{
    "case_number": "CAC-ADREU-005332",
    "time_of_filling": null,
    "domain_names": [],
    "case_administrator": null,
    "complainant": [],
    "complainant_representative": null,
    "respondent": [],
    "respondent_representative": null,
    "factual_background": "The respondent registered the disputed domain name lernercatalog.eu on 7 April 2006. The Complainant,  owner of various trademarks LERNER in the European Community, approached the Respondent on 14 April 2008 demanding that he cease the use of the domain name and remove all contents from it. On 4 June 2008 the Respondent, after receiving a follow-up letter, responded to the Complainant suggesting that the Complainant purchase the domain name. After further exchange of letters and failing to find an amicable settlement the Complainant submitted the Complaint to the Czech Arbitration Court requesting that the disputed domain name is revoked.",
    "other_legal_proceedings": "The panel is not aware of any legal proceedings relating to the disputed domain name.",
    "discussion_and_findings": "According to Regulation (EC) No 874\/2004 of 28 April 2004, Article 21(1), a registered domain name is subject to revocation where the name is identical or confusingly similar to a prior right recognised by national or Community law and where the domain name is registered without rights or legitimate interest in the name or it has been registered in bad faith.\r\n\r\n1. Preliminary issues\r\nThe Complainant is a company registered in the United States. Pursuant to Regulation 874\/2004, Article 2 and Regulation (EC) No 733\/2002, Article 4(2)(b), the Complainant is not eligible to register .eu top level domain names in its name. There is nothing in these regulations, however, that would prohibit an undertaking that is not eligible to register a .eu from instigating ADR proceedings that violate their rights. Regulation 874\/2004 in fact states in Article 22(1) that ADR proceedings can be initiated by \"any party\" without further qualifications regarding the eligibility to actually have a .eu domain name in its name. If the Complainant is not entitled to register a .eu top level domain the panel cannot naturally order the domain name to be transferred to it. In the present case the Complainant has requested that the disputed domain name is revoked. The panel finds that the Complainant is eligible to initiate ADR proceedings and to request that the disputed domain name is revoked.\r\n\r\n2. Prior rights\r\nThe complainant is an American company Lernco, Inc., trading in the field of women’s clothing and accessories. It is the owner of various trademarks for the mark LERNER in several countries of the European Community. For example, it is the owner of UK registrations No. 2025502 LERNER for goods in class 16 and No. 1568723 LERNER for services in classes 42 and 45. In addition, the Complainant is the owner of various other trademarks for the mark LERNER in the European Community. The panel is satisfied that the Complainant is the owner of a prior right as mentioned in Article 10(1) of Regulation 874\/2004.\r\n\r\n3. Confusing similarity\r\nThe Complainant has rights for the trademark LERNER under national and Community law. The disputed domain name in this case is lernercatalog.eu. The domain name is not identical to the prior right of the Complainant. At issue is therefore the similarity of the signs LERNER and LERNERCATALOG. It is well-established principle in both ADR and UDRP proceedings that the top level domain .eu shall not be taken into consideration when assessing the similarity of a prior right and a domain name. For example, see ADR case No 1250 VOCA, regarding domain name voca.eu.\r\n\r\nThe Complainant’s trademark LERNER is included in its entirety in the disputed domain name. The difference between the prior right and the disputed domain name is that the disputed domain name contains an additional word, namely “catalog”. Word “catalog” in this context has a very little or no distinctive character. The panel further notes that the Complainant’s UK registration No. 2025502 LERNER covers goods in class 16. These goods include “magazines, catalogues and brochures”. The case law of the Czech Arbitration Court clearly establishes that adding a non-distinctive element to a prior trademark does not remove confusing similarity. For example, the panel held in case No. 4319 AIRFRANCEAIRLINES that the disputed domain name airfranceairlines.eu was confusingly similar to the prior right AIR FRANCE.\r\n\r\nThe panel finds it established that the disputed domain name lernercatalog.eu is confusingly similar to prior right LERNER.\r\n\r\n4. Rights or legitimate interest in the name\r\nRegulation 874\/2004 gives the respondent the possibility to establish that despite the disputed domain name is confusingly similar to a prior right, the respondent has rights or legitimate interest in the name. The regulation lists several ways of establishing sufficient rights or interests in the name. The Complainant has made a reasonable assertion and argument that the Respondent does not have rights or legitimate interest in the disputed domain name and the Respondent has not rebutted this even though given a chance. The Respondent did not submit any arguments or evidence that would demonstrate its rights or legitimate interest in the disputed domain name.\r\n\r\nThe panel therefore finds that the disputed domain name was registered without rights or legitimate interest in the name.\r\n\r\n5. Bad faith\r\nThe Complainant has also argued that the disputed domain name was registered in bad faith. The Complainant has also provided some evidence to that support that claim. However, because the disputed domain name is confusingly similar to the prior right of the Complainant and the Respondent does not have rights or legitimate interest in the disputed domain name, there is no need to further consider the question of whether the Respondent registered the disputed domain name in bad faith.",
    "decision": "For all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the Panel orders that the domain name LERNERCATALOG be revoked.",
    "panelists": [
        null
    ],
    "date_of_panel_decision": "2009-05-28 00:00:00",
    "informal_english_translation": "The Complainant is the owner of various trademarks for the mark LERNER in several countries in the European Community. The Respondent registered domain name lernercatalog.eu\r\n\r\nThe panel found that despite not being eligible to register a .eu top level domain in its name, the Complainant is nevertheless eligible to initiate ADR proceedings pursuant to Regulation 874\/2004. The panel further found that the disputed domain name was confusingly similar to the prior right LERNER owned by the Complainant. The disputed domain name incorporated trademark LERNER in its entirety and added only an element with no or little distinctive character to it. Further, the Complainant made reasonable arguments and allegations that the Respondent does not have rights or legitimate interest in the name and the Respondent did not rebut these.\r\n\r\nFor those reasons the disputed domain name was ordered to be revoked.",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}