Sole panelist – Adv. Eran Lis
The decision was rendered on July 18, 2024
Background and arguments of the parties:
The Petitioner, an American company, filed a petition for the transfer of rights to the domain name juiceplus.co.il (hereinafter, “the Domain Name”), of which the Respondent is the holder.
The Petitioner was established in 1970 and operates in over 20 countries in the health and wellness sector, marketing fruit-based nutritional supplements under the trademark ‘Juice PLUS+.’ The Petitioner owns numerous registered trademarks worldwide, including in Israel, where it has maintained registered trademarks including ‘JUICE PLUS’ since 1996, in various forms, designs and occasionally with additional words.
The Petitioner argued that the Respondent, who holds the domain name ‘juiceplus.co.il,’ had purchased products from its subsidiary and was therefore aware of its trademark and acting in bad faith. Additionally, the Petitioner claimed that the Respondent did not respond to its inquiries and was using the Domain Name as a “parking page” to generate profit.
The Respondent, an SEO (Search Engine Optimization) professional, registered the domain on January 16, 2023. He contended that he had not used the domain name and argued that holding a domain with two generic words does not violate any laws. The Respondent further claimed that the term ‘Juice’ holds significance in the SEO industry and noted that he had previously acquired domains featuring the words ‘Juice’ or ‘Plus.’ He asserted that the Petitioner does not have the right to monopolize these terms. Additionally, the Respondent insisted that he did not use the Domain Name for profit and was not involved in operating the “parking page,” attributing its origin to the domain registrar ‘Domain the Net.’ He also stated that he had not received the Petitioner’s inquiries and was unaware of the claims until the petition was filed.
Decision:
Upon registering the Domain Name, the Respondent agreed to the dispute resolution rules of the Israel Internet Association and the procedures associated with them. The Petitioner has the right to file a petition if the following conditions 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 “Registered 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.
The official name of the Petitioner is “The Juice Plus+ Company, LLC.” A registered company name can also serve as a basis for the required rights. For the purpose of examining the similarity to the registered name, the generic words “LLC” and “Company” may be disregarded. Similarly, the “co.il” component is considered “transparent” for comparison purposes. The Petitioner has established its rights in the registered name based on its trademarks in Israel. Therefore, the Petitioner has demonstrated that the first two conditions of the rules are met.
The Respondent did not claim to have rights in the JUICEPLUS mark, arguing instead that these are two generic words that the Petitioner cannot “monopolize,” especially given the meaning of the word “Juice” in the field of SEO. It is undisputed that the two words, in themselves, are generic, at least in certain fields. However, the JUICEPLUS mark as a whole is not generic. It can be argued that it is descriptive. The “descriptiveness” depends on the context and the goods or services in question. The Petitioner has registered various trademarks in Israel for JUICEPLUS, with different logo designs and in combination with additional words. None of these registrations cover the literal mark JUICE PLUS on its own, which may indicate the descriptive nature of the mark.
The Respondent’s explanation of the meaning of the word “Juice” in the SEO field is not convincing as a motive for using the JUICEPLUS mark in its entirety as a domain name. The fact that the Respondent did not present evidence of any real intention to use the Domain Name, which he acquired about a year and a half ago, casts doubt on the credibility of his claim regarding the intended use of the Domain Name. Although this case is not clear-cut and may even be borderline, the Petitioner has also met the third condition of the rules.
For the fourth condition, the Petitioner must prove that the allocation or use of the Domain Name was done in bad faith. Section 4 of the rules includes a list of instances where the Respondent’s behavior constitutes evidence of bad faith in the registration or use of a domain name. This is not an exhaustive list. Applying the rules in this case does not lead to a definitive conclusion. On the one hand, the Respondent’s explanation for registering the Domain Name is unconvincing, and he even purchased the Petitioner’s products in the past and is familiar with them. It is possible that the Respondent holds the Domain Name intending to benefit from the Petitioner’s reputation.
However, given the nature of the mark, it is difficult to determine unequivocally that the Respondent registered the Domain Name in bad faith due to the Petitioner’s reputation. The Respondent’s case is strengthened by the fact that for a year and a half, he did not launch any website under the Domain Name nor did he promote it, despite his working in the field. The question of good faith in the allocation of the Domain Name is borderline, but the use of the Domain Name, on which a “parking page” is active, helps tip the scales in favor of accepting the petition.
The evidence supports the Respondent’s claim that he was not involved in the uploading of the parking page, is not entitled to any income from the advertisements displayed on it, and was unaware of its existence. The registrar’s agreement (Domain the Net), permits the registrar to direct the domain name to a parking page, but also allows the Respondent to discontinue the link to the parking page. The Respondent did not exercise his ability to remove the parking page even after becoming aware of these facts. The advertisements on the page promote products that compete with the Petitioner’s, undermining the legitimacy of the Domain Name’s use and instead indicating that it was used in bad faith. The Respondent’s conduct amounts to use of the Domain Name in bad faith. The Petitioner has also proven the fourth condition of the rules.
The panel accepted the petition and ordered the transfer of the Domain Name “juiceplus.co.il” to the Petitioner.
The above constitutes a summary of the decision. Click here for the full decision (PDF, Hebrew)