{
    "case_number": "CAC-ADREU-003226",
    "time_of_filling": null,
    "domain_names": [],
    "case_administrator": null,
    "complainant": [],
    "complainant_representative": null,
    "respondent": [],
    "respondent_representative": null,
    "factual_background": "On 13 March 2006 the Complainant applied for the domain name \"caravanclub.eu\". The prior right relied upon was the company name of the Complainant, The Caravan Club Ltd.\r\n\r\nThe Complainant supplied the validation agent with trademark certificates of three UK trademarks THE CARAVAN CLUB (specified below) within the stipulated time frame but did not include their company’s certificate of incorporation. The application was rejected on the basis that the documentary evidence provided did not prove the claimed prior right, that is to say, the company name.",
    "other_legal_proceedings": "The panel is not aware of any other legal proceedings.",
    "discussion_and_findings": "This case concerns primarily the application of Articles 10 and 14 of the Commission Regulation (EC) No 874\/2004. In particular, the panel has to decide two questions. First, can the documentary evidence submitted by the Complainant be taken into account when deciding whether it has a prior right as claimed in the application? If the answer to the first question is affirmative, the panel then has to consider whether the documentation establishes a prior right to the claimed domain name ”caravanclub.eu”.\r\n\r\n1. Documentary evidence\r\n\r\nAccording to the Respondent, the Complainant submitted trademark certificates of UK trademark registrations 1528984 THE CARAVAN CLUB (device), 1528985 THE CARAVAN CLUB (device) and 1528986 THE CARAVAN CLUB (device). The validation agent concluded that the trademark registrations could not establish the claimed company name.\r\n\r\nArticle 10(2) of the Regulation 874\/2004 provides that “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\nFurther, Article 14 of the same regulation provides that “[a]ll claims for prior rights under Article 10(1) and (2) must be verifiable by documentary evidence which demonstrates the right under the law by virtue of which it exists”, and that “[e]very applicant shall submit documentary evidence that shows that he or she is the holder of the prior right claimed on the name in question”. Finally, it is expressly stipulated that “[i]f the documentary evidence has not been received by this deadline, the application for the domain name shall be rejected”.\r\n\r\nAccording to the ADR Rules, Section B11(d)(2), the panel has to decide whether the decision of the Registry conflicts with the European Union Regulations. The object of the first question to determine whether the validation agent was correct in rejecting the application on the basis that the Complainant submitted trademark registration extracts rather than evidence relating to the company name.\r\n\r\nIt follows from the regulations quoted above that the burden of proof is on the applicant to establish that a prior right exists.\r\n\r\nIn the present case the documentary evidence submitted were extracts from an official government database. According to Annex I of the Sunrise Rules, such extracts are capable of demonstrating a right to a trademark. The question that arises, then, is whether an extract from a trademark register could also establish a right to a company name?\r\n\r\nAccording to Annex I of the Sunrise Rules, company names are protected in the UK under the law of passing off. Therefore, to establish a prior right to a UK company name, Annex I of the Sunrise Rules require that the Applicant must submit documentary evidence in accordance with Section 12(3) of the Sunrise Rules. This requires either an a) affidavit of a competent party as prescribed by the section, or b) judgment of a competent court or arbitration panel indicating that the conditions for passing off have been met. For the present purposes it is not necessary to consider the requisites for passing off action in the UK. To render a decision it is sufficient to note that a mere registration extract is not enough to establish a sufficient prior right to a company name in the UK.\r\n\r\nThe panel therefore finds that an extract of a trademark register does not sufficiently establish a right to a company name in the UK. The question whether it ever could remains an open one and need not be decided at this stage. \r\n\r\nRegarding the certificate of incorporation, the panel is constrained by Regulation 874\/2004. Article 14(4), provides that the applicant has forty days to submit the documentary evidence, and if the documentation is not received within the given deadline, the application is rejected. This leaves no discretion to the panel. To decide otherwise would, in effect, mean granting an extension of the term to applicants to submit their documentary evidence. This is outside the powers of the panel, whose decision must be based on the relevant regulations. The certificate of incorporation must therefore not be taken into account.\r\n\r\nFor these reasons, the panel concludes that the validation agent was correct in finding that an extract from trademark database did not sufficiently establish a right to a company name.\r\n\r\n2. Prior Right\r\n\r\nThe panel also notes that even if the documentary evidence had been taken into account, it would not have established a sufficient prior right. The company name of the Respondent is “The Caravan Club Limited”.\r\n\r\nArticle 10(2) of Regulation 874\/2004 provides that a Sunrise application of a domain name must consist of the complete name for which the prior right exists. In other words, the domain name applied for during the Sunrise Period must be identical to the prior right claimed. For the avoidance of any doubt, the Sunrise Rules stipulate in Section 19(1) that “[i]t is not possible for an Applicant to obtain a registration of a Domain Name comprising part of the complete name for which the Prior Right exists”. According to Section 19(2)(ii)(a) of the Sunrise Rules, composite marks can be sufficient prior rights only if  “all alphanumeric characters (including hyphens) included in the sign are contained in the Domain Name applied for, in the same order as that in which they appear in the sign”. The difference between “The Caravan Club” and “Caravan Club” is not great, but is it sufficient to make the names non-identical. Not all alphanumeric characters were included in the applied domain name.\r\n\r\nThe trademark registrations may have established a right to the domain name “thecaravanclub.eu”. However, it is not necessary for present purposes to assess whether they did. The only relevant question is whether the trademarks established a sufficient prior right for the domain name “caravanclub.eu”. For the reasons given above, the answer to this must be negative.\r\n\r\nEven if the documentation submitted by the Complainant after the expiry of the forty-day term, that is to say, the certificate of incorporation, had been taken into account, it would have established a prior right only for the domain name “thecaravanclub.eu”. The identity requirement in Article 10(2) applied regardless of the type of prior right claimed. An exception to the identity requirement is provided in Section 19(4) of the Sunrise Rules, stipulating that the company type, such as “Ltd.”, may be omitted. Therefore, company name The Caravan Club Ltd. would be sufficient prior right for the domain name “thecaravanclub.eu” but not for “caravanclub.eu”.\r\n\r\nIn this sense the Complainant’s position is not prejudiced by the finding that that the trademark registration extracts did not prove the existence of a company name and that the certificate of incorporation was deemed inadmissible. The Complaint would have failed also on substance.",
    "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": "2006-12-22 00:00:00",
    "informal_english_translation": "The Complainant applied for the domain name ”caravanclub.eu” during the Sunrise period. The claimed prior right was the company name “The Caravan Club Ltd.”. To prove the existence of the prior right the Complainant submitted trademark certificates. The validation agent refused the application on the grounds that the submitted material did not establish the claimed prior right, that is to say, the company name. The panel concluded that in this case the trademark registration extracts were insufficient proof of the existence of the company name. In addition, the certificate of incorporation submitted at later stage was deemed inadmissible. The panel further concluded that the Complaint would have failed in any case, since the material only established rights for the domain name “thecaravanclub.eu”, but not for the applied domain name “caravanclub.eu”.",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}