WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION Israel Bar Association v. Itai Ram Case No. D2010-0003

1.

The Parties The Complainant is Israel Bar Association of Tel Aviv, Israel, represented by Soroker Agmon, Advocates & Patent Attorneys, Israel. The Respondent is Itai Ram of Haifa, Israel.

2.

The Domain Name and Registrar The disputed domain name <israelbar.mobi> (the “Domain Name”) is registered with EnCirca, Inc. (the “Registrar”).

3.

Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 4, 2010. On January 5, 2010, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On January 6, 2010, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 12, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was February 1, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 2, 2010.
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The Center appointed Tony Willoughby as the sole panelist in this matter on February 8, 2010. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. On February 10, and February 11, 2010 the Complainant and the Respondent respectively filed unsolicited submissions. They arrived early enough to avoid any inconvenience to the Panel and are very short. Neither of them adds significantly to what was already in the case papers, but it seems to the Panel more proportionate to admit them than to exclude them. 4. Factual Background The Complainant is the Israel Bar Association, also known as The Israel Bar. It is an independent Israeli statutory entity established under the Bar Association Act 5721 of 1961. Its primary purpose is to regulate the legal profession in Israel. The Complainant is the proprietor of the domain names <israelbar.org.il> (registered on February 2, 1999) and <israelbar.co.il> (registered on June 25, 2006). The Domain Name was registered on October 3, 2006. Nothing is known of the Respondent save that at some stage following the registration of the Domain Name he was a student doing an MBA at the MIT Sloan School of Management. On November 6, 2008 the Complainant filed applications for registration in Israel of THE ISRAEL BAR as a trade mark in classes 9, 16, 35, 36, 41 and 45 for a variety of goods and services relating to the activities of a bar association. As at the date of the Complaint those applications had not matured into registrations. On December 4, 2008 the Complainant’s representative wrote to the Respondent drawing the Respondent’s attention to the Complainant’s rights, alleging infringement and demanding inter alia transfer of the Domain Name. On January 19, 2009 the Respondent replied to that letter stating that he had registered the Domain Name when registration of ‘.mobi’ domain names was opened to the public, that he made the registration at a time when there was no trade mark of that name registered in Israel, that there was never any bad faith intent (his intention being to create as part of his business plan “an online website for mobile devices that will provide a portal with links to popular Israeli bar.”) and that he has no intention of transferring the Domain Name without consideration. He invites the Complainant to negotiate a purchase. On January 25, 2009 the Complainant’s representative responds asking the Respondent how much he wants for the Domain Name. On January 28, 2009 the Respondent emails back saying that his total expenses associated with the Domain Name (including costs of web maintenance and his business plan) amount to USD 3,500 and that is the value he puts on the Domain Name. 5. Parties’ Contentions
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A.

Complainant

The Complainant contends that it has common law trade mark rights in the name THE ISRAEL BAR arising from long and extensive use of that name since the foundation of the Complainant in 1961. The Complainant contends that the Domain Name is confusingly similar to a trade mark in which it has rights. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. Finally, the Complainant contends that the Domain Name was registered and is being used in bad faith. The Complainant contends that the Respondent’s offer to sell the Domain Name at a profit is an indication of bad faith. The Complainant contends that the fact that the Respondent has made no use of the Domain Name since registering it in 2006 is also evidence of bad faith. Moreover the Complainant contends that the Respondent’s stated plan for his use of the Domain Name is calculated to deceive and to tarnish the name of the Complainant. All these allegations of bad faith are based on the proposition that the Respondent, an educated Israeli, must have been aware of the Complainant when he registered the Domain Name. B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, he did seek leave to file a Response out of time and the Panel has accepted that Response into the proceeding. The Respondent contends that when he registered the Domain Name there was no trade mark registration covering ISRAEL BAR. He points out that even now the Complainant’s applications for registration of that mark in Israel have not been adjudicated upon. The Respondent denies any bad faith and amplifies slightly upon his letter of January 19, 2009 referred to above to the Complainant’s representative. “I purchased this domain name as part of my business plan to create a website for mobile devices that will provide an online bar (similar to the Google Bar, or the Yahoo Bar) with links to popular Israeli websites. The execution of my business plan was postponed due to my pursuing of a Master of Business Administration (MBA) studies at the MIT Sloan School of Management and the financial difficulties I was under. As of today I have a team of engineers who are starting the development of our beta product.” The Respondent observes that prior to his registration of the Domain Name there had been a 6 month period reserved for rights owners to register their names in the ‘.mobi’ domain, yet the Complainant chose not to avail itself of that opportunity. As to the allegation concerning the Respondent’s willingness to sell the Domain Name, the Respondent asserts that he was only willing to do so because at that time he was in financial straits. He asserts that the figure of USD 3,500 was a reasonable one calculated by reference to his costs of acquiring the Domain Name, planning the website and producing his business plan. 6. Discussion and Findings A. General
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According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that: (i) (ii) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and The Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) The Domain Name has been registered and is being used in bad faith. B. Identical or Confusingly Similar

The Complainant has put sufficient evidence before the Panel to satisfy the Panel that the Complainant has common law rights in respect of THE ISRAEL BAR, the name by which it has commonly been known since 1961. The Panel also notes that the Respondent does not challenge the Complainant’s assertion that it has been using the domain name, <israelbar.org.il>, for its website since registering that domain name back in 1999. In assessing identity and confusing similarity for the purposes of paragraph 4(a)(i) of the Policy it is acceptable for the generic domain suffix to be ignored. The Panel finds that the Domain Name is identical or confusingly similar to a trade mark in which the Complainant has common law rights. C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a non-exhaustive list of what shall demonstrate rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy. It is addressed to registrants of domain names and reads: “How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii): (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(ii)

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
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The Respondent is not known by the Domain Name and is not making any overt use of the Domain Name, so of the examples set out in paragraph 4(c) of the Policy, the only one which might be applicable is the fact (if it be a fact) that when the Respondent was first contacted by the Complainant he was making “demonstrable preparations to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods and services.” The Complainant has made out a persuasive case. The Complainant’s name has been in continuous use in Israel for nearly 50 years. The Respondent is an educated Israeli citizen and might be expected to have known of the Complainant. ‘Israel Bar’ is, on its face, an unusual combination of words to select for a domain name unless it was to be used to refer to the Complainant or, perhaps a particular Israeli drinking establishment. The Respondent has given two explanations, one in his letter to the Complainant’s representative of January 19, 2009, namely for “an online website for mobile devices that will provide a portal with links to popular Israeli bar” and the other in his submission to the Panel, namely to create “a website for mobile devices that will provide an online bar (similar to the Google Bar, or the Yahoo Bar) with links to popular Israeli websites” The Panel is by no means certain that the two explanations are consistent, but if it is the case that the latter is intended to be a clarification of the former, the Panel simply observes that the Google and Yahoo ‘bars’ are more commonly referred to as ‘toolbars’ and <israelitoolbar.mobi> would have been a much more informative domain name than the Domain Name <israelbar.mobi>. It is to be noted that in both his explanations he has used “Israeli” rather than “Israel”, which might have been just as objectionable to the Complainant, but would have helped perhaps to deflect the strong suspicion that the Domain Name was selected to replicate the manner in which the Complainant uses its name in its domain name, <israelbar.org.il>. At all events, for the Panel, the Respondent’s explanation does not ring true. The simplest thing, of course, for the Respondent to have done was to produce some evidence of his business plan in relation to the Domain Name. If he had, as he claimed, run up expenses of USD 3,500 in developing his plans, one would have expected him to have something to show for it (e.g. his business plan), but he has produced nothing. While it is for the Complainant to prove the three elements of paragraph 4(a) of the Policy, it is now well-established that in relation to the second element (paragraph 4(a) (ii) of the Policy), once the Complainant has made out a prima facie case (i.e. a case to answer) it is for the Respondent to answer that case. The rationale behind this policy is that whether or not the Respondent has rights or legitimate interests is a question, which the Respondent is best-placed to answer. In the view of the Panel, the Respondent has a case to answer. In the absence of an answer, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.

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D.

Registered and Used in Bad Faith

On the same basis the Panel finds that the Domain Name was registered and is being used in bad faith. The Domain Name is identical or confusingly similar to the Complainant’s common law trade mark, which has been in use in Israel for nearly 50 years and, but for the difference in the suffixes, is identical to the Complainant’s domain name, which it has used for its principal website for 10 years. In the absence of a credible explanation for having selected the Domain Name, the Panel is driven to conclude that it was registered with the Complainant in mind. It is to be noted that nowhere does the Respondent deny knowledge of the Complainant at the relevant time. Why did the Respondent register the Domain Name? Why would one register as a domain name the name of another entity, knowing it to be the name under and by reference to which that entity carries on business? In the absence of an explanation, the Panel is entitled to infer that the Respondent’s intent was abusive. Where, as here, there is an explanation, but the Panel does not believe it, the Panel has no hesitation in holding that the Respondent’s intention was abusive. The Panel believes that the objective may well have been to sell the Domain Name to the Complainant at a profit (paragraph 4(b)(i) of the Policy) as evidenced by the exchange of correspondence between the parties referred to in section 4 above, or it may have been to exploit the Complainant’s trade mark in some other way. Either way, the Panel finds that the Domain Name was registered and is being used in bad faith within the meaning of paragraph 4(a)(iii) of the Policy. 7. Decision For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <israelbar.mobi>, be transferred to the Complainant.

Tony Willoughby Sole Panelist Dated: February 15, 2010

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