{
    "case_number": "CAC-ADREU-002185",
    "time_of_filling": null,
    "domain_names": [],
    "case_administrator": null,
    "complainant": [],
    "complainant_representative": null,
    "respondent": [],
    "respondent_representative": null,
    "factual_background": "The Complainant is a public corporation whose task is to manage, operate, develop and promote telematics for its members, which consist of local public authorities, including the City of Antwerp. \r\n\r\nThe Complainant applied for registration of the Domain Names under the phased registration (“Sunrise”) period pursuant to article 10(1) of Commission Regulation EC number 874\/2004 (“the 2004 Regulation”). However, its application was not successful as another party, Parknet BV, had submitted an earlier application for the Domain Names. In fact the Complainant submitted the first application in time but then failed to submit the supporting documentation within the relevant deadline. The next application in time was by Parknet BV (again without supporting documents) and the next one again by Parknet (this time with supporting documents) and then finally another application by the Complainant with supporting documentation.\r\n\r\nParknet BV’s application for the Domain Names was based on a Benelux trademark, number 796689 which was applied for on 28 March 2006 and granted on 30 March 2006. The form of the trademark comprises two interrupted lines between which the alphanumerical characters “ANTWERP &!” are written. \r\n\r\nIf the symbols “&” (the ampersand) and “!” are removed from Parknet BV’s trademark, the word element of this mark will read as ANTWERP. Other Benelux marks were lodged in a similar form by Parknet BV for other European cities such as Bucharest (BUCH & AREST) and Belgrade (BEL & GRADE) and names of various countries (including BANGLA & DESH and AFG & HANISTAN). \r\n\r\nThe Respondent approved the application and registered the Domain Names in the name of Parknet BV.\r\n\r\nSection 2 of the Sunrise Rules provides that where the Respondent finds that an applicant has demonstrated a prior right such as a relevant trademark registration, it shall register domain names on a first come, first served basis. \r\n\r\nIn this case the Respondent found that the Benelux trademark described above constituted a relevant prior right and as Parknet BV’s application predated that of the Complainant, the Respondent registered the Domain Names in the name of Parknet BV. The Complainant is now the next applicant in the queue for the Domain Names.\r\n\r\nOn 3 July 2006 the Complainant filed a Complaint with the Czech Arbitration Court against the validation of the Domain Names. The formal date of commencement of the ADR proceedings was 17 July 2006. \r\n\r\nThe Complainant’s application is made pursuant to section 22.2 of the Sunrise rules. This provides that an interested party may initiate an ADR proceeding against the Respondent if it considers that the Respondent failed to comply with Regulation (EC) number 733\/2002 (“the 2002 Regulation”) and the 2004 Regulation when it decided to register a domain name. \r\n\r\nThe relevant provisions of the 2004 Regulation are Articles 3(c), 10.2 and 11. \r\n\r\nArticle 3(c) provides that each applicant for a domain name must affirm that its request for a domain name registration is made in good faith and does not infringe any rights of a third party. A material inaccuracy will constitute a breach of the terms of the registration.\r\n\r\nArticle 10.2 provides that a domain name 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\nArticle 11 provides that, “[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\n\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 characters and punctuations as referred to in the second paragraph shall include the following:\r\n~@#$%^&*()+=<>{}[]| \\ \/:;’,.?”  ”",
    "other_legal_proceedings": "None known",
    "discussion_and_findings": "The first ground of the Complaint\r\n\r\nArticle 3(c) of the 2004 Regulation provides that an applicant must affirm that its request for a domain name registration is made in good faith and does not infringe any rights of a third party. A material inaccuracy will constitute a breach of the terms of the registration. Therefore, if the application made by Parknet BV is indeed made in bad faith or if Parknet BV was aware of any third party conflicting rights the applicant will be in breach of Article 3(c). \r\n\r\nThe Complainant has highlighted a number of facts which in the present case suggest that the Domain Names have been applied for in bad faith. However, the Regulations do not oblige the Respondent to make any assessment on the issue of bad faith during the application process nor do the Regulations provide for a mechanism by which an applicant could make representations on the issue. In this context the Panel refers to the decision in LIVE (case number 265) in which it was observed that “bad faith is not a valid reason to revoke the domain at issue because these are not grounds that the validation agent should have assessed in the sunrise period. Therefore, it is not possible to apply those rules now.” This approach is also supported by the decisions in TOS (case number 382) and AUTOTRADER (case number 191). \r\n\r\nThe Panel therefore does not accept that the Respondent’s decision contravenes the provisions of article 4.2 (a) of the 2002 Regulation.  As the Respondent points out, separate proceedings are available to the Complainant to take action against the applicant under Article 22 1 (a) of the Regulation if it considers that the applicant’s registration is speculative or abusive.\r\n\r\nThe second ground\r\n\r\nProcedural issues\r\n\r\nBefore the Panel considers the substantive issues in relation to the second ground, it is necessary to briefly deal with the procedural issues arising in connection with the Respondent’s additional submission, dated 20 September 2006. In accordance with paragraph 8 of the .eu Alternative Dispute Resolution Rules (“the ADR Rules”), the Panel may admit, in its sole discretion, further statements or documents from either party to the proceeding. The exercise of this discretion is subject to the general duty set out in paragraph 7(a) of the ADR Rules, namely that the Panel must ensure that the parties are treated fairly and with equality. In the present circumstances, the additional statement submitted by the Respondent deals exclusively with the recent decision in the OXFORD case. As this decision was published after the date on which the Respondent submitted its initial Response, it could not have been submitted at an earlier stage. Moreover, the Panel is conscious that the subject matter of the OXFORD decision is a matter of public record and does not fundamentally change the basis of the Respondent’s case as set out in its initial Response. It is simply another example of the approach which a different panel has taken in another case. Accordingly, the Panel has noted the contents of the panel’s decision in the OXFORD case but it is not bound to follow its reasoning.  \r\n\r\nSubstantive issues and principles of construction of the Regulations\r\n\r\nArticle 11 of the 2004 Regulation sets out how the Respondent is to deal with applications which are based upon a prior right which contains special characters. The provision contains a list of such special characters. This list includes the symbol “&” but does not include the symbol “!”. However, the list set out in article 11 is non-exhaustive (“special characters…shall include the following”) and the Panel is satisfied that for the purpose of article 11, the symbol “!” is to be regarded as a special character or punctuation. \r\n\r\nAs has been observed in previous decisions, the provisions of article 10.2 and 11 are not without ambiguity and have given rise to varying interpretations in cases including  OXFORD (case number 1867), FRANKFURT (case number 394) and BARCELONA (case number 398). \r\n\r\nOne of the principal difficulties with the interpretation of this provision is that the list of typographical symbols listed in Article 11 Part 2 are accorded very different treatment in practice and no provision is made for this by the wording of the Article. In particular, some typographical symbols would be accorded much greater significance than others when determining what would constitute the “complete name” which is to form the basis of the registration of the prior right under Article 10.2.\r\n\r\nTo take one example, the use of brackets would generally be regarded as insignificant. So, if a party whose registered right was Myname(Manchester) applied for MynameManchester.eu (that is it simply deleted the special characters from its name) this would generally be perceived as a name which corresponded to “the complete name for which the prior right exists” as required by Article 10.2.\r\n\r\nTo take another example, the use of symbols which denote currency would often be treated differently as they would normally be accorded greater significance. So, if the registered mark was $29, it might generally be considered that the name which corresponded to the complete name was 29 dollars.\r\n\r\nLastly, the use of the ampersand is generally accorded still greater significance. It is not usually disregarded when considering what constitutes a complete name. To take a specific example, the leading UK retailer Marks & Spencer has its website at MarksandSpencer.com. It would generally be considered that its complete name is Marks & Spencer (or, perhaps, Marks and Spencer) but not MarksSpencer.\r\n\r\nTo this extent, Articles 10.2 and Article 11.2 are in conflict as Article 10.2 requires registration of the complete name but Article 11.2 does not, on its face, reflect the fact that different typographical symbols will be accorded a different weight in determining what constitutes the complete name.\r\n\r\nIt is said by the Respondent that it has an unfettered choice as to which of the 3 courses set out in Article 11 it follows. Previous cases have examined whether the three options set out in article 11 are all available or whether there are circumstances in which one option should be followed in preference to another. \r\n\r\nIrrespective of whether or not the Respondent is constrained to follow one course in preference to another under Article 11, it is material to have regard to the specific typographical symbol in issue for the purposes of determining whether the applicant has met the requirements of  Article 10.2. In this respect, different typographical symbols may require different treatment.  Thus, if the owners of a mark such as Hello! were to have applied for Hello.eu, the incorporation of the exclamation mark as part of the prior right might not be regarded as significant. A decision to eliminate the exclamation mark for the purposes of assessing what constitutes the complete name would be understandable in these circumstances. \r\n\r\nApplication of the principles of construction to  the prior rights and domain names\r\n\r\n\r\nThe exclamation marks in ANTWERP&! and ANTWERPEN&! are susceptible to similar treatment to that indicated above, namely they could be eliminated from the domain names or replaced with a hyphen and the remaining elements of the domain names(subject to what is said below) still be regarded as the complete names applied for. \r\n\r\nIt is not considered that it would be possible to rewrite the domain names as ANTWERPENANDEXCLAMATIONMARK or ANTWERPANDEXCLAMATIONMARK; it cannot have been intended that a proper interpretation of the Regulations would mean that this was an option which could sensibly be followed.\r\n\r\nAntwerp\r\n\r\nHowever, the ampersand in ANTWERP&! has a greater significance for the reasons outlined above. It is considered that this name should not have been regarded as the complete name for the purposes of an application for either ANTWERP or ANTWERPEN. It is accepted that the Regulation is not intended to require the Respondent to exercise discretion so far as prior rights are concerned. But for the purposes of Article 10.2, the Respondent does have to establish whether the registration applied for constitutes the complete name for which the prior right exists. A proper reading of the regulation would not permit a registrant claiming a prior right in ANTWERP&! to register the same domain name as a registrant claiming a prior right in ANTWERP. The deletion of the ampersand in these circumstances for the purpose of determining the prior rights was not an appropriate course; deletion or rewriting the name should have been followed.\r\n\r\nAs indicated above, it is appropriate to have regard to the fact that an ampersand is usually a typographical shorthand for the word “and” when assessing the complete name for which rights exist under Article 10.2. If the exclamation mark is disregarded, the prior right arising from ANTWERP&! is, at best,  ANTWERPAND and not ANTWERP. In fact, there are further difficulties in analysing the applicant’s mark in view of the placing of the conjunction; these are dealt with below.\r\n\r\nIn the case of the Antwerp name applied for  the consequence is that the decision of the Respondent should be annulled for the reasons indicated above.\r\n\r\nAntwerpen\r\n\r\nA potential  oddity arises, however, arises in the case of the ANTWERPEN name applied for. Antwerpen is the commonly used spelling in Belgium for the city of Antwerp. The Respondent points out, however, that EN also means “and” in Dutch. One reading (in English) of the name ANTWERPEN  therefore, is ANTWERPAND. \r\n\r\nThis is not the most obvious reading of the name, particularly in the English language, nor is it likely to be the most natural reading of the name in Dutch. However, if the applicant’s trade mark ANTWERP&! were be  read as ANTWERPAND (that is, in Dutch, ANTWERPEN), the consequence would be that the Applicant’s mark matches the domain name Antwerpen and the mark could be regarded as the complete name for which the prior right exists. \r\n\r\nThe name applied for, however, is Antwerpen. This is a complete word. It is not divisible into groups of letters some of which might correspond to other words in particular languages. Moreover, there are 3 official languages in Belgium, being the country in which the national mark has been obtained, namely French, ,German and Dutch. “EN” does not mean “and” in all of them. It cannot be intended in these circumstances that the ampersand should be translated into “and” in each language in order to give the applicant not one but 3 separate prior rights.  \r\n\r\nFinally, the typographical symbol “&” and the word “and” are conjunctions, intended to be placed in between other words in order to link them together. The ampersand has no obvious or clear meaning when placed at the end of a word. The placing of an ampersand at the end of the complete word ANTWERP does not render it the complete name for ANTWERPEN simply because in one language the ampersand can be read as “EN”. The position may differ if the ampersand was used in a context between two words where its meaning was apparent.\r\n\r\nAccordingly, it was inappropriate in these circumstances for the Respondent to have accepted ANTWERP&! as constituting a prior right for the domain name ANTWERPEN.",
    "decision": "Decision\r\n\r\nFor all the foregoing reasons, in accordance with Paragraphs B12(b) and (c) of the Rules, the Panel orders that the Complaint is upheld and the decision of the Respondent is annulled. \r\n\r\nIf the Respondent is satisfied that the Complainant is the next applicant in the queue for the domain names and the registration criteria are satisfied, the names should be transferred to the Complainant.",
    "panelists": [
        null
    ],
    "date_of_panel_decision": "2006-10-06 00:00:00",
    "informal_english_translation": "In applying the provisions of Article 11 of Community Regulation 874\/2004, it is nonetheless necessary to ensure that the requirements of Article 10.2 of the Regulation are met and the domain name applied for corresponds to the complete name for which the prior right exists. In the present case, the prior right was ANTWERP&!. It is found that it was permissible for the Respondent to disregard the exclamation mark in the prior right. However, the ampersand should not have been disregarded. The exact treatment of an ampersand placed at the end of a word is problematic but it is apparent that the prior right was not a complete word for either of the domain names applied for. The consequence is that the Respondent’s decision is annulled.",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}