‘hot.Israel’: ‘hot’ is not a generic term

• The petitioner sought the transfer of ‘hot.Israel’ in Hebrew characters under the IL-DRP based on its use of HOT as a trademark since 1996, among other things.
• The panel determined that the word ‘hot’ in Hebrew characters is not generic.
• The respondent’s claim that he was planning to use the domain name for a weather website was not supported by evidence.

On 3 January 2023, the alternative dispute resolution panel of the Israel Internet Association (ISOC-IL) issued its decision in HotConsumer Club Engineers and Technicians Federation Israel Ltd
v Brown in relation to the domain name ‘hot.Israel’ in Hebrew characters.

Background
In November 2022, the ISOC-IL expanded the registration of domain names in Hebrew, adding the option to register domain names under the country-code top-level domain ‘.Israel’ in Hebrew characters. Subsequently, Mr Sharon Brown (‘the respondent) registered the domain name ‘hot.Israel’ in Hebrew characters (‘הוט.ישראל’)

Hot Consumer Club Engineers and Technicians Federation Israel Ltd. (‘the petitioner’), an Israeli company managing a consumer club with more than 300,000 members, filed a petition requesting the transfer of the rights to the domain name from the respondent, based on:

• its use of HOT as a trademark since 1996;
• local trademark registrations; and
• registered domain names, including the word ‘hot’, either alone or as a main element, such as ‘hot.co.il’ and ‘hot.org.il’.

The respondent claimed that the transfer of the domain name to the petitioner was unjustified as, among other things, the word ‘hot’ is generic, and he intended to use the domain name to host a weather data website. Moreover, the respondent argued that the petitioner could not claim exclusive rights in the word ‘hot’ in Hebrew, bearing in mind that other Israeli companies use the term as a trademark, including a well-known local communications company.

Decision

The panel decided to transfer the domain name to the petitioner under the IL-DRP. It determined that the word ‘hot’ in Hebrew characters is not generic since the Hebrew transliteration of the word ‘hot’ does not have a dictionary definition, and it is not widespread in Hebrew speech or writing.

The panel decided that all cumulative conditions to transfer the domain name to the petitioner were fulfilled. First, the domain name was considered to be confusingly similar to the petitioner’s trademarks. The existence of other companies owning rights in the mark HOT, such as the local well-known communications company, did not detract from the petitioner’s rights in the name.

Moreover, the respondent did not prove that he had any rights with respect to the term ‘hot’.

The panel also determined that the respondent had acted in bad faith. The panel quoted relevant case law and stated that the general obligation to act in good faith is “the soul” of the Israeli legal system, applying to all legal duties and that the list of actions that may constitute bad faith is non-exhaustive. In this regard, when a party applies to register a generic term as a domain name, it is still necessary to examine its intention. The respondent’s claim that he was planning to use the “generic” domain name for a weather website was not supported by evidence. Moreover, the respondent did not deny the petitioner’s argument that it planned to trade in the “generic” domain name. The panel also found that the respondent has a practice of registering domain names without using them in order to sell them afterwards.

This article first appeared in WTR Daily, part of World Trademark Review, in February 2023. For further information, please go to www.worldtrademarkreview.com.