Sole panelist – Adv. Lihi Feldman
The decision was given on January 3rd, 2024.
Background and arguments of the parties:
The Petitioner, an international media company, filed a petition for the transfer of the rights to the domain name pinkpanther.co.il (the “Domain Name”), of which the Respondent is the current holder.
The Respondent registered the Domain Name in March 2023 and for a period of time a website selling wedding dresses operated under the Domain Name. The Petitioner contacted the Respondent in writing but received no response. As of the rendering of the decision the Domain Name did not direct to an active website.
The Petitioner claimed, among other things, that it is a leading company in the field of TV and film production, and holds full rights to the “Pink Panther” franchise since 1967, and that it has invested significant resources in the publicity of the trademark and in the worldwide promotion of products bearing the trademark. The Petitioner emphasized that it owns the “Pink Panther” trademark, registered in Israel since 1989, and that the Respondent has no rights or connection to the trademark.
The Respondent did not submit a response to the petition.
Decision:
The IL-DRP is an alternative dispute resolution mechanism for resolving disputes regarding the allocation of domain names under Israel’s country code top-level domain suffixes. The process is subject to the dispute resolution rules of the Israel Internet Association. The domain holder accepts these rules upon registration of the Domain Name.
The rules establish that a dispute regarding allocation of a domain name will be heard based on the following conditions:
- The disputed domain name is identical or confusingly similar to the petitioner’s trademark, trade name, registered company name or legal entity registration;
- the petitioner possesses rights to the name and the respondent does not possess rights to the name;
- and the application for allocating the disputed domain name was submitted in bad faith or the disputed domain name was used in bad faith.
Identical or confusingly similar name – The Domain Name includes the word pair “pink panther” and the country code top-level domain suffix “.co.il”. The suffix is a transparent component that is to be ignored for purposes of determining the similarity between the Domain Name and the Petitioner’s trademark, since it is a common suffix that indicates that the Domain Name is registered for commercial activity in the top-level domain of Israel. In this case the Domain Name contains the petitioner’s trademark in its entirety and is identical to it. Therefore, the first condition is met.
The petitioner possesses rights to the name – The Petitioner provided evidence of the registration and active use of the “Pink Panther” trademark for decades – including registered trademarks worldwide and in Israel; accumulation of substantial renown; Facebook pages and YouTube channels dedicated to the brand with millions of followers; websites; many products bearing the mark, and more. Therefore, the second condition is met.
The respondent possesses rights to the name – The Respondent did not submit a response to the petition and no public source was found testifying to his connection to the name. This is a pair of words whose combination does not indicate a natural generic use stemming from their context, or any connection to operating a bridal salon. Therefore, the third condition is met.
Registration of the domain name in bad faith – The dispute resolution rules delineate several grounds that can serve as evidence of registration or use of a domain name in bad faith, including using the domain name with the intention of creating a commercial advantage by causing probable confusion with the Petitioner’s name, with regard to the source of the website, the bodies funding it, etc..
It is highly unlikely that the Respondent was unaware of the Petitioner’s trademark when registering the Domain Name. There is no apparent reason for the Respondent’s use of the petitioner’s trademark for selling wedding dresses, other than intent to mislead the public regarding the existence of a connection between the site and the Petitioner.
A few months after the Petitioner contacted the Respondent, the site was removed and the Domain Name has not been used since for any other purpose. This behavior ostensibly indicates the Respondent’s consent to the assertion of absence of rights to the use of the Domain Name. In addition, the Respondent’s failure to submit a response to the petition indicates the absence of any genuine or legitimate interest in holding the Domain Name. Therefore, the fourth element is met.
The panel accepted the Petition and ordered the transfer of the disputed domain name to the Petitioner.
The above constitutes a summary of the decision. Click here for the full decision [PDF, Hebrew].