Topeu.com took a case to the Czech arbitration panel which rules
on .eu domain disputes, arguing that .eu registry EURid should not
have given sex.eu to a company called Yellow Register On Line.
Yellow was the first company with a prior right to the term
'sex' to apply for the domain, which is usually enough to be
successful in being awarded it. Yellow had a registered trade mark
for the term 'sex'.
Topeu argued that while Yellow was the first in line for the
domain and had a trade mark on 'sex', Topeu had a greater right to
the domain because it had registered a trade mark for the entire
phrase 'sex.eu'.
"The complainant contends that the proper interpretation of
Article 10(2), especially the phrase '…the registration of the
complete name for which the prior right exists' is that it means
that the entire domain name, inclusive of the '.eu' suffix, must be
reflected on the trade mark registration certificate," said the
company's case.
EURid said that the 'complete name' refers only to that which
precedes the '.eu' suffix. The registry also pointed out that Topeu
had attempted to make the same case regarding the casino.eu domain,
and that the arbitration panel in that case had rejected its
claims.
The arbitration panellist, James Mitchell, ruled against Topeu
and in favour of EURid. "It is self evident that the meaning of
'complete name' … is the name excluding the .eu suffix," wrote
Mitchell. "Were this not the case then those companies who had gone
out of their way (whether cynically otherwise) to register a range
of trade marks including '.eu' would effectively gain preference
over all other trade mark owners in their rights to .eu
domains."
"To impart such a construction would be to clearly contradict
the letter as well as the spirit of the regulations and to
undermine the very purpose of the 'sunrise' period," he wrote.
