{
    "case_number": "CAC-ADREU-007258",
    "time_of_filling": null,
    "domain_names": [
        "codeproject.eu"
    ],
    "case_administrator": "Aneta Jelenová (Case admin)",
    "complainant": [
        "CodeProject Solutions Inc. ( )"
    ],
    "complainant_representative": null,
    "respondent": [
        "Przemysław Malak"
    ],
    "respondent_representative": "Karolina Trzeciak-Wach (Kancelaria Radcy Prawnego Karolina Trzeciak-Wach)",
    "factual_background": "The Complainant in this proceeding is CodeProject Solutions Inc. The submitted evidence in the case before the Panel demonstrates that the Complainant is the owner of the following registered trademarks:\r\n\r\nTHE CODE PROJECT, Canadian trademark with registration number TMA742221, filing date March 25, 2008 and registration date June 18, 2009.\r\n\r\nTHE CODE PROJECT, US trademark with trademark number 3727225, filing date August 21, 2008 and registration date December 22, 2009.\r\n\r\nCODEPROJECT, US trademark with registration number 4144576, filing date August 12, 2009 and registration date March 6, 2012.\r\n\r\nCODEPROJECT, Canadian trademark with registration number TMA794924, filing date August 6, 2009 and registration date April 6, 2011.\r\n\r\nCODEPROJECT (device), European Union trademark with registration number 012860318, filing date May 8, 2014 and registration date September 22, 2014.\r\n\r\nCODEPROJECT, European Union trademark with registration number 012856472, filing date May 7, 2014 and registration date September 24, 2014.\r\n\r\nCODE PROJECT (device), Canadian trademark with registration number TMA916804, filing date November 1, 2012 and registration date October 13, 2015.\r\n\r\nCODEPROJECT SOLUTIONS (device), Canadian trademark with registration number TMA929464, filing date November 1, 2012 and registration date February 19, 2016.\r\n\r\nThe Respondent in this proceeding is Przemyslaw Malak. On August 27, 2010 the Respondent registered the disputed domain name <codeproject.eu>.\r\n\r\nThe Czech Arbitration Court (“CAC”) acknowledged receipt of the Complainant’s Complaint (filed on July 1, 2016) regarding the disputed domain name on July 8, 2016. The formal date of the commencement of the ADR proceeding is July 20, 2016. On September 7, 2016, CAC acknowledged receipt of the Respondent’s Response filed on September 5, 2016. On September 21, 2016 the Complainant filed a late supplemental filing. Pursuant to paragraph 8 of the ADR Rules, the Panel may admit, in its sole discretion, further statements or documents from either of the Parties. In that regard, supplemental fillings can be accepted only under specific circumstances.\r\n\r\nConsidering that both parties already submitted statements and evidence, the Panel has decided that it would be inappropriate to admit the Complainant's non-standard communication on the basis that it is presented too late in the ADR process without any good reason and there do not appear to be any exceptional circumstances that would justify delaying the issue of a decision.",
    "other_legal_proceedings": "There are no other legal proceedings of which the Panel is aware that are pending or decided and that relate to the disputed domain name.",
    "discussion_and_findings": "The Complainant must, in accordance with Article 21.1 of Commission regulation (EC) No. 874\/2004 and Paragraph B 11 (d)(1) of the ADR Rules, demonstrate that the domain name <codeproject.eu> is identical or confusingly similar to a name in respect of which a right (of the Complainant) is recognized or established by the national law of a member state and\/or Community law and either (a) the disputed domain name has been registered by the Respondent without rights or legitimate interest in the name; or (b) the domain name has been registered or is being used in bad faith.\r\n\r\nThe Panel notes that the Respondent’s registration of the disputed domain name predates the priority date of the Complainant’s registered EU trademarks. However, in order to comply with the requirements of Article 21.1 of Commission regulation (EC) No. 874\/2004 and the ADR Rules it is not necessary to provide evidence of a “prior right” but it is sufficient to prove a right “recognized or established by national and\/or Community law”. Consequently, the registration of a domain name before the Complainant acquires trademark rights in the name does not in itself prevent a finding of identity or confusing similarity. It is sufficient that the Complainant has rights in the mark at the time when the Complaint is made.\r\n\r\nThe Complainant is, according to the submitted evidence, the owner of the trademark CODEPROJECT. The disputed domain name <codeproject.eu> contains the Complainant’s registered trademark CODEPROJECT in its entirety. \r\n\r\nHaving the above in mind, it is the opinion of the Panel that the disputed domain name <codeproject.eu > is identical to the trademark of the Complainant which is recognized within the meaning of Paragraph B.11(d)(1) of the ADR Rules.\r\n\r\nIt has been argued by the Complainant that the disputed domain name has been registered by the Respondent without rights or legitimate interest to the name. On the other hand, the Respondent has submitted evidence indicating that the Respondent conducts business as a sole entrepreneur under the registered name CODEPROJECT PRZEMYSŁAW MALAK. The disputed domain name <codeproject.eu> consists of the term “codeproject” which is part of the Respondent’s company name. The Respondent has been using the disputed domain name commercially to market software developing services offered by the Respondent.\r\n\r\nThus, in the light of the above, the Respondent has invoked circumstances which demonstrate rights or legitimate interests in respect of the disputed domain name in accordance with the requirements of Article 21.2 of Commission regulation (EC) No. 874\/2004 and Paragraphs B11(d)(1)(ii) and B11(e)(2) of the ADR Rules. Based on the evaluation of all the evidence presented, the Panel finds that the Respondent has successfully demonstrated rights or legitimate interest to the domain name for the purposes of Paragraph B11(d)(1)(ii) of the Rules.\r\n\r\nThe third element to be considered under Paragraph B11(d)(1)(iii) of the Rules is whether the disputed domain name has been registered or is being used in bad faith. Bearing in mind that it is only necessary for a Complainant to succeed on either the second element under Paragraph B11(d)(1)(ii) or the third element under Paragraph B11(d)(1)(iii), it is still technically possible for a Complainant to succeed even if a Respondent has been found to have rights or legitimate interests. \r\n\r\nAlthough there is no evidence demonstrating that the Complainant owned a right recognized or established by the national law of a member state and\/or EU law at the time when the Respondent registered the disputed domain name, there are exceptional circumstances in the case that cannot be disregarded when it comes to the third element under Paragraph B11(d)(1)(iii).\r\n\r\nThe Respondent’s registration of the disputed domain name predates the registration of the EU trademark rights relied upon by the Complainant. Typically, it is extremely difficult to establish bad faith in circumstances where a Respondent’s registration of a disputed domain name predates the registration of a trademark right. However, according to the Overview of CAC panel views, bad faith can, in certain instances, be found if the Respondent has registered the disputed domain name in anticipation that the Complainant would wish to secure the disputed domain name. According to the decision Jager & Polacek GmbH v. Redtube, CAC 5892 <redtube.eu>, bad faith may be present if the term, although not protected by a registered trademark, has been used by the Complainant in a trademark sense (i.e. in a non-descriptive and non-generic sense to refer to the origin of the relevant services) and the Respondent was aware of such use and the Respondent sought by reason of the registration to take unfair advantage of that non-descriptive and non-generic term. \r\n\r\nThe evidence in this particular case indicates that the Respondent, prior to registering the disputed domain name, entered an agreement with the Complainant in order to become a member of the Complainant’s forum at <www.codeproject.com> and accepted to comply with the “Terms of Service” which explicitly stated that CODEPROJECT is a trademark of the Complainant. Although CODEPROJECT was not registered as a EU trademark at the time, the circumstance that the Respondent accepted the Complainant’s “Terms of Service”, suggests that the Respondent was clearly aware that the Complainant used the term CODEPROJECT as a trademark in a trademark sense when registering and using the disputed domain name. The fact that the Respondent had this knowledge when registering the disputed domain name cannot be ignored and the panel is satisfied that the Respondent would never have registered the disputed domain name had it not been for the fact that the Respondent knew that it was used as a trademark by the Complainant. In addition to being aware of the Complainant’s use of the term in a trademark sense, the Respondent created a website with an orange colour scheme similar to the one used on the Complainant’s website. Thus, the evidence in the case indicates that the aim of the Respondent’s domain name registration was to take advantage of any possible confusion between the disputed domain name and any potential rights of the Complainant. \r\n\r\nConsequently, in the circumstances of this particular case, on the balance of probabilities, the Panel concludes that the Complainant has succeeded in proving that the disputed domain name was registered and used in bad faith for the purposes of Paragraph B11(d)(1)(iii) of the Rules.\r\n\r\nThe Panel notes that the Complainant has its seat in Canada. As such the Complainant has not fulfilled the general eligibility criteria of Article 4(2)(b) of Regulation (EC) No. 733\/2002. The disputed domain name, which would otherwise have been transferred to the Complainant, is therefore revoked.",
    "decision": "For all the foregoing reasons, in accordance with Paragraphs B12 (b) and (c) of the Rules, the Panel orders that the domain name CODEPROJECT.EU be revoked",
    "panelists": [
        null
    ],
    "date_of_panel_decision": "2016-10-05 00:00:00",
    "informal_english_translation": "I.      Disputed domain name: codeproject.eu\r\n\r\nII.     Country of the Complainant: Canada, country of the Respondent: Poland\r\n\r\nIII.    Date of registration of the domain name: 27 August 2010\r\n\r\nIV.    Rights relied on by the Complainant (Art. 21 (1) Regulation (EC) No 874\/2004) on which the Panel based its decision:\r\n        1.   Word trademark registered in EU, reg. No. 012856472, for the term CODEPROJECT, filed on 7 May 2014, registered on 24 September 2014 in respect of goods and services in classes 9, 35, 38, 41 and 42.\r\n        2.   Figurative trademark registered in EU, reg. No. 012860318, for the term CODEPROJECT, filed on 8 May 2014, registered on 22 September 2014 in respect of goods and services in classes 9, 35, 38, 41 and 42.\r\n\r\nV.    Response submitted: Yes\r\n\r\nVI.   Domain name is identical to the protected right of the Complainant\r\n\r\nVII.  Rights or legitimate interests of the Respondent (Art. 21 (2) Regulation (EC) No 874\/2004):\r\n        1. Yes\r\n        2. Why:The disputed domain name consists of a term which is part of the Respondent’s company name. \r\n\r\nVIII. Bad faith of the Respondent (Art. 21 (3) Regulation (EC) No 874\/2004):\r\n        1. Yes\r\n        2. Why: Prior to registering the disputed domain name, the Respondent entered an agreement with the Complainant in order to become a member of the Complainant’s forum and accepted to comply with the “Terms of Service” which explicitly stated that CODEPROJECT is a trademark of the Complainant. Although CODEPROJECT was not registered as a EU trademark at the time, the circumstance that the Respondent accepted the Complainant’s “Terms of Service”, suggests that the Respondent was clearly aware that the Complainant used the term as a trademark in a trademark sense when registering and using the disputed domain name. The evidence in the case indicated that the aim of the Respondent’s domain name registration was to take advantage of any possible confusion between the disputed domain name and any potential rights of the Complainant.\r\n\r\nIX.   Other substantial facts the Panel considers relevant: The Respondent created a commercial website with an orange colour scheme similar to the one used on the Complainant’s website.\r\n\r\nX.    Dispute Result: Revocation of the disputed domain name.\r\n\r\nXI.   Procedural factors the Panel considers relevant:\r\n\r\nXII.  Is Complainant eligible? No",
    "decision_domains": [],
    "panelist": null,
    "panellists_text": null
}