{
    "case_number": "CAC-ADREU-002661",
    "time_of_filling": null,
    "domain_names": [],
    "case_administrator": null,
    "complainant": [],
    "complainant_representative": null,
    "respondent": [],
    "respondent_representative": null,
    "factual_background": "1. HISTORY OF THE DOMAIN NAME APPLICATION\r\n\r\n1.1. The domain name klangwerk.eu (“the Domain Name”) was applied for on March 13, 2006, in the name of “Kraftwerk GbR RAlf Huetter\/Florian Scneider” (“the Applicant”).\r\nThis is the accurate information mentioned on a communication by EURid dated August 17, 2006, which followed a request for verification by the ADR Center for .eu attached to the Arbitration Court attached to the Economic Chamber of the Czech Republic and Agricultural Chamber of the Czech Republic (“the Court”) regarding the Domain Name status.\r\n\r\n1.2 The validation agent received the documentary evidence on March 20, 2006. The application was rejected on June 29, 2006.\r\n\r\n\r\n2. HISTORY OF THE ADR PROCEEDING\r\n\r\n2.1. On August 2, 2006, a complaint against EURid (“the Respondent”) was filed to the Court, in the name of Kraftwerk GbR Ralf Hütter\/Florian Schneider (“the Complainant”).\r\n\r\n2.2. In the following weeks, the Complainant and the Court engaged in a correspondence through the Court’s electronic platform, as, on the one hand, the latter notified two deficiencies in the complaint and, on the other hand, the former encountered technical problems when it subsequently tried to fill in the “Complaint Amend” form. Eventually, the Complainant was granted a prolonged deadline, and was offered to deliver the hard copy of its amended complaint (“the Complaint”) by September 14, 2006.\r\n\r\n2.3. The Court received the response to the Complaint (“the Response”) on October 25, 2006. \r\n\r\n2.6. The Panel was duly appointed on October 30, 2006.",
    "other_legal_proceedings": "The Panel is not aware of other legal proceedings which are pending or decided and which would relate to the disputed domain name or to the disputed decision",
    "discussion_and_findings": "The Respondent rejected the application on the grounds that, after reviewing the documentary evidence submitted by the Applicant, the validation agent came to the conclusion that such evidence did not demonstrate that the Applicant was the holder of the prior right claimed on the Domain Name (see 4.1.3 above).\r\n\r\nThe Respondent relies on Article 14 of EC Regulation 874\/2004 (validation and registration applications received during phased registration), and on Sections 20 (Licences, transfers and changes as regards the Applicant) and 21 of the Sunrise Rules (examination by the validation agent).\r\n\r\nThis leads the Panel to determine whether the Sunrise Rules are applicable or not (5), the respective powers of the validation agent (6) and of the Registry (7) when it comes to the validation of an application, and to determine whether they correctly used their powers in the present case (8).\r\n\r\n\r\n5. SUNRISE RULES ARE NOT APPLICABLE IN ADR PROCEEDINGS\r\n\r\n5.1. “[T]he ADR Panel shall decide whether a decision taken by the Registry conflicts with this Regulation or with Regulation (EC) No 733\/2002” (article 22.11 of EC Regulation 874\/2004), and NOT whether Registry’s decision is correct under the Sunrise Rules (as demonstrated or stated in Cases 1047 – festool.eu, 1071 – essence.eu, 1310 – astrodata.eu, 1481 – wisdom.eu, 1539, setra.eu, 1674 – ebags.eu, 2019 – drinks.eu \/ estragon.eu \/ krauter.eu \/ opskrift.eu \/ salat.eu \/ urter.eu, 2145 – cvc.eu, 2209 – commscope.eu, 2362 - petit-forestier.eu, and 2592 – tanos.eu ; see also Cases 1774 – psp.eu and 1930 – modeltrain.eu). Panels have limited jurisdiction in ADR proceedings against the Registry.\r\n\r\n5.2. Article 26.2 of the Sunrise Rules excludes the application of these Sunrise Rules to ADR proceedings against the Registry. This article states: \"The sole object and purpose of an ADR Proceeding against the Registry is to verify whether the relevant decision by the Registry conflicts with the Regulations\"… and therefore NOT with the Sunrise Rules. The Sunrise Rules are contractual rules, binding on the Respondent. It thus does not make sense that the Response relies on rules the Respondent knows are irrelevant, since it agreed to exclude their application. \r\n\r\n5.3. Nevertheless, the Response is partly grounded on the Sunrise Rules, and on precedents grounded on the Sunrise Rules. Be this a way for the Respondent to justify how it chose to interpret the Regulations, such contentions cannot constitute legal arguments, for the procedural and contractual reasons explained above.\r\n\r\n\r\n6. OBLIGATIONS OF THE VALIDATION AGENT UNDER THE REGULATION AS REGARDS THE DEMONSTRATION OF A PRIOR RIGHT\r\n\r\n6.1. According to the Respondent, “[t]he Respondent and the Validation agent were under no obligation to investigate into the circumstance of the application”. Respondent cites Article 21.2 of the Sunrise Rules – according to which the validation agent must only examine the prior right “on the basis of a prima facie review” of the documentary evidence –, and Article 21.3 of the Sunrise Rules – according to which the validation agent “is permitted in its sole discretion, to conduct its own investigations into the circumstances of the Application, the Prior Right claimed and the Documentary Evidence produced”, but is not obliged to do so.\r\nThese are rules set out in the Sunrise Rules. As such, they cannot be applicable to the present proceedings. The Panel must take into account the obligations of the validation agent as defined in the EC Regulations.\r\n\r\n6.2. According to Article 14 of EC Regulation 874\/2004, which is of relevance here, “[v]alidation agents shall examine applications for any particular domain name in the order in which the application was received at the Registry\", and “[t]he relevant validation agent shall examine whether the applicant that is first in line to be assessed for a domain name and that has submitted the documentary evidence before the deadline has prior rights on the name\".\r\nThe Panel notes that “to examine” is the verb used in these two sentences to define the validation agent’s duty.\r\nWhat does “to examine” mean? According to The Shorter Oxford English Dictionary (Revised & Edited by Onions C. T., Oxford, Oxford University Press, 1973, Third edition, p. 694, volume I), the verb “to examine” derives from the Latin word “examinare”, which means “weigh accurately”. This dictionary gives the following definitions:\r\n- To try, test, assay\r\n- To test judicially or critically; to try by a standard\r\n- To investigate by inspection or manipulation; to inspect in detail, scan, scrutinize\r\n- To inquire into, investigate; to discuss critically, etc.\r\nA multi-source dictionary search online service gives no different results. The website Dictionary.com aggregates definitions from different dictionaries (http:\/\/dictionary.reference.com\/browse\/examine). The relevant definitions based on the Random House Unabridged Dictionary (2006) are: To inspect or scrutinize carefully; To inquire into or investigate. The relevant definitions of The American Heritage® Dictionary of the English Language, Fourth Edition (2000), are: To observe carefully or critically; inspect; To study or analyze. The relevant definitions from the Merriam-Webster's Dictionary of Law (1996) are: To investigate or inspect closely; To question closely. And in the Princeton University WordNet tool (2003), one finds: Consider in detail and subject to an analysis in order to discover essential features or meaning; Observe, check out, and look over carefully or inspect.\r\nThe verb “to examine” obviously implies a scrutiny. And as a result, it is clear that the examination by the validation agent cannot be limited to a prima facie review (which means that Section 21.2 of the Sunrise Rules violates the EC Regulation 874\/2004 in that it states that \"[t]he Validation Agent examines 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 and scanned by the Processing Agent”). \r\nGiven the definitions of this word, the use of “examine” also implies investigations (in this approach, Section 21.3 of the Sunrise Rules violates the EC Regulation 874\/2004 in that it states that the validation agent is not obliged to conduct its own investigations).\r\n\r\n\r\n7. OBLIGATIONS OF THE REGISTRY UNDER THE REGULATION AS REGARDS THE DEMONSTRATION OF A PRIOR RIGHT\r\n\r\n7.1. It must also be stressed that, under Article 14 of EC Regulation 874\/2004, “if the validation agent finds that the documentary evidence does not substantiate a prior right, he shall notify the Registry of this”. This means that the Registry is only notified of the validation agent’s findings, but does not mean that the Registry is bound by the validation agent’s findings. Although much of the validation is done by the dedicated agent, the Registry is not deprived of any power regarding the fate of an application.\r\n\r\n7.2. Under Article 14 of EC Regulation 874\/2004, “[t]he Registry shall register the domain name, on the first come first served basis, if it finds that the applicant has demonstrated a prior right in accordance with the procedure set out in the second, third and fourth paragraphs.” This means that the Registry is, ultimately, the one which finds whether an application is correct or not. To do so, although it takes into account the validation agent’s findings, the Registry does have free will. \r\n\r\n\r\n8. OBLIGATIONS OF THE VALIDATION AGENT AND THE REGISTRY AS REGARDS THE EXAMINATION OF THE APPLICANT’S PRIOR RIGHT IN THIS CASE\r\n\r\n8.1. The Documentary Evidence submitted by the Applicant consisted of 18 pages. It is described in the Response (see 4.1.2 above) as “consisting of an international trademark application for the name \"KLANGWERK\", filed with the WIPO on 25 October 2005 by \"Ralph Hütter + Florian Schneider\" under the Madrid Agreement”, and of “a German trademark registration for the name \"KLANGWERK\", registered in the name of Ralph Hütter and Florian Schneider on 21 October 2005.”\r\n\r\n8.2. The first document the Respondent refers to is an international trademark application. To the Respondent, “[t]here was no document establishing that the international application had actually been registered”.\r\nAs demonstrated above (see 6.2 above), any application for a domain name must be carefully inspected, and is subject to investigation. In this approach, there was no proper examination pursuant to Article 14 of EC Regulation. To verify whether the trademark applied for was actually registered, a simple search on the WIPO Intellectual Property Digital Library Web site, which provides access to the Trademarks database “Madrid Express”, free of charge, could have been performed. Such a search, performed by the Panel in a few seconds, shows that a trademark “Klangwerk” is registered in the name of Ralf Hütter and Florian Schneider since October 26, 2005. The address of the owners is the same as the address of the Applicant.\r\n\r\n8.3. The Respondent acknowledges the Documentary Evidence included a valid German trademark “KLANGWERK”, registered in the name of Ralph Hütter and Florian Schneider. To the Applicant, such evidence could not substantiate that the Applicant had a prior right, considering that the Application names “Kraftwerk GbR RAlf Huetter\/Florian Scneider” as Applicant and that the German trademark is registered in the name of \"Ralph Hütter and Florian Schneider\".\r\n\r\n8.3.1. The Respondent argues there is a difference between the name of the Applicant and the name of the owner of the prior right. It refers to the Section 20.3 of the Sunrise Rules, which states that in case of difference between the name of the Applicant and the name of the owner of the prior right, the Applicant must submit official documents explaining this difference. This provision, like all the Sunrise Rules, is not applicable in this proceeding.\r\n\r\n8.3.2. The Respondent argues that, because of the difference between the name of the Applicant and the name of the holders of the prior right, it had “legitimate doubts as to whether the Applicant was indeed the holder of the prior right claimed, the licensee of the trademark holder or simply another person”. The Panel is not satisfied that this difference can lead to “legitimate doubts”.\r\n\r\n8.3.2.1. The trademark owners’ names are Ralph Hütter and Florian Schneider. These names appear in the field “Applicant”, preceded by the name “Kraftwerk GbR”, as “RAlf Huetter\/Florian Scneider”. The trademark owners’ names obviously appear in the “Applicant” field. The fact that there is a typo in these names is not even discussed by the Respondent.\r\n\r\n8.3.2.2. This leaves the Respondent’s argument according to which the Applicant is “Kraftwerk GbR” and not “RAlf Huetter\/Florian Scneider” unanswered.\r\nTo the Respondent an Applicant can only be a single person. The Panel will address this question below. Before addressing it, the Panel raises a preliminary question: What is “Krafwerk GbR”?\r\nThe Complainant alleges – and this is not disputed by the Respondent – that it is “a partnership pursuant to article 705 ff. BGB of the German Civil Code. This partnership has the competence to be the complainant on its own according to the jurisdiction of the German Supreme Court (Bundesgerichtshof) [sic] and will be represented jointly by its partners Mr. Ralf Huetter and Mr. Florian Schneider”. This is not really clear to the Panel, who is not familiar with this German law institution.\r\nAlthough it is reluctant to use the internet as a source, knowing that online content is not always reliable, the Panel made further search on what is a “GbR”. It found an interesting source, which it believes is reliable: The IPR Helpdesk, a service funded by the European Commission, which content is provided by academic institutions. A 22 pages document titled “Joint Ownership in Intellectual Property Rights”, available on the IPR Helpdesk website at ipr-helpdesk.org\/documentos\/docsPublicacion\/pdf_xml\/, which is “intended to provide … with a first idea of the underlying concepts”, explains the rules relating to joint ownership in several EU Countries, including Germany, as regards trademarks (paragraph 4.3).\r\nAccording to this source, joint ownership is allowed in Germany. Contracts will define the relationship between owners. “In the absence of any agreement to the contrary, the effect of Joint Ownership is to create a legal entity sharing undivided interests in the intellectual property right - i.e. each party holds a nominal equal share, divided simply per head (Bruchteilsgemeinschaft, §§ 741 ff BGB). … Joint Ownership can lead to a specific form of business entity (Gemeinschaft bürgerlichen Rechts, §§ 705 ff. BGB)”.\r\nThe Panel concludes from its review that “Kraftwerk GbR” is an entity legally entitled to represent the joint owners of trademark rights. As such, “Kraftwerk GbR” could apply for the Domain Name, considering that it satisfies the general eligibility criteria set out in Article 4(2)(b) of Regulation (EC) No 733\/2002.\r\n\r\n\r\n9. CAN A DOMAIN NAME BE SUBJECT TO JOINT USE?\r\n\r\nThe EC Regulations do not prevent the allocation of a domain name to co-users. \r\nOne could object they always refer to the domain name user in the singular, but it is common for rules of law to be written in the singular.\r\nThe EC Regulations take into account the demonstration of a prior right as the basis for allocation of a domain name during the phased registration. During the phased registration, “holders of prior rights have appropriate opportunities to register the names on which they hold prior rights” (EC Regulation 874\/2004, Recital 12). EC Regulations do not forbid applications based on a jointly owned trademark \r\nIf an application based on a jointly owned trademark is successful, it shall translate into a joint use by two or more persons of a single domain name.\r\nA domain name can be a used by a unique person, by several persons, or, by several persons along with a specific form of business entity that can represent them to protect their intellectual property interests, like in this case.\r\n\r\n\r\n10. CONCLUSION\r\n\r\nThe Sunrise Rules are not applicable in ADR proceedings. The Panel had to review the duty of the validation agent and of the Registry under the EC Regulations.\r\nAfter reviewing the EC Regulations, the Panel concluded that the validation of an applicant’s prior right cannot consist of a rough review or the documentary evidence, but requires a careful inspection.\r\nSuch careful inspection could have led to the conclusion that there had been a demonstration of a prior right on the Domain Name.\r\nGiven that the prior right is a jointly owned trademark, the Domain Name must be registered on the basis of this joint ownership in the names of the persons who have a right.",
    "decision": "For all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the Panel orders that\r\nEURid’s decision be annulled\r\nthe domain name klangwerk.eu be transferred to the Complainant",
    "panelists": [
        null
    ],
    "date_of_panel_decision": "2006-11-21 00:00:00",
    "informal_english_translation": "The Sunrise Rules are not applicable in ADR proceedings. The Panels have to review the duty of the validation agent and of the Registry under the EC Regulations.\r\nAfter it scrutinized the EC Regulations, the Panel concluded that the validation of an applicant’s prior right cannot consist of a rough review or the documentary evidence, but requires a careful inspection.\r\nSuch careful inspection could have led to the conclusion that there had been a demonstration of a prior right on the Domain Name in the present case.\r\nGiven that the prior right is a jointly owned trademark, the Domain Name must be registered on the basis of this joint ownership in the names of the persons who have a right.",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}