{
    "case_number": "CAC-ADREU-002050",
    "time_of_filling": null,
    "domain_names": [],
    "case_administrator": null,
    "complainant": [],
    "complainant_representative": null,
    "respondent": [],
    "respondent_representative": null,
    "factual_background": "Agora S.A. (hereafter \"the Applicant\") applied for the domain names AUTOMOTOGAZETA, GAZETA and GAZETAWYBORCZA. The processing agent received the documentary evidence before deadline. The validation agent concluded from its examination of the documentary evidence that the Complainant did not appear to have a valid trademark on the name AUTOMOTOGAZETA, as there is no documentary evidence that the trademark is still valid and as the documentary evidence shows that the composite trademark concerns the name AUTO-MOTO GAZETA. - the Complainant did not appear to have a valid trademark on the name GAZETA, as it seems there is no documentary evidence that the trademark is still valid and as the documentary evidence shows that the composite trademark concerns the name GAZETA WYBORCZA. - the Complainant did not appear to have a valid trademark on the name GAZETA WYBORCZA, as there is no documentary evidence that the trademark is still valid. Those are mainly the reasons expressed by the Complainant for which EURid (the Respondent) would have had to reject the application.",
    "other_legal_proceedings": "The Panel is not aware about other legal proceedings which are pending or decided which relate to the disputed domain name",
    "discussion_and_findings": "1. APPLICATION FOR THE DOMAIN NAMES AUTOMOTOGAZETA.EU, GAZETA.EU and GAZETAWYBORCZA.EU BY AGORA, S.A.\r\n\r\nTo this regard, all applicants must be aware of Art. 10 (1) of Commission Regulation (EC) no 874\/2004 of 28 April 2004 (hereinafter, the “Regulation”) stating that only holders of prior rights which are recognised or established by national or Community law 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\nLikewise, Art. 12 (3) of the Regulation provides that the request to register a domain name based on a prior right shall include a reference to the legal basis in national or Community law for the right to the name, such as a trademark, as well as other relevant information, such as trademark registration number. Art. 14 (4) of the Regulation states that every applicant must submit documentary evidence that shows that he or she is the holder of the prior right claimed on the name in question. Lastly, Section 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”.\r\n\r\nThis Panel must say that Agora, S.A. (hereinafter, the “Applicant”) applied for the domain names in question and the validation agent received the documentary evidence before the deadline. \r\n\r\nThe conclusions derived from the examination of the documentary evidence carried out by the Validation Agent are clearly itemized by the Respondent in its response to the complaint in question.  Basically the Respondent rejected the application since there was no documentary evidence proving that the Complainant had a valid trademark on the names in question and there was neither any documentary evidence that the trademarks were still valid and as the documentary evidence shows that the marks concern the respective names in question. \r\n\r\n2.1. REGARDING THE DOMAIN NAMES AUTOMOTOGAZETA.EU, GAZETA.EU AND GAZETAWYBORCZA.EU\r\n\r\nFirst of all it is important to note that it seems that the Applicant did not furnish all the required documentary evidence in order to prove that indeed the Complainant trademark was still valid at the time of the application. It’s necessary to prove that AT THE TIME OF THE APPLICATION the trademark is still valid. It’s a very frequent practice amongst many applicants that they often furnish documentation evidencing a former period of validity of their trademark but yet they omit the literal tenor of the relevant rule. Art. 14 of the Regulation uses the present tense (“he or she is the holder of the prior right”, etc.). This is exactly what occurs in the case herein. The applicant indeed demonstrates that once was the holder of the AUTOMOTOGAZETA or GAZETAWYBORCZA trademarks but not at the moment of the application. And therefore we must acknowledge that the Validation Agent cannot presuppose that since the applicant was the holder of a prior right -as resulting from the documentary evidence- in the past, he still holds said right in the moment of the application. To this regard it is important to note that the term of protection for trademarks can vary depending on each country’s legislation. As affirmed by the Respondent, Polish Law on Trademarks provides that the right deriving from registration of a trademark lasts for 10 years and can be extended for a further 10-year period at the request of the owner. But no evidences about said request were provided by the Complainant, if we keep in mind that the trademarks AUTOMOTOGAZETA and GAZETAWYBORCZA were registered on May 25, 1995. \r\n\r\nThis Panel wants to remark the importance of providing all the relevant documentary evidence. It is only on it that the Validation Agent and the Registry will base their decision whether to accept or reject the application.  Therefore, it is essential to submit all documentary evidence. To this regard, cases nº 294 (COLT), nº 1071 (ESSENCE), nº 1232 (MCE), etc., reaffirm how important it is to meet this provision. \r\n\r\n2.2. THE BURDEN OF PROOF\r\n\r\nThe Sunrise Rules leave it clear that the applicant must submit all the documents that are needed for the Validation Agent so as to assess whether the applicant is the holder of the prior right corresponding to the domain name. We likewise can refer to Art. 10 (1) and Art. 14 (4) of the Regulation.  \r\n\r\nThis Panel must say that the Validation Agent cannot “suppose”, “presuppose”, etc. that the Applicant was indeed the holder of a prior right corresponding to the domain name. That would establish a non-desirable precedent both for the applicants as for the Registration bodies. In fact, the Regulation does not provide any case where an exception can be made in the egalitarian application of the relevant provisions. \r\n\r\n2.3 REGARDING THE DOMAIN NAME AUTOMOTOGAZETA.EU AND GAZETA.EU\r\n\r\nIt seems that the Complainant did not apply for the same name that is protected by “his” trademark. \r\n\r\nIndeed, the Respondent argues that the Complainant proved that he used to be the holder of two composite signs as trademarks, “AUTO-MOTO GAZETA” and “GAZETA WYBORCZA”. \r\n\r\na) Regarding the domain name AUTOMOTOGAZETA.EU\r\n\r\nTo this regard it is important to attend to the regulation. Art. 11 states that special characters are to be eliminated from the domain name, or replaced by a hyphen or rewritten. Complainant argues that a hyphen is a special character in the sense of article 11. \r\n\r\nThe respondent, on the contrary, denies that by mentioning art. 11 stating that any special characters must be replaced by a hyphen. Not in vain, the Respondent uses logics as a ground to affirm that a hyphen therefore must not be considered as a hyphen in the mind of the drafter of the Regulation. In fact, it has recourse to Section 19 (2) of the Sunrise Rules, that clarifies art. 11 of the Regulation, which clearly rejects the Complainant’s construction.  \r\n\r\nb) Regarding the domain name GAZETA.EU\r\n\r\nThe documents submitted by the Complainant were not enclosed with the documentary evidence. To make matters worse, they were provided in the framework of the present ADR proceeding. \r\n\r\nAgain, this Panel refers to the Sunrise Rules (Section 21 [2]) clearly stating that the Validation Agent will examine whether the applicant has a prior right to the name exclusively on the basis of a prima facie review of the first set of documentary evidence received. \r\n\r\nIn the case at hand this Panel considers that new documents that are submitted for the first time in the framework of the present ADR Proceeding must be disregarded. \r\n\r\nIn fact, regarding those new documents, the prior right on which the application proceedings for the name GAZETA was based was a trademark of national law and not a trade name, as alleged by the Respondent. \r\n\r\nAlso, the first two-month term of the sunrise period (from December 7 to February 7) is reserved to the trademarks, geographical indications and names referred to in art. 10 (3) of the Regulation pursuant to art. 12 (2) of the Regulation. And Complainant filed his application on February 3, that is, within this period. \r\n\r\nLastly, this Panel does not want to ignore the fact that the evidence brought in this ADR proceeding by the Complainant concerns the “gazeta.pl” brand and not the “gazeta” brand. It’s suitable to make this clarification. The application should have included the “.pl” extension pursuant to section 19(5) of the Sunrise Rules.",
    "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": "2006-09-14 00:00:00",
    "informal_english_translation": "1. APPLICATION FOR THE DOMAIN NAMES AUTOMOTOGAZETA.EU, GAZETA.EU and GAZETAWYBORCZA.EU BY AGORA, S.A.\r\n\r\nAgora, S.A. (hereinafter, the “Applicant”) applied for the domain names in question and the validation agent received the documentary evidence before the deadline. \r\n\r\nThe conclusions derived from the examination of the documentary evidence carried out by the Validation Agent are clearly itemized by the Respondent in its response to the complaint in question.  Basically the Respondent rejected the application since there was no documentary evidence proving that the Complainant had a valid trademark on the names in question and there was neither any documentary evidence that the trademarks were still valid and as the documentary evidence shows that the marks concern the respective names in question. \r\n\r\n2.1. REGARDING THE DOMAIN NAMES AUTOMOTOGAZETA.EU, GAZETA.EU AND GAZETAWYBORCZA.EU\r\n\r\nThe Applicant did not furnish all the required documentary evidence in order to prove that indeed the Complainant trademark was still valid at the time of the application. The applicant indeed demonstrates that once was the holder of the AUTOMOTOGAZETA or GAZETAWYBORCZA trademarks but not at the moment of the application. The Validation Agent cannot presuppose that since the applicant was the holder of a prior right in the past, he still holds said right in the moment of the application. The term of protection for trademarks can vary depending on each country’s legislation. Polish Law on Trademarks provides that the right deriving from registration of a trademark lasts for 10 years and can be extended for a further 10-year period at the request of the owner. But no evidences about said request were provided by the Complainant, if we keep in mind that the trademarks AUTOMOTOGAZETA and GAZETAWYBORCZA were registered on May 25, 1995. \r\n \r\n2.2. THE BURDEN OF PROOF\r\n\r\nThe applicant must submit all the documents that are needed for the Validation Agent so as to assess whether the applicant is the holder of the prior right corresponding to the domain name.  \r\n\r\nThe Validation Agent cannot “suppose”, “presuppose”, etc. that the Applicant was indeed the holder of a prior right corresponding to the domain name. In fact, the Regulation does not provide any case where an exception can be made in the egalitarian application of the relevant provisions. \r\n\r\n2.3 REGARDING THE DOMAIN NAME AUTOMOTOGAZETA.EU AND GAZETA.EU\r\n\r\nThe Complainant did not apply for the same name that is protected by “his” trademark. \r\n\r\na) Regarding the domain name AUTOMOTOGAZETA.EU\r\n\r\nTo this regard it is important to attend to the regulation. Art. 11 states that special characters are to be eliminated from the domain name, or replaced by a hyphen or rewritten. Complainant argues that a hyphen is a special character in the sense of article 11. \r\n\r\nThe respondent, on the contrary, denies that by mentioning art. 11 stating that any special characters must be replaced by a hyphen. Not in vain, the Respondent uses logics as a ground to affirm that a hyphen therefore must not be considered as a hyphen in the mind of the drafter of the Regulation. In fact, it has recourse to Section 19 (2) of the Sunrise Rules, that clarifies art. 11 of the Regulation, which clearly rejects the Complainant’s construction.  \r\n\r\nb) Regarding the domain name GAZETA.EU\r\n\r\nThe documents submitted by the Complainant were not enclosed with the documentary evidence. To make matters worse, they were provided in the framework of the present ADR proceeding. \r\n\r\nAgain, this Panel refers to the Sunrise Rules (Section 21 [2]) clearly stating that the Validation Agent will examine whether the applicant has a prior right to the name exclusively on the basis of a prima facie review of the first set of documentary evidence received. \r\n\r\nAlso, the first two-month term of the sunrise period (from December 7 to February 7) is reserved to the trademarks, geographical indications and names referred to in art. 10 (3) of the Regulation pursuant to art. 12 (2) of the Regulation. And Complainant filed his application on February 3, that is, within this period. \r\n\r\nThe evidence brought in this ADR proceeding by the Complainant concerns the “gazeta.pl” brand and not the “gazeta” brand. It’s suitable to make this clarification. The application should have included the “.pl” extension pursuant to section 19(5) of the Sunrise Rules.",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}