Trademark rights prevail against domain name rights

In Expedia Inc v Yekotiali (CA-9136-07, June 4 2008), the Jerusalem District Court has held that where a party to proceedings owns a registered trademark and the counterparty owns a registered domain name consisting of a word identical to the registered trademark, the trademark owner will always prevail.
US company Expedia Inc provides internet services for the tourism industry, among other services. Expedia owns the registered trademark EXPEDIA in Israel and the domain name ''. The website attached to '' is the online vehicle for providing its services. Drori Yekotiali provides online travel services in Hebrew under the domain name ''.
In 2006 Yekotiali purchased the domain name ''. Yekotiali claimed that:
  • he purchased the domain name as a "defensive acquisition for future use"; and
  • he never used the domain name to promote his own travel services.
Expedia alleged that Yekotiali's actions prevented it from launching a website using its EXPEDIA mark in Israel.
The Jerusalem District Court observed that in the circumstances of this case, there was a conflict between Expedia's rights in the registered trademark and Yekotiali's rights in the domain name. The court applied various precedents, which it construed as standing for the proposition that the rights of the registered trademark owner will always trump those of the domain name owner. Accordingly, the court ruled in favour of Expedia. 
The decision was made solely on affidavits, without any cross-examination of the affiants. In addition, the court did not elaborate on the applicability of the cited precedents to the present case. In particular, the court did not explain why use of the mark solely as part of the domain name constituted trademark infringement.
Interestingly, Expedia did not seek the transfer of the domain name through the procedures of ISOC-IL, the registry for the '.il' domain name. As a consequence, the dispute resolution jurisprudence developed under the ISOC-IL procedures may well differ from the test set forth by the court to reach the same result - namely, the transfer of the domain name to the owner of the registered trademark.    
Neil Wilkof and Gilad Shay, Herzog Fox & Neeman, Tel Aviv 

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