{ "case_number": "CAC-ADREU-005266", "time_of_filling": null, "domain_names": [], "case_administrator": null, "complainant": [], "complainant_representative": null, "respondent": [], "respondent_representative": null, "factual_background": "The Complainant is a German company that has been continuously using its company name since 1971. Its company name is protected under Article 5 (2) of the German Trademark Act. It is the owner of the German trademark No. 934409 PRECITEC and of the Community trademark No. 1809169 PRECITEC. It registered and uses the domain name , , , , , , , and . \r\n\r\nThe domain name was registered on September 12, 2006 by the Dutch company Precitec B.V. The Respondent is a private company with limited liability (“besloten vennootschap”) established under the laws of the Netherlands. Since 1984 the Respondent is using the company name PRECITEC intensively and continuously. It registered the domain name.\r\n\r\nThe parties are not competitors.", "other_legal_proceedings": "To the knowledge of the Panel, there are no other legal proceedings pending or decided that relate to the domain name .", "discussion_and_findings": "1 Procedure\r\n\r\nThe Panel admits the non-standard communications which have been notified, on the basis of Article 7 (a) and (b) of the ADR Rules\r\n\r\n2. The domain name is identical to the prior rights of the Complainant\r\n\r\nThere is no doubt that the domain name is identical to the Complainant’s trademarks and company name PRECITEC.\r\n\r\n3. The Respondent has legitimate rights and interest in the name PRECITEC\r\n\r\nThe company name PRECITEC is protected under the Dutch Trade Name Act (“Handelsnaamwet”). As a consequence, the Respondent has a right protected under national law in the Netherlands, pursuant to Article 10 (1) of Regulation 874\/2004. \r\n\r\nIn the present case, the parties are not competitors and they both have legitimate rights in the name PRECITEC.\r\n\r\n4. Bad faith registration of \r\n\r\n4.1. Preliminary remarks on Article 21 (3) b) ii) of Regulation 874\/2004\r\n\r\nThe complaint is based on Article 21 (3) b) ii) of Regulation 874\/2004, which provides that: \"Bad faith, within the meaning of point (b) of paragraph 1 may be demonstrated, where:\r\n(a) ..\r\n(b) the domain name has not been used in a relevant way for at least two years from the date of registration\".\r\n\r\nThis provision has to be read in connection with Article 21 (1):\"A registered domain name shall be subject to revocation, using an appropriate extra-judicial or judicial procedure, where that name is identical or confusingly similar to a name in respect of which a right is recognised or established by national and\/or Community law, such as the rights mentioned in Article 10(1), and where it:\r\n(a) has been registered by its holder without rights or legitimate interest in the name; or\r\n(b) has been registered or is being used in bad faith.\" \r\n\r\nThe fulfilment of any of these three criteria individually is sufficient. This is the principal characteristic of the ADR for .EU domain names. It is also the main difference with the Uniform Domain Name Dispute Resolution Policy (UDRP) for generic Top Level domains.\r\n\r\nAccording to Article 21 1) a), if the Respondent has no right or legitimate interest in the name, the transfer or the revocation can be ordered exclusively on this basis and the question of use or non-use need not be addressed. It is therefore clear that Article 21 (3) b) ii) applies regardless of whether or not the Respondent has a right or a legitimate interest in the name. \r\n\r\nThis is supported by both cited decisions concerning and (ADR decisions n° 05208 and n° 05231), cases in which the domain name at issue was composed of the Respondent's family name. Therefore, the Respondent could rely on a right recognised or established by national law.\r\n\r\nIn these decisions, the Panel ordered the transfer of the disputed domain name, as \"the domain name has not been used in a relevant way for at least two years from the date of registration\". \r\n\r\nIn these cases, the Panel’s opinion was that Article 21 (3) b) ii) has to be applied strictly, that it applies automatically if there is no proof of use and that it provides an obligation to use EU domain names.\r\n\r\nIn the case , the Panel decided that “no intention to disrupt the professional activities of a competitor could be established, since the parties are not competitors. However, the only use made of the domain by the Respondent was through a “Welcome to – more to come soon” page, a further page with information about the proprietor and through the establishment of an email address. The Respondent did not provide any further evidence on intended or actual use of the domain. The defence was limited to use of the domain for private email purposes. Since the only email submitted by the respondent was one single email of unsolicited advertising (spam), it was held that this was not sufficient to establish relevant use during the two-year period specified in Article 21(3) b) ii) Commission Regulation (EC) No. 874\/2004”. \r\n\r\nIt must be added that, in the case, the Complainant referred to a prior decision of a German court between the same parties, concerning . The Court had decided to transfer the domain name to the Complainant.\r\n\r\nIn the case , the Panel considered that “the Complainant was able to demonstrate that the Respondent has made no sufficient use of the domain within the two-year-period stated in Article 21 (3) b) ii) Commission Regulation 874\/2004. The Panel finds Article 21 (3) b) ii) as a special regulation only applicable when it is proven that no use of the domain name whatsoever has taken place. The Panel finds that a simple and vague announcement on the website that a “homepage is soon to come” is not a sufficient form of use in the sense of Article 21 (3) b) ii)”.\r\n\r\nAs the language of the procedure in both of these prior decisions was German, they were decided based on the German version of Article 21 (3) b) ii), which states:\r\n\r\n\"Bösgläubigkeit (…) liegt vor, wenn (...)\", what means \"Bad faith is demonstrated, where (…).\r\n\r\nIn contrast, the French and English version of Regulation 874\/2004 differ from the German version. In the English version, Article 21 (3) b) ii) provides:\r\n\r\n\"Bad faith, within the meaning of point (b) of paragraph 1 may be demonstrated, where:\r\n(a) …\r\n(b) the domain name has not been used in a relevant way for at least two years from the date of registration\".\r\n\r\nThe French version uses the same terminology:\r\n\r\n\"la mauvaise foi (…) peut être démontrée quand (…).”\r\n\r\nThe language of the present procedure is English. Therefore, the decision must be based on the English version of the Regulation, which utilises the terms “may be demonstrated” as opposed to the terms “is demonstrated” as set forth in the German version.\r\n\r\nIf there is any doubt as to the meaning of Article 21 (3) b) ii), it is necessary to examine the purpose behind Regulations 733\/2002 and 874\/2004, in particular whether there are any references to the question of use and non-use of domain names and on the consequence of any non-use within a specific period of time in the Preamble or elsewhere in the texts. There are no such provisions, other than those included in Article 21 (3) b) ii) and iii) of Regulation 874\/2004.\r\n\r\nRegulation 733\/2002 provides the obligation to organize a dispute resolution policy in order to fight against speculative and abusive registrations (Whereas n°16) and Regulation 874\/2004 sets forth the alternative dispute resolution for .EU. Article 21 (3) b) ii) and iii) concerning bad faith registration and non-use are included in the provisions for \"speculative and abusive registrations\". The purpose of these provisions is to protect the owner of prior rights recognised or established by national and\/or Community law.\r\n\r\nIf one were to conclude that the non-use of a domain name within the two year period commencing on the date of registration results in a conclusive finding of a bad faith registration and justifies the transfer or the revocation of the domain name that is identical or confusingly similar to a prior right recognised or established by national and\/or Community law, this would create an affirmative obligation of use for the domain name holder. A large number of domain names, in particular .EU domain names, are not used and therefore such an obligation would have a significant impact on the rights of the holders of these domain names. Consequently, only a very clear provision should be able to create such an affirmative obligation of use, which is not the case for Article 21 (3) b) ii), due to the use of the term “may” as opposed to the use of the term “is” in the German version.\r\n\r\n5. Bad faith registration of \r\n\r\nThe Respondent does not prove that it has used the domain name in a relevant way during the two year period from the date of registration. The screenshots are not dated and the letters sent by its provider concern the preparation of a new website and the installation report dated August 23, 2008 of the email address info@precitec.eu. The annexes to the email of the provider (annex 7) are drafted in Dutch and are not translated. It seems that they concern the installation of the email addresses. In any event, there is no dated screenshot of the website under the domain name prior to the complaint and the documents communicated by the Respondent do not prove that the domain name has actually been used. There could have been other proofs of use, such as statistics concerning connections on the website , emails, results of a search on Google on .\r\n\r\nThe Panel’s opinion is that Article 21 (3) b) ii) has to be applied according to its precise wording, which means that the absence of use may be an indication of bad faith registration but that the Complainant has to prove that the domain name has been registered “for the purpose of selling, renting, or otherwise transferring the domain name to the holder of a name in respect of which a right is recognised or established by national and\/or Community law or to a public body” or that it 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”.\r\n\r\nIn the present case, the Complainant asserts that the domain name has been registered to prevent it from registering it.\r\n\r\nThe burden of proof of bad faith registration lies on the Complainant. Bad faith supposes that the domain name holder was aware of the other party’s prior rights or could not ignore them and that he wanted to damage this other party, even in a passive way.\r\n\r\nAccording to the wording of Article 21 (3) b) ii), the Panel’s opinion is that the proof that the domain name has not been used within the two year period from its date of registration is not sufficient. Although it is an indication of a possible bad faith registration, it is not conclusive proof of a bad faith registration. The fact that the Respondent was aware of the Complainant’s rights at least as of March 16, 2007, date of the letter sent by the Complainant to the Respondent in order to open discussions regarding “the possibilities to transfer the internet domain www.precitec.eu” and the fact that it does not prove that it answered to this letter, do not prove that the registration was made in bad faith on September 12, 2006.\r\n\r\nNevertheless, the Complainant should prove that the Respondent registered the domain name to prevent it from doing so or that the domain name has been registered in order to sell, to rent or to transfer the domain name, even if it can be difficult to prove it when both parties are not competitors and when neither of them is very well-known. It means as well that the situation to be analyzed is not only the situation after the two year-period of non use, but also the situation on the date of the registration.", "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": "2009-02-20 00:00:00", "informal_english_translation": "The Complainant is a German company which has been continuously using its company name since 1971. Its company name is protected under Article 5 (2) of the German Trademark Act. It is the owner of the German trademark No. 934409 PRECITEC and of the Community trademark No. 1809169 PRECITEC. It registered and uses the domain name , , , , , , , and .\r\n\r\nThe domain name was registered on September 12, 2006 by the Dutch company Precitec B.V. The Respondent is a private company with limited liability (“besloten vennootschap”) established in the Netherlands. Since 1984 the Respondent has been using the company name PRECITEC intensively and continuously. It registered the domain name.\r\n\r\nThe parties are not competitors and both of them have legitimate rights and interests in the name PRECITEC.\r\n\r\nThe Complainant bases its request for the transfer of on bad faith registration. It asserts that bad faith registration in order to prevent him from registering the domain name is irrevocably presumed if the domain name has not been used in a relevant way during the two-year period following the date of registration (Art. 21 (3) b) ii) of Regulation 874\/2004.\r\n\r\nThe Respondent claims its legitimate rights and interest in PRECIEC and asserts that it used the domain name in a relevant way within two years after registration. The proof of use are an email from its provider concerning the creation of the email address info@precitec.eu in August 2008 and the declaration that the provider has been contacted in April 2008 to ”to prepare a new website, and that it had been delayed. The Respondent communicated screenshots which are not dated.\r\n\r\nArticle 21 (3) b) ii) has to be applied according to its wording in the English version of the Regulation, since the language of the procedure is English. If it has to be interpreted, one should examine the purposes of Regulations 733\/2002 and 874\/2004, in particular whether there are references to the question of the of use and non-use of domain names and on the consequence of any non-use within a specific period of time in the Preamble. There are no such provisions, other than those included in Article 21 (3) b) ii) and iii) of Regulation 874\/2004.\r\n\r\nThe burden of proof of bad faith registration lies on the Complainant. Bad faith supposes that the domain name holder was aware of the other party’s prior rights or could not ignore them and that he wanted to damage this other party, even on a passive way.\r\n\r\nAccording to Article 21 1) a), if the Respondent has no right or legitimate interest in the name, the transfer or the revocation can be ordered exclusively on this basis and the question of use or non-use need not be addressed. It is therefore clear that Article 21 (3) b) ii) applies regardless of whether or not the Respondent has a right or a legitimate interest in the name. \r\n\r\nAccording to the wording of Article 21 (3) b) ii), the Panel’s opinion is that the proof that the domain name has not been used within two years from the date of its registration is not sufficient. It is an indication of a possible bad faith registration, but does not constitute conclusive proof of a bad faith registration. \r\n\r\nTherefore, in order to demonstrate bad faith, the Complainant must prove that the Respondent registered the domain name to prevent him from doing so or that the domain name has been registered in order to sell, to rent or to transfer the domain name, even if this may be difficult to prove when the parties are not competitors and neither of them is very well-known. The Complainant has not satisfied this burden of proof.\r\n\r\nFor all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the Panel orders that the Complaint is Denied.", "decision_domains": [], "panelist": null, "panellists_text": null }