{
    "case_number": "CAC-ADREU-002537",
    "time_of_filling": null,
    "domain_names": [],
    "case_administrator": null,
    "complainant": [],
    "complainant_representative": null,
    "respondent": [],
    "respondent_representative": null,
    "factual_background": "On 7 December 2005 the Complainant filed an application for registration of the domain name <fab.eu> on the basis of prior rights in the name “FAB”.  On 4 January 2006 the Complainant sent to EURid the following documentary evidence in support of its application:\r\n(i) an extract from online database of trade marks of Czech Republic Industrial Property Office dated 14 December 2005;\r\n(ii)  trade mark registration certificate issued by the Industrial Property Office; and\r\n(iii) an extract from the Commercial Register administered by the Regional Court Hadrec Kralove Section C, File No 20609\r\n\r\nThe application was rejected by the Respondent on 16 June 2006.  Two reasons were given as folliows:\r\n\r\n(i)  insufficient substantiation of connection between the applicant for the domain name and the holder of the prior right; and\r\n(ii)  failure to document the prolongation of the validity of the trade mark.",
    "other_legal_proceedings": "",
    "discussion_and_findings": "This case concerns the Respondent’s rejection of the Complainant's application for the <fab.eu> domain name during the period of phased registration   The two grounds given for rejecting the application were firstly, an insufficient substantiation of connection between the applicant for the domain name and the holder of the prior right; and secondly, a failure to document the prolongation of the validity of the trade mark.\r\n\r\nThe Respondent has not disputed the Complainant’s submissions in connection with the first ground on which the Complainant’s application was rejected i.e. an insufficient substantiation of connection between the applicant for the domain name and the holder of the prior right.  In particular that at the time of the Complainant’s application, the registered holder of the trade mark “FAB” was FAB, a.s., and not the Complainant, FAB, s.r.o.  As FAB, a.s. was wound up on 1 September 2005 the transfer of business assets to the Complainant, (which had not yet been registered with the Czech Trade Marks Registry), was evidenced by an extract from a Regional Court which stated that the business assets of FAB, a.s. had passed to the Complainant.\r\n\r\nThe remaining issue concerns the second ground on which the Respondent rejected the Complainant’s application.  This relates to the prolongation of the validity of the trade mark and whether the documentary evidence filed with the Complainant verifies that the Complainant is the holder of prior rights in the “FAB” mark.\r\n\r\nThe aim of the phased registration period is to ensure that holders of prior rights will have the appropriate opportunity to register the in which they have rights.  Under Article 10 of Regulation 874\/2004 (the “Regulation”), holders of prior rights recognised or established by national and\/or Community law and public bodies are eligible to apply to register domain names during a period of phased registration. \r\n\r\nArticle 14 of the Regulations requires every applicant to submit documentary evidence that verifies that the applicant is the holder of prior rights claimed on the name in question.  The documentary evidence must be filed within forty calendar days following submission of the application to the Registry\r\n\r\nThe official requirements for documentary evidence and the rules for validation of prior rights are set out in detail in the Sunrise Rules.  Under Section 11 (3) of the Sunrise Rules the applicant must be the holder (or licensee where applicable) of the Prior Right claimed no later than the date on which the application is received by the Registry, on which date the Prior Right must be valid, which means that it must be in full force and effect”\r\n\r\nSection 21.2 of the Sunrise Rules requires the validation agent to 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.  Section 13(2) sets out the documentary evidence required to show a registered trademark.  It includes a copy of an official document issued by the competent trade mark office including a certificate of registration or renewal certificate or an extract from an official (on-line) database which must clearly show that the applicant is the registered owner of the registered trade mark.  \r\n\r\nThe Complainant submitted in support of its application both a certificate of registration and an extract from the official (on-line) database to verify it prior rights to the name in question.  Both the trade mark certificate and the online database showed the “FAB” trade mark (No.184333) has a filing date and priority date of 08.12.1994.  Neither the certificate nor the online database show that the “FAB” trade mark registration has been renewed.   The need for renewal every ten years is clearly stated on the trade mark certificate which contains the notation: \r\n\r\n“The protective period of the trademark incorporated amounts to ten years and starts to run from the day when the Office receives a TM application. The application for the incorporation renewal can be submitted at the soonest in the last year of the protective period and at the latest six months after its expiry (Section 13 of Act No. 174\/1988 Coll)”\r\n\r\nOn the face of both the certificate of registration and the online database the ten year validity period for the trade mark appears to have expired.  \r\n\r\nThe Complainant argues that the extract from on-line data-base states that: “The database comprises only valid trademarks registered with the Industrial Property Office” and hence the trade mark must have been renewed.  However, the extract also contains the caution: “The present extract has only an informative nature and the data for its compilation were generated on the Internet network. If you think that there are mistakes, please turn to the Industrial Property Office.”\r\n\r\nAn extract from the online database is good evidence of the facts contained in it.  However, as evidence of the applicant prior rights is flawed in that it did not show an unexpired or renewed mark.  One has considerable sympathy for the Complainant, but this is tempered with the knowledge that in fairness to all applicants for a .eu domain name the rules must be applied consistently and that the burden of proof in establishing prior rights rests with the Complainant.  \r\n\r\nThe online database extract generated on 14 December 2005 did not evidence that the trade mark had been renewed after the 10 year period.  On the face of it showed a trade mark registration which was valid until 08.12.04.\r\n\r\nBy contrast the documents attached to the Complaint included not only the extract from the on-line trade mark database kept by the Industrial Property Office; and certificate of the trade mark registration, issued by the Industrial Property Office but also the certificate of renewal of the trade mark certificate.  It is this last document which unambiguously indicates that the trade mark registration has been renewed and is valid.  If it had been included in the Complainant’s first set of documentary evidence which the validation agent examined to determine whether the applicant has a prior right to the name in question the outcome might have been different.  \r\n\r\nThe burden of proof is on the applicant to show the existence of a prior right.   The relevant documentary evidence must be submitted in due time to the validation agent.  In this case a crucial document, the renewal certificate was not submitted with the first set of documents to the validation agent.\r\n\r\nAs stated in ADR 1886 (GBG),”the relevant question is thus not whether the Complainant is the holder of a prior right, but whether the Complainant demonstrated to the validation agent that it is the holder of a prior right.  If an applicant fails to submit all documents which show that it is the owner of a prior right the application must be rejected\".",
    "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": "2006-11-03 00:00:00",
    "informal_english_translation": "The Complainant contests the Respondent’s rejection of its application for the domain name <fab.eu> on the grounds of:\r\n\r\n(i) insufficient substantiation of connection between the applicant for the domain name and the holder of the prior right; and\r\n(ii) failure to document the prolongation of the validity of the trade mark.\r\n\r\nThe Respondent did not dispute the Complainant’s submissions that the connection between the applicant for the domain name and the holder of the prior right was substantiated.  \r\n\r\nThe burden of proof was on the Complaint to show it had the requisite prior rights in the name and that the trade mark had been renewed.  The documents filed with the application included certificate of the trade mark registration, an extract from the on-line trade mark database kept by the Industrial Property Office.  These documents showed the date of registration but did not show that the trade mark had been renewed.  The renewal certificate filed with the Compliant was not within time and so the Respondent has the right to deny Complainant’s application",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}