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.
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