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Generic Top Level Domain Name (gTLD) Decisions |
Canada Israel Experience v. Oranim Travel
Ltd. c/o Shlomo Lifshitz
Claim Number: FA0312000215312
PARTIES
Complainant
is Canada Israel Experience (“Complainant”),
represented by Igor Ellyn, of Ellyn-Barristers, 121 King Street,
Suite 1100, Toronto, ON M5H 3T9, Canada. Respondent is Shlomo Lifshitz of Oranim
Travel Ltd. (“Respondent”), represented by Dan Or-Hof of Ravia &
Co., Law Offices 12 Nachmani Street, Tel Aviv II, 65794, Israel.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <israel4free.com>, <israel4free.net>, and <israel4free.org>, registered
with Go Daddy Software, Inc.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known
conflict in serving as
Panelist in this proceeding.
Jacques A. Léger, Q.C. as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on November 28, 2003; the Forum received
a hard copy of the
Complaint on December 3, 2003.
On
December 4, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain names <israel4free.com>, <israel4free.net>, and <israel4free.org> are registered
with Go Daddy Software, Inc. and that Respondent is the current registrant of
the names. Go Daddy Software, Inc. has
verified that Respondent is bound by the Go Daddy Software, Inc. registration
agreement and has thereby
agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On
December 12, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”),
setting a deadline
of January 2, 2004 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via
e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts,
and to postmaster@israel4free.com, postmaster@israel4free.net,
and postmaster@israel4free.org by e-mail.
A
hard copy Response was received on January 5, 2004, three business days after
the deadline.
The
Forum received a timely additional submission on behalf of Complainant on
January 7, 2004, pursuant to Forum Supplemental Rule
7.
The
Forum received a timely Response to the additional submissions on January 12,
2004.
On January 12, 2004, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Jacques A.
Léger, Q.C. as Panelist.
The Panel wishes to point out that even though three
domain names are at stake, namely <israel4free.com>, <israel4free.org>,
and <israel4free.net>, to reduce the text, it will hereinafter
refer to and consider the domain name <israel4free.com> as
encompassing the three domain names in question, since in the appreciation of
the substantive elements, the extension .org,
.com or .net is of no relevance.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Since
1998, Complainant, Canada Israel Experience, has been a division of UIA
Federations CANADA—a national Jewish fundraising organization
and community planning
body for the Canadian Jewish community.
A major purpose of Complainant is to
attract participants, namely Jewish young adults from 18 to 26, to travel to
Israel on the “birthright
Israel” program. Complainant maintains a national
network of local representatives in every major Canadian Jewish community, as
well
as part-time representatives in most other Canadian cities and in
Jerusalem.
“Birthright Israel” was initiated by
North American Jewish philanthropists.
Its mission is to offer a first time educational peer-group trip to
Israel. “Birthright Israel” accredits
Trip Organizers. Once a Trip Organizer
has been accredited, “birthright Israel” provides travel and pays the Trip
Organizer a fixed amount for land
costs, programming and for attracting the
participants. Since January 2000,
Complainant has been an accredited
“birthright Israel” Trip Organizer.
Complainant is the largest trip organizer in Canada.
Respondent, established in Lyndhurst,
Ohio, operates several commercial websites that provide tours and vacation
packages to Israel. Since 2001,
Respondent has been an accredited Trip Organizer with “birthright Israel”. According to its website, <israel4free.com>,
Respondent registers “birthright Israel” participants from all over the United
States and Canada. Respondent and
Complainant are competitors for “birthright Israel” participants in
Canada.
Respondent registered the domain names
<israel4free.com>, <israel4free.net>, and <israel4free.org>
(collectively <israel4free.com>) on December 25, 2001, 17 months
after the launch of Complainant’s <israelforfree.com> website. Respondent
operates the
websites through an entity called Oranim Educational Initiatives.
Beginning in February 2002, Respondent
began using the domain names to compete unfairly by attracting a segment of
Complainant’s “birthright
Israel” participants. Respondent only markets <israel4free.com>,
which is confusingly similar to Complainant’s domain name. By entering the domain names <israel4free.org>
and <israel4free.net> in a browser, the Internet surfer is
immediately transferred to the <israel4free.com> site. Interference with traffic to Complainant’s
website by the intervention of Respondent’s confusing domain name has
substantially affected
the number of registrations received by Complainant.
Rights
In Mark
Since August 2000, Complainant has sought
participants to the program by using and establishing the trademark
ISRAELFORFREE.COM by
several means, including but not limited to the following:
a website at <israelforfree.com> since August 2000; sponsored billboards;
posters; full page advertising in The
Canadian Jewish News; a calendar; a Frisbee; double-sided flyers; a
bulletin board poster with six tear-off reminder cards; three additional
display newspaper
advertisements which appeared in Jewish community
publications across Canada; and concerts with marketing materials for
participants.
All of Complainant’s marketing efforts
are geared toward leading participants to the <israelforfree.com>
website, registered on August 8, 2000, which contains detailed information about Complainant’s
trips and allows online registration.
The
common law trademark ISRAELFORFREE.COM is a suggestive mark that evokes or
suggests a characteristic of the underlying services. Suggestive marks are inherently distinctive and are given a high
degree of protection.
Complainant
has an established reputation as ISRAELFORFREE.COM as the largest and most experienced
“birthright Israel” Trip Organizer in Canada.
It provides participants with a unique and unparalleled Israel
experience with the highest quality of education, logistics, and safety. Since the launch of “birthright Israel,”
over 5,500 young adults have traveled to Israel on trips organized by
Complainant, and most
of them are attracted by the information on the website.
Complainant has spent a considerable
amount of money, time, and effort in establishing an association between its
website and its
services over nearly three years. Complainant has invested substantial resources, amounting to more
than $100,000 (Canadian) to develop the ISRAELFORFREE.COM mark,
consisting of
billboards, pamphlets, articles, posters, newspaper advertisements, bookmarks,
Frisbees, promotional parties, and concerts.
Panels have held that trademark rights may accrue quickly on the
Internet due to the accelerated speed at which it allows information
to be
distributed. See Exario Networks Inc. v. Domain Name You Have
Entered is For Sale, AF-0538
(eResolution Dec. 11, 2000).
Identical
or Confusingly Similar
Respondent’s domain names are confusingly
similar to Complainant’s trademark, as they are phonetically identical and
visually similar. The only difference
is Respondent’s substitution of the word “for” with the common shorthand for
the word “4". In support of this,
Complainant refers to PrintForBusiness
B.V v. LBS Horticulture D2001-1182 (WIPO, December 21, 2001), where the domain
name “print4business.com” was found to be confusingly similar to
“printforbusiness.com.” See also eSales & Mktg., Inc. v. Traino FA
156315 (Nat. Arb. Forum, June 19, 2003), where the domain name
<candy2u.com> was confusingly similar to <candy2you.com>.
Respondent’s registration of the domain
names is likely to cause confusion as to the source and sponsorship of the web
site, since
a visitor to Respondent’s web site is likely a potential customer
of Complainant. Complainant received
two letters from Canadian participants who were confused by the domain names. They were looking for the Canadian
“birthright Israel” trip organizer but were led to Respondent’s site <israe4free.com>
and did not appreciate until the last moment that there was a difference
between <israelforfree.com> and <israel4free.com>. Undoubtedly, there are many Canadian
participants who were misled and traveled with Respondent. Once connected to Respondent’s websites, the
potential registrants will be further confused to believe that they have in
fact connected
to Complainant’s official web site since both parties offer the
same services on their websites.
Where there is a direct competitive
relationship between Complainant and Respondent, it is difficult to conceive of
any legitimate
use Respondent could make of the domain name as a means to
attract registrants in Canada. See Packaging World Inc. v. Zynpak Packaging
Prods. Inc., AF-0233 (eResolution
July 28, 2000).
Long before Respondent first began using
its domain name, it was aware of Complainant’s trademark israelFORfree.com. At that time Complainant was already the
leading “birthright Israel” Trip Organizer in Canada. The knowing use of a domain name that infringes on trademark
rights is unlikely to be bona fide,
and is therefore incapable of giving rise to a legitimate right or
interest. See Nasdaq Stock Mkt. Inc. v. Green Angel,
D2001-1010 (WIPO September 30, 2001).
Complainant has not licensed or otherwise
permitted Respondent to use its trademark or to apply for any domain name
incorporating
the mark.
Respondent is not known commonly by the
domain names <israel4free.com> but uses them only to divert
Internet users looking for Complainant’s website to their own, which competes
directly with Complainant.
In fact, Respondent’s main travel agency
site, <israel4u.com>, has a hyperlink to “Free 10 days tour of Israel, Jewish 18-26
year olds”. Clicking this link
refers the user to another site, <funtour.co.il>, which contains the
headline “Free 10 days Tour of Israel –
birthright Israel mission”. The
second hyperlink on this site reads “If
you are from Canada register here.”
Clicking on this hyperlink transfers the web user
to the registration page of <israel4free.com>, the impugned
domain name site. This demonstrates
that Respondent is able to market its “birthright Israel” programs from its own
website. The use of the confusingly
similar domain name can therefore have but a single purpose, namely, to attract
Complainant’s registrants.
Respondent is not making a legitimate
non-commercial or fair use of the domain name but is using the names simply to
divert Internet
users.
Bad
faith
By using a confusingly similar domain
name to that of Complainant’s trademark, Respondent has intentionally attempted
to attract,
for commercial gain, Internet users to Respondent’s web site.
Respondent’s intention may be determined
by common sense inferences from circumstantial evidence. See New York Times Co. v. New York
Time Internet Servs., D2000-1072 (WIPO December 5, 2000).
Since the inception of “birthright
Israel”, Complainant has always maintained a dominant position in the Canadian
market. During the winter 2001, spring
2001 and winter 2002, Respondent attracted 272 Canadian participants, while
Complainant attracted 2,397.
Since Respondent began using the domain
name in February 2002, Complainant has lost a significant percentage of market
share of Canadian
participants. At the
same time, Respondent’s Canadian market share has increased from 9% to about
21%. The inescapable conclusion is that
Respondent’s increase is due to the confusingly similar domain name.
Respondent failed to make any good faith
inquiries to whether its use of the domain names would infringe the rights of
Complainant;
this is an element of bad faith. See Slep-Tone Entertainment Corp. v. Sound Choice Disc Jockeys, Inc.,
FA 93636, (Nat. Arb. Forum March 13, 2000).
B.
Respondent
Respondent
was founded in 1986 as a resource for Israeli schools traveling in Israel. Over
the years, it developed to be the leader
in Jewish Educational Travel
Worldwide. Respondent also operates school trips for Jewish and public schools
in the Unites States,
offers programs for the learning of Hebrew, Pilgrimage
tours for Christians to Israel and specialty and incentive tourism to any
destination world wide.
Respondent
became an accredited birthright Israel tour organizer in 2001. Respondent is a
unique tours organizer in many ways: it
is the only organizer that both recruit
participants and provides the services in Israel, and it is the most
international operation.
The large majority of Respondent's birthright Israel
program participants come from Jewish communities in the United States, where
by the year 2003, Respondent evolved to be the largest birthright Israel tour
organizer and the second largest in Canada.
Respondent
has its headquarters in Israel, but also maintains an office in Lyndhurst OH,
Chicago, Il, and Boca Raton, Fl, and marketing
representatives in the UK,
Mexico, Germany, Hungary and Russia.
Respondent
was not aware at the time of the domain name registration of the fact that
Complainant was using the domain name <israelforfree.com>.
The idea to
utilize the domain name came from 2 reasons: (1) the name was
"catchy" and reduced the idea of the birthright
Israel tours into one
phrase, and (2) the name suited the "family" of Respondent's already
existing websites, which were
maintained for other projects, like
"israel4u.com" and "travel4teens.com".
Shortly
after the registration of the domain name and ever since, Respondent has been
marketing it as the online center for its activities
with the birthright Israel
program. Its marketing campaigns, summing up to $140,586, included: hundreds of
advertisements in numerous
different newspapers; over five hundred television
commercials; various Internet advertisements; flyers; postcards; bumper
stickers;
brochures; luggage tags; clothing items; posters; briefcases; and
CDs.
Respondent
has been maintaining a vibrant web site under the domain name since February
2002. The web site consists of hundreds
of web pages, including, inter alia,
information about the program.
Respondent also manages a considerable part of its birthright Israel
service, via electronic mail, by using and maintaining 31 active
e-mail
addresses under the domain name.
Respondent's web site has gained considerable traffic rates, reaching
the top 25,000 most visited sites in the world.
For
three years, Complainant had an almost monopoly on the recruitment of
participants in Canada for birthright Israel programs. Over time, Respondent became the second largest
in Canada and began to threaten Complainant's hegemony. Complainant has been doing everything in its
power to restrict its recruitment efforts in Canada. The dispute raised in these proceedings is nothing more than an
additional effort to eliminate its main competitor and to regain its
hegemony
in Canada.
For
almost two years, Complainant took no action whatsoever to stop Respondent's
use of the domain name. Complainant did
not claim and provided no evidence to prove that any similar actions were taken
against other birthright Israel organizers.
The
term "Israel For Free" is commonly used by various birthright Israel
approved organizers, as part of their service description. The term is a combination of ordinary words
in the English language and describes the very essence of birthright Israel
tours – "go
to Israel for free."
The term does not connote the individualized characteristics of
Complainant's service. See, e.g., Chromalloy Men's Apparel Group, Inc. v. Burch
& Hatfield Formal Shops, Inc., D2000-1046 (WIPO Oct. 20, 2000); Matchnet PLC v. Josh Joffe, FA 159456
(Nat. Arb. Forum Aug. 4, 2003); Morgan v.
Parke d/b/a Trancenet Media, FA 211938 (Nat. Arb. Forum Dec. 14, 2003).
The
term, when used in connection with obtaining a free tour to Israel, is
therefore either generic or highly descriptive, as it is
used to identify the
main proposition of a birthright Israel tour.
See, e.g., CharterAuction.com,
Inc. v. Pacific Luxury Air, D2003-0801 (WIPO Dec. 2, 2003); snowboards-for-sale.com Inc., v. Name Admin.
Inc., D2002-1167 (WIPO Feb. 19, 2003); Bar
Code Discount Warehouse Inc. v. Barcodes Inc., D2001-0405 (WIPO July 27,
2001); Mil-Mar Shoe Co., Inc., v. Shonac
Corp., [1996] USCA7 118; 75 F.3d 1153 (7th Cir. 1996).
A
party who seeks to establish exclusive rights in a descriptive term carries a
heavy burden of proof in removing the term from the
public domain and must
provide significant evidence of distinctiveness, such as five years of
exclusive use (CharterAuction.com,
supra; snowboards-for-sale.com Inc., supra;
15 U.S.C. §1052(f) (2002)),
which Complainant did not manage to do, having failed to carry the substantial
burden of proving that the term acquired a "secondary
meaning." Zatarains,
Inc., v. Oak Grove Smokehouse, Inc., [1983] USCA5 238; 698 F.2d 786 (5th Cir. 1983); Arizona Golf Props., Inc., v. Benigno, D2003-0571 (WIPO Oct. 6, 2003). Nothing in Complainant's evidence suggests
that the consuming public affiliates the term specifically with Canada, or with
a Canadian
birthright Israel organizer.
Complainant has therefore failed to prove that the minds of the
consuming public, throughout the world, are set to associate the term
exclusively with Complainant.
The
term is neither Complainant's name, nor the name of any of its services.
Complainant
supplied insufficient documentation to determine the volume and scale of the
means allegedly used to establish trademark
rights in the term because it
presented a roughly estimated figure to describe the alleged invested sum in
developing the term. No detailed
evidence was provided to describe the volume of use of the various marketing
products, the dates, the extent of circulation,
or any other detail, which
would correlate the alleged estimated figure with the alleged use of marketing
products. No affidavits or statements
were provided to support such assertions.
See Molecular Nutrition,
Inc., v. Network News and Publ’n., FA
156715 (Nat. Arb. Forum June 24, 2003).
Complainant
used and is still using its own name to operate at least part of its online
birthright Israel activities in the web site
<CanadaIsraelExperience.com>.
Prior to the registration of the domain name, Complainant used the
domain name <israelforfree.com> only to divert Internet users
to their
main web site. In Fact, Complainant has
started operating a separate web site under <israelforfree.com>, sometime between February 13th,
2002 and May 25th, 2002, i.e., only after Respondent has started
operating the domain name.
Complainant therefore cannot assert that potential registrants for
birthright Israel tours exclusively identify Complainant with the
term.
Each and
every web page in the domain name bears Respondent's logo. Such is the case in its newspaper
advertisements and in the majority of its other forms of marketing. Respondent
has clearly done
so in order to associate the domain name with it and not to
create a likelihood of confusion.
The two
letters provided by Complainant regarding alleged evidence of actual confusion
cannot prove a wide spread phenomena.
Clearly the average online user would not overlook the numerous
references in the domain name to the source and sponsorship of the
web
site. Respondent has never received any
complaints of that kind.
Respondent
operates the web site as the main resource for all of its birthright Israel
activities throughout the world.
Furthermore, its activities in North America are mainly focused in the
US market, rather than in Canada.
Therefore, its web site was not created and is not used specifically to
compete with Complainant's web site.
The term
“Israel for free” is in use by third parties, and Respondent registered it in a
legitimate domain name, registering on a
first come, first served basis. Car
Toys Inc. v. Informa Unlimited, Inc., FA 93682 (Nat. Arb. Forum Mar. 20,
2000); The VideoCall Co. v. M Koenig FA 167922 (Nat. Arb. Forum Aug. 20,
2003).
Bad faith
Respondent
registered the domain name without the knowledge of Complainant's use of
<israelforfree.com>. No official
registration office could have made it aware of Complainant's use of the term,
since Complainant did not apply to register
the term as a trademark in Canada
or elsewhere.
Respondent
could not, and in fact did not prevent Complainant from reflecting any mark in
a corresponding domain name, nor did made
attempts to sell the domain name. It
neither registered the domain name primarily for the purpose of disrupting the
business of Complainant,
nor with any such intent.
Respondent's
share of the Canadian market has dropped from 2001 (before registration
of the domain name) to 2002 (after the registration), both in the winter and
the spring terms. The
number of participants through its service dropped once
more in winter 2003, when compared to the previous winter term. In contrast, Complainant has gained an
increase in the number of participants through its service from winter 2002 to
winter 2003. Only in spring 2003 a
dramatic increase occurred in the number of Respondent's participants, due
mainly to its successful Ambassador
Recruitment Project. Complainant's number of participants has
also increased dramatically (by 363%), from winter 2002 to winter 2003. Nothing
in the chart
suggests any correlation with Respondent's use of the domain name.
Respondent
did not intentionally attempt to attract, for commercial gain, Internet users
to the domain name by creating a likelihood
of confusion with Complainant’s alleged
mark. As the term is publicly available, no use of the domain name could have
constituted
use in bad faith of Complainant's alleged marks.
Complainant
did not provide evidence of any behavior by Respondent that suggests that it
registered or used the domain name in bad
faith. See Dollar Fin.
Group, Inc. v. Lee, FA 190515 (Nat. Arb. Forum Oct. 16, 2003).
Laches
Complainant
has brought the dispute to the awareness of Respondent nearly two years after
the registration of the domain name, during
which time Respondent has invested
considerable amount of time, money and efforts in developing the web site and
in marketing its
birthright Israel activities under this domain name. Prior to the notice of dispute, Complainant
never claimed that the domain name infringed on its claimed mark and/or
violated the ICANN
Policy.
An order
for the transfer of the domain name would result in substantial undue hardship
for Respondent and such relief should not
be granted in these proceedings. See, e.g., BeMusic, supra; HeadRoom
Corp. v. Comitini, FA 102522 (Nat. Arb. Forum Dec. 27, 2001).
C.
Additional Submissions
If Respondent knew about the nature and
scope of Complainant’s business in a market it was hoping to tap, it is
inconceivable that
it did not know of Complainant’s domain name
<israelforfree.com>as all of Complainant’s recruitment was done through
it.
Michael Eglash is an Israel-based
marketing consultant who had been an acquaintance of Lorne Klemensberg, the
Director of CIE’s office
in Israel. In late February 2000, Klemensberg and Adam
Minsky met with Eglash to discuss the possibility of Eglash working to recruit
Canadian participants for CIE’s birthright Israel program.
The birthright Israel program was
operating from February 2000.
Klemensberg’s e-mail communications to Eglash referred to the websites,
<israelforfree.com> and <canadaisraelexperience.com>,
as part of
his coordinates. Klemensberg and Minsky
explained to Eglash that <israelforfree.com> was used by CIE for
birthright Israel programs and that
<canadaisraelexperience.com> was used
for all of CIE’s other Israel programming.
Consequently, it is inconceivable that Eglash was unaware that CIE’s
web-based recruitment was through the <israelforfree.com> domain
name. At that time, Eglash was just
organizing his business and CIE decided not to use his services.
Klemensberg arranged for a follow-up
meeting with Eglash and Minsky in the spring of 2001. The possibility of Eglash working as a recruiter for CIE
birthright Israel programs was again discussed but CIE decided not to use
Eglash’s services.
On December 7, 2001, Klemensberg and
Minsky had a further meeting with Eglash, who by this time had set up a
company, Upstart Activist,
who provided a resume as well as a business
plan. Once again CIE decided not to
retain him.
Eglash began working for Oranim on
December 23, 2001, just two weeks after his presentation to CIE. On December 25, 2001, only 17 days after
the meeting with Minsky, Eglash registered the domain name on behalf of
Oranim. It is completely inconceivable
that he did not know that CIE was recruiting birthright participants through
the website <israelforfree.com>.
Shlomo Lifshitz met with Minsky and
Klemensberg on numerous occasions through 2002, during which times they raised
the issue of Oranim’s
use of the domain name which was passing itself off as
<israelforfree.com>, however Lifshitz refused to recognize that Oranim’s
use of a confusing domain name was unjustified.
Complainant’s trademark is
ISRAELFORFREE.COM and not ISRAELFORFREE as stated in the Response. CIE has spent substantial resources in
developing this trademark.
ISRAELFORFREE.COM has become distinctive of Complainant and of its
services. See Nat’l Assoc. of Prof’l Baseball Leagues,
Inc. v. John Zuccarini, D2002-1011 (WIPO Jan. 21, 2003).
Complainant’s common law trademark is not
generic—one that is commonly used to name or designate a kind of goods—nor
highly descriptive—one
that describes the ingredients, qualities, or
characteristics of an article of trade or a service.
It is unnecessary for Complainant to
establish that the “consuming public affiliates the [trademark] with Canada...”
but that it associates
it with its services.
The case of Molecular Nutrition Inc., v. Network News and Publ’n FA 156715
(Nat. Arb. Forum June 24, 2003) does not
stand for the proposition that Complainant needs to provide documentation
to prove “volume and scale of the means allegedly
used to establish trademark rights,” but, rather, that Complainant needs to
show the volume and scale of its sales.
The domain names were not chosen because of Respondent’s birthright Israel
activities or because they fit into a larger branded “family” of web
sites. Rather, it appears that
Respondent, assisted by its newly-engaged agent Eglash, was attempting to
divert Complainant’s Canadian registrants
to Respondent’s web sites. Eglash had full knowledge of Complainant’s
trademark prior to working for Respondent.
It is too coincidental and inconceivable that Eglash would register a
confusingly similar domain name just two weeks after being rejected
by CIE.
Complainant advised Respondent of its
offending domain name on several occasions beginning in early 2002. All of Respondent’s evidence presented was
initiated after notice of the dispute and as such cannot be used to support a
claim for
rights or legitimate interest.
Although the domain names were created
specifically to attract the US market and Respondent has done very little
marketing in Canada,
it has increased its market share dramatically. It is clear that its success comes from the
diversion of registrants from Complainant.
Respondent has not demonstrated any use
by third parties of Complainant’s trademark “israelforfree.com.” Complainant’s common law trademark,
ISRAELFORFREE.COM, has not been shown to be “publicly available.” Complainant, CIE, has acquired goodwill in
the domain name <israelforfree.com>, which Respondent has wrongfully and
manifestly
sought to erode.
By Respondent
The
fact that Respondent knew of Complainant's control over the Canadian market
does not suggest in any way that it was aware of Complainant's
use of
<israelforfree.com> prior to the registration of its domain name. Complainant's position in the Canadian
market had nothing to do with its use of <israelforfree.com>. Since until sometime between February and
May 2002, Complainant's use of israelforfree.com was marginal and
insignificant.
Eglash
has created his company (Upstart Activist) together with Eric Esses in October
2001. During the late Fall 2001, Esses
contacted a birthright Israel representative, prior to which Upstart Activist
had no business relations
with any of birthright Israel organizers.
In
December 2001, Upstart Activist decided to approach the organizers with the
proposition that went beyond activist training for
the sake of improving
Israel’s public relations on campus.
They did not send Complainant their proposal, and naturally, Complainant
did not respond it.
It
was then that Upstart Activist conceived of teaching participants how to
recruit more participants for the program.
Respondent responded to the proposal and its business relationship with
Upstart Activist evolved into a wider cooperation. As a result, Upstart Activist supplied Respondent recruitment
services exclusively and refrained from accepting offers from other
organizers—including Complainant—who wished to retain their recruitment
services.
Delivering
pro-Israel activist training seminars and teaching recruitment methods are two
different and separate activities.
Upstart Activist offered Complainant the former, but has never offered
the latter.
Eglash did not
attend any meeting with Minsky and Klemensberg in late February 2000, nor in
the spring of 2001. In fact, at those
times, Eglash was employed by Adero, a telecommunications company. No discussion regarding
<israelforfree.com> could have occurred in late February 2000, since the
domain name was registered
only six months later.
In the meeting
of December 7, 2001, the discussions were focused on providing activist
training services to students and on considering
the position of Eglash as a
"Shaliach" (emissary) and not on recruitment services. There was not any discussion whatsoever
regarding Complainant's web site.
Complainant did not follow-up with any additional correspondents
regarding the "Shaliach" position and only retained Upstart
Activist's Pro-Israel Israel Activist training services a year later in
December of 2002.
Neither Klemensberg
nor Minsky provided at any time <israelforfree.com> as part of their
“coordinates” in their correspondence
with Eglash and Esses. In fact, Klemensberg has consistently and
continuously provided <CanadaIsraelExperience.com> in his e-mails.
The first time
that Esses and Eglash have seen Klemenberg refer to <israelforfree.com>
in a correspondence is in his Statement
of to the National Arbitration Forum on
January 8, 2004! When observing the
details presented in Klemensberg’s statement, it is evident that the web site
<israelforfee.com> is written
in a different font than the rest of the
details, which may lead to believe that Klemenberg changed the name of the web
site, from
<CanadaIsraelExperience.com> to <israelforfree.com>, only
in his statement of January 8.
In the Spring
of 2003, Klemensberg proposed Eglash that Complainant retain Upstart Activist’s
recruitment services for the birthright
Israel program, and this was the first
time they discussed retaining Upstart Activist's recruitment services. Upstart
Activist rejected its offer due to its longstanding and exclusive relationship
with Respondent regarding recruitment services.
On December 1,
2003 Klemensberg contacted Esses asking him to retain its Israel Activist
Training and educational services but Upstart
Activist decided against this
proposal as well.
Eglash was
unaware of the <israelforfree.com> site in advance of purchasing the
domain name, and there is no reason why he should
have, since it is clear from
the email communications of Klemensberg that only
<canadaisraelexperience.com> was used in all
correspondence, that the
meetings were about the provision of activist training to Canadian students and
not about recruitment services
and that during December 2001, Complainant's use
of <israelforfree.com> was insignificant.
Lifshitz
and Minsky discussed joint programs as well as Lifshitz's contentions against
Complainant's underhanded attempts to undermine
Respondent's activities in the
Canadian Market. The subject of
Respondent's web site was not raised in these meetings.
Respondent
resents Minsky's portrayal of Respondent as a mere "for profit"
business. Minsky is well aware that Respondent
is focused on Educational
initiatives, on Zionism and on the love of Israel. He is also well aware of Respondent's contribution to bringing
close together Israel and Jewish communities, throughout the world.
Had
Respondent used its web site to channel potential participants from
Complainant's programs, then, surely, its numbers would have
shown a consistent
growth since the initial utilization of the web site. This is not the case as the statistics reflect a drop in the
number of participants once it began using the domain name and a slow
rise
after this, due to the increasing success of the Ambassador Program.
It
is well established that a generic top-level domain (gTLD) has no source
identification function and cannot serve any trademark
purpose. See,
e.g., Wollongong City Council v. Viva La Gong, D2003-0113 (WIPO April 2, 2003); Kirkbi
AG v. Dinoia, D2003-0038 (WIPO March 9, 2003); Excmo. Cabildo Insular de Tenerife and
Promocion Exterior de Tenerife, S.A. v. Jupiter Web Servs., Ltd., D2003-0525 (WIPO Sep. 9, 2003). Thus Complainant
cannot assert trademark rights over "israelforfree.com", in separate
from the second level domain "israelforfree".
DISCUSSION & FINDINGS
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint
on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of
law that it deems
applicable.”
Paragraph
4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that
a domain name should be cancelled or transferred:
(1) the
domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has
rights;
(2) Respondent
has no rights or legitimate interests in respect of the domain name; and
(3) the
domain name has been registered and is being used in bad faith.
The
Panel was informed that the Forum received the Response, which did not comply
with submission formatting guidelines, after the
January 2, 2004 deadline, as
the forum received two hard copies of the Response on January 4, 2004.
As decided in Telstra Corp.
v. Chu, D2000-0423 (WIPO June 21, 2000), any weight to be given to the
lateness of the Response is solely in the discretion of the Panel.
The Panel finds that Respondent
failed to timely submit a Response to the Forum. Therefore, stricto sensu,
Respondent did not comply with ICANN Rule ¶ 5, which reads as follows:
“The Response
(a) Within
twenty (20) days of the date of commencement of the administrative proceeding Respondent
shall submit a response to the Provider.
(b) The response shall be submitted in hard copy and (except to the
extent not available for annexes) in
electronic form …”
While the Panel is under no
obligation to accept the deficient Response, the Panel nevertheless accepts it,
considering the explanation
provided by Respondent that states that a hard copy of the response was delivered
on time to Complainant, through the services of DHL on Friday, January 2, 2004,
at 11:08. The Panel, proprio motu, visited the DHL website
at <dhl.com>, as suggested by
Respondent, and by pressing the Shipment Air Waybill number (4825635194) under
"DHL Fast Track,"
found that the
Response
had indeed been timely delivered to Complainant.
All in all, the Panel accepts
the Response as it has been sent, subject of course to its substantive
value. See Strum v.
Nordic Net Exch. AB, FA 102843 (Nat. Arb. Forum Feb. 21,
2002), wherein it was ruled that declaring a Response inadmissible because of
formal deficiencies would be an extreme
remedy not consistent with the basic
principles of due process.
Respondent offers the equitable defense
of laches. Panels have held that
defenses in equity are outside the scope of the Policy. On this matter, the Panel adopts the
findings of Square Peg Interactive, Inc.
v. Naim Interactive, Inc. FA 209572 (Nat. Arb. Forum Dec. 29, 2003),
wherein it was stated that “laches by itself is not a defense to a complaint
brought under
the Policy.” See also E.W. Scripps Co. v. Sinologic Indus., D2003-0447 (WIPO July 2,
2003), wherein it was stated that “if the requirements of a valid complaint
under the policy are established,
the Policy does not provide any defense of
laches.” The Panel has therefore
elected to ignore allegations concerning this aspect and analyze the case in
the scope set out by the Policy.
In this
proceeding, Respondent has raised the crucial question as to whether
Complainant has rights in the alleged mark ISRAELFORFREE.COM
in order to meet
the requirements set forth in Policy ¶ 4(a)(i). Respondent has put forward several arguments revolving around this
very issue and for that reason, the Panel has reviewed it exhaustively,
as
failure to meet this burden leads automatically to a rejection of the
Complaint.
Complainant relies on its common law
rights in ISRAELFORFRE.COM as a mark that predates Respondent’s domain name
registration. Complainant states that
it has established common law rights in the ISRAELFORFREE.COM mark through its
possession of the <israelforfree.com>
domain name since August 8, 2000, the
date of registration. Complainant
further affirms that it is the largest trip organizer in Canada and that as
such, the public has come to associate the
ISRAELFORFREE.COM mark with
Complainant. See British Broad. Corp.
v. Renteria, D2000-0050 (WIPO Mar. 23, 2000), wherein it was noted that the
Policy “does not distinguish between registered and unregistered
trademarks and
service marks in the context of abusive registration of domain names” and
applied the Policy to “unregistered trademarks
and service marks.”
On the other hand, Respondent states that
there are many other websites offering the birthright Israel program that use
the terms
“Israel for free” and that therefore, Complainant cannot contend to
have exclusive rights in that term. The
Panel however has noted that none of these websites use it in the same manner,
i.e. as a slogan or motto, but rather as part of
a full text, i.e. amid a
sentence, rendering Respondent’s contention irrelevant.
Respondent also argues that the term
“Israel for free” is generic and/or descriptive, and consequently Complainant
does not have rights
in the mark since it has not provided sufficient evidence
in order to establish secondary meaning. See PetWarehouse v. Pets.Com, Inc.,
D2000-0105 (WIPO Apr. 13, 2000), wherein it was found that "pet" and
"warehouse" are generic terms and therefore
not subject to trademark
protection. See also Rollerblade, Inc. v.
CBNO and Redican, D2000-0427 (WIPO Aug. 24, 2000), wherein it was found
that “genericness, if established, will defeat a claim of trademark rights,
even in a mark which is the subject of an incontestable registration.”
The Panel finds that all Complainant needs to prove to meet
its burden under Policy ¶ 4(a)(i) is that it has a bona fide basis to make
its complaint whether its mark is registered or not. See Smart Design LLC v.
Hughes, D2000-0993 (WIPO Oct. 18, 2000), wherein it was held that ICANN
Policy ¶ 4(a)(i) does not require Complainant to demonstrate ‘exclusive
rights,’ but only that Complainant has a bona
fide basis for making the Complaint in the first place. See also
BroadcastAmerica.com, Inc. v. Quo, DTV2000-0001 (WIPO Oct. 4, 2000),
wherein it was found that Complainant has common law rights in
BROADCASTAMERICA.COM, given extensive
use of that mark to identify Complainant
as the source of broadcast services over the Internet, and evidence that there
is wide recognition
with the BROADCASTAMERICA.COM mark among Internet users as
to the source of broadcast services.
Furthermore,
the quality of the evidence required to establish any rights is not as stringent
as one might expect in a judicial proceeding,
since there are no formal
requirements as to the presentation of the evidence; this is particularly so as
ICANN proceedings are multi-jurisdictional.
In fact, the Panel refers to the findings in CTV Television Inc. v. ICANADA CO. D2000-1407 (WIPO Dec. 13, 2000),
wherein the following was stated:
[W]hile
the appropriate rules of evidence are clearly not etched in stone for these
types of proceedings and will be more relaxed
than those of most courts given
the summary nature of the proceedings and the universal desire to keep costs
down, the Parties must
still ensure that the evidence presented meets
appropriate standards in terms of admissibility, relevance, materiality,
weight, and
last, but certainly not least, the "best evidence"
rule. At least one panel has commented
on how affidavit evidence will be preferred to unsworn evidence. Other panels have commented on the need to
put forward the best evidence at the outset and, in effect, to "get it
right the first
time". Minimum
standards of proof are needed, even if hearsay evidence will be admissible, and
unnecessary formalities should be avoided
in this type of summary
administrative proceeding. The
integrity of the UDRP process, which is intended to be highly transparent,
along with its public credibility and acceptance, require
attention to these
principles.
It is the Panel’s opinion that
the unregistered mark ISRAELFORFREE.COM, though not generic in and of itself,
is nonetheless suggestive,
as it is associated with the concept of offering
free trips to Israel. Consequently, it benefits from a limited ambit of
protection.
The
Panel has attentively considered the case law pertaining to the burden that
lays upon Complainant and specifically its decision
in Coupons Inc. v. motherboards.com, FA 192249 (Nat. Arb. Forum Nov.
4, 2003), wherein Complainant, a grocery coupons service provider, wished to
establish rights in
the marks COUPONS, INC and COUPONS.COM. In that decision, it was held that given the
descriptive nature of the marks in relation with the wares, a very high burden
laid on
the shoulders of Complainant in order to establish secondary meaning so
as to rely on proprietary rights. The
case at hand differs from that case in many ways: (1) the mark at stake is used
in relation with services rather than with wares;
and (2) it not descriptive
but solely suggestive and, consequently, there is no requirement of
demonstrating any secondary meaning
in the mark, but sufficient extensive and
continuous use, so as to have become
distinctive of Complainant. See Cepheid
Corporation v. Healthexpert LLC and John Johnson, D2001-1272 (WIPO Dec. 10,
2001), wherein it was held that “a suggestive mark is inherently distinctive
and is entitled to be protected
without proof of secondary meaning.”
Attorneys
for Complainant may have been bold in choosing to present the evidence the way
they have as this has led the Panel to entertain,
during one stage of its
advisement, some doubts as to the outcome of its analysis. Ultimately though, taking into consideration
the overall circumstances of Complainant’s evidence as well as that of
Respondent, the
Panel has come to the conclusion that Complainant has, in the
final analysis, satisfactorily established rights in the mark. Indeed, even merely being a domain name, in
light of the evidence submitted, namely the declarations of Complainant’s
representatives
and marketing and advertising samples, as well as the fact that
more than 5000 participants have used the services of Complainant,
the Panel
finds that Complainant has established proprietary rights. One of the examples of such evidence
ironically stems from Respondent’s strategy: the fact that it uses a hyperlink
on its main website
at <israel4u.com> aimed precisely at Canadian
participants and that this link led to the domain name at stake is pellucid
evidence
that Complainant’s mark is not descriptive.
While the domain names are not identical
to Complainant’s ISRAELFORFREE.COM mark, the Panel finds that they are
confusingly similar. The test of
confusion in comparing the words or marks at issue is from the standpoint of
the average unwary consumer, looking at the
marks in their totality, having an
imperfect recollection of the former.
The only difference is the use of the
numeral “4” to siginify the word “for” and the different the top level
domains. The Panel relies on the
findings set out in PrintForBusiness
B.V v. LBS Horticulture, D2001-1182 (WIPO December 21, 2001), where the domain
name “print4business.com” was found to be confusingly similar to
“printforbusiness.com.” See also eSales & Marketing, Inc. v. Traino,
FA 156315 (Nat. Arb. Forum, June 19, 2003), where the domain name
“candy2u.com” was found to be confusingly similar to “candy2you.com.” See, e.g., America
Online, Inc. v. iDomainNames.com,
FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that Respondent’s domain name
<go2AOL.com> was confusingly similar to Complainant’s
AOL mark); Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
mark because the generic top-level domain
(gTLD) “.com” after the name
POMELLATO is not relevant).
The Panel therefore finds that
Complainant has met its burden pursuant to Policy ¶ 4(a)(i).
Paragraph
4(a)(ii) of the Policy inquires as to whether or not Respondent has any rights
or legitimate interests vested in the domain
dame. Paragraph 4(c) provides examples of circumstances that can
demonstrate the existence of such rights or legitimate interests: (i) use
of,
or preparations to use, the domain name in connection with a bona fide offering of goods or services;
(ii) the fact that Respondent has been commonly known by the domain name; and
(iii) legitimate non‑commercial
or fair use of the domain name.
The
Panel agrees with Complainant’s contention that Respondent has no rights or
legitimate interests in the domain names.
First,
there is no relationship between the parties giving rise to any license,
permission, or other right by which Respondent could
own or use any domain
names incorporating Complainant’s mark.
Second, the Panel agrees with Complainant
in that there is no evidence that Respondent has been commonly known by the
domain name. In fact, Respondent’s use
of the domain name on its website is limited to advertising and marketing
Birthright travel packages in
Canada.
Because of its limited use of the disputed domain name, the Panel is of
the opinion that Respondent is not otherwise known as the
disputed domain name
pursuant to Policy ¶ 4(c)(ii). See Great S. Wood Pres., Inc. v. TFA
Assocs., FA 95169 (Nat. Arb.
Forum Aug. 5, 2000), wherein it was found that Respondent was not commonly
known by the domain name <greatsouthernwood.com>
where Respondent linked
the domain name to <bestoftheweb.com>.
Third, the Panel finds that Respondent
uses the similar domain name to compete in business, specifically to compete in
Birthright
travel packages in Canada.
Using Complainant’s mark in a domain name to compete in a similar area
of business is neither a bona fide
offering of goods or services nor a legitimate non-commercial or fair use of
the domain name pursuant to Policy ¶¶ 4(c)(i) and (iii). The Panel relies on the findings in Computerized Sec. Sys., Inc v. Hu, FA
157321 (Nat. Arb. Forum June 23, 2003), wherein it was held that Respondent’s
appropriation of Complainant’s mark to market products
that compete with
Complainant’s goods does not constitute a bona
fide offering of goods and services.
See also Ameritrade Holdings Corp. v. Polanski,
FA 102715 (Nat. Arb. Forum Jan. 11, 2002) wherein it was found that
Respondent’s use of the disputed domain name to redirect Internet
users to a
financial services website, which competed with Complainant, was not a bona fide offering of goods or services.
The Panel thus finds that Complainant has
met its burden under Policy ¶ 4(a)(ii).
It is often quite
difficult to actually show bad faith with concrete evidence. While bad faith cannot be presumed, once
Complainant has presented some evidence pointing in that direction, it is then
incumbent
upon Respondent to either respond or explain why its conduct should
not be construed as bad faith.
The
Panel’s understanding of the Policy is that although the initial burden to
prove Respondent’s bad faith in the registration or
the use of the disputed
domain name relies squarely on the shoulders of Complainant and once it has
done so, as it did in the present
case, it is then incumbent upon Respondent to
either justify or explain its business conduct (if not to demonstrate the
contrary). Failure to do so will, in some circumstances, enable the Panel to draw
negative inferences.
In the
case at hand, Complainant and Respondent are competitors in the travel
business, marketing similar trips to Israel to the same
customer base. Respondent, by creating a hyperlink that
aims specifically at Canadian participants, uses the disputed domain name in
Canada, the
territory of Complainant. The
Panel finds it hard to believe that one would register a confusingly similar
domain name to reach the market of one of its competitors
with pristine
intentions.
The
Panel finds that Respondent has registered the domain name primarily for the
purpose of disrupting the business of a competitor,
constituting bad faith
registration and use pursuant to Policy ¶ 4(b)(iii). The Panel adopts the findings of Surface Protection Indus., Inc. v. Webposters, D2000-1613 (WIPO
Feb. 5, 2001), wherein it was found that, given the competitive relationship
between Complainant and Respondent,
Respondent likely registered the contested
domain name with the intent to disrupt Complainant's business and create user
confusion. See also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb.
Forum July 18, 2000) wherein it was found that Respondent acted in bad faith by
attracting Internet users to
a website that competes with Complainant’s
business.
Furthermore,
the Panel finds that Respondent has registered and used similar domain name to
create a likelihood of confusion between
its and Respondent’s services.
The
Panel also finds that Respondent’s registration and use of the disputed domain
name is for commercial gain, constituting bad faith
registration and use
pursuant to Policy ¶ 4(b)(iv). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13,
2000), wherein bad faith was found where Respondent attracted users to a
website sponsored by Respondent
and created confusion with Complainant’s mark
as to the source, sponsorship, or affiliation of that website). See
also Luck's Music Library v.
Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000), wherein it
was found that Respondent had engaged in bad faith use and registration by
linking the domain name to a website that offers services similar to
Complainant’s services, intentionally attempting to attract,
for commercial
gain, Internet users to its website by creating a likelihood of confusion with
Complainant’s marks).
Respondent
has alleged that Complainant knew about its use. In the delay between the registration of the disputed domain name
and the start of these proceedings, Respondent committed to building
good will
in the domain name by investing in it and advertising with it. See Mule Lighting, Inc. v. CPA, FA 95558
(Nat. Arb. Forum Oct. 17, 2000), wherein no bad faith was found where
Respondent has an active website that has been in
use for two years and where
there was no intent to cause confusion with Complainant’s website and business. See,
for example, DJF Assocs., Inc. v.
AIB Communications, FA 95612 (Nat. Arb. Forum Nov. 1, 2000), wherein it was
found that Respondent has shown that it has a legitimate interest in the
domain
name because Respondent selected the name in good faith for its website, and
was offering services under the domain name prior
to the initiation of the
dispute; New Piper Aircraft, Inc. v.
Piper.com, FA 94367 (Nat. Arb. Forum May 2, 2000), wherein it was stated
that Complainant’s failure to initiate a suit in over two years indicated
that
Complainant did not believe that Respondent intended to attract customers
through confusion. Although the Panel
agrees that this is an important factor to consider, it cannot, in and of
itself establish a lack of bad faith
on behalf of Respondent. Panel has made the finding that it is
inconceivable that Respondent was not aware of Complainant’s web site located
at <israelforfree.com>
and given all the surrounding circumstances
regarding the peculiar relationship between the parties, the Panel finds that
the delay
in instituting ICANN proceedings cannot preclude a finding of bad
faith.
The
Panel is therefore of the opinion that Complainant has met his burden under
Policy ¶ 4(a)(iii).
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <israel4free.com>, <israel4free.net>, and <israel4free.org> domain names be
TRANSFERRED from Respondent to
Complainant.
Jacques A.
Léger, Q.C., Panelist
Dated: January 30, 2004
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