{
    "case_number": "CAC-ADREU-003465",
    "time_of_filling": null,
    "domain_names": [],
    "case_administrator": null,
    "complainant": [],
    "complainant_representative": null,
    "respondent": [],
    "respondent_representative": null,
    "factual_background": "The Complainant is a United States non-profit corporation. The Complainant’s website describes it as “a worldwide organization of business and professional leaders that provides humanitarian service, encourages high ethical standards in all vocations, and helps build goodwill and peace in the world.” \r\n\r\nThe Complainant owns a number of registered trade marks for the word “ROTARY” including: UK Trade Mark 1300500 dated 10 February 1987 in class 42; UK Trade Mark 1536528 dated 22 May 1993 in class 16; UK Trade Mark 2101074 dated 23 May 1996 in classes 14, 25 and 42; Community Trade Mark 897843 dated 29 July 1998 in nine classes; Community Trade Mark 1973049 dated 27 November 2000 in class 42; Community Trade Mark 3201456 dated 21 May 2003 in classes 9, 24 and 36; and Community Trade Mark 3936366 dated 8 July 2004 in 17 classes.  \r\n\r\nOn 24 January 2006, the Respondent applied for a Danish trade mark for the word “ROTARY”. On 26 January 2006, a Danish trade mark VR 2006 00404 for “ROTARY” was registered in the name of the Respondent (“the Danish Mark”).\r\n\r\nOn 31 January 2006, the Respondent applied for the domain name ROTARY during the first phase of the sunrise registration period based on the Danish Mark.\r\n\r\nThe domain name ROTARY was registered in the name of the Respondent on 30 April 2006.",
    "other_legal_proceedings": "The Panel is not aware of other legal proceedings which are pending or decided and which relate to the disputed domain name.",
    "discussion_and_findings": "Procedural issues\r\n\r\nOn 24 January 2007, the date that this decision was due, the Complainant filed a non-standard submission which was in effect a reply to the Response - although there is no automatic right of reply in these proceedings. Paragraph B8 of the ADR Rules enables the Panel in its sole discretion to admit further statements or documents from the parties. Here, the Complainant has not offered any exceptional or other circumstances justifying its further submission at a very late stage and so the Panel declines to admit it.\r\n\r\nOn 24 January 2007, the Respondent also filed a non-standard submission in response to the Complainant’s submission. Given that the Panel has disallowed the Complainant’s submission and that the Respondent too has offered no exceptional or other circumstances justifying its submission, the Panel also declines to admit the Respondent’s statement.\r\n\r\nIntroduction\r\n\r\nUnder Article 21(1) of Regulation (EC) 874\/2004 (“the Regulation”), the disputed domain name is subject to revocation if it is identical or confusingly similar to a name in respect of which a right is recognized or established by national and\/or Community law and where it (a) has been registered by its holder without rights or legitimate interests in the name or (b) has been registered or is being used in bad faith.\r\n\r\nRights\r\n\r\nBy virtue of its registered trade marks within the EU, the Complainant has established rights in the name “ROTARY” for the purposes of Article 21(1) of the Regulation.\r\n\r\nThe Panel makes no finding in relation to common law rights. The Respondent contests the Complainant’s alleged reputation in the name “ROTARY” and the Complainant has provided no evidence in support of its claims in this respect other than a reference to its website.\r\n\r\nThe Panel finds that the disputed domain name is identical to the name “ROTARY” in which the Complainant has established relevant registered trade mark rights. \r\n\r\nRights or Legitimate Interests\r\n\r\nThe Complainant has made out a prima facie case to the effect that the Respondent lacks rights or legitimate interests in the disputed domain name.\r\n\r\nArticle 21(2) of the Regulation sets out three ways whereby the Respondent may demonstrate rights or legitimate interests:\r\n\r\n21(2)(a): Use of the domain name or a name corresponding to the domain name in connection with an offering of goods or services or demonstrable preparations to do so. Here, the domain name has not been used and the Respondent has not demonstrated any preparations for use. \r\n\r\n21(2)(b): The holder of the domain name has been commonly known by the domain name. There is no evidence that this applies.\r\n\r\n21(2)(c): Legitimate and non-commercial or fair use without intent to mislead customers or harm the reputation of a trade mark. This is inapplicable as the domain name has not been used at all.\r\n\r\nThe above factors are not exhaustive. Are there any other factors evidencing the existence of rights or legitimate interests? In this context, it is important to examine the Respondent’s purpose in registering the disputed domain name.  \r\n\r\nThe Complainant has exhibited some printouts of a website at copernicus.net in which the Respondent is described as a European Trade Mark Attorney operating a “Highly Specialised International Trademark & Naming Agency” established in January 2001 called “Copernicus Consulting” and based in Vienna. \r\n\r\nThe Respondent does not dispute the Complainant’s assertion that he is an “experienced trade mark expert”. To this the Respondent adds that he “has other legal trade documents (‘Gewerbescheine’) for trading since many years. He also founded a company with the company function: ‘services, trade and manufacturing of goods of all kind’.”  In support the Respondent supplies a one page document in German headed “Gewerbeschein”.  Notwithstanding Paragraph A3(c) of the ADR Rules and paragraph B1(d) of the Supplemental ADR Rules, this document has not been translated into English, the language of this ADR Proceeding. The Panel is entitled to disregard it  in accordance with paragraph A3(c) of the ADR Rules but, in any case, it does not appear to be anything more than some sort of general permission to carry on business in Vienna. \r\n\r\nNowhere does the Respondent explain in any detail, or provide supporting evidence concerning, his various alleged businesses activities, let alone demonstrate what relevance, if any, these have to the name “ROTARY”.  \r\n\r\nThe Respondent relies also on the Danish Trade Mark. The printout is in Danish and this has not been translated either. It is apparent, however, that this is an expedited trade mark, applied for and registered shortly before the domain name application. The Panel believes that the trade mark was registered for the purpose of obtaining the disputed domain name in the .eu sunrise period. While there is a general and unsupported assertion by the Respondent that, in future, the disputed domain name will be used to promote unspecified goods for which he has trade mark rights and which will be dissimilar to those of the Complainant, there is no detailed explanation beyond that and no supporting evidence indicative of a genuine intention to use the mark. In those circumstances, the Panel considers that the Danish Trade Mark is insufficient, of itself, to generate rights or legitimate interests. \r\n\r\nNor is it relevant that the term “ROTARY” is theoretically capable of being used by the Respondent in a manner which does not infringe the Complainant’s registered trade marks or that third parties unconnected with the Complainant also own trade marks for “ROTARY”.\r\n\r\nThe Respondent says that “ROTARY” is a generic word to which the Complainant has no exclusive rights. But there is no indication that the Respondent registered the domain name for a genuine purpose based on its generic meaning. The Respondent has not suggested, let alone provided supporting evidence, that he was, say, in the business of dealing in generic domain names or involved in some other trade relevant to the generic meaning, for example in relation to rotary engines. \r\n\r\nTaking the above matters into account, in particular the lack of any clear and credible explanation of the Respondent’s purpose in registering the disputed domain name, the Panel concludes that it has been registered by the Respondent without rights or legitimate interests for the purposes of Article 21(1) of the Regulation. \r\n\r\nAs lack of rights and legitimate interests is an alternative requirement to registration or use in bad faith, there is no need for the Panel to address the latter issue. \r\n\r\nRemedy\r\n\r\nThe Complainant seeks “[p]rimarily transfer of the domain name as the Complainant is an organisation with local offices around Europe. In this respect I refer to section 1 (ii) in the .eu Domain Name Registration Policy. Alternatively, revocation of the domain name.”\r\n\r\nArticle 22(11) of the Regulation states that the Panel shall decide that the domain name shall be revoked if finds that the domain name is speculative or abusive as defined in Article 21. It also provides that the domain name shall be transferred to the Complainant if the Complainant applies for the domain name and satisfies the general eligibility criteria set out in Article 4(2)(b) of Regulation (EC) 733\/2002.\r\n\r\nThose general eligibility criteria are:\r\n\r\n1.\tan undertaking having its registered office, central administration or principal place within the European Community;\r\n\r\n2.\torganisations established within the European Community without prejudice to the application of national law; or\r\n\r\n3.\tnatural persons resident within the European Community.\r\n\r\nThe Complainant has not supplied any evidence to the Panel indicating that it satisfies any of these criteria. Accordingly, the Panel’s decision is that the domain name should be revoked and the Panel declines to order the transfer of the disputed domain name to the Complainant.",
    "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 domain name ROTARY be revoked",
    "panelists": [
        null
    ],
    "date_of_panel_decision": "2007-01-24 00:00:00",
    "informal_english_translation": "The disputed domain name is identical to the name “ROTARY” in which the Complainant has established relevant registered trade mark rights. \r\n\r\nThe Complainant has made out a prima facie case to the effect that the Respondent lacks rights or legitimate interests in the disputed domain name.\r\n\r\nThe Respondent has failed to demonstrate rights or legitimate interests in accordance with Article 21(2) of the Regulation (EC) 874\/2004.\r\n\r\nThe Respondent has not explained in any detail or provided supporting evidence concerning its various alleged businesses activities, let alone demonstrate what relevance, if any, these have to the name “ROTARY”.  \r\n\r\nThe Respondent’s Danish Trade Mark is insufficient, of itself, to generate rights or legitimate interests at it appears to the Panel that it was registered for the purpose of obtaining the disputed domain name in the .eu sunrise period and the Respondent has not supplied any detailed explanation or supporting evidence indicative of a genuine intention to use the mark. \r\n\r\nIt is irrelevant that the term “ROTARY” is theoretically capable of being used by the Respondent in a manner which does not infringe the Complainant’s registered trade marks or that third parties unconnected with the Complainant also own trade marks for “ROTARY”.\r\n\r\nThere is no indication that the Respondent registered the domain name for a genuine purpose based on its generic meaning. \r\n\r\nTaking the above matters into account, in particular the lack of any clear and credible explanation of the Respondent’s purpose in registering the disputed domain name, the Panel concludes that it has been registered by the Respondent without rights or legitimate interests for the purposes of Article 21(1) of the Regulation. \r\n\r\nThe Panel decides that the domain name should be revoked and declines to order the transfer of the disputed domain name to the Complainant as there is no evidence that it satisfied the general eligibility criteria set out in Article 4(2)(b) of Regulation (EC) 733\/2002.",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}