Hatzalah vs. Hatzolah : Who won the #UDRP?

Hatzolah is a Hebrew term meaning “rescue” and is generic for the provision of rescue services. Similarly, the term “hatzalah” is in use by numerous parties around the world in connection with EMS rescue services in primarily Jewish neighborhoods.

Chevra Hatzalah Inc., operates a volunteer ambulance service primarily in New York City and in some counties in upstate New York, United States. Complainant owns and uses the mark and name CHEVRA HATZALAH for its services.

They filed a UDRP to get the domain Hatzolah.org.

According to the UDRP, the Respondent is a longtime executive assistant of the co-founder of Hatzolah of Los Angeles. The disputed domain name was registered on March 28, 2001, and was used shortly thereafter with a website concerning Hatzolah, a volunteer emergency medical service in Los Angeles. The disputed domain name continued to resolve or redirect to a website for Hatzolah Los Angeles and then in 2021 started to redirect to a website at ezrasnashim.org, which concerned emergency medical services for women in Brooklyn, New York.

The WIPO panelist noted the domain’s age and stated:

In sum, Complainant has failed to establish that it is more likely than not that Respondent registered the disputed domain name in bad faith in March 2001 in order to take advantage of Complainant’s claimed rights in the HATZALAH, HATZOLAH, or other variant marks.

Final decision: Deny transfer of the domain Hatzola.org to the Complainant.

The domain transfer was denied.

Chevra Hatzalah Inc. v. Registration Private, Domains By Proxy, LLC / Susan Green, Marketing Specialty
Case No. D2021-0524

1. The Parties

Complainant is Chevra Hatzalah Inc., United States of America (“United States”), represented by Mintz Levin Cohn Ferris Glovsky and Popeo, PC, United States.

Respondent is Registration Private, Domains By Proxy, LLC, United States / Susan Green, Marketing Specialty, United States, represented by Milord & Associates, PC, United States.

2. The Domain Name and Registrar

The disputed domain name <hatzolah.org> is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 19, 2021. On February 19, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 19, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on February 22, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amendment to the Complaint on February 23, 2021.

The Center verified that the Complaint, together with the amendment to the Complaint, satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on February 24, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 16, 2021. On March 15, 2021, Respondent requested an extension to the Response due date. On March 19, 2021, Respondent requested a further extension of 30 days to the Response due date.

Pursuant to paragraph 5(b) of the Rules, on March 22, 2021, the Response due date was extended until March 26, 2021, and Complainant was invited to comment on Respondent’s further extension request, pursuant to paragraph 5(e) of the Rules. On March 24, 2021, the Response due date was further extended until April 9, 2021, pursuant to paragraph 5(e) of the Rules and the lack of Complainant’s objections. The Response was filed with the Center on April 9, 2021.

The Center appointed Georges Nahitchevansky as the sole panelist in this matter on April 19, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant, Chevra Hatzalah Inc., operates a volunteer ambulance service primarily in New York City and in some counties in upstate New York, United States. Complainant owns and uses the mark and name CHEVRA HATZALAH for its services. Complainant owns a trademark registration for CHEVRA HATZALAH in the United States in connection with its services that issued to registration in January 1998 (Registration No. 2131729). Complainant also owns trademark registrations for the word marks (i) HATZOLOH (Registration No. 2111646) that issued to registration on November 1997, (ii) HATZALAH (Registration No. 5712449) that issued to registration in April 2019, and (iii) HATZOLAH (Registration No. 5712445) that issued to registration in April 2019. Complainant also owns the domain name <hatzalah.org> which was registered on November 19, 1999. Complainant currently uses the <hatzalah.org> domain name with a website regarding Complainant and its services.

Respondent Susan Green, Marketing Speciality, is the current listed registrant of the disputed domain name. According to Respondent, Susan Green is a longtime executive assistant of Rabbi Chaim Kolodny, the co-founder of Hatzolah of Los Angeles with an individual by the name of Souheil Jawad. The disputed domain name was registered on March 28, 2001, and was used shortly thereafter with a website concerning Hatzolah of Los Angeles, a volunteer emergency medical service in Los Angeles. The disputed domain name continued to resolve or redirect to a website for Hatzolah Los Angeles and then in 2021 started to redirect to a website at <ezrasnashim.org>, which concerned emergency medical services for women in Brooklyn, New York.

Complainant sent a demand letter on January 21, 2021 to GoDaddy Inc. and Domains By Proxy LLC concerning the disputed domain name and its use in connection with the website at <ezrasnashim.org>. No response was apparently received. At some point thereafter, the disputed domain name ceased resolving to the website at <ezranashim.org> and began to resolve to a website for Hatzalah of South Florida, a provider of volunteer emergency medical services in South Florida.

5. Parties’ Contentions

A. Complainant

Complainant asserts that it is a well-known business name in the ambulatory emergency services industry and that it has not only used HATZALAH and variations thereof since the 1960s, but has obtained several trademark registrations consisting of HATZALAH and variations thereof in connection with Complainant’s services.

Complainant contends that the disputed domain name is identical or confusingly similar to Complainant’s HATZALAH and HATZOLAH marks as it fully and solely consists of HATZOLAH, a variation of HATZALAH, with the generic Top-Level Domain Name (“gTLD”) extension “.org”.

Complainant argues that Respondent dos not have rights or legitimate interests in the disputed domain name as (i) Complainant had prior rights in its HATZALAH marks and variations thereof before Respondent registered the disputed domain name, (ii) Respondent never received any permission or license from Complainant to register and use the HATZALAH or HATZOLAH marks in the disputed domain name, (iii) Respondent’s registration and use of the disputed domain name has been done for the purpose of trading on the goodwill and fame associated with Complainant and its HATZALAH and HATZOLAH marks, and (iv) Respondent has used the disputed domain name to redirect web traffic to competitors of Complainant.

Lastly, Complainant contends that Respondent has registered and used the disputed domain name in bad faith as Respondent was aware or should have been aware of Complainant’s valuable goodwill and reputation in the HATZALAH and HATZOLAH marks when Respondent registered the disputed domain name. Complainant also contends that because Respondent has no rights or legitimate interests in the disputed domain name, it follows that the disputed domain name was registered to attract Internet users to Respondent’s business. In that regard, Complainant also notes that the registration and use of the disputed domain name likely misleads consumers looking for Complainant and its services and/or suggests that Respondent’s services are endorsed, sponsored or affiliated with Complainant, when such is not the case.

B. Respondent

Respondent rejects Complainant’s contentions in their entirety.

Respondent maintains that Complainant has known and acquiesced to Respondent’s registration of the disputed domain name for over twenty years. Respondent asserts that Susan Green is the administrator of the disputed domain name and that Rabi Chaim Kolodny and Souheil Jawad, the co-founders of Hatzolah of Los Angeles are the true owners of the disputed domain name.

Respondent contends that “hatzolah” is a Hebrew term meaning “rescue” and is generic for the provision of rescue services. Respondent further contends that the term “hatzalah” is in use by numerous parties around the world in connection with EMS rescue services in primarily Jewish neighborhoods.

Respondent claims that Complainant has been aware of the registration and use of the disputed domain name as (i) Rabbi Chaim Kolodony was an EMT for Complainant in or around 1977, (ii) a group of EMT volunteers formed Hatzolah of Los Angeles with the blessing and knowledge of Complainant in 1999, (iii) Respondent obtained permission from Complainant in 2001 to use “Hatzolah” as part of its name in Los Angeles to provide emergency response services, and (iv) Complainant asked Respondent to display pictures of Complainant’s role in the rescue operations following the September 11, 2001 World Trade Center attack in New York City.

Respondent argues that Complainant committed fraud on the United States Patent and Trademark Office by obtaining registrations for HATZALAH and variations thereof without disclosing that “hatzalah” is a generic term for rescue services used by many parties around the world.

Respondent does not argue whether the disputed domain name is identical or confusingly similar to Complainant’s marks, but instead maintains that Complainant is not the exclusive owner of “Hatzolah” or any other transliterations of the word as it is a generic term for rescue services that is used by many entities unrelated to Complainant around the world.

Respondent asserts that it has lawfully used the disputed domain name to provide Hatzolah services in Los Angeles for over twenty years. Respondent maintains that because the disputed domain name consists of a generic term consumers do not exclusively identify the term as associated with Complainant. Respondent also asserts that it has not used Complainant’s name and that it has been known as a provider of “Hatzolah” services for over twenty years under such names as “Hatzolah Jerusalem”, “Hatzolah of California”, and “Hatzolah of Los Angeles”. Respondent also contends that it has used the disputed domain name legitimately and in its generic sense as a redirect to websites that concern Hatzolah services.

Finally, Respondent argues that it has not registered or used the disputed domain name in bad faith as (i) Respondent has used the disputed domain name in its generic sense and (ii) Complainant has provided no evidence that Respondent did so in order to trade on any valuable goodwill or reputation that Complainant might have in its claimed HATZALAH or HATZOLAH trademarks. Respondent also argues that because Complainant has been aware of Respondent and the disputed domain name for over twenty years it is hard for Complainant to argue that it has been damaged by Respondent’s registration and use of the disputed domain name that solely consist of a generic term. Respondent asserts that consumers looking for “hatzolah” services typically do so based on a geographic area and not simply based on the generic term. In that regard, Respondent notes that Complainant and Respondent do not actually compete as they each provide their Hatzolah services in distinct geographic locations.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, to succeed Complainant must satisfy the Panel that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and,

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Respondent does not contest that the disputed domain name is identical or confusingly similar to Complainant’s HATZALAH or HATZOLAH marks. Respondent’s position is that Complainant cannot have any trademark rights in the term “Hatzolah”, as it is a Hebrew generic reference for rescue service. In that regard, Respondent has produced several examples of use of the term “Hatzolah” and variations thereof by a number of unrelated parties in connection with emergency ambulatory services as well as a number of third party trademarks registrations from around the world consisting of “Hatzalah” or “Hatzolah” for similar services.

That being said, Complainant has produced evidence of several trademark registrations that it owns for marks that consist of “Hatzalah”, “Hatzolah” or variations thereof, two of which issued to registration in 2019. The Panel notes that while Respondent has provided examples of third party uses or registrations of “Hatzalah” or “Hatzolah,” the Panel is not in a position to assess whether Complainant’s trademark registrations were somehow improperly procured or could possibly be subject to cancellation on the basis that “Hatzalah” or “Hatzolah” are generic terms for rescue services. The fact remains that Complainant owns at least two trademark registrations in the United States for the CHEVRA HATZALAH and HATZOLOH marks that predate the registration of the disputed domain name. As the threshold for the first element is low, the Panel concludes that since the disputed domain name is identical or confusingly to Complainant’s claimed registered HATZALAH marks and variations thereof, Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Given that Complainant’s Complaint fails on the third element, as discussed below, the Panel does not address whether Respondent has rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Under paragraph 4(a)(iii) of the Policy, a complainant must establish the conjunctive requirement that the respondent registered and used a disputed domain name in bad faith. The assessment of whether a disputed domain name was registered in bad faith has to be assessed at the time of the registration of the disputed domain name, which in this case according to the WhoIs records is March 28, 2001 (although Respondent claims the disputed domain name was registered in December 1998).

Complainant asserts that it owned strong common law rights in HATZALAH and its variations such as HATZOLAH by the time Respondent registered the disputed domain name. Complainant has also provided copies of its trademark registrations in the United States for the marks CHEVRA HATZALAH and HOTZOLOH that date back to 1998 and 1997, respectively. With regard to Complainant’s claim of longstanding common law rights in HATZALAH and HOATZOLAH dating back to 1965, Complainant has provided no actual evidence showing actual use of these marks prior to March 2001, the extent of such use of those marks, or the claimed public recognition of HATZALAH or HATZOLOH as marks identifying Complainant prior to when Respondent registered the disputed domain name.

What complicates the matter further is the fact that “Hatzalah”, “Hatzolah”, and other variants are a common word in Hebrew meaning “rescue” or “relief,” a concession Complainant made in its own trademark applications for its various HATZALAH, HATZOLAH, and variant marks. While it appears that Complainant has developed some rights in the terms in connection with the providing of ambulatory emergency services, the Panel notes that Respondent has provided evidence of multiple parties around the world and in the United States who also use “Hatzalah” or variants thereof as part of their names in the provision of similar ambulatory emergency services. This suggests that a number of entities use “Hatzalah” or variants thereof in its common meaning in Hebrew. Notably, Complainant has itself implicitly conceded that there are other organizations using the terms “Hatzalah” or variants thereof in their names for similar services by noting at various times on its website at <hatzalah.org> that these other organizations are “totally independent and not connected to Chevra Hatzalah financially, administratively, operationally or in any other way.”

Given that “Hatzolah”, “Hatzalah”, and their variants share a common meaning, there is an issue as to whether Respondent was acting in bad faith when Respondent registered the disputed domain name based on “Hatzolah”. This is particularly so given that Complainant did not provide any evidence regarding the public recognition it might have enjoyed in 2001 in the name and mark HATZOLAH. Merely owning trademark registrations for CHEVRA HATZOLAH and HATZOLOH does not in and of itself and without more mean that a party registering a domain name based on a common word has done so in bad faith. Put another way, the trademark registrations do not ipso facto conjure up fame, notoriety or public recognition of a mark as associated with a single source. It was incumbent on Complainant to show that consumers in March 2001 would likely perceive the disputed domain name, which simply consists of the term “Hatzolah”, as more like than not associated exclusively with Complainant. Here, Complainant failed to meet this burden and has simply relied on unsubstantiated assertions of notoriety to establish its case. To be sure, conclusory allegations or assertions that are unsubstantiated with specific evidence are entitled to little or no weight. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at sections 1.3 and 3.1.

But even if the Panel were to accept that Complainant had established broad rights in HATZALAH and HATZOLAH alone by March 2001, Complainant faces yet another difficulty in this matter. From the record before the Panel, it appears that Complainant has known about Respondent for at least twenty years and that the Parties have had communications in the past. Respondent claims that Complainant was not only well aware of Respondent, but may have encouraged or given Respondent permission to use “Hatzolah” as part of its name for the provision of emergency ambulatory services in Los Angeles. Respondent also maintains that because Complainant did not have a website at its domain name <hatzalah.org> in 2001 it asked Respondent to post pictures of its rescue efforts after the World Trade Center attack in September 2001 on Respondent’s website at the disputed domain name (Respondent provided evidence in that regard).

Given that Complainant put in no actual documentary evidence regarding its activities or actual use of its claimed marks in March 2001 or earlier, apart from unsubstantiated statements, and said nothing in regards to any prior communications it might have had with Respondent prior to this proceeding, the Panel is faced with the difficulty of assessing credibility of the Parties and bad faith registration based on what evidence has been submitted. From what the Panel can determine from the evidence submitted by Respondent, which includes press articles, communications and endorsements from the relevant Jewish community, correspondence to Complainant, and archival screen captures of Respondent’s website at the disputed domain name going back to April 2001, it seems more likely than not that Complainant was well aware of Respondent for many years.1 At the very least, it appears that in or about 2001 and perhaps earlier Complainant either explicitly or implicitly consented to Respondent’s registration and use of the disputed domain name, which was used at that time in connection with a website for Respondent’s Hatzolah of Los Angeles organization, an entity that provided emergency ambulatory medical services in that geographic area.

In sum, Complainant has failed to establish that it is more likely than not that Respondent registered the disputed domain name in bad faith in March 2001 in order to take advantage of Complainant’s claimed rights in the HATZALAH, HATZOLAH, or other variant marks.

Given the apparent communications between the parties in or around 2001 or earlier, the use of the disputed domain name by Respondent for many years, the evidence of third party uses of the terms “Hatzolah”, “Hatzolah” or other variants around the world for similar ambulatory emergency rescue services and the Hebrew meaning of the terms “Hatzalah” or “Hatzolah”, it appears to the Panel that this is a case that should be adjudicated in a court action, where discovery and witnesses would be available, and not through a UDRP proceeding. In such an action, it would be assumed that a full record with cross-examination would be developed concerning (i) the use of the HATZALAH and HATZOLAH marks by Complainant and the public recognition of those marks as identifying Complainant, (ii) the strength of Complainant’s trademark rights in HATZALAH or HATZOLAH in light of third party uses and the common meaning in Hebrew of these terms, and (iii) the parties’ prior dealings, communications and actions.

Here, however, as the evidence does not show that Respondent registered the disputed domain name in bad faith in March 2001, Complainant’s complaint fails.

7. Decision

For the foregoing reasons, the Complaint is denied.

Georges Nahitchevansky
Sole Panelist
Date: April 28, 2021

1 In the Complaint, Complainant merely states that “on or about January 21, 2021, the Complainant discovered the Respondent’s website, <hatzolah.org>.” Complainant never states that it was unaware of Respondent or the registration and use of the disputed domain name before that time. Moreover, given that Complainant filed trademark applications for variants of HATZALAH, such as HATZOLOH and HATZOLAH, and made claims of acquired distinctiveness to obtain trademark registrations, it seems quite surprising, if not perhaps disingenuous, that Complainant for over twenty years was not aware of Respondent or its registration and use of the disputed domain name for an organization known as Hatzolah of Los Angeles which has provides the very same emergency ambulatory services as Complainant in Los Angeles and in particular the Jewish community there.

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