{
    "case_number": "CAC-ADREU-001996",
    "time_of_filling": null,
    "domain_names": [],
    "case_administrator": null,
    "complainant": [],
    "complainant_representative": null,
    "respondent": [],
    "respondent_representative": null,
    "factual_background": "Procedural History of ADR Proceedings\r\n\r\nThe Complaint was filed on 23 June 2006\r\nRequest for eurid verification 30 June 2006\r\nNon standard communication was received from Eurid on 10 July 2006 that confirmed that the specified domain names are registered with Registrar: Schlund+Partner AG, provided the full contact details of the Applicant, confirmed that the domain name(s) will remain locked during the pending ADR proceeding., and attached the documentary evidence of the application in dispute.\r\nThe ADR proceedings commenced on 11 July 2006\r\nA non standard communication was received from the Complainant on 10 August 2006\r\nThe Response was filed on 31 August 2006\r\nThe Panelist was selected 1 September 2006 and filed his Statement of Acceptance and Declaration of Impartiality and Independence on 2 September 2006\r\nA Notification of Appointment of Panel was issued on 2 September 2006\r\nThe case file was transmitted to the Panel on 5 September 2006\r\nA further non standard communication was filed by the Complainant on 26 September 2006.\r\n\r\n\r\nThe Complainant and the Complaint\r\n\r\nThe Complainant is a limited liability company organised and existing under the laws of Austria and is the owner of Austrian Registered Trade Mark No. AT 229271 THINK TANK (device) in respect of certain services in international class 42.. The Complainant applied for registration of its said trade mark on 5 December 2005 and the term of protection commenced on 10 January 2006\r\n\r\nOn 26 January 2006 the Complainant filed for registration of the domain names <thinktank.eu> and <think-tank.eu> in phase one of the Sunrise Period.\r\n\r\n\r\nProcedural History of the Applications for the Domain Name Registrations\r\n\r\nOn 21 December 2005, a third party, think!tank Gesellschaft fuer Zukunftsgestaltung mbH (hereafter \"the Applicant\") had earlier also applied in phase one of the Sunrise Period, to register the said domain names <thinktank.eu> and <think-tank.eu>. \r\n\r\nThe processing agent received the documentary evidence on 26 January 2006, which was before the 30 January 2006 deadline. \r\n\r\nThe Applicant’s application was based on the national German Registered Trade Mark No. 30304602 THINK!T@NK (device). The Applicant had applied for registration of its said German Trade Mark on 29 January 2003 and the mark was registered in international classes 35 and 41 on 1 July 2003. The Applicant’s said German Registered Trade Mark consists of a device element (a human head with a world map in the brain) and the alphanumeric characters \"think!t@nk\".\r\n\r\nThe documentary evidence submitted by the Applicant consisted of a proof of the Applicant’s device trademark registered in Germany in the name of the Applicant.\r\n\r\nThe validation agent concluded from the documentary evidence that the Applicant had sufficiently demonstrated that it was the holder of a Prior Right in the names THINKTANK and THINK-TANK on the day of the application and the Respondent accepted the Applicant's application. \r\n\r\nFor reasons given below, the Complainant requests the annulment of the disputed decision taken by Respondent regarding said domain names and requests that the domain names in dispute be attributed according to B11(c) ADR-Rules.\r\n\r\nThe Law\r\n\r\nArticle 10 (1) of Commission Regulation (EC) No 874\/2004 of 28 April 2004 (hereafter \"the Regulation\") states that \"[h]olders of prior rights recognised or established by national and\/or Community law and public bodies shall be eligible to apply to register domain names during a period of phased registration before general registration of. eu domain starts\". \r\n\r\nArticle 10 (2) of the Regulation states that: \"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\nArticle 11 of the Regulation states that: \"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. Special character and punctuations as referred to in the second paragraph shall include the following: ~ @ # $ % ^ & * ( ) + = < > { } [ ] | \\ \/: ; ' , . ?\". \r\n\r\nSection 19 (2) of the Sunrise Rules states 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 the sign exclusively contains a name or if 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 in the sign are contained in the Domain Name applied for, in the same order as that in which they appear in the sign, and (b) the general impression of the word is apparent, without any reasonable possibility of misreading the characters of which the sign consists or the order in which those characters appear\".",
    "other_legal_proceedings": "The Panel is not aware of any other pending or decided legal proceedings relating to the domain names in dispute herein.",
    "discussion_and_findings": "While the Response was not filed in time, in the circumstances of the present case,  the Complainant has not been prejudiced by admitting the Response and has had the opportunity to file a non standard submission prior to the filing of the Response and a further non standard submission in reply to the Response. In the circumstances the Panel has admitted the Response.\r\n\r\nFirstly, the Respondent has fully addressed the Complainant’s submission that the Respondent's decision conflicts with article 10 of the Regulation because the Applicant's trade mark “is not a word mark, but only a figurative mark, a design mark.” As the Respondent correctly submits, Article 10(2) of the Regulation clearly refers to the \"name for which the prior right exists\" and this wording of the Regulation does not limit the prior rights to word trade marks. It is noteworthy that the Complainant’s own application is based on a device trade mark. \r\n\r\nSecondly the Panel must address how the Respondent addressed the two symbols contained in the Applicants trade mark, that are defined as “special characters and punctuations” in the Regulation, viz. the exclamation mark “!” and the symbol “@”.\r\n\r\nThe Complainant submits that it is not permissible to substitute the letter “a” for the mathematical symbol “@” contained in the Applicant’s device mark “THINK!T@NK” The Complainant submits that the simple substitution of the special character \"@\" for the letter \"a\" clearly violates Article11 of the Regulation.. \r\n\r\nThe Complainant has argued that the sign “THINK!T@NK” could only be registered using a hyphen instead of the character “@” in the same order as that in which they appear in the sign or alternatively that the \"@\" symbol should be omitted entirely  - thus leaving several possibilities such as: <thinkt-nk.eu>, <think-t-nk.eu>, <thinktnk.eu> or <think-tnk.eu>.\r\n\r\nArticle 11 of the Regulation states that: \"[w]here 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\n\r\nFurthermore the Complainant has argued and referred to the Wikipedia encyclopaedia  to support its submissions the “@” symbol is pronounced in very different ways in different languages. In most languages other than English, the symbol was virtually unknown before e-mail became widespread in the mid-1990s. Consequently, it is often perceived in those languages as denoting \"The Internet\", computerization, or modernization in general. \r\n\r\nThe Panel does not accept this argument either; Article 11 of the Regulation states that: \"[w]here 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\n\r\nIn the view of the Panel, the “@” symbol is commonly used, depending on context, as either meaning the word “at”(examples being in the context of a mathematical formula or in an Internet address), or alternatively as a stylised letter “a” as in the present case. In the view of this Panel, it was possible to re-write the special character as the letter “a” and it was appropriate so to do. The Panel is encouraged in taking this view by the fact that the certificate of registration of the Applicant’s trade mark expressly states that the text element of the trade mark is THINK!TANK.\r\n\r\nIn reaching this decision, the Panel is conscious that this case can be distinguished from other complaints that related to special characters such as BARCELONA, because in the present case the Applicant’s trade mark and domain name would both be read as the words “think tank” whereas in BARCELONA, if the ampersand had been pronounced the result would be quite different.\r\n\r\nThe Panel also accepts that the Respondent correctly applied Article 11 of the Regulation in eliminating entirely the punctuation mark “!” from the domain name.\r\n\r\nIn the view of the Panel the Complainant’s third argument, that the Respondent's decision conflicts with section 19 of the Sunrise Rules because \"the general impression of the word 'THINK!T@NK' is not apparent because there is a reasonable possibility of misreading the characters of which the sign 'THINK!T@NK' consists\" is not tenable either. \r\n\r\nIn pronouncing the Applicant’s trade mark the exclamation mark would not be pronounced, as is used for emphasis only, and as has been stated above, in the context of a name or mark, the symbol “@” would be read as the letter “a”. It follows in the Panel’s view that the general impression created by the Applicant’s name and both of the domain names are identical.\r\n\r\nFourthly, the Complainant argues that the Respondent's decision conflicts with Article 11 of the Regulation because \"it is not possible to eliminate a special character from the respective domain name if a third party has prior rights in the remaining domain.\" The Panel does not accept that Article 11 can be interpreted in such a manner.\r\n\r\nIn the non standard communication filed on 10 August 2006 and referred to in the further non standard communication filed on 26 September 2006, the Complainant submitted that the Applicant’s application does not only infringe Article 10 and Article 11(1) and (2) of the Regulation but also infringes Article 3 Regulation (EC) No 874\/2004 since the applications do not even fulfil formal requirements as set out in the Sunrise rules.The Complainant has merely made this statement without any expansion and explanation and the Panel cannot deal with it.\r\n\r\nFinally, for completeness, the Respondent has raised the issue of how the Panel should deal with the Complainant's request to have the domain name transferred to it should the Complainant succeed. This does not arise as the Application is being refused.",
    "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": "2006-09-16 00:00:00",
    "informal_english_translation": "The Complainant applied for the annulment of the Respondent’s decision to register the domain names <thinktank.eu> and <think-tank.eu> under the first phase of the Sunrise Period based on Prior Rights being a German Registered Trade Mark No. 30304602 THINK!T@NK (device).\r\n\r\nArticle 10 (2) of the Regulation states that: \"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\nArticle 11 of the Regulation states that: \"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. Special character and punctuations as referred to in the second paragraph shall include the following: ~ @ # $ % ^ & * ( ) + = < > { } [ ] | \\ \/: ; ' , . ?\". \r\n\r\nThe Panel rejected the application finding that an application may be based on a device mark since the wording of the Regulation does not limit the prior rights to word trademarks and commenting that it is noteworthy that the Complainant’s own application is based on a device trademark. \r\n\r\nRejecting the Complainant’s submissions that it is not permissible to substitute the letter “a” for the mathematical symbol “@” contained in the Applicant’s device mark “THINK!T@NK”, the Panel noted that the “@” symbol is commonly used, depending on context, as either  meaning “at”(examples being in the context of a mathematical formula or in an Internet address), or alternatively as a stylised letter “a” as in the present case. In the view of the Panel, it was possible to re-write the special character as the letter “a” and it was appropriate so to do. The Panel was encouraged in taking this view by the fact that the certificate of registration of the Applicant’s trade mark expressly states that the text element of the trademark is THINK!TANK.\r\n\r\nIn reaching this decision, the Panel is conscious that this is quite a distinct case from others that related to special characters such as BARCELONA, because the Applicant’s trade mark and domain name would both be read as the words “think tank” whereas in BARCELONA, if the ampersand had been pronounced the result would be quite different.\r\n\r\nThe Panel also accepts that the Respondent correctly applied Article 11 of the Regulation in eliminating entirely the punctuation mark “!” from the domain name.\r\n\r\nThe Panel also rejected the Complainant’s third argument, that the Respondent's decision conflicts with section 19 of the Sunrise Rules because \"the general impression of the word 'THINK!T@NK' is not apparent because there is a reasonable possibility of misreading the characters of which the sign 'THINK!T@NK' consists\" because the exclamation mark would not be pronounced, as is used for emphasis only, and in the context of a name or mark, the symbol “@” would be read as the letter “a”. The Panel was of the view that the general impression created by the Applicant’s name and both of the domain names are identical.\r\n\r\nFourthly, the Panel rejected the argument that Article 11 can be interpreted in such a manner \"it is not possible to eliminate a special character from the respective domain name if a third party has prior rights in the remaining domain.\"\r\n\r\nThe Complainant also alleged that the Applicant’s applications infringes Article 3 Regulation (EC) No 874\/2004 because the applications do not fulfil formal requirements as set out in the Sunrise Rules. The Panel was unable to deal with this allegation as the Complainant has merely made this statement without any expansion and explanation.\r\n\r\nFinally, the Panel did not have to deal with the Complainant's request to have the domain name attributed according to B11(c) ADR-Rules should the Complainant succeed, as the Application is being refused.",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}