On 27 November 2017 the Tel Aviv District Court1 handed down a ruling denying a petition for an interlocutory injunction order which would have prevented the respondents in the case from using the name Voice of Hope as regards a particular radio station's activity in Israel; the station broadcasts programs in Arabic for Arab Christians residing primarily in Israel's neighboring countries, Lebanon, Syria and Jordan. In parallel to the district court proceedings the parties were engaged in arbitration under the Uniform Domain-Name Dispute-Resolution Policy (UDRP) with respect to the domain name (voiceofhope.com).
The two parties to the proceeding, High Adventure Ministries, Inc. (HAM) and Strategic Communications Group (SCG), belong to the evangelical denomination of protestant Christianity.
In 1978, HAM's founder, George Otis, established a radio station in southern Lebanon. It then also started broadcasting from radio stations in the US and East Asia. The Lebanon station was closed in 2000 after withdrawal of the Israeli military from southern Lebanon, and subsequently HAM ceased operating its other radio stations. Years later, SCG, founded by Reverend Otis's daughter and son-in-law, acquired from a third party the US radio station previously owned by HAM with the call sign KVOH, from which it aired broadcasts mainly to Latin America. SCG then established a radio station in Africa and set up a radio station in Israel operated by its subsidiary Voice of Hope Ltd. HAM claims that it has never abandoned the VOICE OF HOPE trademark and continued using it over the years for certain applications.
The Israeli Trademarks Office initiated competition proceedings between the parties, who had sought to register trademarks comprising voice of hope. Pursuant to commencement of these proceedings before the Israeli Trademarks Office, HAM brought three actions against SCG and its founder John Tayloe, including a UDRP action seeking the transfer of the domain name (voiceofhope.com) from SCG to HAM, an action with the Tel Aviv District Court with a petition for an interlocutory injunction against the radio station's operation, and a lawsuit with the United States District Court for the Western District of Kentucky (although SCG has yet to be served a copy of the complaint).
Gilat Bareket and Co. represented SCG in both the UDRP proceeding and the Israeli proceedings.
The UDRP decision (http://www.adrforum.com/domaindecisions/1737678.htm), issued by Honorable Neil Anthony Brown QC as panelist, dismissed the complaint and held that Rev. J. Tayloe was entitled to keep the domain name. The panelist acknowledged that HAM has established registered trademark rights in the VOICE OF HOPE mark and that the disputed domain name was identical to the VOICE OF HOPE mark, but found that Rev. J. Tayloe had rights or legitimate interests in the (voiceofhope.com) domain name and that HAM had failed to establish that the (voiceofhope.com) domain name was registered and used in bad faith. It was held that HAM had not established all three elements required under the ICANN Policy, and the relief was denied.
The case was reviewed at CircleID in an interesting article by Gerald M. Levine, entitled Proving and Protecting Rights to Domain Names, where the author addresses how parties win or lose their claims and defenses in UDRP proceedings and notes that in following decisions in disputed cases we learn that those who lose (whether complainant or respondent) fail in the "mechanics of argument: marshaling the right facts, supporting their contentions with documentary evidence, and organizing materials into coherent narratives" in UDRP. See:
Tel Aviv District Court Proceeding
In its decision on the interlocutory injunction relief the Tel Aviv District Court noted that there was no dispute that the petitioner was owner of the radio station in southern Lebanon from 1979 until 2000. Since 2000, however, it had not been the radio station's owner and it may have used the name Voice of Hope in broadcasts it airs over satellite and the internet. That said, it had not presented data attesting to the number of people listening to the broadcasts, to the scope of contributions made to its operations, nor about the activities it carried out under the name Voice of Hope.
The court held that the evidential material presented in the hearing also shows that the petitioner does not make use solely in the name Voice of Hope, but simultaneously uses various names, including its own, such as High Adventure World Radio Network, Voice of Jerusalem, High Adventure Radio and others, a fact that should not be ignored. It ruled that it was proven that the applicant had also sold its rights in Voice of Hope Radio in the United States and that the respondent acquired them from the procurer of the rights in the station. The court added that the applicant did not share the fact that the phrase Voice of Hope was used around the world in different ways, including by churches and humanitarian organizations of the like as well as others, and that this a mark possessing weak inherent distinctive character anyhow, deserving of little protection, if any at all.
The court concluded that since the respondents had launched the radio station under Voice of Hope, a name identical to the name of the radio station the petitioner had run until 2000, a concern about misleading ostensibly arises given the use of the identical name; however, the difference between the broadcasts should not be overlooked: starting in 2000 HAM ceased broadcasting over the radio and did so only over satellite and internet, whereas the respondents' broadcasts were made over an AM radio station; the nature of the broadcasts is different; the applicant had broadcast in English whereas the respondents aired in Arabic, and therefore the target audience differs between the two entities.
The court further held that balance of convenience and considerations of justice are decisive in favoring the request's rejection, ruling that the balance of convenience clearly tilts in favor of the respondents and that the applicant had stalled its legal recourse since it had known of the respondents' intention to establish a radio station in Israel in the coming May of 2016; given the fact that the applicant refrained from taking action for over a year, it follows that its petition should be denied also for reasons of laches.
The court supported its conclusion also with the aforesaid UDRP decision.
1 CF 65046-06-17 High Adventure Ministries, Inc v. Strategic Communications Group et al.
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