{ "case_number": "CAC-ADREU-003281", "time_of_filling": null, "domain_names": [], "case_administrator": null, "complainant": [], "complainant_representative": null, "respondent": [], "respondent_representative": null, "factual_background": "Toshiba of Europe Ltd (“the Complainant”) applied for two domain names: on February 14, 2006 and on March 16, 2006. The first of these claimed, as a prior right, a trade name or business identifier in the United Kingdom, while the second claimed a trade name or business identifier in Germany. The Complainant’s documentation was presented to the Validation Agent on March 22, 2006 in the case of and on April 11, 2006 in the case of . In both instances this was before the deadline for doing so. However the Validation Agent rejected both applications on the grounds that in neither case did the documents establish that the Applicant was the holder of a trade name or business identifier in, respectively, the UK or Germany. \r\n\r\nThe Complainant argued that it had applied for several other domain names all of which had been accepted and he could not understand why these two had been refused. He pointed out that both REGZA and QOSMIO are well-known Toshiba brands for, respectively, a flat screen television and a computer notebook. Both names had also been registered as domain names in numerous other jurisdictions. \r\n\r\nEURid (“the Respondent”) argued that the onus is on an applicant to demonstrate that he is the owner of a prior right claimed in an application during the Sunrise Period and, because the Complainant had not so demonstrated, the applications were correctly refused. The Respondent quoted from a number of ADR Decisions which, it claimed, backed up and confirmed that this decision was correct.", "other_legal_proceedings": "", "discussion_and_findings": "The Facts\r\nThe Complainant applied for the domain name on February 14, 2006 claiming, as a prior right, a trade name or business identifier in the United Kingdom. The supporting documentation was presented to the Validation Agent on March 22, 2006 which was before the deadline for doing so. The Respondent contended that this consisted of: \r\n- a License Declaration for a Registered Trade Mark; \r\n- a print-out from the OHIM database showing that the trademark QOSMIO is registered \r\n in the name of Kabushiki Kaisha Toshiba; and \r\n- documents (web advertisements) showing that Toshiba is selling notebooks under the\r\n name QOSMIO. \r\n\r\nThe Complainant applied for the domain name on March 16, 2006 claiming, as a prior right, a trade name or business identifier in Germany and presented the relevant documentation to the Validation Agent on April 11, 2006 which was before the deadline for doing so. This consisted of a Power of Attorney and copies of some advertisements and a press release relating to the Complainant’s flat panel television called REGZA. \r\n\r\nThe Validation Agent rejected both applications on the grounds that in neither case did the documents establish that the Complainant was the holder of a trade name or business identifier in, respectively, the UK or Germany. \r\n\r\nThe Complainant’s Contentions\r\nThe Complainant argued that it had applied for several other domain names all of which had been accepted and he could not understand why these two had been refused. He pointed out that both REGZA and QOSMIO are well-known Toshiba brands for, respectively, a flat screen television and a computer notebook. Both names had also been registered as domain names in numerous other jurisdictions. \r\n\r\nThe Respondent’s Response\r\nQuoting extensively from Commission Regulation (EC) No 874\/2004 of 28 April 2004 (\"the Regulation\") and the Sunrise Rules, the Respondent argued that the onus is on an applicant to demonstrate that he is the owner of a prior right claimed in an application during the Sunrise Period and, because the Complainant had not so demonstrated, the applications were correctly refused. The Respondent also referred to a number of ADR Decisions which, it claimed, backed up and confirmed that this decision was correct. \r\n\r\nThe Legal Position\r\nArticle 10 (1) of the Regulation states that only holders of prior rights which are recognised or established by national or Community law 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 14 of the Regulation states that \"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.(…) If the documentary evidence has not been received in time or if the validation agent finds that the documentary evidence does not substantiate a prior right, he shall notify the Registry of this.(…) 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 set out in the second, third and fourth paragraphs\". \r\n \r\nSection 16 (5) of the Sunrise Rules states that: \"Unless otherwise provided in Annex 1 hereto, it is sufficient to submit the following Documentary Evidence for trade names and business identifiers referred to in Section 16(2) respectively 16(3): \r\n(i)where it is obligatory and\/or possible to register the relevant trade name or business identifier in an official register (where such a register exists in the member state where the business is located): \r\na. an extract from that official register, mentioning the date on which the trade name was registered; and \r\nb. proof of public use of the trade name or business identifier prior to the date of Application (such as, but not limited to, proof of sales volumes, copies of advertising or promotional materials, invoices on which the trade name or business identifier is mentioned etc., proving public use of the name in the relevant member state); \r\n(ii) where registration is not obligatory, the Documentary Evidence referred to in Section 12(3) hereof. (…)\". \r\n \r\nSection 12 (3) of the Sunrise Rules states that: \"If, under the law of the relevant member state, the existence of the Prior Right claimed is subject to certain conditions relating to the name being famous, well known, publicly or generally known, have a certain reputation, goodwill or use, or the like, the Applicant must furthermore submit \r\n(i) an affidavit signed by a competent authority, legal practitioner, or professional representative, accompanied by documentation supporting the affidavit or \r\n(ii)a relevant final judgment by a court or an arbitration decision of an official alternative dispute resolution entity competent in at least one of the member states \r\nstating that the name for which a Prior Right is claimed meets the conditions provided for in the law (including relevant court decisions, scholarly works and such conditions as may be mentioned in Annex 1 (if any)) of the relevant member state in relation to the type of Prior Right concerned. \". \r\n \r\nAs far as trade name protection in the United Kingdom is concerned, Annex 1 to the Sunrise Rules states that trade names may serve as prior rights \"only to the extent that rights in passing off exist\" and requires documentary evidence as referred to in Section 12(3) of the Sunrise Rules (and not the documentary evidence referred to in Section 16 of the Sunrise Rules). Annex 1 finally states that \"Where documentary evidence is submitted as referred to in Section 12(3)(i) of the Sunrise Rules, the documentary evidence must enable the Validation Agent to validate the existence of a protected prior right (under the law of Passing Off) on the basis of a prima facie review of the documentation as set out in Section 21(2) of the Sunrise Rules\". \r\n \r\nAs far as trade name protection in the Germany is concerned, Annex 1 to the Sunrise Rules requires \"documentary evidence as referred to in Section 16(5) of the Sunrise Rules\". \r\n\r\nDecision\r\nThe Panel sees no reason to disturb the Respondent’s decision to refuse these two domain name applications.\r\n\r\nThe law is quite clear. If an applicant applies for a domain name during the Sunrise Period he must, within a certain period of time, produce the appropriate documentation to prove his claim to have prior rights in that name. In this case, the Complainant based his application for on a claim to have rights in the trade name or business identifier ‘Qosmio’ in the United Kingdom. The application for was similarly based, but on a claim to have rights in the trade name or business identifier ‘Regza’ in Germany. According to the Respondent, none of the documentation supplied – in due time – bore any relation to these claims and the Complainant completely failed to prove his claim to have prior rights in the trading names QOSMIO in the United Kingdom or REGZA in Germany. \r\n\r\nIn the Amended Complaint appear the words: “Evidence has been attached together with the signed documentation and sent by courier 23\/10\/06.” To the Panel these words appeared to imply that this ‘evidence’ could consist of documents that were different from those received by the Validation Agent and which did prove the Complainant’s prior rights. Therefore, in a Nonstandard Communication, he called for copies of this ‘evidence’. On January 2, 2007, copies of the following were received from the Complainant –\r\n\r\nA Licence Declaration between K. K. Toshiba and Toshiba of Europe Ltd authorizing the latter to use the CTM 3876009 QOSMIO.\r\n\r\nA copy of the entry in the Register of the CTM QOSMIO No. 3876009.\r\n\r\nA Powre (sic) of Attorney signed by Mr. Taisuke Kato, the General Manager of the Intellectual Property Division of Toshiba Corporation authorizing Mr. Takahiro Ishii to act on behalf of Toshiba Corporation in the registration of the domain names QOSMIO, TECRA, PORTÉGÉ, SATELLITE and LIBRETTO.\r\n\r\nA Press Release dated February 21, 2006 relating to the unveiling of REGZA as the new brand name for Toshiba’s Flat Panel television.\r\n\r\nAs can be seen, these are not exactly the same as the documentation which the Respondent claims was received by the Validation Agent, but nevertheless they still do nothing to reinforce the Complainant’s original claim to have prior rights in QOSMIO and REGZA as trade or business names. \r\n\r\nThere is no doubt that these two names do belong to the Complainant. They are applied to products produced and sold by the Complainant but that in itself is not sufficient for him to automatically be granted rights to the corresponding domain names in the .eu domain during the Sunrise Period. It would do, now that this period is over, but the whole raison d’etre of the Sunrise Period was to give the owners of earlier rights an advantage over any cybersquatter who might wish to register someone else’s legitimate name. In return he only had to prove that he was the owner of one of several types of prior right set out in Article 10 of the Regulation. \r\n\r\nWe can only speculate as to whether, perhaps, the Complainant in this case made mistakes when completing the necessary application forms and so claimed the wrong prior right. But the fact remains that he claimed prior rights in QOSMIO and REGZA as trade or business names and failed to prove it. Therefore the Complaint fails.", "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 Complaint is Denied", "panelists": [ null ], "date_of_panel_decision": "2007-01-03 00:00:00", "informal_english_translation": "The Complainant (Toshiba of Europe Ltd) filed a Complaint against the decision by the Respondent (EURid) to reject its applications for the two domain names: , and . The rejection was based upon the fact that the documentation supplied by the Complainant did not prove the prior rights which it had claimed for both marks, namely trade names or business identifiers in the United Kingdom (Qosmio) and Germany (Regza).\r\n \r\nThe Complainant did not attempt to argue that the two names were in fact business names, it merely stated that they were both his brand names – for a flat screen television set (REGZA) and for a notebook computer (QOSMIO). \r\n\r\nThe Respondent argued that the onus is on an applicant to demonstrate that he is the owner of a prior right claimed in an application during the Sunrise Period and, because the Complainant had not so demonstrated, the applications were correctly refused. \r\n\r\nThe Panel called for copies of the evidence supplied by the Complainant and, having examined this, concluded that the Complainant had not proved his case, that the domain name applications had correctly been refused, and so the Complaint should be rejected.", "decision_domains": [], "panelist": null, "panellists_text": null }