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The Experts appointed by the Czech Arbitration Court (CAC) decided on transfers of three .cz domain names infringing on Sodexo’s trademarks to Sodexo (complainant).
Background
On 12 and 13 January 2022, Rovala IP filed two domain name complaints on behalf of Sodexo – the global leader in sustainable food and valued experiences.
The first complaint concerned the domain name wwwsodexo-ucet.cz. The second involved two domain names held by one entity – sedexo-ucet.cz and sodexo-vyhody.cz. In both cases, the complainant relied on their well-known trademarks, company name, and various domain names that were similar to the disputed domain names. The complainant argued that the respondents did not have any rights nor legitimate interests in respect of the domain names and that these were registered and used in bad faith.
wwwsodexo-ucet.cz
The domain name in question resolved to a PPC page with links of commercial nature, evidencing the respondent’s intent to capitalize on the misdirection caused by the domain name being confusingly similar to Sodexo’s trademarks. The respondent was an entity that has been repeatedly involved in UDRP disputes and has engaged in a pattern of registering domain names in order to prevent owners of trademarks from reflecting their trademarks in a corresponding domain name.
sedexo-ucet.cz, sodexo-vyhody.cz
The domain name sedexo-ucet.cz was redirecting internet users to various websites of well-known companies through affiliate links. Affiliate links are web links that allow someone, in this case the respondent, to earn a commission for promoting a product or service. When an internet user clicks on such a link and buys something at the page to which the user was redirected, the person who shares the link earns a percentage of the sale. Therefore, the respondent used the domain name that was confusingly similar to SODEXO’s well-known trademarks, taking unfair advantage of the trademarks and SODEXO’s goodwill, to earn commissions and therefore, to get commercial gain.
The second domain name of the same respondent, sodexo-vyhody.cz, was not used – the website at the domain name was unavailable. However, the complainant pointed out that the respondent has registered more than 2500 domain names, a lot of which contained registered trademarks of well-known third parties. Further, the complainant cited an older decision, according to which the respondent was repeatedly involved in the above-described actions for commercial gain.
Experts’ decisions
wwwsodexo-ucet.cz
The Expert stated in the decision that it was clear from the claims and evidence presented by the complainant that the disputed domain name was registered to take advantage of internet users‘ possible inattention and profit on such inattention through pay-per-click links. Further, it was confirmed that the respondent did not have any rights or legitimate interests in respect of the disputed domain name and that the disputed domain name was highly similar to Sodexo’s earlier rights to trademarks, company name and domain names.
sedexo-ucet.cz, sodexo-vyhody.cz
The Expert fully agreed with the complainant’s arguments and continued to confirm that the disputed domain names were confusingly similar to the complainant’s trademarks and that the respondent did not have any rights or legitimate interests in the disputed domain names and registered them in bad faith.
Conclusion
Unlike in .com disputes, in .cz domain name disputes it is sufficient to prove the confusing similarity between the disputed domain name and invoked rights, while at least one of the other two requirements (no rights or legitimate interests and bad faith) must be met. Therefore, it is not necessary to show that all three requirements have been satisfied. Nevertheless, in both discussed cases all three requirements were met, and all the disputed domain names were successfully transferred to Sodexo.