{
    "case_number": "CAC-ADREU-001929",
    "time_of_filling": null,
    "domain_names": [],
    "case_administrator": null,
    "complainant": [],
    "complainant_representative": null,
    "respondent": [],
    "respondent_representative": null,
    "factual_background": "On 7 December 2005 (that is to say during the Sunrise 1 period), the Complainant filed an application for registration of the domain name “national-bank”.\r\n\r\nDocumentary Evidence transmitted by the Complainant is limited to one letter, originating from “Deutsches Patent- und Markenamt”, dated May, 20th, 2005, sent to a lawyer, whose title is “Empfangsbescheinigung”, stating as such: \r\n\r\n(Begin of quote)\r\n\r\nIhre Anmeldung der Marke Nr.: 305 23 619 ist am 20.04.2005 beim Deutsche Patent- und Markenamt eingegangen. Sie wird unter dem Aktenzeichen 305 23 619.9\/36 für die Leitklasse 36 zuständigen Markenstelle bearbeit (…)\r\n\r\nAnmeider: Nationale-Bank Aktiengesellschaft, 45127 Essen\r\nMarkenform: Wort- \/ Bildmarke\r\nMarkentext: N NATIONAL-BANK\r\n \r\n(End of quote)\r\n\r\nApplication has been rejected by Respondent, based on the fact that the trademark is “N NATIONAL-BANK” where the domain name requested was “national-bank”.",
    "other_legal_proceedings": "None",
    "discussion_and_findings": "There are three different categories of new evidence produced by the Complainant:\r\n- Never-produced information on never-claimed trademarks\r\n- Never-produced information on trade name\r\n- Additional information concerning the prior right claimed in the application\r\n\r\nThe Panel will analyze each category separately.\r\n\r\n\r\nNever-produced information on never-claimed trademarks\r\n_______________________________________________\r\n\r\n\r\nThe Complainant produces evidence of ownership of the following trademarks:\r\n\r\n-\t“NATIONAL-BANK”, no. 39743866.4 \r\n-\t“NATIONAL-BANK”, no. 39743867.2\r\n-\t“DAS ZEICHEN GUTER PARTNERSCHAFT. NATIONAL-BANK”, no. 0523620.2\r\n-\t“N NATIONAL BANK” no. 30523621.0 \r\n\r\nWith this new documentary evidence, the Complainant substantiates prior rights that it did not even claim to have in its application! The Complainant claims today to be the owner of these trademarks (and he probably is, based on the documents provided to the Panel), but as a matter of fact, the documentary evidence given at the stage of the verification process was completely silent on them.\r\n\r\nAccepting to take into consideration a new prior right that the Complainant did not even talked about in its application, could be detrimental to other parties who expect the Panel to apply the Rules, nothing more nothing less. \r\n\r\nSunrise Appeal has been created to guarantee both parties a fair trial on the way Respondent assessed the prior right claimed in the application; its purpose is not to permit applicant to add new prior rights they didn’t even claim to have in their application.\r\n\r\nThe Panel won’t take into consideration these trademarks.\r\n\r\n\r\nNever-produced information on trade name\r\n___________________________________\r\n\r\n\r\nThe Panel won’t debate on this issue because regardless the answer to the question, it is for sure that a trade name is not a prior right in the sense of the Sunrise 1 Period [note of the Panel: the application of the Complainant was made on December, 7, 2005].\r\n\r\nArticle 12 (2) of Regulation 874\/2004 is very clear on this:\r\n\r\n“The duration of the phased registration period shall be four months. General registration of domain names shall not start prior to the completion of the phased registration period.\r\n\r\nPhased registration shall be comprised of two parts of two months each.\r\n\r\nDuring the first part of phased registration, only registered national and Community trademarks, geographical indications, and the names and acronyms referred to in Article 10(3), may be applied for as domain names by holders or licensees of prior rights and by the public bodies mentioned in Article 10(1) [note of the Panel: this period is the so-called Sunrise 1 Period].\r\n\r\nDuring the second part of phased registration, the names that can be registered in the first part as well as names based on all other prior rights can be applied for as domain names by holders of prior rights on those names”.\r\n\r\n\r\nAdditional information concerning the prior right claimed in the application\r\n____________________________________________________________\r\n\r\n\r\nThe question here is quite different.\r\n\r\nObviously, in its application and in the Documentary Evidence, the Complainant claimed a prior right on trademark “N NATIONAL-BANK”, no. 0523619.9. To substantiate its prior right, the Complainant produced at that time a letter originating from “Deutsches Patent- und Markenamt”, dated May, 20th, 2005, sent to a lawyer, whose title is “Empfangsbescheinigung” (see here above ‘Factual Backgrounds’ for details).\r\n\r\nNow, in the course of this proceeding, the Complainant produces a printout of the German Patent and Trademark Office (DPMA) database.\r\n\r\nIn the Panel view, the production of the new evidence follows a different regime because the central question raised by the “Empfangsbescheinigung” is its status: is it a valid evidence of a trademark? \r\n\r\nThe Respondent saw this document merely as “a trademark application and provides no proof of the actual and subsequent registration of the trademark. The Complainant's trademark application cannot be considered a prior right. For that reason alone, the Complaint must be rejected”.\r\n\r\nIf the new evidence provided today was useful for the Panel to verify whether or not the Respondent made a good assessment of the application and took the right decision (for example if this new evidence was necessary to assess the exact status of the “Empfangsbescheinigung”),  the Panel would have take it into consideration.\r\n\r\nThis said, it appears that this debate is not necessary in the present procedure.\r\n\r\nIndeed, article 10 (2) of the Regulation states that a domain name applied for during the Sunrise Period must consist of the complete name of the prior right on which the application is based.\r\n\r\nThe prior right claimed by the Complainant consisted of the sign “N NATIONAL-BANK”. \r\n\r\nThe “Empfangsbescheinigung” states as such: \r\n\r\n(Begin of quote)\r\n\r\nAnmeider: Nationale-Bank Aktiengesellschaft, 45127 Essen\r\nMarkenform: Wort- \/ Bildmarke\r\nMarkentext: N NATIONAL-BANK\r\n \r\n(End of quote)\r\n\r\nAlso, in the cover letter, the prior right referred to is: N NATIONAL-BANK.\r\n\r\nThe application of the Complainant and the Documentary Evidence refer to the sign “N NATIONAL-BANK” whereas the Complainant applied for the domain name “NATIONAL-BANK”. \r\n\r\nIt is thus unnecessary to debate on the validity of the new evidence provided, because whatever the answer to that question is, the Panel will always reach the same conclusion: the domain name applied for on the one hand, and the prior right claimed on the other hand, are different (it missed an ‘N’), and Respondent correctly applied the Regulation when it rejected the application based on a breach of article 10(2).\r\n\r\nSituation was quite the same in case 01053 (SANTOS), where the Panel decided that:\r\n\r\n“The Panel is however conscious that the Complainant’s case is not without merit. The Complainant is clearly is known as SANTOS. SANTOS is its company name. It appears to have common law rights in the name SANTOS. It has an Internet presence in its web site established at the <santos.fr> address. Third parties refer to the Complainant’s goods as SANTOS goods. While these do not amount to Prior Rights for the purposes of the first phase of the Sunrise Period, they do indicate that the Complainant has undoubtedly rights in the SANTOS trade mark.\r\n\r\nIt appears from the documents submitted that the Complainant does not use the word mark S SANTOS.\r\n\r\nFurthermore the Complainant has persuasively argued that the word element in the Prior Right relied upon is SANTOS and not S SANTOS and that when spoken the mark is SANTOS and not S SANTOS.\r\n\r\nThe Sunrise Rules however clearly require at Rule 19.2(ii)(a)  that: -“all alphanumeric characters (including hyphens, if any) included in 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\nSection 19.2(ii) of the Sunrise Rules refers to the “sign”. It applies to figurative or composite signs. In the present case the “sign” consists of the stylised letter “S” and the word SANTOS.\r\n\r\nSince the device element in the Prior Right relied upon by the Complainant is a stylised alpha numeric character, the letter “S” applying the methodology laid down in Rule 19.2(i) of the Sunrise Rules or even the methodology laid down in Rule 19.2(ii) that all alphanumeric characters (including hyphens, if any) included in the sign should be contained in the Domain Name applied for, in the same order as that in which they appear in the sign, it was reasonable that the Respondent should have rejected the application in those circumstances.\r\n\r\nThe Complainant’s application for the domain name <santos.eu> must fail.”\r\n\r\nVarious Panels came to the similar conclusion and applied similar principles in cases 1393 (HANSA), 487 (BENTLEY) and 470 (O2 DEVELOPMENT).",
    "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": "2006-09-12 00:00:00",
    "informal_english_translation": "The Complainant produces evidence of ownership of several trademarks.\r\n\r\nWith this new documentary evidence, the Complainant substantiates prior rights that it did not even claim to have in its application! The Complainant claims today to be the owner of these trademarks (and he probably is, based on the documents provided to the Panel), but as a matter of fact, the documentary evidence given at the stage of the verification process was completely silent on them.\r\n\r\nSunrise Appeal has been created to guarantee both parties a fair trial on the way Respondent assessed the prior right claimed in the application; its purpose is not to permit applicant to add new prior rights they didn’t even claim to have in their application.\r\n\r\nThe Panel won’t take into consideration these trademarks.\r\n\r\n\r\nThen, the Complainant produces evidence related to its trade name.\r\n\r\nSituation is the same as here above : Complainant claims in this procedure a prior right that it didn't claim in its application. The Panel won’t debate on this issue because regardless the answer to the question, it is for sure that a trade name is not a prior right in the sense of the Sunrise 1 Period [note of the Panel: the application of the Complainant was made on December, 7, 2005].\r\n\r\n\r\nEventually, the Complainant produces new evidence related to the trademark claimed in the initial application. Respondent request the Panel not to take this new evidence in consideration.\r\n\r\nThe Panel first recall that if the new evidence provided today was useful for the Panel to verify whether or not the Respondent made a good assessment of the application and took the right decision,  the Panel would take it into consideration.\r\n\r\nBut, the Panel considers that this debate is not necessary in the present procedure, because whatever the answer to that question is, the Panel will always reach the same conclusion: the domain name applied for on the one hand, and the prior right claimed on the other hand, are different. Indeed, the application of the Complainant and the Documentary Evidence refer to the sign “N NATIONAL-BANK” whereas the Complainant applied for the domain name “NATIONAL-BANK”. \r\n\r\nArticle 10 (2) of the Regulation states that a domain name applied for during the Sunrise Period must consist of the complete name of the prior right on which the application is based. Respondent correctly applied the Regulation when it rejected the application based on a breach of article 10(2).",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}