3S-Smart Software Solutions GmbH v. Cao Wei
Claim Number: FA1905001844757
Complainant: 3S-Smart Software Solutions GmbH of Kempten, Germany.
Complainant Representative: VKK Patentanwälte of Kempten, Germany.
Respondent: Cao Wei of Lian Yun Gang Shi Jiang Su, CN.
REGISTRIES and REGISTRARS
Registries: Personals TLD Inc.
Registrars: Chengdu West Dimension Digital Technology Co., Ltd.
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.
Peter Müller, as Examiner.
Complainant submitted: May 24, 2019
Commencement: May 24, 2019
Default Date: June 10, 2019
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").
The Complainant requests that the disputed domain name be suspended for the life of the registration.
Clear and convincing evidence.
No multiple Complainants or Respondents and no multiple disputed domain names require dismissal.
Findings of Fact:
Even though the Respondent has defaulted, URS Procedure 1.2.6. requires the 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 is identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
The Complainant provided documentary evidence that it is inter alia registered owner of International trademark registration no. 1 057 393 CODESYS, which was registered on September 29, 2010 covering various goods and services in classes 9 and 42 as well as documents to show that the trademark is in current use.
The disputed domain name fully incorporates the Complainant’s CODESYS Mark. It is well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant’s trademark and the disputed domain name.
The Examiner finds that the disputed domain name is identical to the Complainant’s CODESYS Mark and that the Complainant satisfied the elements of URS Procedure 1.2.6.1.
[1.2.6.2.] The Respondent has no legitimate right or interest to the disputed domain name.
The Complainant argues that the Respondent has no rights or legitimate interests in the disputed domain as the Respondent does not possess any rights to the word “codesys”. The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name. In fact, the disputed domain name is used in connection with a website which offers the disputed domain name for sale for USD 3,699.00.
The Examiner finds that Respondent has no rights to or legitimate interests in the disputed domain name and that the Complainant satisfied the elements of URS Procedure 1.2.6.2.
[1.2.6.3.] The disputed domain name was registered and is being used in bad faith.
The Complainant states that the Respondent must have been aware of the CODESYS Mark as it received a Trademark Claim Notice when registering the disputed domain name. In addition, the Complainant argues that “codesys” is a distinctive term and the TLD “.tech” is clearly related to the Complainant’s business. With regard to bad faith use, the Complainant argues that bad faith for any or all of the exemplary purposes under URS Procedure 1.2.6.3 a through d.
The Examiner accepts that the Respondent was most likely aware of the Complainant’s distinctive CODESYS Mark at the time of the registration of the disputed domain name and therefore registered the disputed domain name in bad faith as the Complainant is doing business in the field of automation software and the TLD “.tech” is clearly related to the Complainant’s core business. However, the Complainant’s assertion that the Respondent received a Trademark Claim Notice is false as the Claims Notification Period for “.tech” ended on October 27, 2015. As to bad faith use, the Panelist cannot find in favor of the Complainant, as it merely refers to URS Procedure 1.2.6.3 a through d without clearly proving or even discussing one of the examples of the URS procedure.
Given that the URS is not intended for use in any proceedings with open questions of fact, but only clear cases of trademark abuse, the Examiner finds that the Complainant has not satisfied the elements of URS Procedure 1.2.6.3.
No abuse or material falsehood.
After reviewing the Complainant’s submissions, the Examiner determines that the Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name be RETURNED to the control of Respondent.
<codesys.tech>
Mr. Peter Müller, Examiner
Dated: June 13, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page