{
    "case_number": "CAC-ADREU-002879",
    "time_of_filling": null,
    "domain_names": [],
    "case_administrator": null,
    "complainant": [],
    "complainant_representative": null,
    "respondent": [],
    "respondent_representative": null,
    "factual_background": "GEMA Gesellschaft für musikalische Aufführungs- und mechanische Vervielfältigungsrechte (“the Complainant”) is the only existing collective copyright administration society for musical performing and mechanical reproduction rights in Germany. The Complainant represents the rights of about 60,000 composers, lyricists and publishers of works of music and his task and work as a collective copyright administration society is based on public law. The legal basis for Complainant’s activities is the German Law on the Administration of Copyright and Neighbouring Rights, which contains the obligation to conclude a contract with the Complainant. The monopoly was created by a federal legal act on September 28, 1933. On the basis of federal public law, the Complainant has used it’s current name since August 24, 1947. Due the monopoly position granted by law, all relevant trade circles know the Complainant under the designation \"GEMA\".\r\n\r\nThe Complainant is the owner of three valid German trademarks, namely of the word-\/figurative mark No. 1024164 \"GEMA\" filed on September 14, 1981, the word mark \"GEMA\", No. 1024165 filed on September 14, 1981 and finally the word-\/figurative mark \"GEMA\", No. 1026214 filed on November 21, 1979. Furthermore, the Complainant enjoys protection under the Madrid Agreement for the International Trademarks Nos. 467751 (word mark \"GEMA\"), 457752 (word mark \"GEMA\") and 467753 (word-\/figurative mark \"GEMA\"). The International Trademarks have been registered for a large number of European countries.\r\n\r\nGenera Lynx d.o.o. (“the Applicant”) is the owner of a national Slovenian Trademark “GEMA” filed on October 23, 2003 with the Patent Office in Slovenia and registered on October 31, 2004.\r\n\r\nThe Applicant applied for the domain name “gema.eu” on December 15, 2005, while the Complainant applied for the same domain name on February 7, 2006. The domain name was registered by the EURid (“the Registry”) in the name of the Applicant. The Complainant is seeking (1) the annulment of the decision of the Registry according to which the domain name “gema.eu” is allocated to the Applicant and (2) attribution of the domain name “gema.eu” to the Complainant.",
    "other_legal_proceedings": "The Panel is not aware of any legal proceedings which relate to the disputed domain name.",
    "discussion_and_findings": "I. FIRST-COME, FIRST-SERVED PRINCIPLE\r\n\r\nAccording article 10 (1) of Commission Regulation (EC) No 874\/2004 of 28 April 2004 (“Public Policy Rules”), the holders of prior rights and public bodies are eligible to apply to register domain names during a period of phased registration. Prior rights are understood to include, inter alia, registered national and community trademarks. According article 14 (4) of the Public Policy Rules, every applicant shall submit documentary evidence that shows that he or she is the holder of the prior right claimed on the name in question. The 11th recital of the Public Policy Rules states, that the principle of first-come-first-served should be the basic principle for resolving a dispute between holders of prior rights during the phased registration. The 12th recital further clarifies the allocation of a domain name should take place on a first-come, first-served basis if there are two or more applicants for a domain name, each having a prior right.\r\n\r\nThe Applicant applied for the domain name “gema.eu” on the basis of a Prior Right – registered national (Slovenian) trademark – and his application was first in time. \r\n\r\nThe Panel agrees that “GEMA” designation is connected with the Complainant itself in certain trade circles for a long time and that the Complainant’s “GEMA” trademarks are older than “GEMA” trademark of the Applicant. However, this is not relevant in this case. \r\n\r\n(1) “Prior Right” as defined in Article 10 (1) of the Public Policy Rules must be understood as any existing right, of the kinds defined in Article 10 of the Public Policy Rules, already existing at the moment where the phased registration period was initiated - see ADR decision No 945 (CWI). “Prior Right” in this sense means that its holder is privileged to apply for the registration of a domain name prior (before) the other potential registrants which are not the holders of such “prior rights”. The Public Policy Rules do not establish any kind of priority between the “Prior Rights”. There is no priority of “older Prior Rights” or “most known Prior Rights” and no priority of the owner of considerable amount of “Prior Rights”. The only one priority follows from two parts of phased registration, whereas only registered trademarks, geographical indications and the names and acronyms of the public bodies could be registered during the first part of the Sunrise Period, while the other Prior Rights (including trade names, company names and business identifiers) could be registered during the second part of the Sunrise Period only.\r\n\r\nIt’s obvious, that there should be a number of cases when two or more concurrent “Prior Rights” are used to register one domain name. The Public Policy Rules expressly solves the existence of two or more concurrent prior rights saying that a first-come, first-served principle should be used if there are two or more applicants for a domain name, each having a prior right. Therefore, only dates of applications for the domain name registrations are relevant, not other “quality issues” of Prior Rights, such as the dates of the acquisitions of the Prior Rights.\r\n\r\n(2) There is no priority between the national trademarks. A German trademark does not have more value than a Slovenian trademark.\r\n\r\n(3) There is no regulation saying that the “eu domain name” could be registered only by the applicant whose company name is identical to registered domain. Moreover, there is no legal ground in the Public Policy Rules to evaluate of the sense of registration of the domain name different from the company name of the registrant and refuse the application for the registration in the case such sense is missing.\r\n\r\n(4) Arguments, that the European Trademark Act was breached by the disputed decision of the Registry are not relevant, as the Public Policy Rules is considered to be a “lex specialis” rule with its own provisions governing the domain names registrations during the sunrise period. \r\n\r\nTherefore, the Registry’s decision granting the domain name “gema.eu” to the Applicant doesn’t conflict with the Public Policy Rules. The complaint has to be denied.\r\n\r\nII. SPECULATIVE AND ABUSIVE REGISTRATION\r\n\r\nThe Complainant argues that the Applicant has acted in bad faith. \r\n\r\nArticle 22 (1)(b) of the Public Policy Rules states, that a decision taken by the Registry can only be contested if conflicts with the Public Policy Rules or Regulation No 733\/2002. There is no legal ground in the Public Policy Rules to reject an application for a domain name on the presumption that the application may have been made in bad faith or for speculative reasons. Therefore, the complaint must be dismissed. \r\n\r\nArticle 22 (1)(a) of the Public Policy Rules states, that an ADR procedure may be initiated where the registration is speculative or abusive within the meaning of Article 21. However, such an ADR procedure would clearly envisage a procedure to which the holder of the domain name should be a respondent, not the Registry. The same conclusion follows from ADR No 210 (BINGO).\r\n\r\nMoreover, the speculative and abusive registration could not be reviewed without the holder of the domain name (the Applicant) because he\/she should be entitled to react to the Complainant’s arguments regarding his\/her bad faith registration and propose the relevant evidence. Such conclusion clearly follows from ADR No 01772 (BADCREDITLOANS) – “The reason for such procedure is the fact that in the ADR-proceedings, where Respondent (Registry) is the accused party, Applicant is not a party to the ADR-proceedings and therefore Applicant would be deprived of their rights as a party to the ADR-proceedings”.\r\n\r\nThe Complainant is still entitled to initiate the ADR procedure according Article 22 (1)(a) of the Public Policy Rules. Such procedure (with the Applicant participating as a party of the procedure) shall examine if the Applicant’s registration of domain name “gema.eu” is speculative or abusive within the Meaning of Article 21.\r\n\r\nTherefore, the complaint has to be denied.",
    "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": "2006-11-08 00:00:00",
    "informal_english_translation": "The Complainant disputed the registration of the domain name “gema.eu” for which prior right was claimed during the Sunrise Period on the basis of the registered national Slovenian trade mark “GEMA”. The complaint was based on the following grounds:\r\n\r\n(1) the Prior Rights of the Complainant (company name and several German and community trademarks) are well known and elder than the Prior Rights of the Applicant (only one Slovenian trademark); there is no link between the name of the Applicant and the designation “gema” and the Complainant may be blackmailed by the Applicant and pressed to pay considerable amounts of money for the purchase of the domain “gema.eu”.\r\n\r\n(2) The Applicant made the application in bad faith.\r\n\r\n“Prior Right” as defined in Article 10 (1) of the Commission Regulation (EC) No 874\/2004 of 28 April 2004 (“Public Policy Rules”) must be understood as any existing right, of the kinds defined in Article 10 of the Public Policy Rules, already existing at the moment where the phased registration period was initiated - see ADR decision No 945 (CWI). “Prior Right” in this sense means that its holder is privileged to apply for the registration of a domain name prior (before) the other potential registrants which are not the holders of such “prior rights”. \r\n\r\nThe Public Policy Rules do not establish any kind of priority between the “Prior Rights”. There is no priority of “older Prior Rights” or “most known Prior Rights” and no priority of owner of considerable amount of “Prior Rights”. It’s obvious, that there should be a number of cases when two or more concurrent “Prior Rights” are used to register one domain name. The Public Policy Rules expressly counts with two or more concurrent prior rights saying that a first-come, first-served principle should be used if there are two or more applicants for a domain name, each having a prior right. Therefore, only dates of applications for the domain name registrations are relevant, not other “quality issues” of Prior Rights, such as the dates of the acquisitions of the Prior Rights.\r\n\r\nThere is no priority between the national trademarks; a German trademark does not have more value than a Slovenian trademark. There is no regulation saying that the “eu domain name” could be registered only by the applicant whose company name is identical to registered domain. \r\n\r\nDuring the phased registration period, the decision by the Registry whether or not to register the domain name can only be taken on the ground of the findings whether or not the Applicant has demonstrated a prior right in due time. There is no legal ground to reject an application for a domain name on the presumption that the application may have been made in bad faith or for speculative reasons. Therefore, ADR proceeding based on “bad faith” of an Applicant must be initiated against the domain name holder itself, not the Registry.\r\n\r\nTherefore, the Registry’s decision granting the domain name “gema.eu” to the Applicant doesn’t conflict with the Public Policy Rules and the Complaint is denied.",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}