Sole panelist – Adv. Adi Barkan-Lev
Decision given on August 23, 2022.
The Petitioner, Ticketmaster Israel Ltd., filed a petition for transfer of the rights to the domain name ticketmaster.co.il (“Domain Name”), held by the Respondent.
Primary arguments of the Petitioner and the Respondent
The Petitioner is an Israeli company that sells tickets to shows and events, operated under the auspices of the American company, Ticketmaster. The Respondent registered the Domain Name in 2000 and does not operate a website under the Domain Name. The Petitioner argued, inter alia, that it possesses rights to the trademark Ticketmaster, which is identical to the Domain Name. The Respondent argued, inter alia, that it registered the Domain Name with the intention of developing an electronic commerce business, while the Petitioner was only founded in 2015 – 15 years following its registration of the Domain Name.
The Dispute Resolution Procedure of the Israel Internet Association (IL-DRP) is an alternate dispute resolution mechanism intended to provide a quick solution for disputes related to the allocation of domain names in the top-level domain of Israel (ccTLD), conducted pursuant to the Association’s dispute resolution directives. The Respondent accepted these directives upon registration of the Domain Name. The directives establish that a dispute regarding allocation of a domain name will be heard based on the following grounds:
- The disputed 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 disputed domain name was used in bad faith;
The Domain Name is composed of the Petitioner’s registered trademarks and its trade name (ticketmaster), and the suffix co.il. The suffix is a “transparent” component that is to be ignored for purposes of determining the similarity between the disputed Domain Name and the Petitioner’s trademarks, since it is a common suffix that indicates that the Domain Name is registered for commercial activity in the top-level domain of Israel. Since the “ticketmaster” component of the Domain Name is identical or misleadingly similar to the registered trademarks owned and used by the group of companies to which the Petitioner and/or its trade name and/or the registered company name of the Petitioner belongs – the first condition of the directives exists.
The evidence indicates that the Petitioner uses the Ticketmaster trademark in Israel, based on its affiliation with the Ticketmaster Group and the business operations of Live Nation, which is the registered owner of the trademarks. The Petitioner’s rights to the name have been proven.
There is no dispute that the Respondent did not receive any permission whatsoever to use the Ticketmaster trademark. The Respondent did not prove that any attempts or inquiries were made to develop a business in the field of ticket sales. The argument that the Respondent has material intent to use the name seems weak in light of the fact that it has held the Domain Name for 22 years without using it. The right of any entity to hold a Domain Name without using it at all for 22 years, even if the Domain Name was originally registered in accordance with the law and in good faith, is not definitive and does not constitute a legitimate interest in the Domain Name. 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 condition regarding use of a domain name in bad faith is not limited to action. Inactivity is also included in the terms of this condition. The only interest of the Respondent in the Domain Name is the fact that it purchased it in 2000 and held it, passively, until now. It is possible that the Respondent’s purchase of the Domain Name in 2000 was done in good faith, but the Respondent’s argument that this is the relevant point in time for purposes of resolving the current dispute should not be accepted.
The panel accepted the petition and ordered transfer of the Domain Name to the Petitioner within 30 days of receipt of the decision.