{
    "case_number": "CAC-ADREU-002080",
    "time_of_filling": null,
    "domain_names": [],
    "case_administrator": null,
    "complainant": [],
    "complainant_representative": null,
    "respondent": [],
    "respondent_representative": null,
    "factual_background": "On 7 December 2005 at 11:10:12.671 the applicant, Automatia Pankkiautomaatit OY (the “Applicant”) was first to file an application for the domain name “otto.eu”.  Documentary evidence filed in support of the application included Finnish trade mark registration no 142135 registered on 22 January 1996 for the mark \"otto.\". That mark consisted of the letters “otto” in yellow followed by a red dot.  The trade mark registration noted that “Exclusive right to the word “otto” is disclaimed“.\r\n\r\nThe Complainant, Otto B.V. was third in the queue for “otto.eu” domain name having applied on 7 December 2005 at 11:23:31.990.\r\n\r\nOn 4 July 2006 the Complainant filed its Complaint. ADR Proceedings were formally commenced on 12 July 2006.  The Respondent, EURid filed a Response on the 30 August 2006.  On the same day the undersigned having confirmed her independence was appointed panellist.\r\n\r\nOn 1 September 2006, by way of Nonstandard Communication the Complainant filed a Reply to EURid’s Response which the Panel has exercised its discretion to admit under Paragraph B 8 of the ADR Rules.\r\n\r\nOn 25 September 2006, by way of Nonstandard Communication the panellist invited each of the Complainant and Respondent to comment on the relevance of Section 19(2) of the Sunrise Rules to their case.  Neither the Complainant nor the Respondent have availed themselves of the opportunity to comment on this section of the Sunrise Rules which deals with figurative trade marks.",
    "other_legal_proceedings": "The Panel is not aware of any other pending or decided legal proceedings relating to the disputed domain name",
    "discussion_and_findings": "Under Section 2 of the .eu Domain Name Registration Terms and Conditions,  the Registry shall register domain names on a “first come, first served” basis.  The Applicant, Automatia Pankkiautomaatit OY applied for the domain name “otto.eu” on 7 December 2005 at 11:10:12:671 and was the first in the queue.  The Complainant applied approximately 13 minutes later at 11:23:31:990 and was third in a queue the “otto.eu” domain name\r\n\r\nArticle 10(1) of the Regulation (EC) states 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 names.  Article 14.4 of the Regulation requires that every applicant must submit documentary evidence that shows prior rights in the relevant name.  Pursuant to Article 10(1) of the Regulation this includes valid registered national and community trade marks.\r\n\r\nThe crux of the Complaint’s case is firstly that the Applicant does not have prior rights in the name “otto” because the trade mark registration on which the prior right is based is a figurative mark and secondly that the trade mark specifically disclaims exclusive rights to the word “otto”.\r\n\r\nIn respect of the Complainant’s submission that the Applicant only has rights to the figurative mark and not to the word “otto” but only to the specific graphic sign, neither the Complainant nor the Respondent has referred to Section 19 (2) of the Sunrise Rules in their contentions nor responded to the Panel’s invitation to comment on the relevance of Section 19 to their case.  Section 19 (2) of the Sunrise Rules specifically deals with figurative marks and provides:\r\n\r\n“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:\r\n\r\n(i)\tthe sign exclusively contains a name, or\r\n(ii)\tthe word element is predominant, and can be clearly separated or distinguished from the device element,\r\n\r\nprovided that\r\n\r\n(a)\tall 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\r\n(b)\tthe 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\nThe Finnish trade mark registration no.142135 on which the prior right is based is comprised of the word “otto” in yellow followed by a red dot.  The Applicant’s trade mark no.143749 is comprised of a square with a yellow background with the word “otto” in white followed by a red dot.  In both trade marks the word element “otto” is predominant and can be clearly separated from the device element as required by Section 19 (ii) of the Sunrise Rules.  Further, all alphanumeric characters included in the sign are contained in the domain name applied for in the same order that they appear in the sign.  The final dot (“.”) following the word element of the mark is not an alphanumeric character but a punctuation mark which, under Article 11 of the Regulations, the Applicant has the option to eliminate entirely from the corresponding domain name for which it has applied.  As the general impression of the word “otto” is apparent without any reasonable possibility of misreading the characters of which the sign consists or the order in which those character appear, the requirements of Section 19 (2) (ii) (a) and (b) of the Sunrise Rules in respect of prior rights in figurative marks have been met.\r\n\r\nThe fact that the Applicant’s Finnish trade marks have the note:” Exclusive right to the word “otto is disclaimed” does not mean that the Applicant has no rights to the name.  The word “otto” is in common usage in the Finnish language and means “take“ or “withdraw”.  “Otto” may also be a person’s name.  Whilst the Applicant may not have exclusive rights to the word “otto” this does not deprive the Applicant of all rights to that 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": "2006-09-15 00:00:00",
    "informal_english_translation": "The Applicant filed its application for the “otto.eu” domain name on 7 December 2005 approximately thirteen minutes earlier than that of the Complainant.\r\n\r\nThe Complaint filed against EURid submitted that the Applicant did not have prior rights in the name “otto” because the trade mark registration on which the prior right was based is a figurative mark and that the trade mark specifically disclaims exclusive rights to the word “OTTO”.\r\n\r\nThe Applicant’s Finnish trade mark registration no. 142135 consists of the word “otto” in yellow followed by red dot.  The word element “otto” is predominant in the mark and can be clearly separated from the device element as required by Section 19 (ii) of the Sunrise Rules.  All alphanumeric characters included in the sign are contained in the domain name applied for in the same order that they appear in the sign.  The final dot (“.”) following the word element of the mark is not an alphanumeric character but a punctuation mark which, under Article 11 of the Regulations, the Applicant has the option to eliminate entirely from the corresponding domain name for which it has applied.  The general impression of the word “otto” is apparent without any reasonable possibility of misreading the characters of which the sign consists or the order in which those character appear.  Accordingly, the requirements of Section 19 (2) (ii) (a) and (b) of the Sunrise Rules in respect of prior rights claimed in respect of figurative marks have been met.\r\n\r\nThe Finnish Trade mark registration note which states: “Exclusive right to the word “otto” is disclaimed“, does not mean that the Applicant has no rights to the name.  The word “otto” is in common usage in the Finnish language.  Whilst there may not be exclusive rights to the word “otto” this does not deprive the Applicant of all rights to that name.\r\n\r\nThe Complaint is therefore denied.",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}