The Jerusalem District Court has ruled that in disputes between opposing parties holding a registered trademark and a registered domain name consisting of a word identical to the registered trademark, the trademark owner prevails – Expedia Inc v Yekotiali (CA-9136-07, June 4 2008).
The ruling relates to a US company, Expedia Inc which provides internet services for the tourism industry and other services. Expedia owns Israel registered trademark EXPEDIA and also the domain name expedia.com where a website advertising their services is hosted.
In 2006, the defendant, Drori Yekotiali, registered the domain name ‘expedia.co.il’ as a “defensive purchase for future use”. Plaintiff, Expedia alleged that Yekotiali’s actions prevented it from launching a website using its EXPEDIA mark in Israel.
The Jerusalem District Court observed that there was a conflict between Expedia’s rights in the registered trademark and Yekotiali’s rights in the domain name.
Applying various precedents, the court proposed that the rights of registered trademark owners overcome rights of domain name owners and ruled in favour of Expedia.
We note that no explanation was given as to why use of the mark as part of a domain name constitutes trademark infringement.Furthermore, the decision lacked a reasoned argument regarding the applicability of the precedents cited, to the specific case.
