{ "case_number": "CAC-ADREU-003985", "time_of_filling": null, "domain_names": [], "case_administrator": null, "complainant": [], "complainant_representative": null, "respondent": [], "respondent_representative": null, "factual_background": "History of the Request for Registration\r\n\r\nOn 8 February 2006 Mr. Peter Acworth (hereinafter “the Applicant”) filed requests for the registration of the domain names , , , , , and (hereinafter “the Domain Names”) within part two of the phased registration period.\r\n\r\nThe Applicant claimed the following prior rights for the applications: \/ Titles of art – Netherlands to ULTIMATESURRENDER, \/ Titles of art – Netherlands to WIREDPUSSY, \/ Titles of art – Netherlands to BUTTMACHINESBOYS, \/ Titles of art – Netherlands to MENINPAIN, \/ Titles of art – Netherlands to REALFUCKINGCOUPLES, \/ Titles of art – Netherlands to behindkink.com and \/ Titles of art – Netherlands to HOGTIED.EU.\r\n\r\nOn February 28, 2006 the Applicant submitted documentary evidence to substantiate the existence of the prior right claimed over the names. The documentary evidence was the same document in each seven application, namely a certificate of registration with the Chamber of Commerce in Amsterdam in Dutch language showing that a Dutch company CNE Data International B.V. is the owner of the trade names corresponding to the Domain Names. \r\n\r\nEURid (hereinafter “the Respondent”) rejected the Applicant´s requests for registration on the grounds that the documentary evidence did not demonstrate that the Applicant was the holder of the claimed prior rights on the Domain Names.\r\n\r\n\r\nHistory of the ADR Proceeding\r\n\r\nOn 7 December 2006 at 13:30:56 CNE Data International BV, Peter Acworth (hereinafter “the Complainant”) filed a Complaint with the Czech Arbitration Court (hereinafter “CAC”) to contest EURid’s decision to reject the registration of the Domain Names. The language of the proceedings is English. The annexes of the Complaint consist, inter alia, of the same trade name certificate in Dutch language which the Applicant submitted as the documentary evidence. No English translation is enclosed to the certificate. \r\n\r\nIn response to Complainant’s request to the CAC to require EURid to disclose the documentary evidence as defined in the .eu Registration Policy and Terms and Conditions for Domain Name Applications made during the Phased Registration Period (hereinafter “Sunrise Rules”), the Respondent disclosed the documentary evidence on 13 December 2006.\r\n\r\nThe formal date of the commencement of the ADR Proceeding is 13 December 2006. The CAC notified EURid of the Complaint and invited the Respondent to issue its Response within 30 working days from the delivery of the notification.\r\n\r\nOn 18 December 2006 the CAC informed the Complainant that the sunrise application for the domain name was accepted and on the same date the Complainant withdrew any complaint pertaining to the domain name but requested the Panel to examine the application for and the applications for the other Domain Names.\r\n\r\nOn 5 February 2007 the Respondent filed its Response with the CAC.", "other_legal_proceedings": "There are no other legal proceedings of which the Panel is aware.\r\n\r\nThe Complaint originally included also the domain name waterbondage.eu. As it was accepted for registration on December 18, 2006 the Complainant withdrew the Complaint as regards waterbondage.eu on December 18, 2006.", "discussion_and_findings": "In consideration of the Factual Background and the Parties’ Contentions stated above, I come to the following conclusions:\r\n\r\n\r\n1. The relevant provisions\r\n\r\nArticle 12(3) of the Commission Regulation (EC) No 874\/2004 states: “During the second part of phased registration, the names that can be registered in the first part as well as names based on all other prior rights can be applied for as domain names by holders of prior rights on those names.”\r\n\r\nArticle 14 of the Regulation 874\/2004 states: \"All 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. (…) 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 applicant shall submit the evidence in such a way that it shall be received by the validation agent within forty days from the submission of the application for the domain name. If the documentary evidence has not been received by this deadline, the application for the domain name shall be rejected. (…) 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, \r\nthird and fourth paragraphs\".\r\n\r\nSection 3 (1) i of the Sunrise Rules states: \"Where no name of a company or organisation is specified, the individual requesting registration of the Domain Name is considered the Applicant; if the name of the company or the organisation is specified, then the company or organisation is considered the Applicant\".\r\n\r\nAnnex 1 to the Sunrise Rules requires for Documentary Evidence for Distinctive Titles of Protected Literary and Artistic Works in the Netherlands the following: “Documentary evidence as referred to in Section 18(2) of the Sunrise Rules.” \r\n\r\nAnnex 1 to the Sunrise Rules requires for Documentary Evidence for Trade Names in the Netherlands the following: “Documentary evidence as referred to in Section 16(5) of the Sunrise Rules. Use of the company name in course of trade must be demonstrated.”\r\n\r\nAnnex 1 to the Sunrise Rules requires for Documentary Evidence for Company Names in the Netherlands the following: “Documentary evidence as referred to in Section 16(5) of the Sunrise Rules (and not Section 16(4) of the Sunrise Rules). Use of the company name in course of trade must be demonstrated (cf trade names).”\r\n\r\nSection 16 (5) of the Sunrise Rules states: \"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): 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\r\nSection 18 (2) of the Sunrise Rules states for Documentary Evidence for Distinctive Titles of Protected Literary and Artistic Works the following: “Unless otherwise provided for in Annex 1 hereto, it is sufficient to submit the following Documentary Evidence for a distinctive title of a\r\nliterary and artistic work referred to under Section 18(1): (i) a copy of the cover or image of the literary and artistic work containing the title concerned (together with a brief description of (a) the work, or (b) the content of the work, a photograph of the work, etc.); and (ii) an affidavit signed by a competent authority, legal practitioner or professional representative stating that the Applicant holds the claimed rights in respect of the said title on the date of the Application, that the work in question has lawfully been made public and that the title is distinctive whereby such Documentary Evidence must clearly indicate that the Applicant is holder of the distinctive title of the literary and artistic work.”\r\n\r\nSection 21 (1) of the Sunrise Rules states: “On the instructions of the Registry, the Validation Agent appointed by the Registry shall verify: (i) whether the official requirements set out in Section 8 have been complied with; and (ii) whether the requirement for the existence of a Prior Right to the name claimed by the Applicant in the Application is fulfilled.” \r\n\r\nSection 21 (2) of the Sunrise Rules states: “The Validation Agent examines whether the Applicant has a Prior Right to the name exclusively on the basis of a prima facie review of the first set of Documentary Evidence received and scanned by the Processing Agent and in accordance with the provisions of these Sunrise Rules.”\r\n\r\nSection 21 (3) of the Sunrise Rules states: “The Validation Agent is not obliged, but it is permitted in its sole discretion, to conduct its own investigations into the circumstances of the Application, the Prior Right claimed and the Documentary Evidence produced.”\r\n\r\nArticle 22.11 (2) of the Regulation 874\/2004 states: “In the case of a procedure against the Registry, the ADR panel shall decide whether a decision taken by the Registry conflicts with this Regulation or with Regulation (EC) No 733\/2002. The ADR panel shall decide that the decision shall be annulled and may decide in appropriate cases that the domain name in question shall be transferred, revoked or attributed, provided that, where necessary, the general eligibility criteria set out in Article 4(2)(b) of Regulation (EC) No 733\/2002 are fulfilled.”\r\n\r\nArticle A 3 (c) of the ADR Rules states: “All documents including communications made as part of the ADR Proceeding shall be made in the language of the ADR Proceeding. The Panel may disregard documents submitted in other languages than the language of the ADR Proceeding without requesting their translation. Any communication by the Provider which, from its content, cannot be regarded as amounting to procedural documents (such as cover letters with which the Provider sends procedural documents or automatic system notifications generated by the Provider’s application) shall be made in the language of the ADR Proceeding or in English.”\r\n\r\nArticle B 11 (c) of the ADR Rules states: ”The main remedy available pursuant to an ADR Proceeding where the Respondent is the Registry shall be the annulment of the disputed decision taken by the Registry. The Panel may decide in appropriate cases pursuant to the Procedural Rules, Registration Policy, Sunrise Rules and\/or the Terms and Conditions that the domain name in question shall be transferred, revoked or attributed. However, with regard to any Registry decision relating to a prior right invoked during the phased registration period such measures of transfer and attribution will only be granted by the Panel if the Complainant is the next applicant in the queue for the domain name concerned and subject to the decision by the Registry that the Complainant satisfies all registration criteria set out in the European Union Regulations and to the subsequent activation by the Registry of the domain name in the name of the Complainant who is the next applicant in the queue.”\r\n\r\n\r\n2. Conclusions\r\n\r\nThis Panel wants to stress the point, that following Article 22.11 of the Regulation 874\/2004 the ADR Panel shall decide whether the decision at hand taken by the Registry conflicts with Regulation 733\/2002 or Regulation 874\/2004. Therefore, the Panel considers it has to assess whether there is “documentary evidence which demonstrates the right under the law by virtue of which it exists” under Article 14 of Regulation 874\/2004.\r\n\r\nThe Panel considers that the Applicant of the disputed Domain Names is the individual, Mr. Peter Acworth. This view is clearly supported by Section 3 (1) i of the Sunrise Rules and in amongst others decisions ADR No. 1686 , No. 2592 , No. 3042 , No. 3141 . and No. 3534 , . \r\n\r\nIt is the Panel’s view that for showing prior rights the applicant has to submit documentary evidence to show that he is the holder of the prior right claimed on the name in question within forty days from the submission of the application to the indicated validation agent. Although the applicant is allowed to submit additional evidence, this only is true, if the additional evidence will be submitted within the forty day period since the submission of the application. This view is also supported by the first-come-first-served principle.\r\n\r\nFrom the wording of Regulation 874\/2004 it is clear, that the evidence that shows the prior right claimed must be a documentary evidence and must show that the applicant is the holder of the prior right claimed on the name in question. \r\n\r\nWith regard to Article 13 in Regulation 874\/2004 the validation agent shall examine applications with regard to the submitted documentary evidences. It is moreover in the validation agents sole discretion (Article 21(3) Sunrise Rules) to do further investigation. With respect to the fact that the validation agent shall have appropriate expertise it has also the duty to examine the application and the supported documents materially but only to the extend, that it shall verify\/conform obvious errors between the application and the documentary evidence (e.g. the applicant indicated the wrong country at the cover letter – iura novit curia); but this shall not amount to verifying\/confirming a difference in legal forms regarding the applicant and the evidence documentation - that would be against Regulation 874\/2004 and the principle first-come-first-served.\r\n\r\nThe documentary evidence did not demonstrate that the Applicant is the holder of the claimed prior rights, namely Distinctive Titles of Protected Literary and Artistic Works. The documentary evidence did not include any required copy of the cover or image of the literary and artistic work containing the title concerned (together with a brief description of (a) the work, or (b) the content of the work, a photograph of the work, etc.) nor the required affidavit signed by a competent authority, legal practitioner or professional representative.\r\n\r\nThe Complainant has stated that the Complainant’s trade names are titles of artistic works protected by both trademark law and international principles of copyright law, and referred to common law trademark rights, even if the Complainant’s US division is the owner of the common law rights at issue. The Applicant has indicated “Distinctive Titles of Protected Literary and Artistic Works” in the Netherlands as the type of the prior right claimed in his applications. Thus, the Registry’s task was to decide if the documentary evidence fulfilled the requirements set out for proving such prior right, not other types of prior rights. \r\n\r\nThe printouts of the corresponding .com web sites attached to the Complaint are not admissible as proof of the claimed prior rights as the Registry and the Panel may only consider if the documentary evidence attached to the original applications and filed within the 40-day time limit, proved the claimed prior right. Even if said printouts would have been part of the original documentary evidence, it would not have fulfilled the requirements set for documentary evidence of Distinctive Titles of Protected Literary and Artistic Works or for Trade Names. \r\n\r\nEven if the applications would have been filed in the name of CNE Data International BV, who is the owner of the Dutch trade names corresponding to the Domain Names, and the prior right claimed would have been Company Name or Trade Name, the documentary evidence would not have fulfilled the requirements. No required documents, affidavits or proof of use was included in the documentary evidence and printouts of the web sites attached to the Complaint are not admissible as documentary evidence. \r\n\r\nThe Panel notes that the Complainant is familiar with domain name cybersquatting and has been faced with it earlier with other domain names. As someone with previous domain name registrations and knowledge on cybersquatting, the Panel considers that the Applicant was in a position to have knowledge on the importance of filing the applications correctly in order to avoid rejection based on errors in the application or deficiency in the documentary evidence. \r\n\r\nThe Panel also notes that an English translation of the annexed certificate from the Dutch Chamber of Commerce was not included in the Complainant. Based on the Article A 3 (c) of the ADR Rules the Panel disregards the documents in Dutch language that were not translated into the language of the proceedings, namely English. The Panel does not feel necessary to request translation of the certificate, because the certificate alone does not fulfill the requirements for proving the prior right claimed. The Panel refers to decisions ADR No. 01047 and No. 00317 . \r\n\r\nBased on the above stated the Panel has no possibility but to consider that the rejection decisions made by the Registry do not conflict with the EC Regulation No 733\/2002 or No. 874\/2004.\r\n\r\nIn addition, the Panel states that the Complainant’s alternative request to order the registration of the Domain Names in the name of the Complainant, independently of the Panel position on the requests for the registration and the reasons for rejection, would not be possible to be approved as the requirements for such an order set out in Article 11 (c) of the ADR Rules and Article 22.11 (2) of the Regulation are not fulfilled in this present case.", "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": "2007-03-08 00:00:00", "informal_english_translation": "The disputed domain names were applied during the second part of the phased registration into the name of an individual person. The applicant claimed to have prior right based on “Distinctive Titles of Protected Literary and Artistic Works” protected in The Netherlands. The documentary evidence included a certificate of registration with the Chamber of Commerce in Amsterdam showing that the Complainant, i.e. company CNE Data International B.V., whose principal shareholder and president the individual applicant is said to be, is the owner of Dutch trade names corresponding to the Domain Names. \r\n\r\nEURid rejected the registration requests on the grounds that the documentary evidence did not demonstrate that the applicant was the holder of the claimed prior rights on the Domain Names.\r\n\r\nThe Panel considers that the Applicant of the disputed Domain Names is the individual, Mr. Peter Acworth, and not the Complainant company CNE Data International B.V.\r\n\r\nThe documentary evidence did not demonstrate that the Applicant is the holder of the claimed prior rights, namely Distinctive Titles of Protected Literary and Artistic Works. The documentary evidence did not include any required copy of the cover or image of the literary and artistic work containing the title concerned (together with a brief description of (a) the work, or (b) the content of the work, a photograph of the work, etc.) nor the required affidavit signed by a competent authority, legal practitioner or professional representative.\r\n\r\nEven if the applications would have been filed in the name of CNE Data International BV, who is the owner of the Dutch trade names corresponding to the Domain Names, and the prior right claimed would have been Company Name or Trade Name, the documentary evidence presented would not have fulfilled the requirements. No required documents, affidavits or proof of use was included in the documentary evidence and printouts of the web sites attached to the Complaint are not admissible as documentary evidence, as they were not included in the documentary evidence filed with the Registry within the 40-day period. \r\n\r\nThe Panel considers that the rejection decisions made by the Registry do not conflict with the EC Regulation No 733\/2002 or No. 874\/2004.\r\n\r\nIn addition, the Panel states that the Complainant’s alternative request to order the registration of the Domain Names in the name of the Complainant, independently of the Panel position on the requests for the registration and the reasons for rejection, would not be possible to be approved as the requirements for such an order set out in Article 11 (c) of the ADR Rules and Article 22.11 (2) of the Regulation are not fulfilled in this present case.", "decision_domains": [], "panelist": null, "panellists_text": null }