WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION The Israel Bar Association v. Yinon Kadary Case No. D2009-0459 1. The Parties
The Complainant is The Israel Bar Association of Tel Aviv, Israel, represented by Soroker - Agmon, Advocates and Patent Attorneys, Israel.
The Respondent is Yinon Kadary of Bet Horon, Israel. 2. The Domain Name and Registrar
The disputed domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 7, 2009. On April 8, 2009, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR a request for registrar verification in connection with the disputed domain name. On April 10, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 16, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was May 6, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 7, 2009.
The Center appointed Adam Samuel as the sole panelist in this matter on May 12, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is the professional body for lawyers in Israel. It is the owner of Israeli trademark registrations, numbers 150103 and 150104, for the mark HAPRAKLIT. These trademark registrations were filed on June 18, 2001 and registered on June 30, 2002. HAPRAKLIT which is the Hebrew word for “the counsel” or “the attorney” is essentially a law journal and a publication issued by the Complainant. The disputed domain name was registered on April 7, 2008. 5. Parties' Contentions A. Complainant
What follows are the Complainant's submissions. These are not necessarily the views of the Panel in this case.
The Complainant is the owner of Israeli trademark registration numbers 150103 and 150104 for the mark HAPRAKLIT. These trademark registrations were filed on June 18, 2001 and registered on June 30, 2002. The disputed domain name was registered in 2008 by the Respondent. The Complainant's use of the mark HAPRAKLIT since 1943, and the Complainant's registration clearly predate the Respondent's registration of the disputed domain name.
The disputed domain name is identical to the Complainant's HAPRAKLIT trademark except for the addition of the generic top-level domain (gTLD) “.net” to the disputed domain name. The addition of the gTLD “.net” does not avoid identity or confusing similarity. The gTLD“.net” is without legal significance since the use of a gTLD is technically required to operate the domain name and it does not serve to identify the source of the goods or services provided by the registrant of the disputed domain name. The result is that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The Complainant has exclusive rights to use the HAPRAKLIT trademark. The Complainant has never licensed or provided any permission or authorization or consent to the Respondent to make any use of the HAPRAKLIT trademark. The fact that the Respondent is an Israeli resident, and the Complainant's continuous use and exposure of its well known trademark HAPRAKLIT to the Israel public, the Respondent had to be aware of the Complainant's well known registered trademark. On December 4, 2008, the Complainant issued a cease and desist letter to the Respondent, but the Respondent has ignored the Complainant's letter. It follows that the Respondent has no rights or legitimate interest in respect to the disputed domain name.
The disputed domain name was registered in bad faith. At the time of the disputed domain name's registration, the Respondent had knowledge of the Complainant's well-known and registered trademark, HAPRAKLIT. The failure to respond to the cease and desist letter is also evidence of bad faith. The Respondent is making no real use of the disputed domain name which further suggests bad faith.
The Respondent is in fact preventing consumers, seeking the Complainant's legal law journal and services, from reaching them, for no evident reason. The Complainant contacted the Respondent about this, but has received no response to date. All these form substantial evidence of the Respondent's use of the disputed domain name in bad faith.
The Respondent has not produced any evidence that may indicate that one or more of these actions were done in good faith. From this, the Complainant concludes that the Respondent has registered and used the disputed domain name in bad faith. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Under the Policy, the Complainant must prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The disputed domain name consists of the English spelling of the Complainant's registered trademark followed by the generic top-level domain (gTLD) “.net”. It is confusingly similar to the Complainant's trademark. It is noteworthy that the Israeli trademark registrations relied upon by the Complainant cover both the English and Hebrew spelling of the trademark. B. Rights or Legitimate Interests
The Respondent is not called “Hapraklit” or anything similar and does not appear to trade under that or any related name. The website with the disputed domain name appears never to have been active. There is no evidence that the Complainant has authorized the Respondent to use its trademark. The Respondent has never asserted any rights or legitimate interests in that name or replied to the Complainant's correspondence on the subject. For these reasons, on the basis of the available record, notably the absence of a Response, the Panel concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The domain name has never been used for anything. In its cease and desist letter of December 4, 2008, the Complainant accused the Respondent of registering and using the domain name in bad faith on the basis that it knew of the Complainant's publication and trademark. The Respondent has not replied to these allegations.
The domain name only has a meaning as an English transliteration of a Hebrew word. It is noteworthy that the Complainant's publication of the same name as its mark uses the same transliteration in its title page. Even in Hebrew, the term (without the definite article “ha”) has a meaning essentially confined to the legal profession. It means “counsel” or “attorney”. In the circumstances, the Panel must assume that the Respondent knew of the Complainant's trademark or publication when the Respondent registered the domain name. It has had that knowledge ever since.
It is difficult to see why the Respondent registered the domain name if it was not to achieve one or more of a number of objectives: 1) to persuade the Complainant to purchase the domain name from it at a price greater than the Respondent's expenses; 2) to divert Internet users searching for websites relating to the Complainant or its publication “Hapraklit” to the Respondent's website; or 3) to prevent the Complainant from exploiting the domain name itself. It makes no difference as to which motive inspired registration in this case. Any would provide evidence of bad faith registration. Retention of the registration in these circumstances also provides evidence of bad faith use.
In the circumstances such as here, the passive holding of a domain name to divert Internet users searching for websites relating to the Complainant to the Respondent's website or to prevent the Complainant from exploiting the domain name himself is evidence of use in bad faith.
For all these reasons, the Panel concludes that the domain name has been registered and is being used in bad faith. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Adam Samuel
Sole Panelist
Dated: May 14, 2009
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