Tnuva v. Mr. Avi Behagen

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 Respondent’s 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 Center’s 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. Parties’ 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."

A. Complainant

Based on the Complainant’s 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.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. Therefore, as

above noted, the Panel will decide based upon the Complaint.

6. Discussion and Findings

A. Respondent’s Domain Name is Identical or Confusingly

Similar to Complainant’s 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 complainant’s mark and the respondent’s

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 Complainant’s 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 Complaint’s 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 1960’s 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 Respondent’s 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 Panel’s conclusion

that the domain name was registered by the Respondent in bad faith.

7. Conclusion

In light of the Panel’s 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.

8. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy

and 15 of the Rules, the Panel orders that the domain name be transferred to

the Complainant.

Neil, J. Wilkof

Presiding Panelist

Mayer Gabay

Panelist

Ron Klagsbald

Panelist

Dated: November 25, 2003