FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:
The Complainant, Somavedic Technologies s.r.o., is a Czech company, incorporated on May 31, 2010, under the name Last Temptation s.r.o. The Complainant has been operating under the business name Somavedic Technologies s.r.o. since November 7, 2014.
Since its establishment, the Complainant has been specializing in production and sale of products and devices based on the principle of controlled positive energy release into its surroundings.
In order to protect its intellectual property rights, the Complainant has registered and owns various trademark registrations for the word SOMAVEDIC including European Union Intellectual Property Office Trade Mark No. 015091961, registration date May 25, 2016, in classes (10) Medical and veterinary apparatus and instruments; Diagnostic, examination, and monitoring equipment; (42) Medical research; Medical and pharmacological research services; and (44) Professional consultancy relating to health care; Professional consultancy relating to health; Health care consultancy services [medical]; Consultation relating to bio-rhythms; Consulting services relating to health care; Health counselling; Providing health information; Providing information about dietary supplements and nutrition; Health care relating to naturopathy; Health screening. Apart from the European trademark, the Complainant has registered at Industrial Property Office of the Czech Republic and owns the Czech trademark for the word SOMAVEDIC No. 350700, registration date January 6, 2016 (with the right of priority from August 12, 2015), in classes 10, 42, 44. The Complainant has operated the domain name <somavedic.cz>, among others, reflecting its trademark, since October 24, 2014.
Alongside with the disputed domain name, the Respondent is also a registered holder of domain names <somavedic.co.uk> and <somavedic.eu>, which are subject matter of parallel proceedings. Given that the subject matter and details of these parallel proceedings are very similar to this case, it is probable that the Respondent is Jan Starcevic, born on September 22, 1980, residing at Radlická 112/22, Praha, 15000, Czech Republic. The Respondent is therefore neither affiliated with the Complainant in any way nor has he been authorized by the Complainant to use and register its trademarks, or to seek registration of any domain name incorporating said trademarks.
The disputed domain name resolves to a website on which products of the Complainant are promoted and sold. The affected website https://www.somavedic-official.com/ is operated by Mercury Project s.r.o., a Czech company most likely wholly owned and run by the Respondent.
The Respondent’s violation of law
The Domain Name <somavedic-official.com> incorporates entirely Complainant’s trademark SOMAVEDIC, associated with the generic term “official”, along with the ccTLD “.com” which does not prevent any likelihood of confusion. On the contrary, the use of this term increases the likelihood of confusion since they simulate the “official” domain of the Complainant. The use of these terms therefore obviously increases the likelihood of confusion with the Complainant’s domain names, such as <somavedic.cz>.
Consumers searching for the Complainant’s products would be likely to stumble across the disputed domain names owing to (i) the Complainant’s own website and the disputed domain name <somavedic-official.com> both being very similar, differing only by added word -official and by the suffix (.cz vs .com), and (ii) the disputed domain name <somavedic-official.com> being almost identical to the registered mark SOMAVEDIC. That is a recipe for initial interest confusion.
As mentioned above, the disputed domain name resolves to a website on which products of the Complainant are promoted and sold.
The Respondent (or his subsidiary operating the affected website) did not add any note, information or disclaimer pointing out that he actually has no relationship with the Complainant.
Thus, internet users may be led into believing that the disputed domain name directs to the official website offering Complainant’s products.
Since this use is clearly commercial, it cannot be considered a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Furthermore, such use cannot be qualified a bona fide offering of goods or services as it is misleading and diverting consumers, making them erroneously believe that the Respondent is authorized dealer, retailer, or re-seller of Somavedic products, and is authorized to promote sales of Somavedic products. By using the disputed domain name with intent for commercial gain without being in any way being authorized to do so, the Respondent engaged in unfair competition activities under articles 2976 et seq. of Czech Act no. 89/2012 Coll., Civil Code, in particular misleading advertising, recall a likelihood of confusion or riding on the reputation of the Complainant. At the same time, the Respondent violates the rights of the Complainant arising out of a registered trademark under Czech Act no. 441/2003 Coll, Trademarks Act.
Above all, the Complainant can document that the Complainant’s customers from the United Kingdom approach the Complainant complaining that the goods ordered by them via Respondent’s webpage have not been delivered. Therefore, the confusion of the internet users is evident and could be supported with actual evidence. As mentioned above, the addition of generic term “official” and the ccTLD <.com> is clearly insufficient to distinguish the disputed domain name from Complainant’s trademarks.
This indicates an intention to use the disputed domain name to make a profit, or as a blocking registration or to take advantage of the Complainant’s goodwill. All of these would disrupt the Complainant’s business and take unfair advantage and cause detriment to it and this finding alone may be sufficient to decide that the disputed domain name in the hands of Respondent is an abusive registration.
|