Reseller may not use AHAVA mark in domain name
The Tel-Aviv District Court has prohibited a company and its owners from using the domain name 'ahavashop.co.il' to host a website that resells products bearing the AHAVA trademark (Civil file 2176/04, MA 18216/04, January 4 2005).
The decision followed an application for a temporary injunction filed by Dead Sea Laboratories BM against an Israeli company called Net-Monster BM and its owners, Felix Leshno and Haim Saban. In that application, Dead Sea Laboratories argued, among other things, that Net-Monster's use of the domain name 'ahavashop.co.il' for a website that offered for sale Dead Sea Laboratories' AHAVA-marked cosmetic products infringed its rights in the AHAVA trademark.
Dead Sea Laboratories further claimed that Net-Monster's use of marketing material produced by Dead Sea Laboratories, including pictures of the products and text commissioned by Dead Sea Laboratories, infringed its copyright in that marketing material.
The Tel-Aviv District Court granted Dead Sea Laboratories' application for a temporary injunction with regards to the trademark infringement claim. The court stated that the purpose of a domain name is to signpost a website, thus identifying its owner and helping internet users find what they are looking for more easily. The court concluded that there was no real necessity in the case at hand for Net-Monster to use AHAVA as part of its domain name.
In addition, the court rejected Net-Monster's argument that the use of the trademark was protected under Section 47 of the Israeli Trademark Ordinance. The court reasoned that the use of the AHAVA mark in the domain name created a prima facie impression that the website was sponsored by Dead Sea Laboratories. This precluded any finding of genuine use under the provision.
However, the court dismissed the copyright infringement claim. It held that since Dead Sea Laboratories hands out the marketing material with the products that it sells to other dealers, it implicitly agrees that the marketing material may be used by the dealers to promote the products, which is how the material was used on the website.
For discussion of another case involving online use of the AHAVA mark, see US decision against Israeli infringer enforceable in Israel, court rules.
David Gilat and Shelly Zohar, Reinhold Cohn & Partners, Tel Aviv
Copyright © Law Business ResearchCompany Number: 03281866 VAT: GB 160 7529 10