parties the chance to rectify any errors or omissions that have taken place in the past. Similarly, the mechanism is there to try and ensure that any possible cases of cybersquatting can be avoided. It is obvious that when the Complainant submitted the application for ‘rosbacher.eu’ and ‘bizzl.eu’ domain names, the information presented to the Registrar was incomplete. Due to this fact, the Registrar was correct at the time to reject the registration of the two domain names. However, the annexes attached to the non-standard communication clearly show that the German Patent and Trade Mark Office has successfully recorded the new owner of the trade marks ‘rosbacher’ and ‘bizzl’, who according to their database is Hassia Mineralquellen GmbH & Co. KG, who is the Complainant. Based on the new documents submitted before the Panel, the Panel decides that the two domain names should be attributed to the Complainant.\r\n\r\n2.\t‘hassia-sprudel.eu’\r\n\r\nTo evidence ownership of the prior trade mark rights in the word ‘Hassia-Sprudel’, the Complainant submitted together with the relevant application forms an extract from the online database of the German Patent and Trade Mark Office for the trade mark ‘Hassia-Sprudel’, which clearly shows the Complainant as the owner of the trade mark.\r\n\r\nThe Respondent, on the other hand, contends that the device trade mark relied upon is comprised of graphic elements and many alphanumerical characters: Hassia, Sprudel, Naturlisches Mineralwasser, and many other characters. This means that the trade mark submitted by the Complainant could not serve as a prior right on the name ‘Hassia-Sprudel’ alone.\r\n\r\nFor this specific domain name the Panel took the initiative and made some further investigations. Specifically, the Panel searched the database of the German Patent and Trade Mark Office and is concerned about the ownership of the trade mark. Contrary to the former two domain names, in this case the result of the search showed that ‘Hassia and Luisinen Mineralquellen Bad Vilbel GmbH. & Co.’ is the owner, an entity which is not the same as the Complainant. The Panel considers that the Complainant failed to carry the burden of proof and prove ownership of both the trade mark and the domain name. At the same time, the Panel does not agree with the contention of the Respondent. The nature of the Domain Name Addressing System is such that it is highly difficult to create a domain name that includes all the features and representations of a trade mark. Trade mark owners have the tendency to register the main part of their trade marks as domain names, without including graphical and any other alphanumerical elements. However, based on concerns about ownership of the trade mark and questioning why the German Patent and Trade Mark Office has not recorded the change of ownership of the trade mark (even though the transfer of rights was made on the 26th March 2004), the Panel is of the opinion that the Complainant has not managed to prove prior rights on the trade mark and, therefore, the Complainant should not be entitled to register the domain name ‘hassia-sprudel.eu’.\r\n \r\n3.\t‘hassia-gruppe.eu’\r\n\r\nRegarding the application for registration of the ‘hassia-gruppe.eu’ domain name, the Complainant submitted together with the relevant application forms an extract from the online database of the German Patent and Trade Mark Office for the trade mark ‘HassiaGruppe’, which clearly show that the Complainant is the owner of the trade mark rights in this word.\r\n\r\nOn the other hand, the Respondent contends that the trade mark HassiaGruppe (without any hyphen) submitted by the Complainant did not correspond to the domain name for Hassia-Gruppe (with a hyphen). The Complainant is not free to delete or add a hyphen from the name of the trade mark relied upon. This clearly means that the trade mark HassiaGruppe submitted by the Complainant could not establish a prior right on the name Hassia-Gruppe with an added hyphen.\r\n\r\nThe Panel will agree with the Respondent on that issue. Even though article 11 of the Commission Regulation EC No. 874\/2004 refers to the cases whereby there is a space between the textual or word elements and how such elements should be represented in a domain name, a wide interpretation leads to the conclusion that the rationale behind this article is to ensure that trade mark owners choose a domain name that represents their trade marks as similarly as possible. In this case, the Complainant had the option, since its application took place during the Sunrise Period, to choose to register the domain name ‘hassiagruppe.eu’ (with no hyphen), which would represent their trade mark. Since the Complainant chose not to register such a version of a domain name, the Panel will agree with the Register and concludes that the Complainant should not be entitled to register the domain name ‘hassia-gruppe.eu’.\r\n\r\n4.\t‘elisabethen.eu’\r\n\r\nTo register the domain name ‘elisabethen.eu’, the Complainant submitted together with the relevant application forms an extract from the online database of the German Patent and Trade Mark Office for the trade mark ‘Elisabethenquelle’, which clearly shows that the Complainant is the owner of the trade mark rights in this word. The Complainant also enclosed a relevant extract (Annex XXII), which showed that the Complainant is the owner of the trade mark ‘Elisabethenquelle’. According to the Complainant, the mere fact that the trade mark right is not identical with the domain name applied for is not sufficient to reject the registration. The trade mark ‘Elisabethenquelle’ is characterised by the element ‘elisabethen’. The element ‘quelle’ is merely a descriptive for the source where the goods – i.e. mineral waters – come from. Additionally, the mark ‘Elisabethenquelle’ is confusingly similar to ‘elisabethen’ so that the Complainant also is entitled to the domain name ‘elisabethen.eu’ based on its trade mark ‘Elisabethenquelle’ to foreclose the possibility that an unauthorised person claims any rights  in this name with respect to Complainant’s goods.\r\nThe Respondent questions the possibility for the Complainant to register the domain name ‘elisabethen.eu’ even though their trade mark is ‘Elisabethenquelle’. According to the Respondent the difference between distinctive and non-distinctive elements may be of great importance in trade mark law, but this difference is not applicable in the determination of the prior rights under the Regulation and the Sunrise Rules. Therefore, the Respondent was not allowed to engage into the appreciation of the distinctive character of the various elements of the trade mark. The Respondent was only instructed to verify that all alphanumeric character included in the trade mark are contained in the domain name applied for. The Respondent, therefore, submits that it was correct to reject the application, because the Complainant applied for the domain name ‘elisabethen’ without demonstrating a prior right on the name ‘elisabethen’ alone.\r\n\r\nThe Panel will agree with the Respondent and once again will question why the Complainant did not register their trade mark as a domain name, namely ‘elisabethenquelle.eu’. The central rationale behind the Sunrise Period was to provide the opportunity to holders of trade marks to register their trade marks as domain names in order to avoid future cases of cybersquatting. If the Complainant were to have applied for the domain name ‘elisabethenquelle.eu’ and had managed to show that they were in possession of prior trade mark rights, I see no reason why the application for that particular domain name would be rejected. Moreover, the argument of the Complainant that he applied to register ‘elisabethen.eu’ in order to prohibit any possibility that an unauthorised person could claim any right in this name with respect to complainant’s goods, though it makes good sense, at the same time it loses its logic, since the Panel considers that the Complainant should have first and foremost secure his rights on the domain name ‘elisabethenquelle.eu’, which is the same as his trade mark; then, the Complainant could have moved to register any similar names as domain names. For the abovementioned reasons the Panel concludes that the Complainant should not be entitled to register the domain name ‘elisabethen.eu’.",
    "decision": "For all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the Panel orders that\r\n\r\nWith respect to the domain names ‘rosbacher.eu’ and ‘bizzl.eu’, EURid’s decision is annulled and the domain names ‘rosbacher.eu’ and ‘bizzl.eu’ are attributed to the Complainant;\r\n\r\nWith respect to the domain names ‘hassia-sprudel.eu’, ‘hassia-gruppe.eu’ and ‘elisabethen.eu’ the Complaint is denied.",
    "panelists": [
        null
    ],
    "date_of_panel_decision": "2006-09-15 00:00:00",
    "informal_english_translation": "The Complainant argues that the Respondent’s decision not to allow the registration of the domain names “rosbacher.eu”, “bizzl.eu”, “hassia-sprudel.eu”, “hassia-gruppe.eu” and “elisabethen.eu” is not in accordance with Article 14 of the Commission Regulation (EC) No. 874\/2004 of 28th April 2004 and Chapter V (Validation of Prior Rights), section 13.2 (ii) of the Sunrise Rules. \r\n\r\nThe Respondent contends that the decision not to register the contested domain names was correct, because the Complainant had failed to carry the burden of proof and show that the Complainant had prior rights on the trade marks and therefore on the domain names.\r\n\r\nThe Panel found that the evidence submitted by the Complainant were sufficient to show prior rights on the domain names ‘rosbacher.eu’ and ‘bizzl.eu’ and therefore ordered these two domain names to be registered to the Complainant. However, for the domain names ‘hassia-sprudel.eu’, ‘hassia-gruppe.eu’ and ‘elisabethen.eu’, the Panel denied the Complaint.",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}