WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Tnuva Central Cooperative for the Marketing of Agricultural produce in Israel Ltd. v. Mr. Avi Behagen
Case No. D2003-0638
1. The Parties
The Complainant is Tnuva, Central Cooperative for the Marketing of Agricultural produce in Israel Ltd., Tel Aviv, Israel, represented by Adv. Roy Kornick of Gilat and Co. Law Offices, Tel-Aviv, Israel.
The Respondent is Mr. Avi Behagen, Tel -Aviv, Israel.
2. The Domain Name and Registrar
The disputed domain name <tnuva.com> is registered with Network Solutions, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on August 14, 2003. On August 15, 2003, the Center transmitted by email to the Registrar, Network Solutions, Inc. a request for registrar verification in connection with the domain name at issue. On August 20, 2003, Network Solutions, Inc. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), 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 August 21, 2003. In accordance with the Rules, -Paragraph 5(a), the due date for Response was September 10, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondentís default on September 16, 2003.
On September 11, 2003, the Complainant filed by email an amendment to the Complaint regarding the identity of the proposed Panelists. On November 10, 2003, the Center received missing copies of the Complaint further to the Centerís notice to Complainant that the number of copies filed was inadequate.
On November 11, 2003, the Center appointed Neil J. Wilkof as presiding panelist, and Mayer Gabay and Ron Klagsbald as co-panelists in this matter. The Panel finds that it was properly constituted. Each member of 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.
4. Factual Background
The following facts are noted:
The domain name was registered on December 7, 1997.
The Complainant has registered 27 trademarks and service marks in Israel consisting solely of, or including the word "tnuva", in English and/or Hebrew. One of these registrations (no. 27029), for the word "tnuva" in Hebrew, was registered prior to the date of the registration of the domain name at issue (December 7, 1997), having been registered on July 3, 1967.
Ten registrations that include the word "tnuva", in either English transliteration or Hebrew, were registered prior to the registration of the domain name at issue. The numbers and dates of these Israeli registrations are as follows:
No. 19491 February 27, 1961
No. 40348 February 11, 1975
No. 56789 July 20, 1983
No. 58871 May 31, 1984
No. 75346 February 13, 1990
No. 96364 December 30, 1994
No. 108395 November 1, 1996
No. 110943 March 10, 1997
No. 110944 March 10, 1997
No. 110946 March 10, 1997
The remaining eight registrations for the word "tnuva" alone, either in Hebrew or English transliteration, were made after the date of the domain name at issue.
Based on copies of the registration extracts attached to the Complaint, four of the registrations are for the word "tnuva" in Hebrew (in classes 29, 30, 32 and 42), while the remaining five of the registrations are for the word in English transliteration (in classes 29, 30, 32, 35 and 42).
The Complainant has also registered the word "tnuva" in English, either alone or as part of a composite mark, in the European Community (September 5, 2001), USA (June 3, 2003), Gaza (February 15, 2001) and Australia (March 20, 1998). The Complainant has registered the domain name < tnuva.co.il>.
The Panel notes that the Hebrew word "tnuva" can be translated as "produce, crop, yield" or "output."
5. Partiesí Contentions
In the absence of a response by the Respondent, the Panel will decide based upon the Complaint, in accordance with the test articulated by the Panel in the decision of Ed Servicio S.A. v. Logic Promo, WIPO Case No. D2003-0132 (May 4, 2003). In that decision, the Panel stated as follows (-Paragraph 7.1, page 5 of the decision):
" ...[F]actual assertions made by the Complainant which are supported by evidence may be used against the Respondent, but a Panel ought not draw any inferences from a default other than those which have been established or can fairly be inferred from the facts presented to the Panel by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence."
Based on the Complainantís uncontested assertions, the following facts are noted:
The Complainant has been engaged since its establishment in 1929, in the manufacturing, marketing and sale of agricultural products and produce in Israel, including milk, eggs, fruits, vegetables, poultry and fish. The Complainant employs more than 5,000 employees and it claims aggregate sales for 2002 of US$1.4 billion dollars.
The Complainant has invested substantial sums and has engaged in substantial promotion and advertising of the mark TNUVA. The Complainant claims that the mark TNUVA enjoys the status of a well-known and famous mark in Israel.
Since the date of registration of the domain name, December 7, 1997, the Respondent has made no use of the domain name. He has not used the domain name to offer goods or services at the web site located at the domain name address. When the domain name is entered into the address browser of an Internet browser, an error message is displayed indicating that no web site is available at the address. There is no indication that the web site is under construction or that there have been any other demonstrable steps taken by the Respondent to make use of the domain name.
On March 3, 2003, the Complainant sent a letter to the Respondent, requesting that the Respondent assign its right in the domain name registration to the Complainant. No response was received by the Complainant. The Complainant sent a further letter to the Respondent on June 26, 2003, in which it demanded that the Respondent cancel its registration of the domain name and assign its rights to the Complainant. No response was received by the Complainant to this letter as well.
The Respondent did not reply to the Complainantís contentions. Therefore, as above noted, the Panel will decide based upon the Complaint.
6. Discussion and Findings
A. Respondentís Domain Name is Identical or Confusingly Similar to Complainantís Mark (Policy, Paragraph 4(a)(i))
The domain name that is the subject of the Complaint is identical to nine registrations in Israel in the name of the Complainant for the trademark and service mark TNUVA. However, only one of these registrations predates the registration of the domain name at issue, for the word "tnuva" in Hebrew. As well, the domain name at issue is a material part of 16 registrations in Israel in the name of the Complaint. Ten of these registrations predate the domain name at issue.
In considering the issue of identity or confusing similarity, the Panel need only engage in "a comparison of the complainantís mark and the respondentís domain name in dispute." Having regard to the foregoing, the Panel is of the view that the domain name at issue is identical or confusingly similar to the registrations for the mark TNUVA.
The Panel recognizes that only one of the Complainantís registrations for the word "tnuva" alone predates the registration date of the domain name, and that this registration is for the word in Hebrew. If this registration had been the only registration relied upon by the Complainant, the Panel might have reached a different conclusion regarding the issue of identity and confusing similarity. However, having regard to the registrations in which the word "tnuva" is a material component thereof, as well as the claim that the word "tnuva" in both Hebrew and English is a famous mark of long-standing in Israel, a claim that has not been refuted, the balance tips in favor of the Complainant.
B. Respondent has no Rights or Legitimate Interests in respect of the Domain Name (Policy, Paragraph 4(a)(ii))
Paragraph 4 (c) of the Policy sets out circumstances in which the Respondent can evidence that it has a claim of right or legitimate interest in the domain name. None of these circumstances applies to the Respondent.
(a) Before receipt of notice of the dispute, the Respondent made no use of the domain name in connection with a bona fide offering of goods or services. In fact, the Respondent has made no use of the domain name at all.
(b) The Respondent has not been commonly known by the domain name, irrespective of whether it has acquired trademark or service mark rights.
(c) The Respondent has made no legitimate, noncommercial or fair use of the domain name, without the intent for commercial gain, or to misleadingly divert customers or to tarnish the mark at issue.
Based on the foregoing, the Respondent has no right or legitimate interest in the Complaintís mark.
C. Respondent has Registered and Used the Domain Name in Bad Faith
(Policy, Paragraph 4(a)(iii))
Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances that show bad faith on part the part of the Respondent. In the instant Complaint, the Respondent appears to have made no use of the domain name since its registration in 1997. Further, the Respondent does not appear to have made any attempt to rent or sell the domain name registration to the Complainant or to any of its competitors. Nor can the registration of the domain name be said to be disrupting the business of the Complainant. Accordingly, the Respondent can be considered as a passive holder of the domain name registration.
Nevertheless, under appropriate circumstances, such passive holding of a domain name registration can be said to constitute bad faith by the Respondent. This result was well stated by the Panel in the case of Telstra Corporation Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 18, 2000) as follows:
"Paragraph 4(b) of the Uniform Policy identifies, without limitation, circumstances that "shall be evidence of the registration and use of a domain name in bad faith, for the purposes of paragraph 4(a)(iii). Only one of these circumstances (paragraph 4(b)(iv)), by necessity, involves a positive action post registration undertaking in relation to the domain name (using the name to attract custom to a web site or other on-line location). The other three circumstances contemplate either a positive action or inaction in relation to the domain name. That is to say, the circumstances identified in paragraphs 4(b)(i), (ii) and (iii) can be found in a situation involving a passive holding of a domain name registration."
In our situation, the mark "TNUVA" has been registered in various forms in Israel since the 1960ís and it is well known to Israeli consumers. The Respondent is located in Israel and it is presumed that he is familiar with the use of the mark. All of this suggests that the Respondentís selection of the mark as his domain name was made in bad faith. The Respondent has given no explanation to counter this conclusion.
Notwithstanding the foregoing, the Panel expresses surprise that while the domain name was registered in 1997, the Complainant does not appear to have taken any steps to challenge the registration of the domain name <tnuva.com> until 2003. Such inaction over such a sustained period points to a certain lack of vigilance in protecting its trademark rights in a well-known mark. Indeed, had the Respondent provided an explanation for his actions with respect to the registration of the domain name and its aftermath, a different result might have been appropriate. However, under the fact and circumstances before the Panel, the inaction by the Complainant does not change the Panelís conclusion that the domain name was registered by the Respondent in bad faith.
In light of the Panelís findings as set forth hereinabove, the Panel finds that the Complainant has proven the cumulative elements which, according to Paragraph 4(a) of the Policy, justify an order for the transfer of the domain names as prescribed in Paragraph 4(i) of the Policy: (i) the domain name <tnuva.com> is identical and confusingly similar to the Mark TNUVA in which Complainant has legitimate rights; (ii) Respondent, who is the current registrant of the domain name, has no right or legitimate interest in or with respect to this domain name; and (iii) Respondent has registered and used the domain name in bad faith.
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 be transferred to the Complainant.
Neil, J. Wilkof
Dated: November 25, 2003