Sole panelist – Adv. Naomi Assia
The decision was given on April 25, 2023.
Background and claims of the parties:
The Petitioner, an Israeli company belonging to the “Castro Hoodies” Group, filed a petition for transfer of the rights to the Hebrew domain name <טופטן.ישראל> [Top Ten] (the “Domain Name”), held by the Respondent since November 2022.
The Petitioner has operated a chain of stores for fashion accessories since 2004, under the brand name “טופ טן” [in Hebrew] and “Top Ten” [in English]. The Petitioner holds registered trademarks in Israel for the brand name in English. The Respondent registered the Domain Name when the possibility opened up to register domain names in Hebrew and rejected the Petitioner’s demand to transfer the Domain Name to it. The Respondent argued that it had built a website for a client, intended to supply information on rankings and reviews in the medical field.
Decision:
The Dispute Resolution Procedure of the Israel Internet Association (IL-DRP) is an alternative dispute resolution mechanism, which is designed to provide a quick resolution for disputes regarding the allocation of domain names under the .IL ccTLD. At the time of registration of the Domain Name, the applicant requesting registration assumes an obligation to act according to the rules and to be subject to them.
The dispute resolution rules set forth that a dispute regarding allocation of a domain name will be heard 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; 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. These are cumulative conditions, and the petitioner bears the burden of proof.
The Domain Name is “טופטן” [Top Ten] and there is no need to refer to the “.ישראל” suffix. The Petitioner holds registered trademarks in Israel which include the name “Top Ten” in English. Since “טופטן” in Hebrew characters is a transliteration of the Latin character name “Top Ten,” they are identical. The disputed Domain Name is identical to the Petitioner’s trademarks. This is the generally accepted approach of the Trademark Register when examining similarity between trademarks in various contexts.
In addition, the Petitioner is registered as a legal entity in Israel under the name “Top Ten Fashion Accessories Ltd.” in Hebrew and in English. The addition “Fashion Accessories” in the Israeli corporation’s name, on top of the trademark “Top Ten,” is a descriptive addition which does not detract from the conclusion that the disputed Domain Name is identical to the name of the corporation in Israel. The Domain name is identical both to the Petitioner’s trademarks and the name of the corporation registered in Israel that it owns.
The Petitioner has legitimate rights in the name. At the time of Domain Name registration by the Respondent, the Petitioner had already been a registered and active corporation in Israel under the name “Top Ten” for 18 years. Since it has been concluded that the Petitioner’s legal name in Israel, as well as its registered trademarks, are identical to the Domain Name, the Petitioner has thereby sufficiently met the burden of proof in order to conclude that the Respondent does not have any legitimate prima facie rights in the Domain Name. The burden has passed to the Respondent, to demonstrate that it is the one who holds legitimate rights, in order to continue to hold the Domain Name.
The Respondent has no legitimate rights in the Domain Name. The Respondent does not have a registered trademark for “Top Ten.” The Respondent has not demonstrated that it has activity, commercial or non-commercial, under the name “Top Ten” in Israel. Nor is the Respondent known among the consumer public under the name “Top Ten.” The Respondent has no registered legal entity or active business bearing the name “Top Ten.” The Respondent has not presented any testimony whatsoever of a monetary investment it alleges it made, or other preparations to make future use of the Domain Name and fill it with content. The Respondent has failed to demonstrate that the Domain Name serves as an active website. Thus, for all intents and purposes, the Respondent has failed to provide any genuine and sincere testimony of credible commercial activity under the disputed Domain Name or firm testimony of future use.
The Respondent’s activity on the website under the Domain Name precisely matches the Petitioner’s arguments against it. This activity illustrates the Respondent’s absence of good faith in purchasing the Domain Name. The Respondent’s claim regarding current and future commercial activity under the Domain Name has not been supported by any evidence whatsoever. The fact that the Domain Name remained, for all intents and purposes, devoid of content, and any content added to it during the recent period since the Petitioner contacted it requesting transfer of possession of the Domain Name to it – testifies to an absence of good faith on the Respondent’s part.
The panel accepted the Petition and ordered transfer of the disputed Domain Name to the Petitioner.
The above is a summary of the decision. For the full decision, click here [PDF]