Canada Israel Experience v. Oranim Travel
Ltd. c/o Shlomo Lifshitz
Claim Number: FA0312000215312
PARTIES
Complainant
is Canada Israel Experience (“Complainant”),
represented by Igor Ellyn, of Ellyn-Barristers, 121 King Street,
Suite 1100, Toronto, ON M5H 3T9, Canada. Respondent is Shlomo Lifshitz of Oranim
Travel Ltd. (“Respondent”), represented by Dan Or-Hof of Ravia &
Co., Law Offices 12 Nachmani Street, Tel Aviv II, 65794, Israel.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <israel4free.com>, <israel4free.net>, and <israel4free.org>, registered
with Go Daddy Software, Inc.
PANEL
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Jacques A. Léger, Q.C. as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on November 28, 2003; the Forum received a hard copy of the
Complaint on December 3, 2003.
On
December 4, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain names <israel4free.com>, <israel4free.net>, and <israel4free.org> are registered
with Go Daddy Software, Inc. and that Respondent is the current registrant of
the names. Go Daddy Software, Inc. has
verified that Respondent is bound by the Go Daddy Software, Inc. registration
agreement and has thereby agreed to resolve domain-name disputes brought by
third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution
Policy (the “Policy”).
On
December 12, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of January 2, 2004 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@israel4free.com, postmaster@israel4free.net,
and postmaster@israel4free.org by e-mail.
A
hard copy Response was received on January 5, 2004, three business days after
the deadline.
The
Forum received a timely additional submission on behalf of Complainant on
January 7, 2004, pursuant to Forum Supplemental Rule 7.
The
Forum received a timely Response to the additional submissions on January 12,
2004.
On January 12, 2004, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Jacques A.
Léger, Q.C. as Panelist.
The Panel wishes to point out that even though three
domain names are at stake, namely <israel4free.com>, <israel4free.org>,
and <israel4free.net>, to reduce the text, it will hereinafter
refer to and consider the domain name <israel4free.com> as
encompassing the three domain names in question, since in the appreciation of
the substantive elements, the extension .org, .com or .net is of no relevance.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Since
1998, Complainant, Canada Israel Experience, has been a division of UIA
Federations CANADA—a national Jewish fundraising organization and community planning
body for the Canadian Jewish community.
A major purpose of Complainant is to
attract participants, namely Jewish young adults from 18 to 26, to travel to
Israel on the “birthright Israel” program. Complainant maintains a national
network of local representatives in every major Canadian Jewish community, as
well as part-time representatives in most other Canadian cities and in
Jerusalem.
“Birthright Israel” was initiated by
North American Jewish philanthropists.
Its mission is to offer a first time educational peer-group trip to
Israel. “Birthright Israel” accredits
Trip Organizers. Once a Trip Organizer
has been accredited, “birthright Israel” provides travel and pays the Trip
Organizer a fixed amount for land costs, programming and for attracting the
participants. Since January 2000,
Complainant has been an accredited
“birthright Israel” Trip Organizer.
Complainant is the largest trip organizer in Canada.
Respondent, established in Lyndhurst,
Ohio, operates several commercial websites that provide tours and vacation
packages to Israel. Since 2001,
Respondent has been an accredited Trip Organizer with “birthright Israel”. According to its website, <israel4free.com>,
Respondent registers “birthright Israel” participants from all over the United
States and Canada. Respondent and
Complainant are competitors for “birthright Israel” participants in
Canada.
Respondent registered the domain names
<israel4free.com>, <israel4free.net>, and <israel4free.org>
(collectively <israel4free.com>) on December 25, 2001, 17 months
after the launch of Complainant’s <israelforfree.com> website. Respondent
operates the websites through an entity called Oranim Educational Initiatives.
Beginning in February 2002, Respondent
began using the domain names to compete unfairly by attracting a segment of
Complainant’s “birthright Israel” participants. Respondent only markets <israel4free.com>,
which is confusingly similar to Complainant’s domain name. By entering the domain names <israel4free.org>
and <israel4free.net> in a browser, the Internet surfer is
immediately transferred to the <israel4free.com> site. Interference with traffic to Complainant’s
website by the intervention of Respondent’s confusing domain name has
substantially affected the number of registrations received by Complainant.
Rights
In Mark
Since August 2000, Complainant has sought
participants to the program by using and establishing the trademark
ISRAELFORFREE.COM by several means, including but not limited to the following:
a website at <israelforfree.com> since August 2000; sponsored billboards;
posters; full page advertising in The
Canadian Jewish News; a calendar; a Frisbee; double-sided flyers; a
bulletin board poster with six tear-off reminder cards; three additional
display newspaper advertisements which appeared in Jewish community
publications across Canada; and concerts with marketing materials for
participants.
All of Complainant’s marketing efforts
are geared toward leading participants to the <israelforfree.com>
website, registered on August 8, 2000, which contains detailed information about Complainant’s
trips and allows online registration.
The
common law trademark ISRAELFORFREE.COM is a suggestive mark that evokes or
suggests a characteristic of the underlying services. Suggestive marks are inherently distinctive and are given a high
degree of protection.
Complainant
has an established reputation as ISRAELFORFREE.COM as the largest and most experienced
“birthright Israel” Trip Organizer in Canada.
It provides participants with a unique and unparalleled Israel
experience with the highest quality of education, logistics, and safety. Since the launch of “birthright Israel,”
over 5,500 young adults have traveled to Israel on trips organized by
Complainant, and most of them are attracted by the information on the website.
Complainant has spent a considerable
amount of money, time, and effort in establishing an association between its
website and its services over nearly three years. Complainant has invested substantial resources, amounting to more
than $100,000 (Canadian) to develop the ISRAELFORFREE.COM mark, consisting of
billboards, pamphlets, articles, posters, newspaper advertisements, bookmarks,
Frisbees, promotional parties, and concerts.
Panels have held that trademark rights may accrue quickly on the
Internet due to the accelerated speed at which it allows information to be
distributed. See Exario Networks Inc. v. Domain Name You Have
Entered is For Sale, AF-0538
(eResolution Dec. 11, 2000).
Identical
or Confusingly Similar
Respondent’s domain names are confusingly
similar to Complainant’s trademark, as they are phonetically identical and
visually similar. The only difference
is Respondent’s substitution of the word “for” with the common shorthand for
the word “4". In support of this,
Complainant refers to PrintForBusiness
B.V v. LBS Horticulture D2001-1182 (WIPO, December 21, 2001), where the domain
name “print4business.com” was found to be confusingly similar to
“printforbusiness.com.” See also eSales & Mktg., Inc. v. Traino FA
156315 (Nat. Arb. Forum, June 19, 2003), where the domain name
<candy2u.com> was confusingly similar to <candy2you.com>.
Respondent’s registration of the domain
names is likely to cause confusion as to the source and sponsorship of the web
site, since a visitor to Respondent’s web site is likely a potential customer
of Complainant. Complainant received
two letters from Canadian participants who were confused by the domain names. They were looking for the Canadian
“birthright Israel” trip organizer but were led to Respondent’s site <israe4free.com>
and did not appreciate until the last moment that there was a difference
between <israelforfree.com> and <israel4free.com>. Undoubtedly, there are many Canadian
participants who were misled and traveled with Respondent. Once connected to Respondent’s websites, the
potential registrants will be further confused to believe that they have in
fact connected to Complainant’s official web site since both parties offer the
same services on their websites.
Where there is a direct competitive
relationship between Complainant and Respondent, it is difficult to conceive of
any legitimate use Respondent could make of the domain name as a means to
attract registrants in Canada. See Packaging World Inc. v. Zynpak Packaging
Prods. Inc., AF-0233 (eResolution
July 28, 2000).
Long before Respondent first began using
its domain name, it was aware of Complainant’s trademark israelFORfree.com. At that time Complainant was already the
leading “birthright Israel” Trip Organizer in Canada. The knowing use of a domain name that infringes on trademark
rights is unlikely to be bona fide,
and is therefore incapable of giving rise to a legitimate right or
interest. See Nasdaq Stock Mkt. Inc. v. Green Angel,
D2001-1010 (WIPO September 30, 2001).
Complainant has not licensed or otherwise
permitted Respondent to use its trademark or to apply for any domain name
incorporating the mark.
Respondent is not known commonly by the
domain names <israel4free.com> but uses them only to divert
Internet users looking for Complainant’s website to their own, which competes
directly with Complainant.
In fact, Respondent’s main travel agency
site, <israel4u.com>, has a hyperlink to “Free 10 days tour of Israel, Jewish 18-26
year olds”. Clicking this link
refers the user to another site, <funtour.co.il>, which contains the
headline “Free 10 days Tour of Israel –
birthright Israel mission”. The
second hyperlink on this site reads “If
you are from Canada register here.”
Clicking on this hyperlink transfers the web user
to the registration page of <israel4free.com>, the impugned
domain name site. This demonstrates
that Respondent is able to market its “birthright Israel” programs from its own
website. The use of the confusingly
similar domain name can therefore have but a single purpose, namely, to attract
Complainant’s registrants.
Respondent is not making a legitimate
non-commercial or fair use of the domain name but is using the names simply to
divert Internet users.
Bad
faith
By using a confusingly similar domain
name to that of Complainant’s trademark, Respondent has intentionally attempted
to attract, for commercial gain, Internet users to Respondent’s web site.
Respondent’s intention may be determined
by common sense inferences from circumstantial evidence. See New York Times Co. v. New York
Time Internet Servs., D2000-1072 (WIPO December 5, 2000).
Since the inception of “birthright
Israel”, Complainant has always maintained a dominant position in the Canadian
market. During the winter 2001, spring
2001 and winter 2002, Respondent attracted 272 Canadian participants, while
Complainant attracted 2,397.
Since Respondent began using the domain
name in February 2002, Complainant has lost a significant percentage of market
share of Canadian participants. At the
same time, Respondent’s Canadian market share has increased from 9% to about
21%. The inescapable conclusion is that
Respondent’s increase is due to the confusingly similar domain name.
Respondent failed to make any good faith
inquiries to whether its use of the domain names would infringe the rights of
Complainant; this is an element of bad faith. See Slep-Tone Entertainment Corp. v. Sound Choice Disc Jockeys, Inc.,
FA 93636, (Nat. Arb. Forum March 13, 2000).
B.
Respondent
Respondent
was founded in 1986 as a resource for Israeli schools traveling in Israel. Over
the years, it developed to be the leader in Jewish Educational Travel
Worldwide. Respondent also operates school trips for Jewish and public schools
in the Unites States, offers programs for the learning of Hebrew, Pilgrimage
tours for Christians to Israel and specialty and incentive tourism to any
destination world wide.
Respondent
became an accredited birthright Israel tour organizer in 2001. Respondent is a
unique tours organizer in many ways: it is the only organizer that both recruit
participants and provides the services in Israel, and it is the most
international operation. The large majority of Respondent's birthright Israel
program participants come from Jewish communities in the United States, where
by the year 2003, Respondent evolved to be the largest birthright Israel tour
organizer and the second largest in Canada.
Respondent
has its headquarters in Israel, but also maintains an office in Lyndhurst OH,
Chicago, Il, and Boca Raton, Fl, and marketing representatives in the UK,
Mexico, Germany, Hungary and Russia.
Respondent
was not aware at the time of the domain name registration of the fact that
Complainant was using the domain name <israelforfree.com>. The idea to
utilize the domain name came from 2 reasons: (1) the name was
"catchy" and reduced the idea of the birthright Israel tours into one
phrase, and (2) the name suited the "family" of Respondent's already
existing websites, which were maintained for other projects, like
"israel4u.com" and "travel4teens.com".
Shortly
after the registration of the domain name and ever since, Respondent has been
marketing it as the online center for its activities with the birthright Israel
program. Its marketing campaigns, summing up to $140,586, included: hundreds of
advertisements in numerous different newspapers; over five hundred television
commercials; various Internet advertisements; flyers; postcards; bumper
stickers; brochures; luggage tags; clothing items; posters; briefcases; and
CDs.
Respondent
has been maintaining a vibrant web site under the domain name since February
2002. The web site consists of hundreds
of web pages, including, inter alia,
information about the program.
Respondent also manages a considerable part of its birthright Israel
service, via electronic mail, by using and maintaining 31 active e-mail
addresses under the domain name.
Respondent's web site has gained considerable traffic rates, reaching
the top 25,000 most visited sites in the world.
For
three years, Complainant had an almost monopoly on the recruitment of
participants in Canada for birthright Israel programs. Over time, Respondent became the second largest
in Canada and began to threaten Complainant's hegemony. Complainant has been doing everything in its
power to restrict its recruitment efforts in Canada. The dispute raised in these proceedings is nothing more than an
additional effort to eliminate its main competitor and to regain its hegemony
in Canada.
For
almost two years, Complainant took no action whatsoever to stop Respondent's
use of the domain name. Complainant did
not claim and provided no evidence to prove that any similar actions were taken
against other birthright Israel organizers.
The
term "Israel For Free" is commonly used by various birthright Israel
approved organizers, as part of their service description. The term is a combination of ordinary words
in the English language and describes the very essence of birthright Israel
tours – "go to Israel for free."
The term does not connote the individualized characteristics of
Complainant's service. See, e.g., Chromalloy Men's Apparel Group, Inc. v. Burch
& Hatfield Formal Shops, Inc., D2000-1046 (WIPO Oct. 20, 2000); Matchnet PLC v. Josh Joffe, FA 159456
(Nat. Arb. Forum Aug. 4, 2003); Morgan v.
Parke d/b/a Trancenet Media, FA 211938 (Nat. Arb. Forum Dec. 14, 2003).
The
term, when used in connection with obtaining a free tour to Israel, is
therefore either generic or highly descriptive, as it is used to identify the
main proposition of a birthright Israel tour.
See, e.g., CharterAuction.com,
Inc. v. Pacific Luxury Air, D2003-0801 (WIPO Dec. 2, 2003); snowboards-for-sale.com Inc., v. Name Admin.
Inc., D2002-1167 (WIPO Feb. 19, 2003); Bar
Code Discount Warehouse Inc. v. Barcodes Inc., D2001-0405 (WIPO July 27,
2001); Mil-Mar Shoe Co., Inc., v. Shonac
Corp., 75 F.3d 1153 (7th Cir. 1996).
A
party who seeks to establish exclusive rights in a descriptive term carries a
heavy burden of proof in removing the term from the public domain and must
provide significant evidence of distinctiveness, such as five years of
exclusive use (CharterAuction.com,
supra; snowboards-for-sale.com Inc., supra;
15 U.S.C. §1052(f) (2002)),
which Complainant did not manage to do, having failed to carry the substantial
burden of proving that the term acquired a "secondary meaning." Zatarains,
Inc., v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983); Arizona Golf Props., Inc., v. Benigno, D2003-0571 (WIPO Oct. 6, 2003). Nothing in Complainant's evidence suggests
that the consuming public affiliates the term specifically with Canada, or with
a Canadian birthright Israel organizer.
Complainant has therefore failed to prove that the minds of the
consuming public, throughout the world, are set to associate the term
exclusively with Complainant.
The
term is neither Complainant's name, nor the name of any of its services.
Complainant
supplied insufficient documentation to determine the volume and scale of the
means allegedly used to establish trademark rights in the term because it
presented a roughly estimated figure to describe the alleged invested sum in
developing the term. No detailed
evidence was provided to describe the volume of use of the various marketing
products, the dates, the extent of circulation, or any other detail, which
would correlate the alleged estimated figure with the alleged use of marketing
products. No affidavits or statements
were provided to support such assertions.
See Molecular Nutrition,
Inc., v. Network News and Publ’n., FA
156715 (Nat. Arb. Forum June 24, 2003).
Complainant
used and is still using its own name to operate at least part of its online
birthright Israel activities in the web site
<CanadaIsraelExperience.com>.
Prior to the registration of the domain name, Complainant used the
domain name <israelforfree.com> only to divert Internet users to their
main web site. In Fact, Complainant has
started operating a separate web site under <israelforfree.com>, sometime between February 13th,
2002 and May 25th, 2002, i.e., only after Respondent has started
operating the domain name.
Complainant therefore cannot assert that potential registrants for
birthright Israel tours exclusively identify Complainant with the term.
Each and
every web page in the domain name bears Respondent's logo. Such is the case in its newspaper
advertisements and in the majority of its other forms of marketing. Respondent
has clearly done so in order to associate the domain name with it and not to
create a likelihood of confusion.
The two
letters provided by Complainant regarding alleged evidence of actual confusion
cannot prove a wide spread phenomena.
Clearly the average online user would not overlook the numerous
references in the domain name to the source and sponsorship of the web
site. Respondent has never received any
complaints of that kind.
Respondent
operates the web site as the main resource for all of its birthright Israel
activities throughout the world.
Furthermore, its activities in North America are mainly focused in the
US market, rather than in Canada.
Therefore, its web site was not created and is not used specifically to
compete with Complainant's web site.
The term
“Israel for free” is in use by third parties, and Respondent registered it in a
legitimate domain name, registering on a first come, first served basis. Car
Toys Inc. v. Informa Unlimited, Inc., FA 93682 (Nat. Arb. Forum Mar. 20,
2000); The VideoCall Co. v. M Koenig FA 167922 (Nat. Arb. Forum Aug. 20,
2003).
Bad faith
Respondent
registered the domain name without the knowledge of Complainant's use of
<israelforfree.com>. No official
registration office could have made it aware of Complainant's use of the term,
since Complainant did not apply to register the term as a trademark in Canada
or elsewhere.
Respondent
could not, and in fact did not prevent Complainant from reflecting any mark in
a corresponding domain name, nor did made attempts to sell the domain name. It
neither registered the domain name primarily for the purpose of disrupting the
business of Complainant, nor with any such intent.
Respondent's
share of the Canadian market has dropped from 2001 (before registration
of the domain name) to 2002 (after the registration), both in the winter and
the spring terms. The number of participants through its service dropped once
more in winter 2003, when compared to the previous winter term. In contrast, Complainant has gained an
increase in the number of participants through its service from winter 2002 to
winter 2003. Only in spring 2003 a
dramatic increase occurred in the number of Respondent's participants, due
mainly to its successful Ambassador Recruitment Project. Complainant's number of participants has
also increased dramatically (by 363%), from winter 2002 to winter 2003. Nothing
in the chart suggests any correlation with Respondent's use of the domain name.
Respondent
did not intentionally attempt to attract, for commercial gain, Internet users
to the domain name by creating a likelihood of confusion with Complainant’s alleged
mark. As the term is publicly available, no use of the domain name could have
constituted use in bad faith of Complainant's alleged marks.
Complainant
did not provide evidence of any behavior by Respondent that suggests that it
registered or used the domain name in bad faith. See Dollar Fin.
Group, Inc. v. Lee, FA 190515 (Nat. Arb. Forum Oct. 16, 2003).
Laches
Complainant
has brought the dispute to the awareness of Respondent nearly two years after
the registration of the domain name, during which time Respondent has invested
considerable amount of time, money and efforts in developing the web site and
in marketing its birthright Israel activities under this domain name. Prior to the notice of dispute, Complainant
never claimed that the domain name infringed on its claimed mark and/or
violated the ICANN Policy.
An order
for the transfer of the domain name would result in substantial undue hardship
for Respondent and such relief should not be granted in these proceedings. See, e.g., BeMusic, supra; HeadRoom
Corp. v. Comitini, FA 102522 (Nat. Arb. Forum Dec. 27, 2001).
C.
Additional Submissions
If Respondent knew about the nature and
scope of Complainant’s business in a market it was hoping to tap, it is
inconceivable that it did not know of Complainant’s domain name
<israelforfree.com>as all of Complainant’s recruitment was done through
it.
Michael Eglash is an Israel-based
marketing consultant who had been an acquaintance of Lorne Klemensberg, the
Director of CIE’s office in Israel. In late February 2000, Klemensberg and Adam
Minsky met with Eglash to discuss the possibility of Eglash working to recruit
Canadian participants for CIE’s birthright Israel program.
The birthright Israel program was
operating from February 2000.
Klemensberg’s e-mail communications to Eglash referred to the websites,
<israelforfree.com> and <canadaisraelexperience.com>, as part of
his coordinates. Klemensberg and Minsky
explained to Eglash that <israelforfree.com> was used by CIE for
birthright Israel programs and that <canadaisraelexperience.com> was used
for all of CIE’s other Israel programming.
Consequently, it is inconceivable that Eglash was unaware that CIE’s
web-based recruitment was through the <israelforfree.com> domain
name. At that time, Eglash was just
organizing his business and CIE decided not to use his services.
Klemensberg arranged for a follow-up
meeting with Eglash and Minsky in the spring of 2001. The possibility of Eglash working as a recruiter for CIE
birthright Israel programs was again discussed but CIE decided not to use
Eglash’s services.
On December 7, 2001, Klemensberg and
Minsky had a further meeting with Eglash, who by this time had set up a
company, Upstart Activist, who provided a resume as well as a business
plan. Once again CIE decided not to
retain him.
Eglash began working for Oranim on
December 23, 2001, just two weeks after his presentation to CIE. On December 25, 2001, only 17 days after
the meeting with Minsky, Eglash registered the domain name on behalf of
Oranim. It is completely inconceivable
that he did not know that CIE was recruiting birthright participants through
the website <israelforfree.com>.
Shlomo Lifshitz met with Minsky and
Klemensberg on numerous occasions through 2002, during which times they raised
the issue of Oranim’s use of the domain name which was passing itself off as
<israelforfree.com>, however Lifshitz refused to recognize that Oranim’s
use of a confusing domain name was unjustified.
Complainant’s trademark is
ISRAELFORFREE.COM and not ISRAELFORFREE as stated in the Response. CIE has spent substantial resources in
developing this trademark.
ISRAELFORFREE.COM has become distinctive of Complainant and of its
services. See Nat’l Assoc. of Prof’l Baseball Leagues,
Inc. v. John Zuccarini, D2002-1011 (WIPO Jan. 21, 2003).
Complainant’s common law trademark is not
generic—one that is commonly used to name or designate a kind of goods—nor
highly descriptive—one that describes the ingredients, qualities, or
characteristics of an article of trade or a service.
It is unnecessary for Complainant to
establish that the “consuming public affiliates the [trademark] with Canada...”
but that it associates it with its services.
The case of Molecular Nutrition Inc., v. Network News and Publ’n FA 156715
(Nat. Arb. Forum June 24, 2003) does not
stand for the proposition that Complainant needs to provide documentation
to prove “volume and scale of the means allegedly
used to establish trademark rights,” but, rather, that Complainant needs to
show the volume and scale of its sales.
The domain names were not chosen because of Respondent’s birthright Israel
activities or because they fit into a larger branded “family” of web
sites. Rather, it appears that
Respondent, assisted by its newly-engaged agent Eglash, was attempting to
divert Complainant’s Canadian registrants to Respondent’s web sites. Eglash had full knowledge of Complainant’s
trademark prior to working for Respondent.
It is too coincidental and inconceivable that Eglash would register a
confusingly similar domain name just two weeks after being rejected by CIE.
Complainant advised Respondent of its
offending domain name on several occasions beginning in early 2002. All of Respondent’s evidence presented was
initiated after notice of the dispute and as such cannot be used to support a
claim for rights or legitimate interest.
Although the domain names were created
specifically to attract the US market and Respondent has done very little
marketing in Canada, it has increased its market share dramatically. It is clear that its success comes from the
diversion of registrants from Complainant.
Respondent has not demonstrated any use
by third parties of Complainant’s trademark “israelforfree.com.” Complainant’s common law trademark,
ISRAELFORFREE.COM, has not been shown to be “publicly available.” Complainant, CIE, has acquired goodwill in
the domain name <israelforfree.com>, which Respondent has wrongfully and
manifestly sought to erode.
By Respondent
The
fact that Respondent knew of Complainant's control over the Canadian market
does not suggest in any way that it was aware of Complainant's use of
<israelforfree.com> prior to the registration of its domain name. Complainant's position in the Canadian
market had nothing to do with its use of <israelforfree.com>. Since until sometime between February and
May 2002, Complainant's use of israelforfree.com was marginal and
insignificant.
Eglash
has created his company (Upstart Activist) together with Eric Esses in October
2001. During the late Fall 2001, Esses
contacted a birthright Israel representative, prior to which Upstart Activist
had no business relations with any of birthright Israel organizers.
In
December 2001, Upstart Activist decided to approach the organizers with the
proposition that went beyond activist training for the sake of improving
Israel’s public relations on campus.
They did not send Complainant their proposal, and naturally, Complainant
did not respond it.
It
was then that Upstart Activist conceived of teaching participants how to
recruit more participants for the program.
Respondent responded to the proposal and its business relationship with
Upstart Activist evolved into a wider cooperation. As a result, Upstart Activist supplied Respondent recruitment
services exclusively and refrained from accepting offers from other
organizers—including Complainant—who wished to retain their recruitment
services.
Delivering
pro-Israel activist training seminars and teaching recruitment methods are two
different and separate activities.
Upstart Activist offered Complainant the former, but has never offered
the latter.
Eglash did not
attend any meeting with Minsky and Klemensberg in late February 2000, nor in
the spring of 2001. In fact, at those
times, Eglash was employed by Adero, a telecommunications company. No discussion regarding
<israelforfree.com> could have occurred in late February 2000, since the
domain name was registered only six months later.
In the meeting
of December 7, 2001, the discussions were focused on providing activist
training services to students and on considering the position of Eglash as a
"Shaliach" (emissary) and not on recruitment services. There was not any discussion whatsoever
regarding Complainant's web site.
Complainant did not follow-up with any additional correspondents
regarding the "Shaliach" position and only retained Upstart
Activist's Pro-Israel Israel Activist training services a year later in
December of 2002.
Neither Klemensberg
nor Minsky provided at any time <israelforfree.com> as part of their
“coordinates” in their correspondence with Eglash and Esses. In fact, Klemensberg has consistently and
continuously provided <CanadaIsraelExperience.com> in his e-mails.
The first time
that Esses and Eglash have seen Klemenberg refer to <israelforfree.com>
in a correspondence is in his Statement of to the National Arbitration Forum on
January 8, 2004! When observing the
details presented in Klemensberg’s statement, it is evident that the web site
<israelforfee.com> is written in a different font than the rest of the
details, which may lead to believe that Klemenberg changed the name of the web
site, from <CanadaIsraelExperience.com> to <israelforfree.com>, only
in his statement of January 8.
In the Spring
of 2003, Klemensberg proposed Eglash that Complainant retain Upstart Activist’s
recruitment services for the birthright Israel program, and this was the first
time they discussed retaining Upstart Activist's recruitment services. Upstart
Activist rejected its offer due to its longstanding and exclusive relationship
with Respondent regarding recruitment services.
On December 1,
2003 Klemensberg contacted Esses asking him to retain its Israel Activist
Training and educational services but Upstart Activist decided against this
proposal as well.
Eglash was
unaware of the <israelforfree.com> site in advance of purchasing the
domain name, and there is no reason why he should have, since it is clear from
the email communications of Klemensberg that only
<canadaisraelexperience.com> was used in all correspondence, that the
meetings were about the provision of activist training to Canadian students and
not about recruitment services and that during December 2001, Complainant's use
of <israelforfree.com> was insignificant.
Lifshitz
and Minsky discussed joint programs as well as Lifshitz's contentions against
Complainant's underhanded attempts to undermine Respondent's activities in the
Canadian Market. The subject of
Respondent's web site was not raised in these meetings.
Respondent
resents Minsky's portrayal of Respondent as a mere "for profit"
business. Minsky is well aware that Respondent is focused on Educational
initiatives, on Zionism and on the love of Israel. He is also well aware of Respondent's contribution to bringing
close together Israel and Jewish communities, throughout the world.
Had
Respondent used its web site to channel potential participants from
Complainant's programs, then, surely, its numbers would have shown a consistent
growth since the initial utilization of the web site. This is not the case as the statistics reflect a drop in the
number of participants once it began using the domain name and a slow rise
after this, due to the increasing success of the Ambassador Program.
It
is well established that a generic top-level domain (gTLD) has no source
identification function and cannot serve any trademark purpose. See,
e.g., Wollongong City Council v. Viva La Gong, D2003-0113 (WIPO April 2, 2003); Kirkbi
AG v. Dinoia, D2003-0038 (WIPO March 9, 2003); Excmo. Cabildo Insular de Tenerife and
Promocion Exterior de Tenerife, S.A. v. Jupiter Web Servs., Ltd., D2003-0525 (WIPO Sep. 9, 2003). Thus Complainant
cannot assert trademark rights over "israelforfree.com", in separate
from the second level domain "israelforfree".
DISCUSSION & FINDINGS
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (the “Rules”) instructs this Panel to “decide a
complaint on the basis of the statements and documents submitted in accordance
with the Policy, these Rules and any rules and principles of law that it deems
applicable.”
Paragraph
4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that
a domain name should be cancelled or transferred: