3S-Smart Software Solutions GmbH v. REDACTED PRIVACY et al.
Claim Number: FA2101001929656
Complainant: 3S-Smart Software Solutions GmbH, of Kempten, Germany.
Complainant Representative: VKK Patentanwälte, of Kempten, Germany.
Respondent: Contact Privacy Inc. Customer 1248836252, of Toronto, Ontario, Canada.
Respondent Representative: Not applicable
REGISTRIES and REGISTRARS
Registries: Binky Moon, LLC
Registrars: Dynadot, LLC
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Examiner in this proceeding.
Jeffrey M. Samuels, as Examiner.
Complainant submitted: January 28, 2021
Commencement: January 29, 2021
Default Date: February 15, 2021
Having reviewed the communications records, the Examiner finds that the Forum has discharged its responsibility under URS Procedure, Paragraphs 3 and 4, and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
Complainant owns trademark registrations in a number of jurisdictions, including the United States and Germany, for the mark CoDeSys, as used on or in connection with software for programming industrial controllers.
The disputed domain name, codesys.codes, redirects Internet users to Complainant’s own authorized site at codesys.com.
Even though the Respondent has defaulted, URS Procedure 1.2.6 requires Complainant to make a prima facie case, proven by clear and convincing evidence, for each of the following three elements to obtain an order that a domain name should be suspended.
1. Confusing Similarity/Rights/Current Use
The Examiner determines that the disputed domain name, codesys.codes, is confusingly similar to the mark CoDeSys in that it fully incorporates each letter of the mark, adding only the generic TLD “.codes.” The evidence also establishes that Complainant owns a valid national or regional registration[1] for the CoDeSys mark and that such mark is currently in use.
2. Rights or Legitimate Interests
The Examiner concludes that Respondent has no rights or legitimate interests in the disputed domain name. Complainant indicates that it conducted a search which revealed that Registrant owns no registered marks for the mark CODESYS. Complainant further notes that it actively monitors the industrial automation market and, based thereon, it can be determined with certainty that Respondent does not have non-registered rights in the disputed domain name.
3. Bad faith registration and use
The Examiner finds that the disputed domain name was registered and is being used in bad faith. Complainant points out that Respondent was required to have clicked on the notice “Acknowledge Claim” when presented with Complainant’s trademark claims notice in order to complete registration of the disputed domain name and, thus, knew, at the time of registration, of Complainant’s trademark. Moreover, while the disputed domain name resolves to Complainant’s website, it may be assumed that Respondent earns revenue by way of a click-through arrangement. As Complainant notes, “[s]uch behaviour constitutes bad faith use of the disputed domain name, particularly as it demonstrates that Registrant was fully aware of Complainant and the trademark value of the domain.”
After reviewing Complainant’s submission, the Examiner determines that
Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence. The Examiner hereby Orders the following domain name be SUSPENDED for the duration of the registration:
codesys.codes
Jeffrey M. Samuels, Examiner
Dated: February 16, 2021
[1] The Examiner notes that Complainant, to establish rights in the mark in issue, submitted only a copy of its international registration, which is neither a regional nor national registration. A review of the international registration indicates Complainant’s ownership of national registrations.
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