Babaji's Kriya
Yoga and Publications, Inc. v. Jaganathan Doraisamy represented by Kumar
Soundrapandian.
Claim Number: FA0903001252551
PARTIES
Complainant
is Babaji's
Kriya Yoga and Publications, Inc. (“Complainant”), represented by
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <babajikriyayoga.net>,
registered with Godaddy.com, Inc.
PANEL
The undersigned certifies that he or she has acted
independently and impartially and to the best of his or her knowledge has no
known conflict in serving as Panelist in this proceeding.
Beatrice Onica Jarka as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National
Arbitration Forum electronically on March 16,
2009; the National Arbitration Forum received a hard copy of the
Complaint on March 16, 2009.
On March 18, 2009, Godaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <babajikriyayoga.net> domain name is
registered with Godaddy.com, Inc. and
that the Respondent is the current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and
has thereby agreed to resolve domain-name disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On March 19, 2009, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of April 8, 2009 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s
registration as technical, administrative and billing contacts, and to
postmaster@babajikriyayoga.net by e-mail.
An electronic Response was received on April 8, 2009, however a hard copy was not received
prior to the response deadline, thus the Response was deemed deficient pursuant
to ICANN Rule #5.
The
Parties have provided the Forum with additional correspondence from Complainant
and Respondent that have been labeled as “Other Correspondence,” which do not
fulfill the requisites to comply with Supplemental Rule 7, as no supplementary fee has been paid
and none of the parties considered this correspondence as part of their
submission. In the correspondence dated April 13, the Complainant stated in
response to National Arbitration Forum
that “I am not going to pay another $400 to
include this letter as part of my submission, because it is not part of my
submission”
On April 20, 2009, pursuant to
Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Beatrice
Onica Jarka as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred
from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
The Complainant contends that:
·
It is the holder of the Service
Mark from the United States Patent and Trademark Office, registration number
3,192,544 on January 2, 2007 for “Babaji’s Kriya Yoga”, with the following
description: “For: conducting instructional programs featuring breathing
exercises, meditation, Yoga postures, mantra yoga, and karma yoga, in Class 41
(U.S. CLS. 100, 101 and 107). First use 4-0-1989, in commerce 4-0-1989.
·
It is the holder of the domain name: The complainant’s domain name is: babajiskriyayog.net
·
The disputed domain
name includes the Complainant’s trademark and differs of the Complainant’s
domain name with only one letter “s.”
·
The Respondent created
this domain on June 3, 2008, well after both the Complainant’s domain name and
service mark were registered.
·
The Respondent’s domain is a single page
website, which contains the words “Babaji’s Kriya Yoga” (as a large prominent
subtitle, three photographs of “Gurunath,” a reported spiritual teacher, with
redirects to Gurunath’s main website domain “hamsa-yoga.org.” Two of these two photographs also provide
redirects to two webcams by Gurunath.
·
The domain
“hamsa-yoga.org” offers commercial products and seminars, including books and
seminars, for sale.
·
The disputed domain
also tarnishes the Complainant’s service mark by associating it with Gurunath
and his seminars and books, which have nothing to do with the
Complainant’s services and products
especially also because Gurunath has a controversial reputation and denigrates
the Complainant’s mark.
·
The Respondent has not
been known by the disputed domain name.
·
The disputed domain
has been registered and used in bad faith for the following reasons:
- the Respondent’s domain has attempted to
attract, for commercial gain, Internet users to the Respondent’s website and to
another on line location, namely its affiliate,
hamsa-yoga.org, the domain of Gurunath, with its books, seminars and
other products and services for sale, by
creating a likelihood of confusion with our Complainant’s service mark and
domain name, as to the source, sponsorship, affiliation and endorsement of the
Respondent’s web site and its affiliate website, hamsa-yoga.org, and of the
products and services announced therein..
- The
Respondent has registered the domain name primarily for the purpose of disrupting
the business of the Complainant.
- There
is correspondence between the Complainant and representative of Gu runath regarding the latter infringement of the
Complainants’ service mark.
- The disputed
domain name has caused actual confusion with the Complainant’s service mark and
domain name on website of
International Yoga Federation, to which the Complainant is a
member organization.
B. Respondent
In the Response sent
to the National Arbitration Forum a person named Jayanathan Doraisamy,
claims to have Mr. Kumar Soundrapandian assigned to register the disputed
domain name and provides the following comments on the Complainant’s
contentions:
·
Mahavatar Babaji is
the name given to an Indian saint by Lahiri Mahasaya
and several of his disciples who met Mahavatar Babaji between 1861 and 1935.
·
Mahavatar’ means ‘great avatar’, and ‘Babaji’
simply means ‘revered father’
·
US Patent and Trademark office would not in anyways awarded
exclusive right only to the Complainant
to use its service mark and a consequence the disputed domain name is
comprised of generic terms.
·
He was visited by guru Babaji himself, in his room, instructing
him to serve Prema Matha to carry out his mission. Following such visit, he assigned
Mr. Kumar Soundrapandian as his web master for the disputed
domain name.
·
Following a new visit of Babaji, he met Yogiraj Gurunath, and was
told by Prema Matha to get Yogiraj to continue her work. At that moment he
reduced the volume of the website under the disputed domain name to one page as
displayed today.
·
He did not run a business or aided in running a business that
profited from selling its product.
·
There are also other confusing trademarks and people know what
they are looking for thus one cannot fool them or mislead them into believing
one is another merely by similarity in names
·
He will put up a big notice in his website (http://www.babajikriyayoga.net)
that it is not in anyway associated with the service mark of Marshall
Govindan’s Babaji’s Kriya Yoga.
·
The art of KRIYA YOGA does not belong to Mr. Marshall. It was
developed by the great incarnation Babaji for the benefit of all human kind,
regardless of race, religion, colour or creed.
·
Before reducing the website’s content, he put up Prema Matha’s
books for sale as they needed to raise fund for rental of hall, PA systems, video,
transport and the list can go on.
FINDINGS
The Complainant is the holder of the Service Mark from the United States Patent and Trademark
Office, registration number 3,192,544 on January 2, 2007 for “Babaji’s Kriya
Yoga”, with the following description: “For: conducting instructional programs
featuring breathing exercises, meditation, Yoga postures, mantra yoga, and
karma yoga, in Class 41 (U.S. CLS. 100, 101 and 107), with a first use in
commerce dating from 1989.
The
Respondent registered the disputed domain name on June 3, 2008. The disputed
domain name comprises the Complainant‘s trademark with a deletion of a letter
“s.”
The
disputed domain name contains one page with reference and links to Yogiraj
Gurunath and his website <hamsa-yoga.org>.
PRELIMINARY ISSUES
Preliminary Issue #1: Deficient Response
Respondent’s Response was
submitted only in electronic format prior to the Response deadline and no hard
copy was received prior to the Response deadline. Thus the National
Arbitration Forum does not consider the Response to be in compliance with ICANN
Rule 5. In order to give both parties a
fair hearing, the Panel shall consider the Response. See J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum
Oct. 17, 2003) (finding that where respondent submitted a timely response
electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature
of the breach and the need to resolve the real dispute between the parties that
this submission should be allowed and given due weight”).
Preliminary Issue #2: Other Correspondence
The Parties have provided the Forum with additional correspondence from Complainant and Respondent that have been labeled as “Other Correspondence.” The Forum has determined that this correspondence is not considered as an Additional Submission from either party because it was not accompanied by the requisite Additional Submission fee. Also, the correspondence was not directed to all parties and the Forum. The Panel chooses not to consider this Other Correspondence. Based upon the allegations in the Complaint, and the information in Respondent’s deficient Response, the Panel finds that there is sufficient information to render a decision without considering this Other Correspondence.
Preliminary Issue #3: Respondent’s Identity
The WHOIS information lists
“Kumar Soundrapandian” as the registrant of the disputed domain name, and thus
the Complaint lists “Kumar Soundrapandian” as the Respondent. The Response submits that Respondent “Mr.
Kumar Soundrapandian” was authorized to register and develop the website
resolving from the disputed domain name by “Jaganathan Doraisamy,” who wrote
the Response. Following the allegations
of Jaganathan Doraisamy, the Panel shall change the case name and information
to reflect that the Respondent in this case is Jaganathan Doraisamy represented
by Kumar Soundrapandian.
DISCUSSION
Paragraph 15(a) of the Rules for
Uniform Domain Name Dispute Resolution Policy (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 the 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 the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights;
(2) the 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.
Complainant holds BABAJI’S KRIYA YOGA mark registered
with the United States Patent and Trademark Office (“USPTO”) on January 2, 2007
(Reg. No. 3,192,544)
Complainant contends Respondent’s <babajikriyayoga.net> domain name is confusingly similar to its BABAJI’S
KRIYA YOGA mark under Policy ¶ 4(a)(i) because it simply omits the “’s” portion
of Complainant’s mark and adds the generic top-level domain “.net.”
The addition of a top-level domain is irrelevant under
Policy ¶ 4(a)(i), as it is the deletion of an apostrophe and the letter “s.”
None of these elements distinguish the disputed domain name from Complainant’s
mark.
While Respondent contends that the <babajikriyayoga.net> domain name is comprised of common, descriptive terms and as such
cannot be found to be confusingly similar to Complainant’s mark, the Panel finds
that such a determination is not necessary under Policy ¶ 4(a)(i) as this
portion of the Policy considers only whether Complainant has rights in the mark
and whether the disputed domain name is identical or confusingly similar to
Complainant’s mark. See Vance Int’l, Inc. v. Abend, FA 970871
(Nat. Arb. Forum June 7, 2007) (finding that because the complainant had
received a trademark registration for its VANCE mark, the respondent’s argument
that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex.
Int’l Prop. Assocs., FA 915206 (Nat.
Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each individual
word in the mark is unprotectable and therefore the overall mark is unprotectable
is at odds with the anti-dissection principle of trademark law.”).
In conclusion, the Panel finds that the disputed domain name is confusingly
similar to Complainant’s mark under Policy ¶ 4(a)(i). See LOreal USA Creative Inc v. Syncopate.com – Smart
Names for Startups, FA 203944 (Nat. Arb. Forum Dec. 8, 2003) (finding that
the omission of an apostrophe did not significantly distinguish the domain name
from the mark); see also Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter
“s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the
overall impression of the mark and thus made the disputed domain name
confusingly similar to it); see also Trip Network
Inc. v. Alviera, FA 914943 (Nat. Arb.
Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name
is irrelevant to a Policy ¶ 4(a)(i) analysis).
Complainant contends that the Respondent does not have rights and legitimate interest in the disputed domain name.
In this sense, the Complainant contends that Respondent is not commonly known by the disputed domain name. Such allegation is not contested in the Response, and the evidence provided by WHOIS where it is listed Kumar Soundrapandian as the registrant of the disputed domain name or in the Response indicating Jaganathan Doraisamy as the person assigning Kumar Soundrapandian to register the disputed domain name does not indicate otherwise.
Complainant submits the disputed
domain name resolves to a website that links to the <hamsa-yoga.org>
website, which offers commercial yoga-related products and seminars for sale in
competition with Complainant’s products and services. Respondent
argues that the disputed domain name is being used to operate a website
regarding the “Babaji Kriya” type of yoga that the terms of the disputed domain
name describe and to display a link to the third-party website of an individual
who is a master of the type of yoga which the terms of the disputed domain name
describes.
The
Panel does not agree with the Respondent’s allegations that it uses the
disputed domain name for
no commercial gain but for “spirituality.” The <hamsa-yoga.org>
website, which is linked to the disputed domain name provides for sale
commercial yoga-related products and seminars in competition with Complainant’s
products and services. In addition the
Respondent recognized that it used the disputed domain name to put “Prema Matha’s books for sale as they needed to raise fund
for rental of hall, PA systems, video, transport.”
Moreover the Respondent has stated that it created the disputed domain name to help Yogiraj Gurunath in his mission and this in the opinion of the Panel, reflects the direct intent of the Respondent to use the disputed domain name in order to redirect to a website that competes with Complainant.
Such use of the disputed domain
name cannot be considered a bona fide offering
of goods or services under Policy ¶ 4(c)(i), or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See DLJ Long Term Inv. Corp. v.
BargainDomainNames.com, FA 104580 (Nat.
Arb. Forum Apr. 9, 2002) (“Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods and services because Respondent is using the domain name to divert
Internet users to <visual.com>, where services that compete with
Complainant are advertised.”); see
also Ameritrade Holdings Corp. v.
Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that
the respondent’s use of the disputed domain name to redirect Internet users to
a financial services website, which competed with the complainant, was not a bona
fide offering of goods or services).
As for the argument of the Respondent that considers the terms of the <babajikriyayoga.net> domain name
descriptive and of common use, the Panel rejects it. The Complainant holds a
service mark registration from the United
States Patent and Trademark Office, registration number 3,192,544 on January 2,
2007 for “Babaji’s Kriya Yoga,” with the following description: “For:
conducting instructional programs featuring breathing exercises, meditation,
Yoga postures, mantra yoga, and karma yoga, in Class 41 (U.S. CLS. 100, 101 and 107). First use 4-0-1989, in
commerce 4-0-1989. Such registration gives the Complainant exclusive
rights under trademark law in using the said words. The Panel shall not analyze
the strength of the Complainant’s mark under the Policy, as it considers that
the proper forum to decide this is the Courts. See
Cyberbingo Corp. v. 207 Media Inc, Case No. D2005-0714 (WIPO Oct. 4, 2005) (finding that registered Trademarks for CYBERBINGO are prima
facie evidence of validity and the proper forum for considering if the
trademark CYBERBINGO lacks distinctiveness is cancellation or invalidity
proceedings).
Therefore,
the Panel finds that the Complainant has satisfied the requirements of the second
element of the Policy.
Complainant contends Respondent’s
disputed domain name links to a third-party website that competes with
Complainant’s yoga products and services.
The Panel finds that Respondent possessed a bad faith intent to register
and use the disputed domain name so as to disrupt Complainant’s business in
violation of Policy ¶ 4(b)(iii). See Am. Airlines, Inc. v.
Furthermore, Complainant contends
Respondent is using the disputed domain name to create confusion among Internet
users as to Complainant’s affiliation or sponsorship of the disputed domain
names, presumably for Respondent’s profit.
The Panel agrees and finds Respondent has registered and used the
disputed domain name in bad faith under Policy ¶ 4(b)(iv). See
The findings of the Panel are also supported by the contentions in the Response, by which the Respondent asserts that a research was made when the registration of the disputed domain name to identify those domain names which are free and comprise the words Babaji Kriya Yoga. When such search was made, it is obvious that the Respondent found out about the Complainant’s domain name.
Therefore, the Panel finds that the Complainant has satisfied also the requirements of the third element of the Policy.
DECISION
Having established all three elements required under the
ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that
the <babajikriyayoga.net>
domain name be TRANSFERRED from Respondent to Complainant.
Beatrice Onica Jarka, Panelist
Dated: May 4, 2009
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