WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Israel Bar Association v. Izhak Sabag
Case No. D2016-1788
1. The Parties
The Complainant is Israel Bar Association of Jerusalem, Israel, represented by Soroker Agmon Nordman, Advocates & Patent Attorneys, Israel.
The Respondent is Izhak Sabag of Rishon LeZion, Israel.
2. The Domain Names and Registrar
The disputed domain names <israel-bar.com> and <israel-bar-lawyers.com> (the "Domain Names") are registered with GoDaddy.com, LLC (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on September 1, 2016. On September 2, 2016, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On the same date, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 6, 2016. In accordance with the Rules, paragraph 5, the due date for Response was September 26, 2016. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 27, 2016.
The Center appointed Ellen B Shankman as the sole panelist in this matter on October 5, 2016. 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.
4. Factual Background
The Complainant is the Israel Bar Association, the official body for attorneys licensed to practice in Israel. The Complainant provided evidence of multiple trademark registrations for the mark THE ISRAEL BAR, for both goods and services, in both wordmark and logo forms, inter alia, Israel Trademark No. 216367 (registered on December 6, 2006) for a wide variety of services including "advertising services, legal research and law research; compilation of information into computer database; managing computer databases". The Complainant also operates its official website through its domain names <israelbar.org.il>, <israelbar.co.il> and <israelbar.com>.
The date of the Domain Name <israel-bar.com> registration was confirmed by the Registrar to be March 1, 2016. The date of the Domain Name <israel-bar-lawyers.com> registration was confirmed by the Registrar to be July 17, 2016.
The Panel also conducted an independent search to determine that the Domain Name <israel-bar.com> currently resolves to a page with a "404" error message, and the website appears to be inactive. The Panel also conducted an independent search to determine that the second Domain Name <israel-bar-lawyers.com> currently resolves to an active website that headlines "attorneys.org.il". The Panel further observes that the English page of that website has in large lettering "Home of the Israel Bar Association" and has click-through advertising.1
Because there is no formal response, the facts regarding the use and fame of the Complainant's mark, the legal proceedings in Israel courts between the parties, as well as the non-response from the Respondent to the cease-and-desist letter, are taken from the Complaint and are generally accepted as true in the circumstances of this case.
5. Parties' Contentions
The Complaint alleges that the Complainant, founded in 1961, is an independent Israeli statutory entity, established under the Bar Association Act 5721-1961, in order to incorporate the lawyers in Israel and to assure the standard and integrity of the legal profession. The Complainant has been using the mark THE ISRAEL BAR since its establishment in the year 1961. In view of the legal status of THE ISRAEL BAR and due to extensive efforts and activities, the Complainant name and trademark THE ISRAEL BAR in Hebrew and in English, has become well known to the general public in Israel, the jurists' community and legal practitioners, which number more than 70,000 members.
The functions of the Complainant are stipulated by and under Israeli law and include, inter alia: registration, supervision and holding examinations for legal interns; licensing new lawyers and issuing licenses to practice law in Israel; taking disciplinary measures against lawyers and legal interns, etc. By law, the Complainant is the only entity in Israel entitled to exercise these functions and is the professional association of all registered advocates (lawyers) and legal interns in Israel. The Complainant is the body governing the licensing, registration and discipline of the legal profession and operates its functions under the well-known THE ISRAEL BAR trademark.
The Complaint further alleges that the Complainant advertises and markets its products and services under its trademarks, through various channels, including through magazines, catalogs, books, billboards, email, the Internet and more. The Complainant has also developed a significant Internet presence. The Complainant holds among others, the domain names <israelbar.org.il>, <israelbar.co.il> under which it operates its official websites over almost two decades.
The Complainant also alleges that, in addition to the current dispute, it has had previous experience and concern with the Respondent regarding deceptive behaviour for its website "www.attorneys.org.il" and the Respondent's impersonation of the Complainant. The Complainant claims that the Respondent, Izhak Sabag, engages in a systematic registration and use of the Domain Names operating websites which are understood to be connected and/or associated and/or affiliated with the Complainant. In a related matter of a domain name registered by the Respondent in the ".il" ccTLD, <attorney.org.il>, two legal proceedings were filed against the Respondent concerning his unjust operation. Although the first proceeding was ended due technical difficulties, the second recent proceeding ended in November 2015, with a judgement against the Respondent, compelling the Respondent to pay NIS 2.6 million (approx. USD 680,000) for his unjust operating, and as far as the Complainant is aware the Respondent is avoiding the payment. The Complainant also attaches copies of pleadings and decision in legal proceedings in Hebrew between the parties, which includes, inter alia, a verdict against the Respondent and an award of costs.
The Complainant also argues that all registered advocates as well as legal interns in Israel are under a legal obligation to comply with the professional ethics rules under the Bar Association Rules (Professional Ethics),5746-1986.The Respondent's database and information was not created according to these rules and provides information that lawyers are prohibited from including in advertisements such as pictures of a certain lawyer. The Complainant provides copies of complaints received from attorneys regarding false and deceptive and misleading advertising and information about attorneys in Israel.
The Complainant sent the Respondent a cease-and-desist letter on July 24, 2016 complaining of the fraudulent and infringing actions, to which the Respondent did not reply. According to the Complainant, the Respondent then blocked access to the website under the Domain Name <israel-bar.com> and immediately transferred his operations to the Domain Name <israel-bar-lawyers.com>, which clearly continues to infringe the Complainant's trademark.
To summarize the Complaint, the Complainant is the owner of numerous registrations for the word mark THE ISRAEL BAR and the word/design mark THE ISRAEL BAR, in respect of goods and services related to the legal profession. The Domain Names are confusingly similar to the trademarks owned by the Complainant. The addition of the "hyphens" or of the descriptive word "lawyers" does not prevent a finding of confusing similarity with regard to both Domain Names. Therefore, the Domain Names could be considered virtually identical and/or confusingly similar to the Complainant's trademark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names and has not been authorized to use the combination of the terms "Israel bar". The Respondent has used the Domain Names in an attempt to attract, for commercial gain, Internet users to the Respondent's websites by creating a likelihood of confusion with the Complainant's mark as to source, sponsorship, affiliation or endorsement. The Respondent, having registered the Domain Names after the decision was issued regarding <attorneys.co.il>, used the Domain Names to attempt to impersonate the Complainant, to defame and/or defraud individuals and to trade on the Complainant's goodwill and reputation.
The Domain Names were registered and are being used in bad faith. Thus, the Respondent's registration and use of the Domain Names constitutes bad faith registration and use under the Policy. The Complainant requests transfer of the Domain Names.
The Respondent did not reply to the Complainant's contentions.
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) That the Domain Names have been registered and used in bad faith.
Since the Respondent did not respond to the Complaint, the facts regarding the use and fame of the Complainant's mark, as well as other statements regarding correspondence between the Parties, including the non-response from the Respondent to the Complainant's cease-and-desist letter, and with regard to the legal proceedings between the parties are taken from the Complaint and are generally accepted as true in the circumstances of this case.
6.1. Language of Proceedings
According to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement unless the panel determines otherwise. Since the language of the Domain Name Registration Agreement is in English (and since the underlying website is also in English) the Panel finds that the language of the proceedings is appropriately in English. Notwithstanding, the Panel also reviewed all the materials provided in both Hebrew and English.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has established that it has registered trademark rights for and a well established reputation in THE ISRAEL BAR trademark in relation to goods and services associated with the legal profession. (These rights also precede the date of registration of the Domain Names.)
The Panel notes that the Complainant registered its marks both with and without disclaimers of the individual terms, although the combination of the marks are protected. Further the Panel notes that under the later trademark registrations the marks are registered with the condition that:
The trademark shall be valid as long as the Trademark owner shall remain the sole corporation in Israel authorized by law to authorize and supervise lawyers."
The Panel takes this as confirmation that the Complainant is the sole body authorized by law to use this mark for such activities. There is nothing in the record to refute the validity of this statement/status.
In addition, if there is any doubt about the function of the conditions/disclaimers in the trademark registrations, the Panel also finds that the Complainant has satisfactory proven that it has sufficient unregistered trademark rights under the first element of the UDRP. See paragraph 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").
The Panel finds that the Domain Names are confusingly similar to the Complainant's trademark. Further, the Panel finds that the mere addition of the descriptive term "lawyers" to the Domain Name or hyphens inserted into both Domain Names does not change the overall impression of the designations as being connected to the Complainant's mark and underscores an attempted connection by the Respondent in the Domain Names to the trademark of the Complainant. It does not prevent a finding of confusing similarity between the Domain Name and the Complainant's trademark – and if anything, enhances it. See Pfizer Inc. v. Asia Ventures, Inc., WIPO Case No. D2005-0256. See also Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd., WIPO Case No. D2001-0110, stating, "The incorporation of a Complainant's well-known trademark in the registered domain name is considered sufficient to find the domain name confusingly similar to the Complainant's trademark".
See also paragraph 1.9 of the WIPO Overview 2.0. "The addition of merely generic, descriptive, or geographical wording to a trademark in a domain name would normally be insufficient in itself to avoid a finding of confusing similarity under the first element of the UDRP. Panels have usually found the incorporated trademark to constitute the dominant or principal component of the domain name."
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Names are identical or confusingly similar to the Complainant's registered trademark THE ISRAEL BAR, under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) of the Policy shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Names and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its mark. The Panel finds that no license or authorization of any other kind has been given by the Complainant to the Respondent, to use the trademark THE ISRAEL BAR, and agrees with the finding in case Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055 in which the panel stated that: "in the absence of any license or permission from the Complainant to use any of its trademarks or to apply for or use any domain name incorporating those trademarks, it is clear that no actual or contemplated bona fide or legitimate use of the domain name could be claimed by Respondent."
Further, the evidence on record shows that the Respondent appears to have already had legal altercations with the Complainant about improper use of its marks and activities and impersonation facilitated by such use. The Panel finds compelling factual and circumstantial evidence in the record that the Respondent knew of the Complainant's mark when it registered the Domain Names. The Panel finds that the Respondent's use of the Domain Names does not give rise to any rights or legitimate interests in the Domain Name under the Policy.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Names.
Therefore, the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Name, under paragraph 4(a)(ii) of the Policy
C. Registered and Used in Bad Faith
The Panel also finds compelling factual and circumstantial evidence in the record that the Respondent knew of the Complainant's mark when it registered the Domain Names, and the registration of these Domain Names was done when the Respondent's earlier efforts with another similar domain name failed. Further, the Panel finds that the Respondent is either deliberately impersonating the Complainant, or at the very least is encouraging an assumption of an association between the Respondent and the Complainant.
The addition of "lawyers" adds to the likelihood of confusion and thus supports a finding of bad faith. The Panel finds that the addition of the descriptive term "lawyers" to the Domain Name or hyphens inserted into both Domain Names does not change the overall impression of the designations as being connected to the Complainant's mark and underscores an attempted connection by the Respondent in the Domain Names to the trademark of the Complainant. See Pfizer Inc. v. Asia Ventures, Inc., supra. Finally, the website in relation with the Domain Name <israel-bar-lawyers.com> makes a clear reference to the Complainant by including the words "Home of the Israel Bar Association" on the main page, further adding to likely confusion engendered by attempted impersonation.
The Panel agrees with the Complainant's claims and finds that the Respondent has registered the Domain Names with full knowledge of the Complainant's trademark and that the continued holding of the Domain Names is in bad faith. This is consistent with the holding in Pfizer Inc. v. Legal Dept, Barry McMahon and Pfizer ltd, Sys Admin, WIPO Case No. D2013-2046. It has been held in previous UDRP decisions that knowledge of a corresponding mark at the time of the domain name's registration can suggest bad faith. See LEGO Juris A/S v. Reiner Stotte, WIPO Case No. D2010-0494; Caixa D'Estalvis i Pensions de Barcelona ("La Caixa") v. Eric Adam, WIPO Case No. D2006-0464; Bartercard Ltd & Bartercard International Pty Ltd. v. Ashton-Hall Computer Services., WIPO Case No. D2000-0177.
Even where one of the two Domain Names resolves to an "error" page, the Panel does not believe that it changes the finding. As stated in paragraph 3.2 of the WIPO Overview 2.0, regarding the question of whether there can be use in bad faith when the domain name is not actively used and there is passive holding, the consensus view is that it can: "With comparative reference to the circumstances set out in paragraph 4(b) of the UDRP deemed to establish bad faith registration and use, panels have found that the apparent lack of so-called active use (e.g., to resolve to a website) of the domain name without any active attempt to sell or to contact the trademark holder (passive holding), does not as such prevent a finding of bad faith. […] Examples of what may be cumulative circumstances found to be indicative of bad faith include the complainant having a well-known trademark, [and] no response to the complaint having been filed […]. Some panels have also found that the concept of passive holding may apply even in the event of sporadic use, or of the mere 'parking' by a third party of a domain name (irrespective of whether the latter should also result in the generation of incidental revenue from advertising referrals)." See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 and Jupiters Limited v. Aaron Hall, WIPO Case No. D2000-0574.
Previous UDRP panels have already considered that passive holding of a disputed domain name can satisfy the requirements of paragraph 4(a)(iii) of the Policy, and that in such cases the panel must give close attention to all the circumstances of the respondent's behaviour. See Telstra Corporation Limited v. Nuclear Marshmallows, supra. Other UDRP panels have held that passive holding can be sufficient to constitute bad faith. See Redcats S.A. and La Redoute S.A. v. Tumay Asena, WIPO Case No. D2001-0859 and Forte Communications, Inc. v. Service for Life, WIPO Case No. D2004-0613.
Although the above would suffice, the Panel finds compelling factual and circumstantial evidence in the record that the Respondent is a repeat bad actor, and that its conduct of engaging in what appears to be an attempt at impersonation of the Complainant clearly demonstrates registration and use in bad faith.
Given the evidence of the Complainant's prior rights in the mark, the unique position held by the Complainant in Israel, the timing of the registration of the Domain Names with full knowledge of the Complainant's trademarks, the content of the Respondent's website, and the misleading use raised in complaints of fraud by users and other attorneys, the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Names in bad faith, under paragraph 4(a)(iii) of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Names, <israel-bar.com> and <israel-bar-lawyers.com>, be transferred to the Complainant.
Ellen B Shankman
Date: October 8, 2016
1 A panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision. This may include visiting the website at the disputed domain name. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.5.