Sole panelist – Adv. Eran Liss
The decision was given on June 14, 2023.
Background and claims of the parties:
The Petitioner, an Israeli company, filed a petition to the Dispute Resolution Procedure of the Israel Internet Association (RA), for the transfer of the rights to the domain name “carstop.org.il” (the “Domain Name”), which is held by Respondent 1. Respondent 1 is a shareholder in Respondent 2 – a company that operates a site active under the Domain Name. The Domain Name was registered on April 4, 2022.
The Petitioner incorporated in 2021. It operates under the name “Carstop” and is engaged in making information accessible to car buyers and sellers. The Petitioner holds the domain name “carstop.co.il,” through which it provides its services. Respondent 2 is active under the name “Balcar Report”, and it is a competitor of the Petitioner. The Petitioner is the owner of the trademark “Carstop” which was registered after Respondent 2 removed an objection it had filed against its registration.
The Petitioner argued that a short time after the initial campaign for its services, the Respondents registered the Domain Name, at which Respondent 2 operates a landing page, which redirects to its own site (balcar.co.il), thereby misleading consumers who believe they have reached the Petitioner’s site.
The Respondents denied the Petitioner’s arguments and argued that the mark “Carstop” is generic, widely used by the public, and cannot be appropriated. The Respondents argued that the Dispute Resolution Procedure is not the suitable forum for hearing the case, since it is a complex dispute which includes objection proceedings in the Patent Office. They argue that the Petitioner has not acquired a reputation for the term “Carstop,” and it is attempting to harass Respondent 2, which is a pioneer in the field.
Decision:
There is no justification to refrain from hearing the Petition. On the day when the Respondents filed their response to the Petition, they rescinded their objection to registration of the trademark “Carstop” by the Petitioner, and it was registered. The Respondents’ documents indicate that they no longer uphold their demand to refrain from hearing the Petition.
At the time of registration of the Domain Name, the Respondent consented to the domain name registrar’s terms of use, which clarify that the user consents to the Israel Internet Association’s domain name registration rules, including the dispute resolution rules and these proceedings.
The dispute resolution rules set forth that, in every dispute regarding allocation of a domain name, the petitioner has the right to file a petition subject to the following conditions:
- The disputed domain name is identical or misleadingly similar to the trademark, trade name, registered company name, or legal entity registration of the petitioner; and
- The petitioner possesses the rights to the name and the respondent does not possess the rights to the name; and
- The application for allocation of the disputed domain name was submitted in bad faith or the disputed domain name was used in bad faith.
The Petitioner’s name is “Carstop Technologies Ltd.,” and according to the dispute resolution rules, the company’s registered name may also serve as a basis for the demanded rights. For this purpose, the generic words “technologies” and “Ltd.” in the Petitioner’s name can be ignored, as well as the component “org.il” in the Domain Name.
The Petitioner’s trademark can also provide support, even though it was registered after the Domain Name. The Petitioner already used the mark on the Domain Name’s date of registration and the Respondents were well aware of this, and they acted in bad faith. And regarding the fact that the trademark is in Hebrew and the Domain Name is in English, according to fundamental concepts in trademark law, registration of a trademark in one language usually also grants its holders exclusive rights in its transcription into another language.
The Respondents did not claim any rights whatsoever in the mark “Carstop,” and other than registration of the Domain Name and operating the site under it, the Respondents did not use the mark. Their main argument in this context is that it is a generic, widely used mark. The Respondents did not present any evidence whatsoever to support their arguments regarding the name’s genericness. The fact that the mark, or parts thereof, have a dictionary meaning, does not necessarily render it descriptive. The meaning of the combination of words “stop” and “car” is “halt vehicle.” The mark is not generic, and no evidence was presented of public use of this combination. The question of the mark’s descriptiveness is also connected to the field in which it is used. In this case, even if we consider the meaning of the words that comprise the mark, they have no connection to the parties’ area of activity, regarding providing information services. This is a defensible mark under trademark law.
The Respondents’ manner of use of the Domain Name also testifies that they have no rights in the Domain Name. The Domain Name presents a landing page to the user, which superficially presents the Respondents’ area of activity, and includes one button which, when clicked, redirects the user to the Respondents’ site (balcar.co.il). The mark “Carstop” does not in any way serve the Respondents with respect to the site’s content. This type of use, which is intended to attract the user to another site, under another name, is an additional indication of bad faith, and of the fact that the Respondents do not have rights in the name.
There are numerous indications that the Respondents acted in bad faith. Registration of the Domain Name, and use thereof, give rise to grave suspicion of misleading consumers. The Respondents knew “Carstop’s” services well, as well as the Petitioner’s website (a direct, primary business competitor), prior to registering the Domain Name. Even on the surface of things, the circumstances indicate it is very reasonable to assume that the Respondents acted in bad faith in registering and using the Domain Name, in order to mislead consumers looking for the Petitioner’s website and causing them to reach the Respondents’ site and use their services instead of the Petitioner’s services. As stated, even the manner of use of the mark is an indication of bad faith.
The panel accepted the Petition and ordered transfer of the disputed Domain Name to the Petitioner.
The above is a summary of the decision. For the full decision, click here [PDF]