Sole panelist – Adv. Jonathan Agmon
The decision was given on September 13, 2023.
Background and arguments of the parties:
The Petitioner, a Singapore company, filed a petition for the transfer of the rights to the domain name “heydude.co.il” (the “Domain Name”), which is held by the Respondent, an Israeli resident.
The Petitioner is part of a group of companies engaged in the manufacture, marketing, and sale of shoes, in more than 85 countries, which have a sales volume of over USD 3,000,000,000. The Petitioner uses the trademark “Hey Dude” and is the holder of several registered trademarks throughout the world, including in Israel.
The Respondent registered the Domain Name on December 23, 2021. The Domain Name led to a landing page of a domain name registrar, which offers various registrar services. The Respondent has not filed any reply or response to the Petition.
Decision:
The domain name registry’s dispute resolution directives set forth that a petitioner shall be entitled to relief in a petition against a respondent regarding the allocation of a domain name, 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 (the “Registered Name”);
- 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.
A registered trademark provides clear evidence that the rights to the mark presented in the trademark certificate belong to its holder. The Petitioner provided evidence that it is the holder of the registered trademark “Hey Dude.” The Domain Name includes the trademark in full, plus the technical domain suffix “co.il.” The suffix should not be considered when examining the similarity between the disputed Domain Name and the Petitioner’s trademark. The Petitioner holds the rights to the Registered Name and the Domain Name is identical or misleadingly similar to it.
The Petitioner has proven prima facie that the Respondent does not hold rights to the Domain Name and the Respondent has not argued that it has rights to the Registered Name. The Petitioner has demonstrated that it holds trademarks that were registered prior to the date on which the Domain Name was registered, and that it is not associated with the Respondent. The Petitioner also argued that it did not grant the Respondent a license or permission of any other kind to use its trademarks. The Respondent did not file a response and did not provide any explanation or evidence to demonstrate rights in the Domain Name.
The Petitioner has registered the trademark in different countries and has been the holder of its different registrations for over a decade. An internet search for the trademark directs on the first page exclusively to the Petitioner or to sites presenting its products under the mark. There is no doubt that the Petitioner has registered trademarks and has garnered a reputation under the mark, to a significant extent. The Petitioner has demonstrated that the Domain Name directs to a site that offers various registrar services and has argued that domain parking under the registrar constitutes passive use. Passive use in this case constitutes a sign of use in bad faith.
The Petitioner presented evidence that the Holder agreed to sell it the Domain Name for an amount that clearly exceeds the registration costs, in a manner that constitutes another sign of its bad faith. The fact that the Respondent chose not to file a response also testifies to this. One may also surmise that the Respondent was aware of the Petitioner and its registered marks, as well as its activity, at the time of registration of the Domain Name.
The panel accepted the Petition and ordered transfer of the disputed Domain Name to the Petitioner.
The foregoing constitutes a summary of the decision. For the full decision, click here [PDF].