URS DEFAULT DETERMINATION
3S-Smart Software Solutions GmbH v. 1&1 Internet Limited et al.
Claim Number: FA1804001780832
DOMAIN NAME
<codesys.expert>
PARTIES
Complainant: 3S-Smart Software Solutions GmbH of Kempten, Germany | |
Complainant Representative: VKK Patentanwälte
Lars Hoppe of Kempten, Germany
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Respondent: 1&1 Internet Limited 1&1 Internet Limited of Gloucester, II, GB | |
REGISTRIES and REGISTRARS
Registries: Binky Moon, LLC | |
Registrars: 1&1 Internet SE |
EXAMINER
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Examiner in this proceeding. | |
Saravanan Dhandapani, as Examiner |
PROCEDURAL HISTORY
Complainant Submitted: April 9, 2018 | |
Commencement: April 10, 2018 | |
Default Date: April 25, 2018 | |
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"). |
RELIEF SOUGHT
Complainant requests that the domain name be suspended for the life of the registration. |
STANDARD OF REVIEW
Clear and convincing evidence. |
FINDINGS and DISCUSSION
Procedural Findings: | ||
Multiple Complainants: No multiple Complainants are involved in this proceeding. This Complaint and findings relate to the domain name <codesys.expert>. No domain name is dismissed from this Complaint. | ||
Multiple Respondents: No multiple Respondents are involved in this proceeding. This Complaint and findings relate to the domain name <codesys.expert>. No domain name is dismissed from this Complaint. |
Findings of Fact: The case of the Complainant is as follows: The Complainant 3S-Smart Software Solutions GmbH, had registered the mark “CoDeSys†on 29.09.2010 and the expected expiration date of the Registration/Renewal of the mark is 29.09.2020. Hence their right over their mark is undoubtedly a subsisting one. The Complainant had registered the mark with “International Classification of Goods and Services for the purposes of the Registration of Marksâ€(Nice Classification)-under class 9 and 42; NCL(9)-software for programming industrial controllers; software for industrial controllers & NCL(42)-creating of software for industrial controllers; creating of software for programming of industrial controllers; supporting, maintaining and implementing of software for industrial controllers; supporting, maintaining and implementing of software for industrial controllers; supporting, maintaining and implementing of software for programming of industrial controllers. Registrant, 1 & 1 Internet Limited, does not possess any rights to the word ‘codesys’. In particular, a search was revealed that Registrant possesses no registered trademarks for codesys in any jurisdiction. Due to complainant’s ongoing monitoring of activities on the automation software market, it can be excluded with certainty that Complainant has used codesys on the market in such a way as to obtain any non-registered rights to codesys. The disputed domain name <codesys.expert> is intended for hosting second-level domains providing contents related to computing, software and the like. ‘Codesys’ on the other hand, is a registered trademark in a number of jurisdictions, chiefly for industrial automation software and controller development systems. Moreover, codesys is a distinctive term that has no meaning in conjunction with automation software or the like. The Registrant is required to have clicked on the notice “Acknowledge claim†when presented with the Trademark Claims notice to complete registration of the name. Thus, respondent Registrant at the time of registration of the disputed domain name knew of the existence of the Complainant’s trademarks and, e.g. by reviewing the English Language contents of the Complainant’s website www.codesys.com, readily may have taken notice of active and intensive use of the term codesys both as a trademark for the designation of services and goods in relation to automation software and software for industrial controllers, as well as in the form of a second level domain under the TLD.com. Thus, clearly and convincingly, codesys has been registered as a second level domain under <codesys.expert> in bad faith for any or all of the exemplary purposes according to 1.2.6.3 a through d. |
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.
[URS 1.2.6.1] The registered domain name(s) is/are identical or confusingly similar
to a word mark: Determined: Finding for Complainant The Complainant has proved by documentary evidences that they are the registered owner of trademark “CoDeSys†under various classifications of the “International Classification of Goods and Services for the purposes of the Registration of Marksâ€(Nice Classification).The disputed Domainname wholly incorporated the Complainant’s mark “CoDeSys†and therefore is identical or confusingly similar to the Complainant’s mark.Based on the fact that “CoDeSys†being a registered trademark of the Complainant, the Examiner determines that URS 1.2.6.1(i) covers the domain name at issue in this Complaint. [URS 1.2.6.2] Registrant has no legitimate right or interest to the domain name. Determined: Finding for Complainant The Complainant owns trademark “CoDeSys†under various classifications under the International Classification of Goods and Services for the purposes of the Registration of Marksâ€(Nice Classification) in various jurisdictions. In such case, the burden lies on the Respondent to prove that he/she has legitimate rights and/or interests in the disputed domain name. The Respondent is in default and has not filed any response. Although, the Complainant is not entitled to relief simply by default of the Respondent to submit a Response, the Examiner can however and does draw evidentiary inferences from the failure of the Respondent to respond. In view of the above, the Complainant has established a prima facie case of lack of rights and legitimate interest. Based on the record, the Respondent does not have rights or legitimate interests in the disputed domain. Hence, the Examiner determines that URS 1.2.6.2 covers the domain name at issue in this Complaint and that the Respondent has no legitimate right or interest to the domain name.
[URS 1.2.6.3] The domain name(s) was/were registered and is being used in bad faith.
Determined: Finding for Complainant The Respondent has not responded in spite of the notice of complaint and notice of default under this URS determination process. The disputed domain name <codesys.expert> is intended for hosting second-level domains providing contents related to computing, software and the like whereas the Complainant owns the registered trademark ‘CoDeSys’ in a number of jurisdictions, chiefly for industrial automation software and controller development systems.Further, the Registrant is required to have clicked on the notice “Acknowledge claim†at the time of presenting Trademark Claims notice to complete registration of the name. Thus, the respondent Registrant at the time of registration of the disputed domain name must have known of the existence of the Complainant’s trademark for e.g. by reviewing the English Language contents of the Complainant’s website www.codesys.com, readily may have taken notice of active and intensive use of the term codesys both as a trademark for the designation of services and goods in relation to automation software and software for industrial controllers, as well as in the form of a second level domain under the TLD.com.It is therefore, well established that the registration and use of the disputed domain name must involve malafides where the registration and use of it was continued to be made in full knowledge of the Complainant’s prior rights in the “CoDeSys†registered trademark and in circumstances where the registrant did not seek permission from the Complainant, as the owner of trademark, for such registration and use.Thus the Panel Examiner comes to an irresistible determination that (i) the disputed domain name is identical to the Complainant’s “CoDeSys†trademark; (ii) the Respondent’s name does not correspond to the disputed domain name; (iii) the Respondent was aware of the Complainant and its trademark when it registered the disputed the domain name; (iv) there is no indication of any authorization to use the Complainant’s mark. Hence, it is lawful to conclude that the disputed domain name was registered in bad faith. Thus the Examiner determines that URS 1.2.6.3 (a) and (d) covers the domain name at issue in this Complaint and the domain name was registered and is being used in bad faith. FINDING OF ABUSE or MATERIAL FALSEHOOD The Examiner may find that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods. The Examiner finds as follows:
DETERMINATION
After reviewing the parties’ submissions, the Examiner determines that the 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(s) be SUSPENDED for
the duration of the registration:
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Saravanan Dhandapani Examiner
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