{
    "case_number": "CAC-ADREU-003668",
    "time_of_filling": null,
    "domain_names": [],
    "case_administrator": null,
    "complainant": [],
    "complainant_representative": null,
    "respondent": [],
    "respondent_representative": null,
    "factual_background": "The Complainant is a registered company incorporated under Irish law and established in Ireland carrying on business as an insurance provider offering home, motor, travel and life insurance.\r\n\r\nThe Complainant is the owner of the following registered trade marks: \r\n\r\ni) UK registered trade mark 123, registration number 2243533, filed on 25 August 2000, registered on 15 November 2000 for goods and services in Class 36, namely “Insurance; financial affairs; monetary affairs,  real estate affairs, insurance, financial affairs, monetary affairs and real estate affairs, all provided over the Internet”; and \r\n \r\n (ii) Irish registered trade mark 123.ie, registration number 220654, dated 28 February 2000 and published on 2 April 2003, for the following  services in Class 36: Insurance services; services relating to credit provision; investment services; Provision of on-line services by means of a global computer network, the internet and provision of access to computers all being for the purpose of advisory, consultancy and information services relating to insurance and credit provision; and in Class 42: Computer services; network services relating to insurance; leasing access time to computer databases, computer bulletin boards, computer networks and computerised research and reference material;\r\n\r\nThe Complainant applied to register the Internet domain name  123.eu during the Sunrise Period, based on its UK registered trade mark 123.\r\n\r\nA third party Etam SA also applied to register the domain name 123.eu. The Etam SA application was received by the registry ahead of the Complainant’s application on the same date. \r\n\r\nOn 3 March 2006 the Complainant initiated an ADR proceeding against the Registry challenging the decision to register said Etam SA as owner of said domain name and requesting the transfer of the domain name to the Complainant. (ADR EU Case No. 00188.). \r\n\r\nIn ADR EU Case No. 00188 the Complainant successfully argued, inter alia, that the word element of Etam SA’s “1.2.3.”-trademark was not the predominant element of the figurative trademark and that the trademark could thus not form the basis for a sunrise-registration. \r\n\r\nOn 12 June 2006, in, the ADR Panel found in favour of the Complainant and annulled the decision to grant the registration to Etam SA, but refused to transfer the domain name to the Complainant as requested because the Complainant was not the next applicant in line.\r\n\r\nSaid domain name was transferred to the Respondent, being the next applicant in line, in accordance with the ADR Rules. \r\n\r\nThe Respondent is a Gesellschaft mit beschränkter Haftung (GmbH) established in Munich, Germany and carries on a marketing business. The Respondent is the owner of Benelux registered trade mark 123, registration number 0776142, filed on 3 November 2005 and registered on 7 November 2005, for goods in Class 3 (‘Wierook’ which is the Dutch word for ‘incense’) \r\n\r\nThe Respondent made 245 other applications for..eu domain names during the Sunrise period based on Benelux registered trade marks.",
    "other_legal_proceedings": "Decided case ADR EU Case No. 00188 (12 June 2006) regarding \"123.eu\"",
    "discussion_and_findings": "Article 21 of Regulation 874\/2004  and Rule B 11 of the. ADR Rules require that the Complainant must prove that \r\n\r\ni.\tthe domain name is identical or confusingly similar to a name in respect of which a right is recognized or established by the national law of a Member State and\/or Community Law and \r\nii.\tthe domain name has been registered by the Respondent without rights or legitimate interest in the name; or \r\niii.\tthat the domain name has been registered or is being used in bad faith.\r\n\r\n\r\nBoth parties accept, as does the Panel that the domain name in dispute is identical to the Complainant’s UK registered trade mark 123 and is confusingly similar to the Complainant’s Irish registered trade mark 123.ie.\r\n\r\nAs to whether the Respondent has rights or a legitimate interest in the domain name, the  Respondent is the owner of Benelux registration of the word mark 123,  registration number 0776142 in class 3 of the register and registered on 7 November 2005 in respect of “wierook” (in English “incense”).\r\n\r\nOn the balance of probabilities, the Respondent registered the trade mark 123 solely for the purposes of securing priority in the application process for the domain name 123 on the .eu domain during the Sunrise Period. It would be difficult to disagree with the Complainant’s observation that the Respondent does not carry on any bona fide business as a manufacturer or merchant of “incense” and in fact the information provided by the Respondent in the Response would appear to support this conclusion.\r\n\r\nThe Complainant brings this application seeking a transfer of the domain name to the Complainant on the basis of Article 21 of Regulation 874\/2004  and Rule B 11 of the. ADR Rules. The Complainant in this case does not challenge the validity of the Eurid decision to grant the domain name to the Respondent. \r\n\r\nIt is not open to this Panel to consider either the validity of the Belgian registration or the validity of Respondent’s priority application based on that registration and the consequent decision of Eurid to grant the domain name to the Respondent.\r\n\r\nArticle 10(1) of the Reguation defines “prior rights” inter alia as including registered national and community trademarks. It follows therefore that the domain name has not been registered by the Respondent without rights, contrary to Article 21 of Regulation 874\/2004  and Rule B 11 of the. ADR Rules.\r\n\r\nThe question of whether the Respondent has a legitimate interest in the name is inextricably bound up in the present case with the questions of whether the Respondent registered or is using the domain name in bad faith.\r\n\r\nOn the issue of alleged bad faith, it is difficult to understand how the Respondent on the one hand states that it was unaware of the Complainant’s registered trade marks when its own website boasts:\r\n\r\n“We develop and check brandings for products, for services and businesses - from the idea to the registered trademark. All duties and tasks in the field of preparation are done by us, the finished product is handed over to you - made to measure, irreproachable, perfect.” \r\n\r\nIt would seem to follow that the Respondent would have carried out searches of the Irish and UK registry and other databases prior to applying for its Belgian trade mark and the domain name in dispute in these proceedings. The results of such searches would have informed the Respondent of the Complainant’s rights and most probably the corresponding rights of the owners of the 59 Community trademarks, 80 UK registered trademarks, 30 Benelux registered trade marks, 50 German national trade marks, and 17 marks on the WIPO International register that the Respondent clsims incorporate the element 123.\r\n\r\nOn the balance of probabilities therefore, despite its denial, given the nature of its business,  the Respondent was aware of the Complainant’s rights when it registered the domain name.\r\n\r\nThe Complainant has submitted a list of the domain names for which the Respondent has made application during the Sunrise Period. These domain names are generally what can be described as “generic”, such as ABC, AUTO, AUTOS, BABY, BEER, BIER, BLOG. None of the domain names appear to be identical or similar to any famous marks.\r\n\r\nHowever, unlike AUTO, AUTOS, BABY, BEER, BIER, BLOG, the numbers 123 are not “generic”. The numbers 123 in combination do not refer to a genus or class of things.\r\n\r\nBoth Article 2 of Council Directive 89\/104\/EEC of 21 December, 1988, to approximate the Laws of the Member States relating to trade marks and Article 4 of Council Regulation (EC) 40\/94 of 20 December, 1993, on the Community Trade Mark  provide that a trade mark may consist of any sign capable of being represented graphically, particularly inter alia “numerals” provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.. It follows that numerals may have the capacity to distinguish and as such are not generic signs.\r\n\r\nThe trade mark 123 was registered as a word mark in the UK by the Complainant and the UK Patent Office accepted that it had sufficient distinctiveness to be registered.\r\n\r\nWhile on the evidence adduced, it would appear that when the Respondent registered the domain name it was not its intention to attempt to sell the domain name to the Complainant in particular or to otherwise take advantage of the Complainants rights. Nonetheless it is obvious that the Complainant registered the domain name for the purposes of selling or renting it or otherwise making it available to third parties. This is evidenced by the fact that the Respondent has registered so many diverse domain names and it is admitted in the Response that the domain name was registered for the purposes of “building up brand concepts, into which trademarks and domain names are integrated”. \r\n\r\nFurthermore as the Respondent was aware of the Complainant’s rights and perhaps the rights of the owners of the other trade mark registrations that incorporate the element 123, when it embarked upon a course of action to apply for a Belgian registration knowing that the Benelux registry operates a deposit system, it then made an application for the domain name 123.eu seeking priority based on the Belgian trademark and thereby seeking to steal a march on the Complainant and third parties who may have had rights in the 123 trade mark.\r\n\r\nTurning to the UDRP cases cited by the Respondent:  since the domain name 123 is not a generic name the decision of the learned panel in John Fairfax Publications Pty Ltd v. Domain Names 4U and Fred Gray (WIPO Case No. D2000-1403 (December 13, 2000) can be distinguished. Furthermore since on the balance of probabilities the Respondent was aware of the Complainants rights, Newstoday Printers and Publishers (P) Ltd. v. InetU, Inc. WIPO Case No. D2001-0085 can be distinguished.\r\nCiting the decision in the UDRP case, Allocation Network GmbH v. Steve Gregory, WIPO Case No. D2000-0016 (March 24 2000) the Respondent submits that it is not obliged to carry out trade mark searches prior to applying to register a domain name. That is an overstatement of that panel’s decision where it stated that “nothing in the (UDRP) can be construed as requiring a person registering a domain name to carry out a prior trademark search in every country of the world for conflicting trademark rights.” In the present case the Respondent claims to be creating “made to measure, irreproachable, perfect” brands and it is reasonable to expect that as a brand creation organisation it would carry out trade mark searches within the EU.\r\n\r\nThe decision in a recent UDRP case, ATOL v. Namegiant - Moyobamba Pshp (WIPO Case No. D2006-1203 (November 16, 2006) is helpful. In that case the panel addressed the issue bad faith where there is  large scale registration of dictionary words as domain names by resellers in the following terms:\r\n\r\n“it appears that the Respondent’s business is the registering and selling of domain names on a very large scale, whereby some of these domain names may correspond to dictionary words (which is the case of the Disputed Domain Name in some languages). From this perspective, it is useful to refer to a previous decision which held that “where a respondent has registered a domain name consisting of a dictionary term because the respondent has a good faith belief that the domain name’s value derives from its generic qualities, that may constitute a legitimate interest and the offer to sell such a domain name is not necessarily a sign of bad faith. Where, in contrast, a respondent registers large swaths of domain names for resale, often through automated programs that snap up domain names as they become available, with no attention whatsoever to whether they may be identical to trademarks, such practices may well support a finding that respondent is engaged in a pattern of conduct that deprives trademark owners of the ability to register domain names reflecting their marks”. See Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304 (this part of the decision has been referred to by subsequent Panels such as in Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964).”\r\n\r\nIn the view of this Panel, the Respondent therefore, in the knowledge that the Complainant was the owner of the UK registered trade mark 123, embarked upon a course of action to secure the 123.eu domain name for the purposes of building up a brand concept to be sold to a third party notwithstanding the Complainant’s prior rights in the mark. \r\n\r\nArticle 21 3 (b) of Regulation 874\/2004, provides that bad faith may be demonstrated where…”the domain name has been registered in order to prevent the holder of such a name in respect of which a right is recognised or established by national and\/or Community law, or a public body, from reflecting this name in a corresponding domain name, provided that (i) a pattern of such conduct by the registrant can be demonstrated…”\r\n\r\nIn the view of this Panel the course of action taken by the Respondent and in particular the steps that the Respondent took to secure priority in the Sunrise period was inevitably intended to prevent the Complainant from reflecting the name 123 in a the corresponding domain name and as such demonstrates that the Respondent enaged in registration of the domain name in bad faith.\r\n\r\nAlternatively, given the business of the Respondent, if the Respondent registered a large number of domain names with no attention to whether they may be identical to trade marks, this may be taken as a pattern of conduct that deprives that trade mark owner, the Complainant in this case, of the ability to register the domain name reflecting its mark on the .eu domain and as such amounts to circumstances indicating that the domain name was registered and is being used in bad faith. (ATOL v. Namegiant - Moyobamba Pshp (WIPO Case No. D2006-1203)).\r\n\r\nThe Panel finds that the domain name 123 was registered in bad faith. \r\n\r\nThe registration of the domain name 123.eu by the Respondent is speculative or abusive within the meaning of Article 21 of Commission Regulation (EC) No 874\/2004 and the Complainant is entitled to succeed in its application.",
    "decision": "For all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the Panel orders that the domain name 123 be transferred to the Complainant",
    "panelists": [
        null
    ],
    "date_of_panel_decision": "2007-02-16 00:00:00",
    "informal_english_translation": "The Complainant submits that the registration of the domain name 123.eu by the Respondent is speculative or abusive within the meaning of Article 21 of Commission Regulation (EC) No 874\/2004 of 28 April 2004 laying down public policy rules concerning the implementation and functions of .eu Top Level Domain and principles governing registration (hereinafter Regulation 874\/2004)  and within the meaning of Rule B 11 of the.eu Alternative Dispute Resolution Rules (hereinafter) the “ADR Rules”) and requests  transfer  of the domain name at issue to the Complainant.\r\n\r\nThe Complainant is the owner of the UK registered trade mark 123 registered on 15 November 2000.. The Respondent is the owner of the Belgian registered trade mark 123 registered on 7 November 2005. The Respondent made 245 other applications for..eu domain names during the Sunrise period based on Benelux registered trade marks.\r\n\r\nBoth the Complainant and the Respondent applied to register the domain name 123.eu. Initially the domain name was allocated to a third party but following a successful challenge in ADR EU Case No. 00188 (12 June 2006), the EURid decision was annulled and domain name was subsequently allocated to the Respondent being the next applicant in line.\r\n\r\nThe Respondent accepted that the domain name was identical to the Complainant's registered trade mark. The Panel found that the Respondent had rights in the domain name as it was the owner of the Belgian registered trade mark 123.\r\n\r\nThe Panel found that the Respondent's Belgian registered trade mark 123 was registered by the Respondent purely for the purposes of grounding an application for the 123.eu domain name with priority under the Sunrise period. The Panel further found that despite the denial by the Respondent, because the Respondent is engaged in the business of creating brand names, the Respondent had actual knowledge that the Complainant was the owner of the UK registered trade mark when it applied to register the Belgian trade mark 123 and then proceeded to apply to register the domain name 123.eu in the Sunrise Period.\r\n\r\nArticle 21 3 (b) of Regulation 874\/2004, provides that bad faith may be demonstrated where…”the domain name has been registered in order to prevent the holder of such a name in respect of which a right is recognised or established by national and\/or Community law, or a public body, from reflecting this name in a corresponding domain name, provided that (i) a pattern of such conduct by the registrant can be demonstrated…”\r\n\r\nWhile many of the applications for domain names by the Respondent during the Sunrise Period based on Benelux registered trade marks were for generic words, the panel held that the trade mark 123 is not a generic sign. The numbers 123 in combination do not refer to a genus or class of things and have the capacity to distinguish goods and services.\r\n\r\nThe course of action taken by the Respondent and in particular the steps that the Respondent took to secure priority in the Sunrise period was inevitably intended to prevent the Complainant from reflecting the name 123 in a the corresponding domain name and as such demonstrates that the Respondent engaged in registration of the domain name in bad faith.\r\n\r\nAlternatively, given the business of the Respondent, if the Respondent registered a large number of domain names with no attention to whether they may be identical to trade marks, this may be taken as a pattern of conduct that deprives that trade mark owner, the Complainant in this case, of the ability to register the domain name reflecting its mark on the .eu domain and as such amounts to circumstances indicating that the domain name was registered and is being used in bad faith.\r\n\r\nThe Panel held that the registration of the domain name 123.eu by the Respondent is speculative or abusive within the meaning of Article 21 of Regulation 874\/2004, that the Complainant is entitled to succeed in its application and directed that the domain name 123.eu be transferred to the Complainant.",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}