The Complainant is E C Eden Group LLC of Israel, represented by Angel Law Firm, Israel.
The Respondent is Registration Private, Domains By Proxy, LLC of Scottsdale, Arizona, United States of America (“United States”) / Alon Shemesh, XORi Tech of Ganey Tikva, Israel, self-represented. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 23, 2018. On December 24, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 24, 2018, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on January 9, 2019, providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amendment to the Complaint on January 9, 2019.
The Center verified that the Complaint together with the amendment to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 10, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 30, 2019. On January 27, 2019, the Respondent requested a four-day extension of time to file the Response under paragraph 5(b) of the Rules. The Center granted the requested extension and confirmed that the new deadline for Response was February 3, 2019. The Response was filed with the Center on February 2, 2019.
The Center appointed Ellen B Shankman as the sole panelist in this matter on February 7, 2019. 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.
An additional amended correction to the Respondent’s affidavit was sent by email by the Respondent on February 11, 2019, to the Center and directly sent to the Panelist. The Center reminded the Respondent that all communications need to come through the Center and not be sent directly to the Panelist. 4. Factual Background
The Complainant alleges that it is a real-estate company in the field of short term rental accommodations in Tel Aviv district of Israel. The Complainant alleges that it uses its principal’s name and reputation and “holds, since 2010, a Common Law Trademark holder of the Name ‘Elad Eden’ in the real-estate sector in Israel. The Complaint Registered Name: E C EDEN GROUP was formed of the name ELAD CHAN EDEN – The founder’s name. Yet, and the Company is known as ELAD EDEN GROUP or ELAD EDEN”.
The date of the Domain Name registration was confirmed by the Registrar to be November 8, 2015.
The Panel also conducted an independent search to determine that the Domain Name resolves to an active webpage in Hebrew that is labeled (in English) “Those Injured by Elad Eden Group” which promotes a gripe site about the Complainant and his services. 5. Parties’ Contentions A. Complainant
The Complaint alleges that the Complainant is a private registered company in Israel named E C Eden Group LLC (“Eden Group”), which is owned by another Israel company Midtown White City LLC (“Midtown”), which purchased Eden Group from a sole owner real-estate entrepreneur named Elad Eden (“Elad”) who established Eden Group.
The Complaint further alleges due to the growth of the short-term rental market and the lack of available apartments in Tel-Aviv, the Complainant became well-known for the trademark ELAD EDEN within the real-estate market in Israel, and has acquired substantial reputation among consumers and investors. The Complaint identifies a number of websites it owns and news articles in support of this claim. The Complainant also argues that the common law trademark “Elad Eden” is a unique combination and that there is a high probability of confusion that the Domain Name is the Complainant’s official website. Furthermore, the Domain Name was bought by the Respondent with the view disrupting the business of the Complainant and to tarnish the Complainant’s trademark and credibility. The Complainant argues that – and in contradiction to his claim that it does not know who the proxy registrant was behind the Domain Name – the his business and reputation have been struggling for the last four years due to the Respondent’s efforts to defame him and in diverting traffic to its website.
To summarize the Complaint, the Complainant is the owner of a common law trademark in ELAD EDEN, in the field of real estate in Tel Aviv. The Domain Name is confusingly similar to the trademark owned by the Complainant and identical to the Complainant’s personal name. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Domain Name was registered and is being used in bad faith. Thus, the Respondent’s registration and use of the Domain Name constitutes bad faith registration and use under the Policy, and the Complainant requests transfer of the Domain Name. B. Respondent
The Respondent makes many contentions more germane to their ongoing dispute with the Complainant and the substance of their dispute and provides a diatribe against the Complainant before addressing the issues before the Panel. The Respondent does eventually, however, dispute that the Complainant has common law trademark rights and that the names are confusingly similar with the name of the Complainant’s company. The Respondent also contends that the Complainant only has “badwill”, and no goodwill in any name. The Respondent further denies that he lacks rights or legitimate interests in respect of the Domain Name since he uses the Domain Name to warn people about the Complainant, and disputes that he has registered and is using the Domain Name in bad faith. 6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) that the Domain Name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) that the Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the key elements “elad” and “eden” are contained in the Domain Name and thus meets one prong of the two prong test of the first element. However, while the Panel finds that the Domain Name is confusingly similar to the name in which the Complainant alleges it has rights, and although Israel recognizes common law trademark rights which is the relevant jurisdiction for both parties, the Panel does not find that the Complainant has satisfactorily proven that he has common law trademark rights in the name Elad Eden.
Some articles and websites held by the Complainant, on its own and with nothing further, do not provide the Complainant with rights in a trademark or service mark, which is the bottom-line requirement for a complainant to satisfy paragraph 4(a)(1) of the Policy.
As the WIPO Overview of WIPO Panel Views on Selected UDRP Questions 3.0 (“WIPO Overview 3.0”) notes at paragraph 1.3, the consensus view of WIPO panels is that:
“To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.
(Particularly with regard to brands acquiring relatively rapid recognition due to a significant Internet presence, panels have also been considering factors such as the type and scope of market activities and the nature of the complainant’s goods and/or services.)
Specific evidence supporting assertions of acquired distinctiveness should be included in the complaint; conclusory allegations of unregistered or common law rights, even if undisputed in the particular UDRP case, would not normally suffice to show secondary meaning”.
Further, under Section 1.5.2 of the WIPO Overview 3.0:
“The UDRP does not explicitly provide standing for personal names which are not registered or otherwise protected as trademarks. In situations however where a personal name is being used as a trademark-like identifier in trade or commerce, the complainant may be able to establish unregistered or common law rights in that name for purposes of standing to file a UDRP case where the name in question is used in commerce as a distinctive identifier of the complainant’s goods or services.
Merely having a famous name (such as a businessperson or cultural leader who has not demonstrated use of their personal name in a trademark/source-identifying sense), or making broad unsupported assertions regarding the use of such name in trade or commerce, would not likely demonstrate unregistered or common law rights for purposes of standing to file a UDRP complaint”.
The Panel also agrees with the decision reached in Vanisha Mittal v. info@,WIPO Case No. D2010-0810 that “… the preferred view is that, to be protected as a common law mark, a famous personal name must have acquired a secondary meaning so as to function as an identifier of goods or services”. As the panelist further pointed out in that case, “where it is not obvious that a famous personal name has become distinctive, the onus is on the complainant to show, on the preponderance of evidence, that the name has acquired a secondary meaning”. See also, Sibyl Avery Jackson v. Jan Teluch,WIPO Case No. D2002-1180.
No such evidence has been provided. The Complainant is seeking to bootstrap the name of the company to the name of the individual and does not provide sufficient evidence for either. In this case, the Panel believes that the Complainant has failed to satisfy the first element of the UDRP and that the evidence is inadequate on the Complainant’s principal argument, that the personal name of the founder of the company qualifies for common law trademark rights. The Panel has not been persuaded by the evidence provided to support the Complainant’s claim that Elad Eden is well-known or that he has established sufficient common law rights in the trademark. Accordingly, the Panel finds that there is insufficient evidence that the Complainant holds common law trademark or service mark rights in his personal name.
Ironically, in seeking to argue against the Complainant’s rights in a name, the Respondent provides more evidence of the Complainant’s reputation – such as it is – than does the Complainant. The Panel specifically disagrees with the Respondent’s claims that goodwill has to be positive and not negative. Evidence of use even with a negative reputation can also be used to build common law rights.
The Panel in any event finds that the Complainant failed to satisfy the first element under the UDRP, paragraph 4(a)(i) of the Policy. The Complaint accordingly fails.
Since the threshold question has not been met, the Panel does not need to rule on the other two elements. However, before leaving this case, the Panel wishes to comment on them notwithstanding, since the case provided a very close challenge for the Panel and there are strong caveats on both sides.
Clearly from the webpage tag that appears in Hebrew, and in reviewing the Hebrew website, the Respondent’s site is identified as a gripe site. Both Israeli law and the UDRP recognize the important rights to free speech and the right to criticize the Complainant held by the Respondent. However, that right is within limits and in different circumstances, i.e., a properly plead complaint, the result may well have been different. See WIPO Overview 3.0, section 2.6.2 which states:
“Panels find that even a general right to legitimate criticism does not necessarily extend to registering or using a domain name identical to a trademark (i.e., (including typos)); even where such a domain name is used in relation to genuine noncommercial free speech, panels tend to find that this creates an impermissible risk of user confusion through impersonation. In certain cases involving parties exclusively from the United States, some panels applying US First Amendment principles have found that even a domain name identical to a trademark used for a bona fide noncommercial criticism site may support a legitimate interest.”
This dispute is clearly part of a larger and on-going fight between the Parties, and the Panel believes that both sides have over-stepped proper boundaries. In this case, the Respondent did not obtain a version of “Elad Eden sucks”, which would have more clearly immediately identified their gripe site as such. Instead, the Respondent, who claims full transparency in the website and is not impersonating the Complainant, has filed a proxy registration, deliberately targeted the Complainant with the intent to disrupt the Complainant’s business even while disingenuously trying to claim a technicality that “Elad Eden” is not the same as the Complainant. Equally disingenuous is the Complainant’s claims that he has no other alternative than to file this UDRP because he has no other remedy under Israel law and has no idea who is behind the gripe website. The parties are in continuous litigation with one another.
As the Panel in Axiom Global Inc. v. Michael Flanagan,WIPO Case No. D2013-1673, so eloquently expressed:
“the Panel views the dispute over this Domain Name as a side show in the larger dispute brewing between the parties. It would appear that the parties are poised for conflict, and such conflict must take place in another forum, where discovery, live testimony, and cross-examination may be employed to test the veracity and relevance of the parties’ respective harangues against each other. The ultimate legal or equitable relief to be achieved lies well beyond the scope of the Policy, which is designed to deal with clear cases of cybersquatting that can be determined in the setting of a streamlined record and a streamlined proceeding. The Policy is not designed to deal with larger disputes merely because a domain name happens to fit somewhere in the picture. As the Shakespeare-heeding Panel put it in Rudy Rojas v. Gary Davis,WIPO Case No. D2004-1081, ‘a plague o’ both your houses’”.
The UDRP is a careful balancing act of competing interests, of protecting trademarks while leaving open the path for legitimate free speech, including critical free speech. The UDRP is designed to address targeted behavior to disrupt commercial business by using another’s name/trademark in which one has rights in the name – i.e., cybersquatting. And as identified above, “rights” in a personal name are not always equivalent to rights in a trademark. The UDRP is also not designed for all ongoing conflicts between parties that arguably should be resolved based on testimony and deeper inquiry into facts in court. 7. Decision
For the foregoing reasons, the Complaint is denied.
Ellen B Shankman
Sole Panelist
Date: February 14, 2019
Full & Egal Universal Law Academy