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חזרה לעמוד הקודם

IL-DRP: baseus.co.il

Sole panelist – Adv. Jonathan Agmon

The decision was rendered on May 2, 2024.

Background and parties’ arguments:

The Petitioner, a Chinese company, filed a petition to transfer the rights to the domain name baseus.co.il (the “Domain Name”), which is held by the Respondent, a resident of Israel.

The Petitioner was established in 2019 and claimed that it owns the rights to the “BASEUS” trademark in Israel, used in its flagship stores on e-commerce platforms such as eBay and AliExpress, by virtue of trademarks registered in Israel.

The Respondent registered the Domain Name on December 25, 2020. The Respondent did not submit a response or reply to the petition.

Decision:

Although the Respondent did not respond to the petition, it is necessary to examine whether the Petitioner has demonstrated entitlement to the remedy. A dispute as to the allocation of a domain name to its Holder may be brought before the IL-DRP provided all the following conditions under the dispute resolution rules of the domain registry are met:

  • The Domain Name is identical or confusingly similar to a trademark, trade name, registered corporation name or the registered name of a legal entity of the Petitioner (the “Name”); and –
  • the Petitioner has rights in the Name; and –
  • the Holder has no rights in the Name; and –
  • the Application for allocation of the Domain Name was made in bad faith or the Domain Name was used in bad faith.

A registered trademark provides clear evidence that the rights to the mark as it appears on the trademark registration certificate belong to its owner. The owner of the BASEUS trademark in Israel was “Shenzhen Times,” and on January 20, 2022, the Petitioner was registered as the owner of the trademarks.
The Domain Name includes the trademark in its entirety, plus the technical suffix “co.il.” The suffix should not be considered when examining the similarity between the disputed Domain Name and the Petitioner’s trademark. The panel has ruled that the Petitioner has rights to the registered name and that the Domain Name is identical or deceptively similar to it.

The Petitioner ostensibly proved that the Respondent has no rights to the Domain Name, and the Respondent did not claim to have rights to the registered Name. The Petitioner presented evidence that it owns the trademarks, at least one of which was registered before the date the Domain Name was registered. The Petitioner’s claim that it did not grant the Respondent a license or otherwise allow him to use its trademarks was not contradicted. The Respondent neither submitted a response nor provided any explanation or evidence to demonstrate rights to the Domain Name. The Respondent has no rights in the Domain Name.

The Petitioner claimed that the Domain Name was not in use. An independent search by the panel revealed that indeed the Domain Name is not in use. Parking the Domain Name without use constitutes passive holding. The passive holding doctrine should be applied in light of the rules’ purpose – to prevent domain name hijacking, which is a form of online encroachment where the trespasser registers or uses a domain name to profit at the expense of trademark owners.

The passive holding doctrine enumerates four main factors to be assessed in determining whether non-use can be considered “bad-faith use”: (a) the degree of distinctiveness or reputation of the Petitioner’s mark; (b) the failure of the Respondent to submit a response or to provide any evidence of actual or contemplated good-faith use; (c) the concealment of the Respondent’s identity or use of false contact details; and (d) the implausibility of any good-faith use that could be made of the Domain Name.

The BASEUS mark has a certain degree of distinctiveness with respect to the products the Petitioner sells. However, the fact that a trademark is registered in Israel and has a degree of distinctiveness is not in itself sufficient to show that the Respondent acted in bad faith. There is a possibility that the Respondent chose the Domain Name without being aware of the Petitioner and its marks and had not yet begun to use it for various reasons. The Petitioner did not bring evidence that it approached the Respondent or that the Respondent approached it and tried to sell the Domain Name or other evidence that would point to the Respondent’s bad faith in registration or use of the Domain Name.

No sufficient evidence was presented that would suggest a widespread reputation abroad or in Israel, certainly not such that would indicate that in 2020 the Respondent was exposed to the Petitioner’s trademarks. The passive use in this case does not indicate use in bad faith. Therefore, and since no other evidence of the Respondent’s bad faith was presented, the conclusion is that the Domain Name was neither registered nor used in bad faith.

The panel has rejected the petition.

The above is a summary of the decision. The full decision in Hebrew is available here. [PDF]