YOGABODY Naturals LLC v. GEORGE ELENIS / YOGABODY 360 LLC
Claim Number: FA2009001911945
Complainant is YOGABODY Naturals LLC (“Complainant”), California, USA. Respondent is GEORGE ELENIS / YOGABODY 360 LLC (“Respondent”), represented by Robert C. Shea, New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yogabody360studios.com>, registered with Godaddy.Com, Llc; GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Eugene I. Low as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 11, 2020; the Forum received payment on September 11, 2020.
On September 11, 2020, Godaddy.Com, Llc; GoDaddy.com, LLC confirmed by e-mail to the Forum that the <yogabody360studios.com> domain name is registered with Godaddy.Com, Llc; GoDaddy.com, LLC and that Respondent is the current registrant of the name. Godaddy.Com, Llc; GoDaddy.com, LLC has verified that Respondent is bound by the Godaddy.Com, Llc; GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 17, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 7, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@yogabody360studios.com. Also on September 17, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on October 6, 2020.
On October 13, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Eugene I. Low as Panelist.
On October 15, 2020, Respondent submitted a more legible version of Respondent's Annex 1.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name(s) be transferred from Respondent to Complainant.
A. Complainant
Complainant has rights in the YOGABODY mark through registration with the USPTO (e.g. Reg. No. 4,529,169, registered May 13, 2017). Complainant operates the <yogabody.com> domain name. Respondent’s <yogabody360studios.com> domain name is confusingly similar to Complainant’s mark, as Respondent merely adds the word "studio" to Complainant’s mark.
Respondent's company's co-owner and wife used to be a licensed teacher affiliate of Complainant. Respondent’s wife's licensing agreement to use Complainant’s mark has been revoked. Respondent does not have rights or legitimate interest in the <yogabody360studios.com> domain name.
Respondent registered and uses the <yogabody360studios.com> domain name in bad faith. Specifically, Respondent registered the domain name after the licensing agreement between Respondent's wife and Complainant was revoked. Respondent is attempting to sell Complainant’s services via the domain name. Respondent's domain name has created brand confusion for Complainant's clients.
Additionally, Complainant sent a cease and desist letter that was ignored by the Respondent.
Respondent filed for the trade mark YOGABODY 360 on August 27, 2020 with the USPTO in bad faith. Complainant is taking legal action to contest Respondent's trademark filing and other trademark and contractual violations.
B. Respondent
Respondent’s <yogabody360studios.com> domain name is affiliated with his wife's studios, not Complainant's YOGABODY, LLC. There is no confusion with Complainant's domain and business located in Barcelona, Spain. Respondent in no way confuses the market by the simple retail of Complainants' products in the yoga studios.
Respondent has rights and legitimate interest in the <yogabody360studios.com> domain name. Complainant has knowledge of Respondent's wife's limited liability corporation entitled YOGABODY 360.
Respondent did not register or use the <yogabody360studios.com> domain name in bad faith. Specifically, Respondent uses the domain name for its own business and is not attempting to compete with Complainant. Additionally, Respondent asserts that Complainant is acting in bad faith by lodging this complaint to seek royalties resulting from Respondent's and his wife's use of the domain name.
C. Additional Submissions
On October 15, 2020, Respondent submitted a more legible version of Respondent's Annex 1.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds in favor of Complainant.
Complainant has rights in the YOGABODY mark through registration with the USPTO (Reg. No. 4,529,169, registered May 13, 2017). Registration of a mark with the USPTO is generally sufficient to establish rights in a mark under Policy ¶ 4(a)(i). In addition, based on the parties' evidence and submissions, it is not disputed that Complainant has put the YOGABODY mark into actual use, and that there used to be a brand license agreement between Complainant and Respondent's wife whereby Complainant licensed the YOGABODY mark to the Respondent's wife. The Panel finds that Complainant has established the requisite rights under this element.
The Panel further finds that Respondent’s <yogabody360studios.com> domain name is confusingly similar to Complainant’s mark, as Respondent merely adds the words "360" and "studios" to Complainant’s mark. Both "360" and "studios" can be considered generic or descriptive terms with relatively weak distinguishing powers. Hence, based on an overall comparison, the Panel finds that Respondent’s <yogabody360studios.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i),
The Panel finds in favor of Complainant.
The Panel is satisfied that Complainant has made out a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Both parties' evidence suggests that Respondent's wife was aware of Complainant's rights in the YOGABODY mark and that license came to an end. A finding of no rights or legitimate interest can be made in instances where a respondent had prior permission to use a complainant’s mark, but that permission has since been revoked in some manner per Policy ¶ 4(a)(ii).
Further, despite Respondent's contentions, it is not clear to the Panel that Complainant had consented to the use of YOGABODY 360 by Respondent's wife; on the contrary, based on the available evidence, it appears that Complainant has complained since August 2019 about the use of the YOGABODY mark by Respondent's wife. Also, while the parties have submitted various pieces of evidence relating to communications between Complainant and Respondent's wife (most of which seems more related to the parties' contractual/trademark disputes which are outside the ambit of the present proceedings), it is not clear to the Panel what rights or legitimate interests Respondent has in relation to the dispute domain name. The Panel also finds that Respondent's evidence is insufficient to establish the existence of rights or legitimate interests which fall within the non-exhaustive examples stipulated by Policy ¶ 4(c).
The Panel notes from the parties' evidence that there was a USPTO trademark application filed by YOGABODY 360 LLC on August 27, 2020 for the mark YOGABODY 360. The Panel considers that this pending trademark application (which was filed after the date of the registration of the disputed domain name) is insufficient to confer the required rights or legitimate interests on Respondent under this element. In particular, the Panel considers that this is only a pending application, and its validity is being disputed by Complainant.
The Panel finds in favor of Complainant.
Complainant argues that Respondent registered and uses the <yogabody360studios.com> domain name in bad faith. The Panel concurs. Specifically, while Respondent was not a direct contracting party with Complainant, it is clear from the parties' evidence that Respondent (through his wife or otherwise) was clearly aware of Complainant's ownership of the YOGABODY mark and the previous licensing agreement between Complainant and Respondent's wife (and the subsequent termination of the license). Despite this knowledge and Complainant's complaints through emails and attorney letter, Respondent chose to register and use the disputed domain name which is confusingly similar to Complainant's YOGABODY mark. While it is beyond the ambit of these proceedings for the Panel to adjudge on Complainant's contention of actual confusion, the Panel is satisfied that based on the similarities between the disputed domain name and Complainant's mark, and the apparent similarities between the parties' business activities (e.g. Respondent suggests that it is selling Complainant's products), the required likelihood of confusion under this element is established.
The Panel notes that the parties have raised arguments on various other matters, e.g. disputes as to company name, trademark applications, contracts and royalties. These disputes are beyond the scope of the present proceedings. The Panel makes no findings thereon.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yogabody360studios.com> domain name be TRANSFERRED from Respondent to Complainant.
Eugene I. Low, Panelist
Dated: October 19, 2020
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