JERUSALEM-MALL not well-known, rules court

In Katan v Yariv (unpublished), the Jerusalem District Court has refused the plaintiff's application for an injunction preventing the defendant from using the term 'Jerusalem-Mall' in her domain name and on her website.

The plaintiff, an individual called Yaacov Shmuel Katan, is the registered owner of the domain name 'jerusalem-mall.co.il' used to host a website that sells Judaica (objects used in religious rituals) and artwork by Israeli artists. The defendant, Dolly Yariv, operates a website under the domain name 'jerusalem-mall.com', which is a portal to sites selling Israeli goods, including Judaica and artwork. Katan applied for an injunction to prevent Yariv from using the term 'Jerusalem-Mall' in her domain name and on her website. Katan claimed that Yariv was infringing his well-known JERUSALEM-MALL mark, and was engaging in passing off, unfair interference in commerce, unjust enrichment and deception.

The District Court of Jerusalem rejected Katan's application. It noted that Section 46A of the Trademarks Ordinance 1972 (New Version) grants the owner of a well-known mark an exclusive right to use that mark, even if it is not registered in Israel, if the mark and goods upon which it is used are well known in Israel. Pursuant to Section 1 of the ordinance, to determine whether a mark is well known, courts must consider the extent to which the mark is known (i) in the relevant consumer circles, and (ii) as a result of marketing efforts. Overwhelmingly strong goodwill and recognition must be proven.

The court held that Katan's evidence of his use of the 'jerusalem-mall.co.il' domain name was not sufficient evidence that JERUSALEM-MALL was a well-known mark, deserving protection. It emphasized that Katan had not provided evidence:

• of any commercial advertising featuring the JERUSALEM-MALL mark;
  
  
• of the number of visitors to his website hosted at the domain name;
  
  
• of the number of transactions he had made through the site; and
  
  
• in the form of professional opinions or market research regarding the extent of public recognition of the mark.

The court further stated that while Katan had provided evidence of sales, he had not shown that such sales were achieved by means of the goodwill in the JERUSALEM-MALL mark. The court ruled that it was not enough for the mark to be well known to Katan's customers. He also needed to demonstrate that it was well known to a significant proportion of consumers in the relevant market.

The court also rejected Katan's claims of passing off. It held that Katan had failed to prove that (i) the JERUSALEM-MALL mark had acquired a reputation with the public, and (ii) that the public considered the mark as a specific indicator of Katan's goods. In addition, it held that despite certain similarities between the two parties' domain names, there was no likelihood of confusion, since the two websites have different functions (Katan uses his website for direct sales, while Yariv's is a portal to other sites). It also concluded that although the similarity between the domain names might impede access to Katan's site, it did not consider this impediment significant or unfair.

Karen L Elburg and Michal Kainan, Herzog Fox & Neeman, Tel-Aviv