ADR Center of the Czech Arbitration Court (CAC): AVAST-AVAST.COM

Identification of the rights

The Complainant is one of the largest security software companies in the world using next-gen technologies to fight cyber attacks in real-time. The Complainant is well known on the market globally as a reliable company with a long tradition from 1988. Its popularity on the market and high quality is supported by the fact that AVAST software has more than 400 million users.

Furthermore, it is the owner of, inter alia, the following trademarks all of which are registered also for software products:

– registered international word mark AVAST! no. 1011270 for goods and services in the classes 9, including software (Czech application with the designation for AU – DK – EE – FI – GB – GR – IE – JP – LT – SE – TR and by virtue of Article 9sexies of the Madrid Protocol also for the following countries: AT – BG – BX – CN – CY – DE – FR – HU – IT – LV – PL – PT – RO – RU – SI – SK – VN) with registration date April 15, 2009;

– registered international word mark AVAST no. 839439 for goods and services in the classes 9 and 42, including software (German registration with the designation for AU – DK – EE – FI – GB – GR – IE – JP – LT – SE – TR – US and by virtue of Article 9sexies of the Madrid Protocol also for the following countries: AT – BG – BX – CH – CN – CY – FR – HU – IT – KZ – LV – PL – RO – RU – SI – SK) with registration date June 22, 2004;

– registered EU word trademark “AVAST” no. 010253672 for goods and services in the classes 9, 16, 42 with priority from August 25, 2011;

– registered US word trademark no. 85378515 for goods and services in the classes 9 with priority from July 22, 2011, and with registration date July 17, 2012;

– registered US figurative trademark no. 87236956 for goods and services in the classes 9, 42 with priority from November 15, 2016, and with registration date September 5, 2017;

– registered international figurative trademark no. 1376117 for goods and services in the classes 9, 42 (US application with the designation for CO – DE – FR – IT – MX – RU) with registration date May 10, 2017; and

– registered Indian national trademark avast! No. 1827321 for goods in class 9 with priority date June 9, 2009.

Factual Background

This dispute concerns the domain name <avast-avast.com> created on October 12, 2018.

It follows that the disputed domain name was registered with the knowledge of older above-mentioned trademarks of the Complainant. The website under the disputed domain name is supposed to be used by the Respondent to offer paid service concerning the Complainant’s AVAST software to the Complainant´s customers. As expressly stated by the Respondent: “We Provide complete support for Avast antivirus installation, uninstallation, and updates.”

According to Complainant, the disputed domain name should be transferred back as it resolves in unauthorized and speculative use of the well-know AVAST earlier trademark rights.

On July 6, 2020, the CAC notified the Respondent’s default.

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.