Sole panelist – Adv. Naomi Assia
The decision was given on October 30, 2022.
Background and arguments of the Parties:
The Petitioner, a company residing in France, filed a petition for transfer of the rights to the domain name carrefour.co.il (“Domain Name”), which the Respondent has held since March 27, 2008.
The Petitioner is an international company involved in the distribution of products, and it has been operating since 1968. The Petitioner argued, inter alia, that it is the owner of the trademark Carrefour, which is very well-known and registered in various countries in the world, including Israel. The Petitioner even maintains several Domain Names, with generic and country suffixes, such as carrefour.com and carrefour.fr. The Petitioner argued that the Domain Name is identical to its trade name and could cause great confusion among its customer base in Israel.
The Respondent argued, inter alia, that it registered the Domain Name legally and in good faith in 2008, with the intention of building an online commerce platform, but due to various difficulties, his attempts to set up the website were unsuccessful. The Respondent also argued that when it registered the Domain Name, the Petitioner did not possess any rights to the trademark in Israel and that the name Carrefour has many meanings.
The dispute resolution directives are alternative dispute resolution directives developed in order to streamline and accelerate the resolution of disputes related to the allocation of domain names online. Upon registration of a domain name ending in the suffix co.il, the applicant accepts the duty to act in accordance with the directives and subject itself to them.
The dispute resolution directives establish that a dispute regarding allocation of a domain name to a holder will be heard subject to all of the following conditions being met:
- The 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 Domain Name was submitted in bad faith or the Domain Name was used in bad faith;
Upon examining the similarity between the Domain Name and the trade name or the company name of the Petitioner, the suffix of the Domain Name (co.il) should not be considered. The Domain Name is identical to the name of the Petitioner’s legal entity, which has operated under the name Carrefour since 1968, in France and other countries. The Domain Name is also identical to the Petitioner’s trade name, Carrefour. Since the Carrefour component of the Domain Name is identical to the Petitioner’s trademarks and to the Petitioner’s legal entity name (including in Israel) – the first condition exists.
The evidence indicates that upon registration of the Domain Name by the Respondent, the Petitioner did not own the rights to the registered trademark in Israel. However, in 1993, the Petitioner registered as an active Israeli company in Israel, under the name Carrefour. In light of the fact that it has been established that the name of the Petitioner’s legal entity, internationally and in Israel, is identical to the Domain Name, the Petitioner has met the evidentiary burden and established that the Respondent ostensibly does not have a legitimate right to the Domain Name.
There is no dispute that the Respondent did not receive any permission whatsoever to use the Carrefour trademark. The Respondent did not use the Domain Name and it remained empty of content. While the Respondent did note that it purchased the Domain Name with the intention of using it commercially, this purpose was not realized. The Respondent did not show testimony or evidence of its attempts to build a website, nor testimony of a monetary investment or preparations to use the Domain Name in the future and assign it commercial content. The Respondent failed to prove that there is material justification for leaving the Domain Name unused, and failed to prove genuine intent, in good faith, to use it. The Respondent did not prove that it has a legitimate interest in the Domain Name, at least not one that overrides the legitimate interest of the Petitioner.
The fact that the Domain Name remained essentially empty of content since the day of its registration, for about 14 years, is testament of usage that is bad faith on the part of the Respondent. It cannot be established that the Respondent should have known about the existence of the Petitioner at the time of registration of the disputed Domain Name; however, establishing that the Respondent will continue to hold the disputed Domain Name will prevent the Petitioner from using its registered trademark in Israel.
The panel accepted the petition and ordered transfer of the disputed Domain Name to the Petitioner.