On 1st July 1998 the District Court of Tel Aviv awarded the force of a judgment to an understanding reached in the first Israeli dispute relating to domain names (CF 615/98, MA 6529/96). In the understanding, Yahoo Israel undertook to stop using the name "Yahoo" within 24 hours and to transfer to Yahoo! Inc. all the rights in the domain name and in the trademark registration applications filed by it, and also to pay it costs of US$ 5,000. Until payment has been made, Yahoo Israel's director is barred from leaving the country. This is therefore a far reaching settlement which was upheld by Judge Ephraim Shalev even before any formal trial had begun. Several well phrased statements and questions by the Court left no room to doubt what the Court's view was with regard to the proper decision and made Yahoo Israel's director reconsider the likely outcome of his battle.
Yahoo! Inc., a company registered in California, USA, operates the well known Internet search engine (http://www.yahoo.com), which receives millions of hits a day. It purchased the yahoo.com domain name in February 1995. On the other hand, the yahoo.co.il domain name was purchased by or for the defendants in December 1995. Yahoo Israel pleaded that for about two and a half years it had been operating a web site at that address, through which it was marketing its services as a web site builder. In 1997 it even made an application to the Registrar of Trademarks for the registration in its name of the trademark "Yahoo-Israel". In September last year Yahoo! Inc. discovered the Israeli company and contacted it, requiring it to stop using the domain name. When this did not help, it applied to the District Court of Tel Aviv, through its attorney, Adv. Eitan Shaulaski, for an injunction against the Israeli company, its shareholders and director. Yahoo Israel's reply was filed through its attorneys, Advs. Jonathan Agmon and Eran Sorroker. The parties' arguments were briefly as follows -
Although the settlement of the case obviated a trial, it did leave some fascinating questions, which could have gone to trial, unanswered:
All these and many other questions have yet to be answered. Nevertheless, to
the extent that one informal hearing can indicate the inclination of the
Israeli Courts, companies which have goodwill on the Internet, even if they do
not directly carry on business in Israel, will gain protection against third
parties who adopt misleading domain names.
Translated by Word Power