WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Israel Bar Association v. Itai Ram

Case No. D2010-0003

1. The Parties

The Complainant is Israel Bar Association of Tel Aviv, Israel, represented by Soroker -
Agmon, Advocates & Patent Attorneys, Israel.

The Respondent is Itai Ram of Haifa, Israel.

2. The Domain Name and Registrar

The disputed domain name <israelbar.mobi> (the “Domain Name”) is registered with
EnCirca, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center
(the “Center”) on January 4, 2010. On January 5, 2010, the Center transmitted by email
to the Registrar a request for registrar verification in connection with the Domain
Name. On January 6, 2010, 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(a) and 4(a), the Center formally notified the
Respondent of the Complaint, and the proceedings commenced on January 12, 2010.
In accordance with the Rules, paragraph 5(a), the due date for Response was
February 1, 2010. The Respondent did not submit any response. Accordingly, the
Center notified the Respondent’s default on February 2, 2010.

page 1
 The Center appointed Tony Willoughby as the sole panelist in this matter on
February 8, 2010. 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.

On February 10, and February 11, 2010 the Complainant and the Respondent
respectively filed unsolicited submissions. They arrived early enough to avoid any
inconvenience to the Panel and are very short. Neither of them adds significantly to
what was already in the case papers, but it seems to the Panel more proportionate to
admit them than to exclude them.

4. Factual Background

The Complainant is the Israel Bar Association, also known as The Israel Bar. It is an
independent Israeli statutory entity established under the Bar Association Act 5721 of
1961. Its primary purpose is to regulate the legal profession in Israel.

The Complainant is the proprietor of the domain names <israelbar.org.il> (registered on

February 2, 1999) and <israelbar.co.il> (registered on June 25, 2006).

The Domain Name was registered on October 3, 2006. Nothing is known of the
Respondent save that at some stage following the registration of the Domain Name he
was a student doing an MBA at the MIT Sloan School of Management.

On November 6, 2008 the Complainant filed applications for registration in Israel of

THE ISRAEL BAR as a trade mark in classes 9, 16, 35, 36, 41 and 45 for a variety of
goods and services relating to the activities of a bar association. As at the date of the
Complaint those applications had not matured into registrations.

On December 4, 2008 the Complainant’s representative wrote to the Respondent

drawing the Respondent’s attention to the Complainant’s rights, alleging infringement
and demanding inter alia transfer of the Domain Name.

On January 19, 2009 the Respondent replied to that letter stating that he had registered
the Domain Name when registration of ‘.mobi’ domain names was opened to the
public, that he made the registration at a time when there was no trade mark of that
name registered in Israel, that there was never any bad faith intent (his intention being
to create as part of his business plan “an online website for mobile devices that will
provide a portal with links to popular Israeli bar.”) and that he has no intention of
transferring the Domain Name without consideration. He invites the Complainant to
negotiate a purchase.

On January 25, 2009 the Complainant’s representative responds asking the Respondent
how much he wants for the Domain Name.

On January 28, 2009 the Respondent emails back saying that his total expenses
associated with the Domain Name (including costs of web maintenance and his
business plan) amount to USD 3,500 and that is the value he puts on the Domain Name.

5. Parties’ Contentions

page 2
 A. Complainant

The Complainant contends that it has common law trade mark rights in the name THE
ISRAEL BAR arising from long and extensive use of that name since the foundation of
the Complainant in 1961. The Complainant contends that the Domain Name is
confusingly similar to a trade mark in which it has rights.

The Complainant contends that the Respondent has no rights or legitimate interests in
respect of the Domain Name.

Finally, the Complainant contends that the Domain Name was registered and is being
used in bad faith. The Complainant contends that the Respondent’s offer to sell the
Domain Name at a profit is an indication of bad faith. The Complainant contends that
the fact that the Respondent has made no use of the Domain Name since registering it
in 2006 is also evidence of bad faith. Moreover the Complainant contends that the
Respondent’s stated plan for his use of the Domain Name is calculated to deceive and
to tarnish the name of the Complainant. All these allegations of bad faith are based on
the proposition that the Respondent, an educated Israeli, must have been aware of the
Complainant when he registered the Domain Name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions. However, he did seek
leave to file a Response out of time and the Panel has accepted that Response into the
proceeding.

The Respondent contends that when he registered the Domain Name there was no trade
mark registration covering ISRAEL BAR. He points out that even now the
Complainant’s applications for registration of that mark in Israel have not been
adjudicated upon.

The Respondent denies any bad faith and amplifies slightly upon his letter of
January 19, 2009 referred to above to the Complainant’s representative. “I purchased
this domain name as part of my business plan to create a website for mobile devices
that will provide an online bar (similar to the Google Bar, or the Yahoo Bar) with links
to popular Israeli websites. The execution of my business plan was postponed due to
my pursuing of a Master of Business Administration (MBA) studies at the MIT Sloan
School of Management and the financial difficulties I was under. As of today I have a
team of engineers who are starting the development of our beta product.”

The Respondent observes that prior to his registration of the Domain Name there had
been a 6 month period reserved for rights owners to register their names in the ‘.mobi’
domain, yet the Complainant chose not to avail itself of that opportunity.

As to the allegation concerning the Respondent’s willingness to sell the Domain Name,
the Respondent asserts that he was only willing to do so because at that time he was in
financial straits. He asserts that the figure of USD 3,500 was a reasonable one
calculated by reference to his costs of acquiring the Domain Name, planning the
website and producing his business plan.

6. Discussion and Findings

A. General

page 3
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to
the Domain Name, the Complainant must prove each of the following, namely that:

(i) The Domain Name is identical or confusingly similar to a trade mark or service
mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the Domain
Name; and

(iii) The Domain Name has been registered and is being used in bad faith.

B. Identical or Confusingly Similar

The Complainant has put sufficient evidence before the Panel to satisfy the Panel that
the Complainant has common law rights in respect of THE ISRAEL BAR, the name by
which it has commonly been known since 1961.

The Panel also notes that the Respondent does not challenge the Complainant’s
assertion that it has been using the domain name, <israelbar.org.il>, for its website
since registering that domain name back in 1999.

In assessing identity and confusing similarity for the purposes of paragraph 4(a)(i) of
the Policy it is acceptable for the generic domain suffix to be ignored.

The Panel finds that the Domain Name is identical or confusingly similar to a trade
mark in which the Complainant has common law rights.

C. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a non-exhaustive list of what shall demonstrate
rights or legitimate interests for the purposes of paragraph 4(a)(ii) of the Policy. It is
addressed to registrants of domain names and reads:

“How to Demonstrate Your Rights to and Legitimate Interests in the

Domain Name in Responding to a Complaint. When you receive a
complaint, you should refer to Paragraph 5 of the Rules of Procedure in
determining how your response should be prepared. Any of the following
circumstances, in particular but without limitation, if found by the Panel to be
proved based on its evaluation of all evidence presented, shall demonstrate
your rights or legitimate interests to the domain name for purposes of
Paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable
preparations to use, the domain name or a name corresponding to the
domain name in connection with a bona fide offering of goods or
services; or

(ii) you (as an individual, business, or other organization) have been

commonly known by the domain name, even if you have acquired no
trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain
name, without intent for commercial gain to misleadingly divert
consumers or to tarnish the trademark or service mark at issue.”

page 4
The Respondent is not known by the Domain Name and is not making any overt use of
the Domain Name, so of the examples set out in paragraph 4(c) of the Policy, the only
one which might be applicable is the fact (if it be a fact) that when the Respondent was
first contacted by the Complainant he was making “demonstrable preparations to use
the Domain Name or a name corresponding to the Domain Name in connection with a
bona fide offering of goods and services.”

The Complainant has made out a persuasive case. The Complainant’s name has been
in continuous use in Israel for nearly 50 years. The Respondent is an educated Israeli
citizen and might be expected to have known of the Complainant. ‘Israel Bar’ is, on its
face, an unusual combination of words to select for a domain name unless it was to be
used to refer to the Complainant or, perhaps a particular Israeli drinking establishment.

The Respondent has given two explanations, one in his letter to the Complainant’s
representative of January 19, 2009, namely for

“an online website for mobile devices that will provide a portal with links to
popular Israeli bar”

and the other in his submission to the Panel, namely to create

“a website for mobile devices that will provide an online bar (similar to the
Google Bar, or the Yahoo Bar) with links to popular Israeli websites”

The Panel is by no means certain that the two explanations are consistent, but if it is the
case that the latter is intended to be a clarification of the former, the Panel simply
observes that the Google and Yahoo ‘bars’ are more commonly referred to as ‘toolbars’
and <israelitoolbar.mobi> would have been a much more informative domain name
than the Domain Name <israelbar.mobi>. It is to be noted that in both his explanations
he has used “Israeli” rather than “Israel”, which might have been just as objectionable
to the Complainant, but would have helped perhaps to deflect the strong suspicion that
the Domain Name was selected to replicate the manner in which the Complainant uses
its name in its domain name, <israelbar.org.il>.

At all events, for the Panel, the Respondent’s explanation does not ring true.

The simplest thing, of course, for the Respondent to have done was to produce some
evidence of his business plan in relation to the Domain Name. If he had, as he claimed,
run up expenses of USD 3,500 in developing his plans, one would have expected him to
have something to show for it (e.g. his business plan), but he has produced nothing.

While it is for the Complainant to prove the three elements of paragraph 4(a) of the
Policy, it is now well-established that in relation to the second element (paragraph 4(a)
(ii) of the Policy), once the Complainant has made out a prima facie case (i.e. a case to
answer) it is for the Respondent to answer that case. The rationale behind this policy is
that whether or not the Respondent has rights or legitimate interests is a question, which
the Respondent is best-placed to answer.

In the view of the Panel, the Respondent has a case to answer. In the absence of an
answer, the Panel finds that the Respondent has no rights or legitimate interests in
respect of the Domain Name.

page 5
 D. Registered and Used in Bad Faith

On the same basis the Panel finds that the Domain Name was registered and is being
used in bad faith.

The Domain Name is identical or confusingly similar to the Complainant’s common

law trade mark, which has been in use in Israel for nearly 50 years and, but for the
difference in the suffixes, is identical to the Complainant’s domain name, which it has
used for its principal website for 10 years. In the absence of a credible explanation for
having selected the Domain Name, the Panel is driven to conclude that it was registered
with the Complainant in mind. It is to be noted that nowhere does the Respondent deny
knowledge of the Complainant at the relevant time.

Why did the Respondent register the Domain Name? Why would one register as a
domain name the name of another entity, knowing it to be the name under and by
reference to which that entity carries on business?

In the absence of an explanation, the Panel is entitled to infer that the Respondent’s
intent was abusive. Where, as here, there is an explanation, but the Panel does not
believe it, the Panel has no hesitation in holding that the Respondent’s intention was
abusive.

The Panel believes that the objective may well have been to sell the Domain Name to
the Complainant at a profit (paragraph 4(b)(i) of the Policy) as evidenced by the
exchange of correspondence between the parties referred to in section 4 above, or it
may have been to exploit the Complainant’s trade mark in some other way.

Either way, the Panel finds that the Domain Name was registered and is being used in
bad faith within the meaning of paragraph 4(a)(iii) of the Policy.

7. 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, <israelbar.mobi>, be
transferred to the Complainant.

Tony Willoughby
Sole Panelist

Dated: February 15, 2010

page 6