New Domain Names ruling - Yahoo! Inc. v. Yahoo-israel


Subject: New Domain Names ruling - Yahoo! Inc. v. Yahoo-israel
From: Micha Kaufman (micha_k@netvision.net.il)
Date: ke 08 heinš† 1998 - 10:04:54 EEST


(yahoo.com v. yahoo.co.il)
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Last week (July 1, 1998) the District Court of Tel-Aviv (Israel) gave its
ruling in the case of Yahoo! Inc. (represented by Sanford T. Colb & Co.) v.
Yahoo-Israel, a ruling that is a significant to several of the issues
raising from the disputes surrounding the use of Domain Names (amongst
others, the court gave its opinion on the relationship between universal
top level domain names, e.g. the ending ".com" and regional top level
domain names, e.g. ".co.il"; passing off in the internet and unlawful
enrichment).

Enclosed is an article pertaining to the above suit and a copy of the court
order given. I would be happy to give more details or answer any question
regarding the case.

Internet Magazine
-----------------

Computers and Internet
[ Original article in Hebrew can be found on:
http://www.iol.co.il/magazine/computer/980701-yahoo.html ]

For the first time in Israel:

A Court has prohibited Yahoo-Israel from using a misleading domain name.

The first injunction granted in Israel with regard to a claim in the
Internet field protects the name of YAHOO!

By Doram Gaunt

YAHOO!

You may still be able to get a last chance to see the Yahoo-Israel
(www.yahoo.co.il) website before it disappears from the internet forever.
According to an injunction handed down by the Tel Aviv District Court this
morning (Wednesday), Yahoo-Israel Ltd. (which has no connection to what you
call YAHOO!) has been given 24 hours to cease the use of this misleading
domain name on the internet. So if you thought of registering
www.coca-cola.co.il or www.nike.co.il in your name, you had better read
this first.
The Court prohibited Yahoo-Israel, which deals with setting up internet
sites, from using the name "Yahoo" in any manner because of the misleading
similarities between its name and the name of YAHOO!, the most popular
website index in the world. The permanent injunction which has been handed
down against Yahoo-Israel, the first of its kind in Israel with regard to a
claim in the internet field, also provides that the Israel company must
transfer to the international YAHOO! company the domain name and trademarks
which it has registered with the name "Yahoo" in Israel and that it must
pay compensation to the international YAHOO! in the sum of $5,000. The
injunction was handed down with the agreement of the parties after Judge
Ephraim Shalev made it very clear that he intended to prohibit Yahoo-Israel
from using the name "Yahoo".

Yahoo Israel

The permanent injunction was handed down at the request of the
international YAHOO! company, in the wake of a claim which it had filed
against the Israel company, its founders and directors. In the claim,
YAHOO! argued, through its attorney Eitan Shaulsky, that the name of the
Yahoo Israel Ltd. company, the domain name which it had been using
(yahoo.co.il) and the trademarks for which it had applied resembled, as to
be calculated to deceive, the names, trademarks and internet address of the
international YAHOO!, one of the leading and renowned internet service
providers in the world. Yahoo-Israel had gone so far as to advertise itself
in the yellow pages with the slogan "There's Yahoo in Israel", stating that
it had "Branches throughout the World". The international YAHOO! argued
that in its actions, Yahoo-Israel had caused the deception of the public,
had unjustly enriched itself at the expense of the international YAHOO! and
had attempted to benefit from its vast good will (It is interesting to note
that a representative of the international YAHOO! argued at the hearing
that the director of Yahoo-Israel, Mr. Eliron Yaron, was connected to
another company, one of whose shareholders had registered original domain
names, such as www.microsoft.co.il, in his name).

At the hearing in the Tel Aviv District Court, Judge Ephraim Shalev said
that he had no doubt whatsoever that the use of the name "Yahoo" by
Yahoo-Israel was extremely misleading and that it was clear that anyone
contacting the Israel company would be likely to mistakenly think that he
was contacting the Israel branch of the international YAHOO!.

The defendants argued that the name "Yahoo" was the name of a race of
midgets from the stories of Jonathan Swift and that they had chosen it at
the end of 1995 when the international YAHOO! had not yet become famous in
Israel. The representative of the international YAHOO! responded that the
name "Reebok" is derived from the name of a small antelope which lives in
Africa but it was unthinkable that a company would be permitted to deal
with footwear using the name "Reebok". The international YAHOO! also argued
that in the month which preceded the registration of the domain name in the
name of the Israel company, 600,000 visits to its websites from Israel had
been recorded.
The defendants further argued that the international YAHOO! did not operate
in Israel. The judge rejected this argument, stating that physical presence
in a particular country is of no consequence on the internet. The
activities of the international YAHOO! on the internet, which can be seen
from Israel also, are enough to prohibit Yahoo-Israel from using its name.

So anyone who thinks that the sexy and famous domain name of another
company will cause many visits to his website had better come up with
another idea.

**END OF ARTICLE**

Court Order
-----------

In the Tel Aviv District Court

YAHOO INC.
(The Petitioner)
Represented by Sanford T. Colb & Co.
v.

Yahoo Israel Ltd.
Yaron Daniel
Landor Shelly
Yaron Eliron
(The Respondents)
Represented by Eran Soroker & Jonathan Agmon

The Attorneys for the Parties
-----------------------------
We have reached the following arrangement:

The principle cause of action will be granted. A permanent injunction will
be handed down against the respondents in accordance with what is requested
in the claim. The respondents will receive a 24-hour extension from now to
cease all of their activities which are related to the YAHOO mark,
including ceasing the activities of the domain name. The defendants will
transfer to the ownership of the plaintiff the YAHOO.CO.IL and Yahoo-Israel
domain names. The defendants declare that they do not own any additional
domain names which include the YAHOO mark in any form or combination.
Within 24 hours, the petitioner and the respondents will submit a joint
petition to the Trademarks Commissioner to reject the oppositions which
have been submitted by any of the respondents against the registration of
the trademarks in the name of the petitioner and for the transfer of the
rights in the Yahoo-Israel applications which have been filed by the
respondents, to the petitioner.

The defendants will, jointly and severally, pay the plaintiff expenses in
the sum of $5,000 according to the exchange rate at the date of the
payment. A sum of $1,000 will be paid 15 days from today and the remainder
will be paid 45 days from today. In order to guarantee the implementation
of the payment, a stay of exit order will be granted against Mr. Eliron
Yaron, which will be in effect until the full payment of the $5,000. If, by
the above dates, Eliron deposits with the attorneys for the petitioner a
bank guarantee in accordance with the said dates for payment which covers
the full sum, the stay of exit order will be withdrawn. In order to remove
any doubt, the order will also include Oblisk Computers Ltd. Once this
arrangement is implemented, the parties will have no claims against one
another.

Judgment
--------
I confirm the arrangement reached by the parties and grant it the force of
a court judgment.

July 1, 1998.

(----)
_________________
Ephraim Shalev, Judge

**END OF COURT ORDER**

Micha Kaufman, Adv.

______________________________________________________________________

Sanford T. Colb & Co., Advocates & Patent Attorneys.
Beit Amot Mishpat, 8 Shaul Hamelech Boulevard, 64773 Tel-Aviv, Israel.
Tel: 972-3-6938560; Fax: 972-3-6938561
E-Mail: micha_k@stc.co.il
Web Site: http://www.stc.co.il
______________________________________________________________________



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