{ "case_number": "CAC-ADREU-003034", "time_of_filling": null, "domain_names": [], "case_administrator": null, "complainant": [], "complainant_representative": null, "respondent": [], "respondent_representative": null, "factual_background": "The organization Roos IT filed an application to register the disputed domain name on 07\/12\/2005. That application was supported by a Maltese trademark registration for “C&A&R&R&E&N&T&A&L&S”. The validation agent examined the application and the prior right, the application was accepted and the registration of the domain name allocated to Roos IT.\r\n\r\nThe Complainant, carrentals.co.uk Ltd., filed an application for the disputed domain name on 07\/02\/2006 supported in a right to the trade name “carrentals.co.uk”. \r\n\r\nThe Complainant then filed the present complaint against the decision of the Registry to allocate the domain name to Roos IT. In addition to Roos IT and carrentals.co.uk Ltd., it is noted that there is a third applicant, Argusrentals (application filed on 07\/02\/2006), followed again by another application filed by carrentals.co.uk Ltm. \r\n\r\nThe Panel was duly appointed by the Czech Arbitration Court. However, due to imperative reasons, one of the panelists was replaced and a new decision deadline was set for March 1, 2007.", "other_legal_proceedings": "None", "discussion_and_findings": "A) Legal grounds\r\n\r\nArticle 10.1 of Regulation 874: “Holders of prior rights recognised or established by national and\/or Community law and public bodies shall be eligible to apply to register domain names during a period of phased registration before general registration of .eu domain starts”. \r\n\r\nArticle 10.2: “The 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 Par. 2: “Where 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. \r\nSpecial character and punctuations as referred to in the second paragraph shall include the following: ~ @ # $ % ^ & * ( ) + = < > { } [ ] | \\ \/: ; ' , . ? \r\n\r\nArticle 14: \"(…) 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 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 (…)\".\r\n\r\nAccording to Articles 22 (1) (b) and 22 (11) of Regulation 874 a party is, following the decision by the Respondent to reject a domain name, entitled to initiate an ADR proceeding against the Registry on the grounds of non-compliance of that decision with Regulation 874 or with Regulation (EC) No 733\/2002 (Regulation 733).\r\n\r\n\r\nB) Discussion and findings\r\n\r\nAs a first point, the Panel notes that this dispute is brought pursuant to Articles 22 (1) (b) and 22 (11) of Regulation 874. Accordingly, the arguments of the Complainant regarding Roos IT's bad faith in the registration of the domain name are not relevant. If the Complainant intends to pursue that avenue, a complaint pursuant to Articles 22(1)(a) and 22(11), first paragraph, should be filed. Therefore, the Panel dismisses Complainant's arguments concerning Roos IT's bad faith.\r\n\r\nThe core question of the present case relates to the correct interpretation of Article 11 of the Regulation 874 regarding \"special characters\", and more specifically, if and how the ampersand (\"&\") should be reflected in a domain name when the prior right supporting the application includes that character.\r\n\r\nThere are a number of precedents dealing with this question and panels have taken a variety of views. However, it is possible to distinguish two main groups: those in favor of granting unfettered choice to the domain name applicant to delete or rewrite the ampersand –see above the precedents cited by the Respondent- and those that deny such choice –see above the precedent cited by the Complainant, among many others e.g. ADR No. 265 (LIVE), 394 (FRANKFURT), 475 (HELSINKI), 1717 (ARZT), 2185 (ANTWERP, ANTWERPEN), 2221 (REYKJAVIK), 1523 (COLOGNE) -. \r\n\r\nThe Panel agrees that one of the principal difficulties with the interpretation of Article 11 is that the list of special characters listed are accorded very different treatment in practice and no provision is made for this by the wording of the Article. The fact that Article 11 makes no such distinction has led some panels to consider that, in order to comply with the “registration of the complete name” requirement stated in Article 10.2, any of the options contemplated in the mentioned Article 11 are valid and it is for the applicant to make that choice. However, other panels have considered that the question does not have a straight answer and that each case should be decided on its own merits (on a case-by-case basis). In those situations, the role of the Respondent becomes critical and a number of decisions agree on the need that the Respondent assesses each domain name application to establish that the prior right provides enough coverage to support the domain name application.\r\n\r\nThe Respondent claims that its role does not go beyond assessing whether an applicant has chosen either of the three options available pursuant to article 11 of the Regulation. According to the Respondent, “if an applicant has done so, its application must be accepted, because the Applicant respected the requirements of the Regulation“. \r\n\r\nHowever, Recital 12, together with Article 14 (paragraph 7), suggests that the Respondent needs to go beyond that and indeed verify that the prior right supports the domain name application. As stated in COLOGNE \"[…] EURid has regularly assessed the “appearance” of a presented trademark against the domain name sought in accordance with the Regulation. For example with respect to figurative\/composite trademarks, such an assessment is performed by EURid and its validation agent. Inevitably, EURid has been assessing special characters as well.\" The Regulation has established two mechanisms to correct EURid's decisions: an ADR procedure and the possibility to file court proceedings. These mechanisms should guarantee a proper interpretation of Article 11, in line with the purpose of the Regulations.\r\n\r\nIn the present case, the prior right supporting the application includes NINE ampersand symbols in a TEN-letter trademark. That in itself is enough evidence of the high significance of the ampersand in the prior right. Furthermore, this conclusion is strongly supported by the fact that the prior right supporting the application for the disputed domain name specifically states that \r\n\r\n\"Registration […] is subject to the following conditions: Registration gives right to the exclusive use of the word 'car rentals', only when this is used with the symbols '&', as shown on the mark.\"\r\n\r\nAccording to those two factors, it is the view of the Panel that in this case, the ampersand symbols should have been rewritten. Therefore, the Panel considers that the mark C&A&R&R&E&N&T&A&L&S does not provide enough support for the application of the domain name and finds that the Registry's decision does not comply with Article 10.2 of Regulation 874. \r\n\r\nRegarding the transfer the domain name to the Complainant as the next applicant in the queue, the Panel is not prepared to make any finding in that respect and relies in the decision of the Registry in accordance with ADR Rule B11(c).", "decision": "For all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the Panel orders that\r\n\r\nthe EURID's decision be annulled", "panelists": [ null ], "date_of_panel_decision": "2007-02-26 00:00:00", "informal_english_translation": "One of the principal difficulties with the interpretation of Article 11 is that the list of special characters listed are accorded very different treatment in practice and no provision is made for this by the wording of the Article. The fact that Article 11 makes no such distinction has led some panels to consider that any of the options contemplated in that article are valid and it is for the applicant to make that choice. However, other panels have considered that the question does not have a straight answer and that each case should be decided on its own merits (on a case-by-case basis). \r\n\r\nIn the present case, the Panel considers that the mark C&A&R&R&E&N&T&A&L&S does not constitute a valid right for the domain name application and annuls EURID’s decision.", "decision_domains": [], "panelist": null, "panellists_text": null }