Sole panelist – Adv. Eran Liss
The decision was given on January 3, 2023.
Background and parties’ arguments:
The Petitioner, an Israeli company, filed a petition to the Dispute Resolution Procedure of the Israel Internet Association (IL-DRP) for transfer of the rights to the Hebrew domain name “הוט.ישראל” [“Hot.Israel”] (the “Domain Name”), held by the Respondent.
The Petitioner argued that it was established in 1996 and is known under the name “Hot Consumer Club,” as a consumer customer club for practical engineers and technicians numbering approx. 300,000 members. The Petitioner has registered trademarks for the mark “הוט” [“Hot”] and possesses the domain names hot.org.il, hot.co.il, as well as the Hebrew domain name “מועדון-הוט.ישראל” [“Moadon-Hot.Israel”] The Petitioner argued that it discovered the Respondent had registered the Domain Name after the opening of registration for the Hebrew domain “ישראל.” [“.Israel], and that the Respondent informed it that it intends to “conduct a tender” for the Domain Name.
The Respondent argued that it registered the Domain Name legally when the possibility opened up to the general public, according to the principle of “first come, first served.” It argued that the Petitioner’s trademark does not preclude the Respondent from registering the Domain Name, and that it is interested in the possibility of establishing a site that consolidates data on temperatures measured in Israel, under the Domain Name.
At the time of registration of the Domain Name, the Respondent agreed to the user conditions of the domain name registrar, clarifying that the user agrees to the Israel Internet Association’s domain name registration rules, including the dispute resolution rules.
The dispute resolution rules set forth that a dispute regarding allocation of a domain name to a Holder will be heard subject to the following conditions:
- 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 disputed domain name was submitted in bad faith or the domain name was used in bad faith.
The Petitioner has possessed registered trademarks for the mark “הוט” [“Hot”] for over 20 years, and its official name begins with the word “הוט” [“Hot”]. There is no doubt the Petitioner has rights in the name. The Domain Name includes the Petitioner’s trademark and name, plus the Hebrew extension “ישראל.” [“.Israel”], and it is identical or misleadingly similar to the Petitioner’s name. The existence of another company (Hot), active in another field under this name, does not detract from the fact that the Petitioner has rights in the name.
The Hebrew word “הוט” is a transliteration of the English word “Hot,” which means “of a high temperature.” Despite this indirect meaning, this is not a generic term or a word with a dictionary definition in the Hebrew language. This word is not widespread in Hebrew speech or writing. The Panel was not convinced by the Respondent’s argument that it “is interested” in establishing a site for measuring degrees and sunlight under the name “הוט” [“Hot”] an argument which was not supported by any evidence whatsoever. The Respondent’s version is not in line with its general position that it has a practice of trading in domain names it registers. The Respondent has no rights in the name.
With respect to the Respondent’s good faith, the latter confessed that it has a practice of registering domain names without using them, in order to trade them. According to the Respondent, domain names that are a third party’s trademark can be registered, as long as there is no intentional harm to the mark holder. The Respondent’s account is not in keeping with the dispute resolution rules, which set forth various presumptions regarding good faith use, including when allocation of the Domain Name was executed primarily to sell the rights in the name to the trademark holder.
The panel accepted the petition and ordered transfer of the disputed Domain Name to the Petitioner.