It's Yoga International, LLC v. Private Protection Co.LTD
Claim Number: FA1205001444954
Complainant is It's Yoga International, LLC (“Complainant”), represented by David A. Wheeler of Greenberg Traurig, LLP, Illinois, USA. Respondent is Private Protection Co.LTD (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <itsyoga.com> and <itsyoga.net>, registered with TODAYNIC.COM, INC.
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.
Francine Tan as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 18, 2012; the National Arbitration Forum received payment on May 21, 2012.
After numerous requests, the Registrar, TODAYNIC.COM, INC., has not confirmed to the National Arbitration that the <itsyoga.com> and <itsyoga.net> domain names are registered with TODAYNIC.COM, INC. or that the Respondent is the current registrant of the names. Registrar’s non-compliance has been reported to ICANN. The Forum’s standing instructions are to proceed with this dispute.
On June 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 25, 2012 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@itsyoga.com and postmaster@itsyoga.net. Also on June 5, 2012, 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 June 25, 2012.
Complainant submitted an Additional Submission on July 2, 2012 that was deemed to be in compliance with Supplemental Rule 7.
Respondent submitted an Additional Submission on July 9, 2012 that was also deemed to be in compliance with Supplemental Rule 7.
On July 2, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Francine Tan as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant
The Complainant‘s IT’S YOGA marks were first used in commerce January 1, 1989 and its U.S. federal registrations date from September 18, 2007.
The original registered owner of the IT’S YOGA marks in the U.S. was It’s Yoga LP Limited Partnership (“IYLP”), the founder being Larry Schultz (“Schultz”) who operated his studio and classes using the IT’S YOGA marks. Schultz started teaching yoga in San Francisco in 1989 and over the years became very well known in his field, developing his own teaching techniques which gained popularity among yoga enthusiasts. Together with his wife, he taught yoga, not only in San Francisco but around the world.
The domain names <itsyoga.com> and <itsyoga.net> (collectively, “the disputed domain names”) were registered by IYLP on July 18, 1998 and November 28, 2000, respectively, in the name of “It’s Yoga, 848 Folsom, San Francisco, California 94107” which was the address of IYPL at the time. Not being a computer-literate person himself, Schultz relied on his younger and more computer-literate students and instructors to register the domains, and to set up and periodically update the websites. One of those students was a James Treanor (“Treanor”) whose email addresses were listed as the domains’ administrative and technical contacts on behalf of Schultz and IYPL.
Treanor understood that the disputed domain names were the property of IYPL and submitted with the Complaint is evidence of an admission by Treanor that he had been asked by Schultz to consolidate access to the domains from previous staff members to prevent their future access (Exhibit F of Complaint). The evidence consists of an email of March 23, 2010 in which Treanor also stated that he would transfer the disputed domain names to Schultz whenever the latter asked for them. Around the same period of time, Treanor moved to Hong Kong to set up a yoga studio, creating the entity “It’s Yoga, Limited”, and became a licensee of the IT’S YOGA marks in Asia. Pursuant to the licence agreement dated March 31, 2010, the parties agreed to licence the IT’S YOGA marks for Treanor’s use with various domains, none of which included the disputed domain names; and the disputed domain names were not identified in the agreement as owned or developed by Treanor.
Schultz passed away in February 2011 and news of his death spread quickly through the entire yoga community. In April 2011, Treanor changed the registrant for the disputed domain names to his Hong-Kong based entity, “It’s Yoga, Limited” and then to the China-based privacy service where they currently reside.
The changes to the disputed domain names were made without Schultz’s authorization nor that of anyone else at IYPL. Neither was any consideration paid by Treanor for the disputed domain names. When asked to return the disputed domain names, Treanor claimed that ownership was conferred to him though the licence agreement. He also claimed that Schultz had given the disputed domain names to him pursuant to an earlier oral agreement which is inconsistent with the fact that there is evidence that Schultz had himself instructed Treanor to transfer the disputed domain names to his control while he was alive, and Treanor had refused.
Founded by Schultz’s widow, the Complainant is the owner of the IT’S YOGA marks along with the intellectual property rights of the now defunct IYLP. The Complainant has continued the instruction of yoga to students and teachers alike and has affiliate studios across the U.S. and around the world, continuing Schultz’s legacy of “Rocket training of Ashtanga Vinyasa Yoga”.
The Complainant asserts that:
1. The disputed domain names are confusingly similar to the IT’S YOGA mark in which the Complainant has rights. The only difference between the disputed domain names and the Complainant’s mark lies in the apostrophe and space between the words. The inclusion of a top level domain name, e.g. “.com” is considered irrelevant. Further, under U.S. law, the points of comparison for a word mark are appearance, sound and meaning or connotation. The Respondent’s use of the website under the domain name <itsyoga.com> is causing confusion and is diluting and tarnishing the goodwill and value associated with the Complainant’s IT’S YOGA marks.
The Complainant’s trademark registration of September 18, 2007 predates Treanor’s April 2011 registration of the disputed domain names.
2. The Respondent has no rights or legitimate interests in respect of the disputed domain names. At the time of the licence agreement, the disputed domain names were owned by IYLP. The disputed domain names were not in the list of domain names covered by the agreement and one of the clauses therein provides that “All rights not expressly granted to the Company hereunder are reserved by [IYLP]” (Clause 6(a)). Treanor’s actions in transferring the disputed domain names were not authorized and are outside the scope of any licence to use the Complainant’s IT’S YOGA trade marks.
3. The disputed domain names were registered and are being used in bad faith.
Registration in bad faith
3.1 Whilst the Policy provides examples of circumstances which, if found, would constitute evidence of bad faith registration and use, it is well settled that panelists may consider factors outside of those set out in paragraph 4(b) of the Policy as those examples are not exhaustive. The factors put forward by the Complainant are:
(i) Treanor had actual knowledge of the IT’S YOGA marks and this is demonstrated by (a) his licensing them for use overseas; (b) his previous role as the technical and administrative contact for each domain name; and (c) his copying and mimicking portions of the Complainant’s website, and the name and likeness of Schultz.
(ii) Treanor’s transfer of ownership of the disputed domain names shortly after Schultz’s death, having been a former trusted business partner, demonstrates bad faith registration. Further, Treanor had agreed that the disputed domain names belonged to Schultz, the owner of IYLP, and yet later refused to transfer the domains names to him. He had, upon the untimely death of Schultz, taken the opportunity to consolidate control over and convert the disputed domain names for his commercial gain. He was entrusted with the password to the trademark owner’s website and took the opportunity to transfer the disputed domain names to his control without authorization.
Use in bad faith
3.2 The Respondent uses the disputed domain names to misdirect, mislead and confuse Internet users seeking information about the Complainant’s services. Not only do the websites direct to the same services as the Complainant and its IT’S YOGA marks, but the websites also use the name, images and techniques of Schultz to give the false impression that the websites represent the same business the Complainant. Apart from the soliciting of business, the Respondent lists among its locations those in the U.S. which further confuses consumers as to the source or origin of its services.
3.3 The Respondent uses the disputed domain names to misdirect e-mails sent to the former IYLP yoga instructors as well as a general information email address, from which the Respondent can commercially gain to solicit business.
3.4 The Respondent’s conduct is squarely within the illustration of bad faith set forth in paragraphs 4(b)(iii) and (iv) of the Policy.
B. Respondent
4.1 The Respondent contends that at the time the disputed domain names were transferred from Schultz to the Respondent, Schultz was not yet married and therefore the disputed domain names were therefore never part of the marital estate. Schultz had a right to file a UDRP Complaint during his lifetime but not his widow as she never owned the domain names.
4.2 The disputed domain names are not identical or confusingly similar to a trade mark or service mark in which the Complainant has rights. The disputed domain names refer to a common phrase “it is yoga” (abbreviated as “it’s yoga). It is also not confusingly similar as the Complainant licensed the content to the Respondent and the Respondent is free to use this licensed and trade marks as he chooses.
4.3 The Respondent has rights or legitimate interests in respect of the disputed domain names as they are used to the promote the yoga business of the Respondent, It’s Yoga Limited. A licence was purchased to use the Complainant’s trade marks, service marks and other intellectual property.
4.5 The Respondent has been offering yoga services under the disputed domain names for nearly 10 years. What the Complainant is seeking to do is infringing on the Respondent’s rights. The Complainant’s attorneys made multiple offers to buy the disputed domain names for $5,000 which amounts to an admission by the Complainant that the Respondent owns the disputed domain names.
4.6 The Respondent has been commonly known by the disputed domain names, even if the Respondent has not acquired trademark rights. The Respondent has registered trade marks for the Chinese translation of IT’S YOGA as well as the stylized logo.
4.7 The disputed domain names should not be considered as having been registered and being used in bad faith. The domain names were transferred nearly 10 years ago and the Respondent had forgotten to update the data in Whois.
C. Additional Submissions
An Additional Submission was timely submitted on July 2, 2012 by the Complainant, in which the Complainant submits, inter alia, that:
a) The Respondent has no rights to the disputed domain names which were transferred and used in bad faith to support the Respondent’s competing business in Hong Kong. The Respondent has not rebutted the Complainant’s prima facie case and therefore the disputed domain names should be transferred to the Complainant.
b) The Respondent has not disputed the Complainant is the owner of the IT’S YOGA marks and admits that he does not have any independent rights to the mark.
c) The Respondent has not pointed out any differences between the Complainant’s marks and the disputed domain names.
d) The Respondent has no rights in the disputed domain names, either through Treanor’s earlier work with IYLP or through any licence agreement. The Respondent has not been offering yoga services at the disputed domain names for nearly 10 years as claimed; rather, it was IYLP which offered yoga services at the disputed domain names until the Respondent transferred them in 2011. Treanor was a student of Schultz and did not offer any yoga services on his own. At the same time the Respondent claims to have been offering yoga services at the disputed domain names, each of the domain names were in fact registered in the name of IYLP of 848 Folsom, San Francisco, CA 94108. The Respondent’s purported ownership and use of the disputed domain names for 10 years derives entirely from Treanor’s e-mail addresses being listed as the administrative and technical contacts for each of the domain names. On March 19, 2010, the administrative and technical contacts for <itsyoga.com> was listed as “Larry Schultz” reachable at IYLP’s former offices and at the e-mail address jstreanor@hotmail.com. Similarly, the administrative and technical contacts for <itsyoga.net> was listed as IYLP at the same address as the registrant, and with the e-mail address james@treanor.com. Each of the disputed domain names were registered to IYLP.
e) The Respondent has not provided any evidence that he was operating any business at the disputed domains before he took them for his competing services. The Respondent never offered its own yoga services until Treanor moved to Hong Kong in 2009, as a licensee of IYLP. The earliest licence agreement was dated 20 December 2009; the Chinese trade mark was applied for by the Respondent on September 3, 2009.
f) The Respondent agrees that the “Offending domains are not listed in the agreement as they were not part of this Master Licence and Marketing Agreement”.
g) The Respondent claims to have forgotten to update the data in Whois for the disputed domain names. Such an “update” would have been a surprise as both domains were being used at the relevant time in association with IYLP, not the Respondent.
h) The Respondent’s use of the disputed domain names has completely deprived the trademark owner of all use of the domains, from which it solicits business.
i) The Respondent’s other arguments do not address the Complainant’s prima facie case and should be disregarded. Firstly, the Complainant is It’s Yoga International, the trademark owner and successor-of-interest of IYLP. The date of Schultz’s wedding has nothing to do with the Complainant’s rights which the Respondent does not dispute. Secondly, the monetary offers were an attempt to settle the matter before bringing this UDRP proceeding. Thirdly, these proceedings are not the proper venue for the Respondent to make claims of infringement of its rights; nor are these claims any justification for the Respondent’s actions.
An Additional Submission was submitted by the Respondent on July 10, 2012, as a further response, in which it submits, inter alia, that:
(i) Treanor was both a student and business associate of Schultz, and was given the disputed domain names almost 10 years ago.
(ii) The licence (clause 6(c)) allows and authorizes the Respondent to file for trademark protection and agrees that the Respondent shall have exclusive ownership rights in these territories. The Respondent has a broad license to use the Complainant's rights in many countries around the world, which Respondent is currently doing. The disputed domain names are therefore not used in bad faith.
(iii) The Complainant is employing a divide and conquer strategy to deprive the Respondent of the rights to use his property, and harass the Respondent as it has no legal means to cancel the Master License and Marketing Agreement. The Master License and Marketing Agreement authorizes the Respondent to use the IT’S YOGA trade marks on many websites and for many purposes, and the Respondent is not limited to the domains listed in the Agreement.
FINDINGS
The disputed domain names are confusingly similar to the IT’S YOGA trademarks in which the Complainant has rights.
The Respondent has no legitimate rights or interests in respect of the disputed domain names.
The disputed domain names have been registered and are being used in bad faith.
DISCUSSION
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 Complainant has established it has trademarks rights to IT’S YOGA. The Panel is of the view that the disputed domain names are essentially identical and/or confusingly similar to the IT’S YOGA mark: it is a well-accepted principle, when considering the issue of whether a domain name is identical or confusingly similar, that spaces, punctuation marks and the generic top level domain are to be disregarded. As the mark IT’S YOGA is incorporated in its entirety in the disputed domain names, the Panel finds that paragraph 4(a)(i) of the Policy has been established by the Complainant.
The fact that the mark comprises common words or a common phrase does not affect the Panel’s finding as the Policy provides that the first requirement under paragraph 4(a) would be met if the Complainant can show it has trademark rights and the disputed domain names and identical or confusingly similar thereto.
As has been established in many previous UDRP decisions (e.g. Hanna-Barbera Prods, Inc. v. Entm’t Commentaries, FA 741828, Nat. Arb. Forum, Aug. 18, 2006; AOL LLC v. Gerberg, FA 780200, Nat. Arb. Forum, Sept. 25, 2006), the Complainant is obliged to establish a prima facie case that the Respondent lacks rights or legitimate interests in respect of the disputed domain names. If that burden is met, the Respondent would then have to prove otherwise.
In this case, the Complainants contend that they did not authorize, license or permit the Respondent to transfer the disputed domain names to It’s Yoga, Limited and to use it in relation to its business and website. The disputed domain names were not included within the scope of the licence agreement. The Panel has noted Clause 6(a) of the licence agreement which specifically mentions that all rights not expressly granted are reserved by IYLP. In the Panel’s view, the granting of rights to the disputed domain names would, in any event, have been inconsistent with the communication around the same period which Schultz had with Treanor regarding the disputed domain names. The Panel concludes from the evidence submitted by the Complainant (including the various e-mail correspondence with Treanor and the issue of the disputed domain names; the original domain name registrant’s details and those of the technical and administrative contacts; and the absence of evidence that the Respondent has been known by or has been using the disputed domain names in relation to its yoga business prior to the transfer) that it has established a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain names.
The Panel next has to consider whether the Respondent has substantiated its claim that it has rights or legitimate interests in respect of the disputed domain names. On this issue, the Respondent relies upon the licence agreement and its claim that it has been offering yoga services for nearly 10 years. In relation to the latter point, it states in the Response that the “Complainant has submitted no proof to the otherwise”. The Panel, however, disagrees with this statement. Having found that the Complainant has established a prima facie case, it is for the Respondent to furnish evidence in support of its claim of having offered yoga services in the years before, especially where it would naturally be easier for the Respondent to do so than for the Complainant to prove a negative.
The Panel finds no evidence that the Respondent has been commonly known by the disputed domain names even if it has not acquired trademark rights (paragraph 4(c)(ii) of the Policy).
The Panel also considers the Respondent’s argument that it purchased the licence and that the disputed domain names are used in relation to its It’s Yoga Limited’s business (as the bases for its rights or legitimate interests in the disputed domain names), to be flawed. There is no evidence that the licence agreement extends to the Respondent the freedom to register and use the disputed domain names which had prior to the transfer been used in relation to IYPL’s business. The licence agreement does include recognition of the Respondent’s other domains and websites which are relevant and correspond to the specific territories identified in the agreement, but there is nothing on the face of the agreement which accords with what the Respondent is asserting.
The other arguments the Respondent put forward as the bases for its claim to having rights or legitimate interests in respect of the disputed domain names is that they are used to the promote its yoga business, and that the disputed domain names essentially consist of a common phrase, “it’s yoga”. In this regard, the Panel agrees with the consensus view set out in Paragraph 2.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0") relating to the issue of whether a respondent automatically has rights or legitimate interests in a domain comprising dictionary words is applicable in this case:
“If the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the UDRP, or any other basis for rights or legitimate interests, then the respondent may lack a legitimate interest in the domain name, even if it is a domain name comprised of a dictionary word or phrase. Factors a panel tends to look for when assessing whether there may be rights or legitimate interests would include the status and fame of the trademark, whether the respondent has registered other domain names containing dictionary words or phrases, and whether the domain name is used in connection with a purpose relating to its generic or descriptive meaning (e.g., a respondent may well have a right to a domain name "apple" if it uses it for a genuine site for apples but not if the site is aimed at selling computers or MP3 players, for example, or an inappropriate other purpose). Panels have recognized that mere registration of a domain name, even one that is comprised of a confirmed dictionary word or phrase (which may be generic with respect to certain goods or services), may not of itself confer rights or legitimate interests in the domain name. Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the relied-upon meaning (and not, for example, to trade off third-party rights in such word or phrase)”. (Italics added.)
In this case, IT’S YOGA is a registered mark of the Complainant which the Respondent recognizes and purchased a licence to use. The Respondent cannot at the same time seek to claim it has rights or legitimate interests in the disputed domain names based on the generic meaning of the phrase contained therein. What the Respondent seeks to do amounts to trading off the Complainant’s rights in the phrase and to use the disputed domain names in relation to directly competing services.
The Panel is inclined to agree with the Complainant’s assertion that the Respondent’s use of the disputed domain names has had the effect of depriving the trademark owner and successor in title of the business of all use of the disputed domain domains. The Panel is persuaded that the Respondent’s intention has been to misleadingly attract customers to the Respondent's website for commercial advantage.
The Panel is consequently of the view that the circumstances surrounding this case do support a finding that the Respondent has no rights or legitimate interests in respect of the disputed domain names The second element of the Policy, paragraph 4(a), has therefore been met.
Paragraph 4(b) of the UDRP provides that the following circumstances, if found to be present, “shall be evidence of the registration and the use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
The Panel concludes, after due consideration of the evidence in this case, that the Respondent’s registration and use of the disputed domain names have been in bad faith. The refusal (prior to Schultz’s passing) to transfer the domain names where there is no evidence that the Respondent has a legitimate interest or right to the domain names, and the transfer of the disputed domain names soon after Schultz’s passing, are circumstances which demonstrate that the Respondent’s registration was in bad faith. The use of the disputed domain names by the Respondent in relation to its business was unauthorized and outside the scope of the latter’s licenced rights. The Respondent’s intention appears to have been to disrupt the business of the Complainant and to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the Complainant's mark as to the source of the website.
The third element of the Policy, paragraph 4(a), has therefore been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <itsyoga.com> and <itsyoga.net> domain names be TRANSFERRED from the Respondent to the Complainant.
Francine Tan, Panelist
Dated: July 16, 2012
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