{
    "case_number": "CAC-ADREU-001914",
    "time_of_filling": null,
    "domain_names": [],
    "case_administrator": null,
    "complainant": [],
    "complainant_representative": null,
    "respondent": [],
    "respondent_representative": null,
    "factual_background": "The Complainant, Nintendo of Europe GmbH, filed an application for the registration of the domain name FZERO.EU based on the German trademark registration F-ZERO. The documentary evidence was submitted on time. However, the applicant rather than submitting a copy of the  F-ZERO German trademark registration sent a copy of the F-ZERO French trademark registration.\r\n\r\nEuRid rejected the application for the registration of FZERO.EU  due to the fact that according to the  Commission Regulation (EC) No 874\/2004 of 28 April 2004, a trademark registration for F-ZERO cannot support the registration of the domain name FZERO.EU.  The Complainant did not demonstrate that it was the holder or the licensee of a prior right on the name FZERO. Furthermore, the validation agent concluded that the Complainant's application did not comply with the Sunrise Rules as the application incorrectly mentioned Germany as the country in which the Complainant claimed to have a prior right whereas the trademark submitted as documentary evidence was registered in France. \r\n\r\nBased on the findings of the validation agent, the Respondent rejected the Complainant's application for the domain name FZERO.EU and the Complainant initiated this ADR proceeding.",
    "other_legal_proceedings": "The Panel is not aware of other legal proceedings, either pending or decided, which relate to the disputed domain name.",
    "discussion_and_findings": "In order to make a decision in the case at issue, the Panel must first examine whether under the applicable regulations, the registration for the trademark F-ZERO may support the registration of the domain name FZERO.EU during the phased registration period. \r\n\r\nIf according to the applicable regulations, the F-ZERO trademark supports the registration of the domain name FZERO.EU, the Panel must then examine whether the fact that the applicant based its application for the registration of the domain name FZERO.EU on a German trademark registration, but sent as documentary evidence a French trademark registration, constitutes a ground to deny the registration of the domain name at issue. \r\n\r\nIf it does, the Panel should lastly examine whether the evidence of the German trademark registration enclosed with the Complaint - and therefore well after the expiration of the 40 days term to file the documentary evidence in support of the domain name application, provided for by Article 14 of EC Regulation No. 874\/2004 of 28 April 2004 - should be taken into consideration for the purpose of granting the requested domain name.\r\n\r\nAccording to Article 10(2) of EC Regulation No. 874\/2004 of 28 April 2004, \"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\nAccording to Article 11of EC Regulation No. 874\/2004 of 28 April 2004, \"[A]s far as the registration of complete names is concerned, where such names comprise a space between the textual or word elements, identicality shall be deemed to exist between such complete names and the same names written with a hyphen between the word elements or combined in one word in the domain name applied for. \r\nWhere 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. Special character and punctuations as referred to in the second paragraph shall include the following: ~ @ # $ % ^ & * ( ) + = < > { } [ ] | \\ \/: ; ' , . ?\r\nWithout prejudice to the third paragraph of Article 6, if the prior right name contains letters which have additional elements that cannot be reproduced in ASCII code, such as ä, é or ñ, the letters concerned shall be reproduced without these elements (such as a, e, n), or shall be replaced by conventionally accepted spellings (such as ae). In all other respects, the domain name shall be identical to the textual or word elements of the prior right name\".\r\n\r\nIt is clear from the above, and in particular from the sentence \"[i]n all other respects, the domain name shall be identical to the textual or word elements of the prior right name\", that except for the very specific cases mentioned in Article 11 of EC Regulation No. 874\/2004, the domain name applied for during the phased registration period must be identical to the word elements of the prior right name. \r\n\r\nThe applicant based its request for the registration of the domain name FZERO.EU on the German trademark registration F-ZERO (despite the fact that the applicant sent as documentary evidence the French trademark registration F-ZERO). In all instances, the applicant owns prior rights over the name F-ZERO and not over FZERO.  Article 11 of EC Regulation No. 874\/2004 does not contemplate the possibility that where there exists the right to a name with a hyphen, the hyphen shall be deemed eliminated from the corresponding domain name. This possibility is provided for only for the special characters mentioned in the same Article 11. \r\n\r\nThe rationale behind the provision of Article 11 of EC Regulation No. 874\/2004 is to ensure to holders of prior rights over names containing characters that cannot be reproduced in a domain name, the possibility to reflect their prior rights in .EU domain names during the phased registration period. However, this possibility is an exception to the general rule that domain names applied for during the phased registration period must be identical to the corresponding prior right names. Because a hyphen is not among those special characters that cannot be reproduced in a domain name, in the event of an earlier right consisting of word elements separated by a hyphen, there is no reason to depart from the general rule that during the phased registration period domain names must be identical to the prior right name.\r\n\r\nThe aforementioned circumstance is also indirectly confirmed by Section 11 of the Sunrise Rules, which provides that a prior right claimed to a name included in figurative or composite signs (signs including words, devices, pictures, logos, etc.) will only be accepted if (i) the sign exclusively contains a name, or (ii) the word element is predominant, and can be clearly separated or distinguished from the device element, provided that (a) all alphanumeric characters (including hyphens, if any) included\r\nin the sign are contained in the Domain Name applied for, in the same order as that in which they appear in the sign (...)\". \r\n\r\nIt is apparent from the above that if figurative signs may constitute prior rights for the purpose of registering .EU domain names during the phased registration period, provided that all word elements, including hyphens, are reflected in the domain names, the same principle must apply for word marks. Indeed, as mentioned above, Article 11 of EC Regulation No. 874\/2004  provides that \"[A]s far as the registration of complete names is concerned, where such names comprise a space between the textual or\r\nword elements, identicality shall be deemed to exist between such complete names and the same names written with a hyphen between the word elements (...). 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\nSince the F-ZERO trademark cannot support the registration of the domain name FZERO.EU, the Panel does not need to assess the other circumstances highlighted by the Complainant in order to reverse EuRid's decision to reject the request of registration of the FZERO.EU domain name.",
    "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": "2006-10-07 00:00:00",
    "informal_english_translation": "The Complainant applied for the domain name FZERO.EU based on a F-ZERO German trademark registration but submitted as documentary evidence a copy of the F-ZERO French registration.\r\n\r\nEuRid rejected the application based on the findings of the validation agent that: (i) a trademark F-ZERO (with a hyphen) cannot support the registration of the domain name FZERO.EU (without a hyphen); and (ii) the application did not comply with the Sunrise Rules because it incorrectly mentioned Germany as the country in which the Complainant claimed to have a prior right whereas the trademark submitted as documentary evidence was registered in France. \r\n\r\nThe Panel finds that according to EC Regulation No. 874\/2004 of 28 April 2004 and the Sunrise Rules, the domain name applied for during the phased registration period must be identical to the word elements of the prior right name, unless for limited exceptions. Said exceptions only deal with prior right names containing special characters that cannot be reproduced in a domain name. A hyphen is not among those special characters. Thus, the German and\/or French trademark registration F-ZERO could have served as the basis for the registration of the domain name F-ZERO.EU and not of FZERO.EU.\r\n\r\nFor the above-mentioned reason the Panel denies the Complaint.",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}