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Dispute 100103

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On-line ADR Center of the Czech Arbitration Court (CAC)

Panel Decision

§ 15 of the UDRP Rules (Rules), § 9 of the CAC’s Supplemental Rules (Supplemental Rules)

Case No. 100103
Time of Filing 2009-09-30 10:00:07
Disputed domain name POKECIK.COM, POKECIK.NET
Case Administrator
Name Tereza Bartošková
Complainant
Organization Azet.sk, a.s.
Authorized Representative
Organization Vojčík & Partners - law firm
Respondent
Organization Business Corporation INC.
A summary of this Decision is hereby attached in English as an Annex.
Other Legal Proceedings
On January 9, 2009 the Complainant as the owner of a word mark “pokec” has filed a proposal for preliminary injunction at Slovak Court together with a proposal for a judgment on the merit seeking an order directing Robert Sadiv who was at that time the owner of domain names “pokecik.net” and “pokecik.com” to cease and desist from trademark and other infringements. District Court Košice I - Court of First Instance has refused to issue a preliminary injunction. The Complainant has filed an appeal and the County Court (Court of Appeal) issued the preliminary injunction against Robert Sadiv. This preliminary injunction decision is final without the right of appeal.

However, during the proceedings which have taken five months Robert Sadiv transferred all disputed domains of which “pokecik.net” and “pokecik.com” were transferred to Respondent, a legal entity seated in Seychelles, which is outside Slovak jurisdiction.
Factual Background
The Complainant is a long time user of the domain name incorporating the trademark “POKEC” – “www.pokec.sk”. Such website of the Complainant counts over 400.000 visitors per day.

In the beginning of the year 2008 the Complainant noticed that numerous domain names using name “pokecik” were registered under various TLDs and used for operating websites with on-line communication services. At that time the owner of all of these domain names was recognized via respective WHOIS searches as Robert Sadiv (natural person), Tolstého 23, Košice, Slovak Republic. Domain names “pokecik.sk”, “pokecik.cz”, “pokecik.eu”, and “pokecik.net” were used by Robert Sadiv to redirect the visitors of the respective web sites automatically to “www.pokecik.com”. The Complainant seeks the transfer of the domain name “pokecik.com” and “pokecik.net” to the Complainant.
Parties' Contentions
A. Complainant
The Complainant is a long time established company which was active under name “e-Technologies, a.s.” and its business name was changed on November 21, 2007 to current “Azet.sk, a.s.”. Complainant’s core business is performed on-line by providing services on numerous websites, such as news, on-line dating services,
on-line games and mostly on-line communication via computer networks (chat, photo and video albums, social networking e.g.).
The Complainant is the owner of a word trademark “POKEC” registered in the Slovak Republic at the Industry Property Office of Slovak Republic in the register of trademarks, number of registration: OZ 198301. The date of registration of the said mark is February 12, 2002, the date of application (priority date) is November 10, 2000.

For several years the Complainant has belonged among the most recognized and successful business companies in the Slovakia operating on-line and POKEC is a very well known mark, it is widely recognized by the public with reference to the most popular on-line communication service provided by the Complainant.

The Complainant is also seeking the transfer of the domain names “pokecik.sk” and “pokecik.cz” via pending proceedings held by the relevant Slovak Court and “pokecik.eu” via ADR proceedings at the Czech Arbitration Court.

The Complainant is a long time user of the domain name incorporating the trademark “POKEC” – “www.pokec.sk”. Such website of the Complainant counts over 400.000 visitors per day.

In the beginning of the year 2008 the Complainant noticed that numerous domain names using name “pokecik” were registered under various TLDs and used for operating web sites with on-line communication services. At that time the owner of all of these domain names was recognized via respective WHOIS searches as Robert Sadiv (natural person), Tolstého 23, Košice, Slovak Republic. Domain names “pokecik.sk”, “pokecik.cz”, “pokecik.eu”, and “pokecik.net” were used by Robert Sadiv to redirect the visitors of the respective web sites automatically to “www.pokecik.com”. The Complainant seeks the transfer of the domain name “pokecik.com” and “pokecik.net” to the Complainant.

The Complainant states the following reasons for which the disputed domain names should be transferred to it.

First, the disputed domain names by using the name “pokecik” fully incorporate the Complainant’s mark “POKEC”. In many WIPO decisions, the Panel considered that the incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to Complainant’s registered mark.

Second, the name “pokecik” used by the Respondent in his domain names and the Complainant’s trademark POKEC differ only by the grammatical suffix “ik”. The word “pokec” is a slang word in Slovak language and it is derived from the same word used in Czech language, both languages being close one to another. In Slovak language the word “POKEC” has its meaning, which can be loosely described as “a non-binding conversation”. Suffix “ik” is not a separate word in the Slovak language, it has no meaning and lacks distinctive character. As such, in Slovak language, the disputed domain names create a potentially confusing association with the Complainant’s word mark “POKEC”. WIPO Arbitration and Mediation Center finds that a diminutive derived from a trademark (word mark) establishes confusing similarity between the two.

The Complainant contends in accordance with the UDRP Policy, para 4(a)(ii), and the Rules for UDRP, para. 3(b)(ix)(2), that the Respondent has no rights or legitimate interest in respect of the disputed domain names.

There are following reasons to transfer the domain names to the Complainant:

First, it is apparent that the Respondent is a legal entity represented by or otherwise committed to Robert Sadiv, whose activities described in this Complaint regarding the disputed domain names cannot be referred to in other way but as speculative and performed without legitimate interest.

Second, the Complainant also contends that the Respondent has not been commonly known by the disputed domain names or the name similar to Complainant’s trademark. The right of priority for the territory of the Slovak Republic belongs to the Complainant, since the trademark “POKEC” was registered on February 12, 2002 with the date of application (priority date) November 10, 2000 while the domain name “pokecik.com” was created on May 5, 2008 and the domain name “pokecik.net” on January 22, 2008 only.

Third, there is no evidence of legitimate non-commercial and fair use of the domain names by the Respondent.

On the grounds of the above mentioned infringing conduct of the Respondent, the Complainant is seeking a transfer of the domain names “pokecik.com” and “pokecik.net” to himself.
B. Respondent
The Respondent, although repeatedly asked, did not file the Response to Complaint and did not comment anyhow the allegations made by the Complainant.
Discussion and Findings
1. All procedure requirements for administrative proceeding under UDRP were met.

2. The main issues under Policy are whether:

i. the domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
ii. the Respondent has no rights or legitimate interests with respect to the domain names; and
iii. the domain names has been registered and is being used in bad faith.

3. The Panel reviewed carefully all documents provided by the Complainant. The Respondent did not provide the Panel with any documents or statements. The Panel also visited all available websites and public information concerning disputed domain names, namely the WHOIS databases and related trademark registration databases, specifically at the Slovak Property Office. It has to be stressed that the Panellist is a Czech native speaker and is fluent in Slovak language, therefore he understands the nuances of the wording in the Slovak language.

4. The Uniform Domain Names Dispute Resolution Policy clearly says in its Article 4, letter b what has to be understood as an evidence of the registration and use of domain name in bad faith. In para (iii) it says “You have registered the domain name primarily for the purpose of disrupting the business of a competitor”.

The Rules for Uniform Domain Name Dispute Resolution Policy clearly says in its Article 3 that any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy describing according to para (ix), sub para (iii) why the domain name(s) should be considered as having been registered and being used in bad faith.

5. The Panel therefore came to the following conclusions:

a) The Complainant has clearly proven that he is a long standing and successful company in the Internet space. It is clear that his trademark and domain name “pokec” is well known in the Slovak environment and used by about 400.000 visitors per day.

DOMAIN NAMES TO BE IDENTICAL OR CONFUSINGLY SIMILAR

b) It is also clear and proven by the wording of the Slovak language that there is only a slight amendment of the Complainant’s trademark “pokec” resulting into the disputed domain names with wording “pokecik” and it has to be confirmed by the Panel that the standard approach of all relevant administrative and judicial IP authorities is that this suffix taken as basis for registration of other domain name or trademark is understood as non–sufficient for distinctiveness of the trademark and/or a domain name.

RESPONDENT NOT HAVING RIGHTS OR LEGITIMATE INTEREST WITH RESPECT TO THE DISPUTED DOMAIN NAMES

c) It has to be stressed that it was proven by actions of the Respondent and his ultimate beneficial owner that there are no fair rights to the disputed domain names based on the fact that these being registered with an intention to attract customers of an other well known domain name/registered trademark. By that is also clear that there cannot be seen any legitimate interest of the Respondent.

DOMAIN NAMES HAVE BEEN REGISTERED AND ARE USED IN BAD FAITH

d) It was proven that the Respondent has acquired the disputed domain names only by the transfer from a natural person Mr. Robert Sadiv during the year 2009. That was only done after the Complainant has initiated proceedings at the Slovak relevant court(s).

e) It is therefore clear that there is a suspicious and speculative behaving of the Respondent and of its very probable ultimate beneficial owner (even it can’t be proven from public sources) Mr. Robert Sadiv.

f) From the IP Law perspective, it is clear that the domain name “pokec” was used by the Complainant long time before the disputed domain names were registered and used. This was proven by the certificate of The Property Office of the Slovak Republic concerning the respective trademark and from the WHOIS database concerning the domain name “pokec” and the disputed domain names.

g) It is therefore clear that the Respondent has registered the domain name primarily for the purpose of disrupting the business of a Complainant and therefore the Respondent is using the domain names in a bad faith. The domain names shall be tranferred to the Complainant without delay.
Decision
For the reasons set out above, the Complaint is Accepted
and the disputed domain name(s) is(are) to be
POKECIK.COM Transferred to Azet.sk, a.s.
POKECIK.NET Transferred to Azet.sk, a.s.
Panellists
Name Dr. Vít Horáček
Date of Panel Decision 2009-11-18
Annexes
Annex: English summary of the Panel Decision
The Complainant seeks the domain names “pokecik.com” and “pokecik.net” to be transferred to it from the Respondent. The Complainant being the owner of the respected and used trademark “pokec” has proven that

(i) it had priority in IP laws from the trademark perspective;

(ii) from the pure language perspective the disputed domain names are just derivatives of the word “pokec”;

(iii) the Respondent was a speculative user of the disputed domain names and had no legitimate interest in it.

The Respondent did not file the Response to Complaint and did not comment anyhow the allegations made by the Complainant..

The Panel therefore decided based on all the above the disputed domain names shall be transferred to the Complainant.
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