May 12, 2006 case: Second round

Frequent readers may remember the first case ever over a European domain name. The holder of the trademark "EUROSTAR", launched a lawsuit before a French court against the Belgian owner of the same trademark, who managed to register a few minutes before the plaintiff. Because there was a coexistence agreement between the parties, the complainant alleged the name registration was a violation of the contract. The French court [Paris commercial court, January 10, 2006] remarked that the contract did not include a provision on domain name registrations, and dismissed the complainant.

An ADR procedure was then launched. The decision of the Arbitration Center for .eu disputes was published this afternoon.
To the complainant, the application was made in bad faith, because it is contrary to the spirit of the coexistence agreement. The complainant also argues that the application was made without adequate prior rights, as the present domain name holder
does not have a prior right in the name EUROSTAR alone. It has registered trademark rights in names which contain the word EUROSTAR in combination with other words and/or devices, such as: EUROSTAR DIAMOND TRADERS FACETING THE FUTURE; EUROSTAR, A PARAGON OF QUALITY; and a figurative version of the word EUROSTAR together with a diamond device.
Respondent replies that a prior right claimed to a name included in figurative or composite signs can be accepted when
the word element is predominant and can be clearly separated or distinguished from the device element provided that:
(a) all alphanumeric characters (including hyphens, if any) included in the sign are contained in the domain name applied for, in the same order as that they appear in the sign, and
(b) the general impression of the word is apparent, without any reasonable possibility of misreading the characters of which the sign consists or the order in which those characters appear.
The fact that there was a coexistence agreement is indifferent to the registration, as long as there is a demonstration of a prior right. Bad faith cannot be part of the debate, as the complainant challenges the Registry's decision to grant the name.

To the panel, the Registry granted the domain name in accordance with the registration rules. As for the question of whether or not the validation agent or the Registry are obliged, before the decision on the registration of the domain name, to examine whether or not the application has been made in good faith, the Panel observes that the applicant must affirm by electronic means that "to its knowledge the request for domain name registration is made in good faith and does not infringe any rights of a third party" (article 3). Though the Registry may revoke domain names without submitting the dispute to ADR, on various grounds that include the holder’s breach of the terms of registration under article 3, it can only revoke a name when it is requested to do so. The complainant did not ask the Registry to revoke
The Registry simply and, in the Panel’s view correctly, upon notification of the findings by the validation agent that prior rights exist regarding the domain name that is first in line, has found that EDT has demonstrated a prior right in accordance with the procedure set out in article 14 of the Public Policy Rules, has accepted its application, and has registered the domain name on the first come, first served basis.
Furthermore, the Registry "has no way of knowing whether the Coexistence Agreement is still valid, or has been superseded by some other agreement or court judgment" (and so cannot the Panel).

Case 00012

No comments: