Sole panelist – Adv. Yoram Lichtenstein
The decision was given on March 21, 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 in the domain names קרולינהלמקה.ישראל and קרולינה-למקה.ישראל (the “Domain Names”), which are held by the Respondent.
The Petitioner alleges that as of 2010, it has been operating a chain in Israel of dozens of stores for the sale of optical products under the brand name of “Carolina Lemke” and the Hebrew version of the same name “קרולינה למקה”. The Petitioner further argues that it and its brand were named after the Petitioner’s chief designer and that it invested significant amounts and resources in marketing, branding, and advertising. The Petitioner argues that its name is a well-known trademark in Israel, and that it owns the trademarks registered in Israel for “Carolina Lemke.” The Domain Names do not direct to active sites.
The Respondent has not submitted an answer to the petition.
Decision:
The Israeli Internet Association’s dispute resolution rules are designed to streamline and accelerate the resolution of disputes concerning the allocation of domain names. When registering domain names with the suffix “.ישראל”, the registering party assumes the obligation to act in accordance with the rules and to be subject to them.
The dispute resolution rules state that a dispute regarding the assignment of a domain name to the holder will be resolved if all of the following conditions are met: the domain name is identical or misleadingly similar to a trademark, trade name, registered corporate name or the registered name of a legal entity of the petitioner; And also – the petitioner has rights in the name and the respondent has no rights in the name; And also – the request for the domain name assignment was submitted in bad faith or the domain name was used in bad faith. These are cumulative conditions whose burden of proof rests with the Petitioner.
The Petitioner has proven that it is the registered owner of trademarks, in Israel and abroad, and that the name of the corporation that owns the trademarks is similar to the Domain Names. The Domain Names include the textual phrase “קרולינהלמקה” and “קרולינה-למקה”, and the suffix of the Domain Names. The textual trademark registered in Israel includes the identical phrase in English. When examining the similarity between the Domain Name and the trademark, the suffix (“.ישראל”) should be disregarded. Since the Domain Names are in Hebrew and the trademark is in English – the Domain Names are not the same as the trademark and the brand. However, the Domain Names are misleadingly similar to the trademark registered in Israel and the Petitioner’s corporate name.
The Petitioner has provided significant evidence regarding its rights to the brand name that makes up the registered trademarks and also that the name of the corporation is the same as the Petitioner’s brand. The Petitioner has rights in the trademarks as well as in the corporate name. The Respondent did not submit his response and did not demonstrate that he has a legitimate interest in the Domain Names. The claims raised by the Respondent’s attorney in response to the Petitioner’s request are not relevant to the dispute resolution rules. The Respondent has no rights in the Domain Names. Being the first in time when registering Domain Names is not a relevant consideration.
The Respondent did not present any personal interest related to the Domain Names. This is a brand that invested significant resources in creating its reputation over a long period of time. The Respondent was at least aware of the Petitioner’s brand and name. Further evidence of bad faith can be found in the very registration of two almost identical Domain Names. The circumstances in the dispute resolution rules regarding the bad faith of the Respondent in registering the name were met, without expressing an opinion on the nature of the Respondent or his intention in the registration.
The panel has granted the petition and ordered the Domain Names in dispute to be transferred to the Petitioner.
The above is a summary of the decision. For the full decision, click here [PDF]