three letter .co.il dispute

[incka]

Hello.

I own several three letter .co.il domain names, one of which I've received a lawyers letter on. It happens to be the initials of a UK bank which has 'rights to the Israeli trademark'.

What should I do?

 

[domaingenius]

Hello.

I own several three letter .co.il domain names, one of which I've received a lawyers letter on. It happens to be the initials of a UK bank which has 'rights to the Israeli trademark'.

What should I do?

Well first off I would check whether what they say is correct.

DG

 

[katherine]

A number of questions here:

• do they provide verifiable evidence about the TM ?
• when was it registered ?
• when was the domain registered ?
• how has the domain been used ?

 

[marcorandazza]

Israeli domain name disputes are not like the UDRP.

Under the .IL-DRP, if the respondent registered *or* used the name in bad faith, the complainant can prevail.

 

[incka]

Is it classed as bad faith to buy a three letter domain name in the hope that you'll be able to sell it to an unknown party (not targeting any particular company, I had no idea this bank even operated in Israel) in the future (like everyone does with lll domains).

 

[marcorandazza]

It is difficult to say one way or the other in absolute terms. There are a lot of factors to consider -- not the least of which would likely be local, Israeli, trademark law.

 

[incka]

I've found out they are the only party to hold the trademark of these three letters in Israel, which obviously goes against me.

Is there any record of previous Israeli name disputes and their outcomes I can refer to?

 

[katherine]

Is there any record of previous Israeli name disputes and their outcomes I can refer to?

A few relevant cases here, including one LLL: http://isoc.org.il/domains/ildrp.html

 

[marcorandazza]

There have not been very many israeli domain disputes. Remember, the company may not just file against you in an arbitration -- they may actually take you to "real court." You need a lawyer. Preferably an israeli lawyer.

 

[fab]

Hello.

I own several three letter .co.il domain names, one of which I've received a lawyers letter on. It happens to be the initials of a UK bank which has 'rights to the Israeli trademark'.

What should I do?

Well, I own one as well. Was the domain parked, and if so, was the page showing ads related to the bank. Do the letters have any meaning or standard abbreviation?

I had no idea this bank even operated in Israel

Based upon my knowledge of Israeli TM law, in order to be liable for fines from a tm, you have to intentionally have taken advantage of their TM.

 

[Brett Lewis]

Is it classed as bad faith to buy a three letter domain name in the hope that you'll be able to sell it to an unknown party (not targeting any particular company, I had no idea this bank even operated in Israel) in the future (like everyone does with lll domains).

I cannot see how it possibly could be an act of bad faith to register a three-letter domain name without knowledge of the party who later shows up claiming trademark rights. The essence of bad faith is that you've registered something with the knowledge and intent to profit off of a trademark holder. How can you intend to profit off of a trademark holder when you did not know that it existed?

That said, looking at this from a Judge's point of view, no one knows what your intent was when you registered your domain name except for you. Judges and panels rely on the facts and evidence in a case, such as parked page advertising or preparations to develop a Web site, to help them to determine what a registrant's intent was. Still, unless the trademark holder is famous, in the U.S., most courts and panels have ruled in favor of registrants in these cases, finding two and three letter domains to be generic letter combinations. In the VW case, which went the other way, the registrants testified that they had registered the domain name with the dual intent of using it for a business and of selling it to Volkswagen for a lot of money. Oops!

As I'm not licensed to practice law in Israel, I cannot opine on how Israeli law might apply, but would hope that common sense arguments would hold up.

Good luck!

 

[marcorandazza]

Brett,

Note that the Israeli rules (like many other domain arbitration rules aside from the UDRP) does not require that the domain be registered in bad faith -- registration *or* use is all the complainant needs to prove.

Also... bad faith can include a disregard for the possible rights of others. Lets say a hypothetical person registered AIG.xxx and said "I never heard of anyone using that trademark," ... well, we might be able to believe them -- if we were smoking crack, or if we were a panelist who makes a business model out of being gullible (Sorkin or Cabell). But, anyone else would know that they were full of it.

However, lets say that we believe them. On Nov. 1, registrant has no knowledge of AIG insurance, but registers AIG.xxx.

On Nov. 15, registrant sets up PPC site that starts keying to insurance ads.

On Dec. 1, registrant sees payouts as a result. Registrant goes to his own domain and sees insurance ads. Registrant then figures out that AIG must be an insurance company.

Under the "actual knowledge only" standard, that registrant will have carte blanche to continue to infringe on AIG's rights since he was careless in the beginning.

On the other hand, registrants shouldn't need to be psychic. Nevertheless, absent some acceptance of the constructive knowledge standard, only the "bad domainers" would benefit.