Magazine told off for claiming rights to 'parents' domain name
In Horim V'yiladim Publishers Ltd v Tsa'ad Rishon Company Ltd (Case 317/01), the District Court for Tel-Aviv-Jaffa has denied the plaintiff's motion for exclusive use of the defendant's domain name 'horim.co.il'.
Horim V'yiladim Publishers Ltd (HVP) has been for the last 15 years the publisher of a magazine called Horim V'yiladim (meaning 'parents and children'), which primarily covers matters of parenthood, childhood, pregnancy and family relationships. When Tsa'ad Rishon Company Ltd (TRC), which provides services in the field of parenting, family and children, registered the domain name 'horim.co.il' to host its website, HVP responded by registering 'horim.com'. It then attempted to buy 'horim.co.il' from TRC, but the negotiations failed. HVP subsequently sued TRC for trademark infringement, dilution and passing off.
The court rejected all of HVP's claims. Regarding the claim of passing off, the court reasoned that:
- HVP had not established goodwill in the word 'horim' (parents), as opposed to the combination 'horim v'yiladim' (parents and children);
- 'horim' is a descriptive term that had not gained secondary meaning by virtue of HVP's use over the years;
- HVP had not met the burden of showing that the public made an immediate connection between the word 'horim' and its magazine; and
- the fact that HVP changed its magazine's original title from Horim to Horim V'iyladim indicated that HVP found the latter better and, thus, had given up any rights to the former.
On the claim of confusion, the court found that consumers were not likely to be misled into thinking that 'horim.co.il' is related to HVP's magazine, since 'horim' is a descriptive word that could be associated with a wide range of other products or services. Also, the magazine and the website are separate and distinct media. Thus, while their respective contents may be roughly similar, their respective layout and design are materially different. Also, the magazine is published once a month and must be purchased, while the website is updated more frequently and is accessed without charge.
The court also rejected HVP's claim of dilution of an unregistered trademark. The court held that HVP had not proven that the mark HORIM was well known, nor had it established that it had goodwill in the mark. Furthermore, the court relied on the fact that contrary to HVP's claims, TRC's website was well maintained and highly regarded by the press. Thus, any argument that the HORIM mark was diluted was unfounded.
Finally, the court emphasized that HVP never registered the mark HORIM, and that it had not sought to register the mark HORIM V'YILADIM, HAMAGAZINE SHE'TOV LE'HORIM (meaning 'Parents and children, the magazine that is good for parents') - which in any case is not similar to HORIM - until seven months after filing the action against TRC. The court actually implied that if any infringement had taken place, it was HVP's doing.
For a discussion of a court upholding rights in a domain name comprising a descriptive word, see Israeli Bar Association's rights in HAPRAKLIT upheld by court.
Neil Wilkof and Shai Kagan, Herzog Fox & Neeman, Tel Aviv
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