Heart of Success, Inc. v. PRIVATE REGISTRANT / A HAPPY DREAMHOST CUSTOMER
Claim Number: FA1608001689461
Complainant is Heart of Success, Inc. (“Complainant”), represented by Marina A. Lewis of Procopio, Cory, Hargreaves and Savitch, LLP, California, USA. Respondent is PRIVATE REGISTRANT / A HAPPY DREAMHOST CUSTOMER (“Respondent”), represented by Warren L Dranit of Spaulding McCullough & Tansil LLP, California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <courageouscoachingtraining.com>, registered with DreamHost, LLC.
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.
Natalia Stetsenko as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 16, 2016; the Forum received payment on August 16, 2016.
On August 19, 2016, DreamHost, LLC confirmed by e-mail to the Forum that the <courageouscoachingtraining.com> domain name is registered with DreamHost, LLC and that Respondent is the current registrant of the name. DreamHost, LLC has verified that Respondent is bound by the DreamHost, 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 August 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 16, 2016 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 email@example.com. Also on August 22, 2016, 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 September 15, 2016.
Complainant’s Additional Submission was received on September 20, 2016, and determined by Forum to be in compliance with Rule 7.
On September 26, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Natalia Stetsenko as Panelist.
Respondent’s Additional Submission was received on September 26, 2016 and determined to be timely.
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 be transferred from Respondent to Complainant.
Complainant provides coaching and mentoring services. In furtherance of its business, Complainant uses the COURAGEOUS COACHING mark, and has gone so far as to register the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 4,074,064, registered Dec. 20, 2011), thus demonstrating its rights. See Compl., at Attached Ex. 5. Respondent’s <courageouscoachingtraining.com> domain name is confusingly similar because it incorporates the entire mark, less the space, the generic/descriptive term, “training,” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in or to the <courageouscoachingtraining.com> domain name. Respondent is not commonly known by the domain name. Further, Respondent has made no bona fide offering of goods or services, or any legitimate noncommercial or fair use of the disputed domain name. Instead, Respondent’s domain name has caused the <courageouscoachingtraining.com> domain name to redirect Internet users to Respondent’s own website located at <tribeclcc.com>, where Respondent offers directly competing coaching, mentoring, and related training services. See Compl., at Attached Ex. 6.
Respondent has registered and used the disputed domain name in bad faith. Respondent’s promotion of competing goods/services through the confusingly similar <courageouscoachingtraining.com> domain name is a clear indication of both Policy ¶¶ 4(b)(iii) and (iv) bad faith. Finally, Respondent had at least constructive knowledge of the COURAGEOUS COACHING mark and Complainant’s rights in the mark when registering and using the disputed domain name, and therefore Policy ¶ 4(a)(iii) nonexclusive bad faith is present.
Respondent does not address Policy ¶ 4(a)(i).
Respondent has a legitimate interest in the Domain Name. Respondent is “Courageous Living LLC” and has been using “courage,” “courageous,” and “courageous living” in connection with life coaching services since 2009 (see Resp., at Attached Annex 1, ¶ 5), about two years before Complainant started use of “courageous” in connection with its services. Respondent has been featured in many legitimate publications through her work on creating a “courageous” approach to life. See Resp., at Attached Annex 1, ¶ 7.
Respondent has always used the domain name in connection with its services. Prior to acquiring the disputed domain name, Respondent has used “courageous” in connection with its training services. See Resp., at Attached Ex. A–B. Respondent has therefore always used held itself out online in connection with a bona fide offering of goods or services.
Since July 2016, Respondent has caused the disputed domain name to redirect to <tribeclcc.com> per Complainant’s request that it do so as a condition for resolving this dispute. See Resp., at Attached Annex 1, ¶ 15 (referencing Ex. G, p.98 email correspondence from Complainant’s agent):
Usually the work-around is to first create a new url and redirect the courageouscoachingtraining.com to the new one so that it is not being seen by the public. ¶Then to go in and change the links in the various places on all your web pages where it appears so that there is no chance someone would see it. ¶My request is that the url be redirected within the next 2 weeks so that by May 1st the situation is resolved and the mark is no longer being used.
Respondent has not registered and used the disputed domain name in bad faith. The terms of the domain name actually refer to the services Respondent provides: “coaching training” refers to training people to actually become life coaches. This represents a different consumer and different trade channel. As such, Respondent has not intended to disrupt Complainant’s business or to profit from confusion because Respondent distinguishes itself through its services, which are aligned with the terms of the domain name. Complainant, in its Complaint, improperly sought to deceive the Panel into thinking that it owned the <courageouscoaching.com> domain name before Respondent registered the <courageouscoachingtraining.com> domain name. However, Attached Exhibit F shows a Domain Tools Report which demonstrates Complainant obtained rights in the <courageouscoaching.com> domain name mere months prior to filing this UDRP action. In doing so, Complainant has sought to misrepresent itself and mislead the Panel. In fact, Respondent had the opportunity to purchase Complainant’s domain name at the time it purchased the disputed domain name, but chose not to do so because <courageouscoachingtraining.com> more accurately represents the services and branding that Respondent has been providing since 2009.
C. Additional Submissions
Complainant erred in its Complaint regarding the registration of its <courageouscoaching.com> domain name. The September 2, 2011 creation date in the WHOIS records was the original date the domain name was registered to a domain name reseller. In fact, Complainant recently acquired the domain name from this reseller. This error was inadvertent and was not made to mislead the Panel. Regardless, the registration date of Complainant’s domain name is not dispositive of Complainant’s rights in this matter.
Respondent has attempted, and failed, to bootstrap exclusive rights in the term “courageous.” Further, Respondent has not submitted any evidence to support the assertion that she uses “courageous” as a common-law trademark. Respondent’s service mark is COURAGEOUS LIVING, not COURAGEOUS. See Compl. Add. Sub., at Ex. 1.
Respondent has failed to rebut Complainant’s Policy ¶ 4(a)(ii) arguments because the evidence in the record (and Respondent’s own Response) establish that Respondent is known by the name “Courageous Living, LLC”, and that Respondent’s principal, Kate Swoboda, has been known by the moniker “Kate Courageous.” The evidence in the record does not show that Respondent is known by “Courageous”, “Courageous Coaching”, or “Courageous Coaching Training” as shown in the Domain Name. Moreover, as discussed earlier, Respondent is not entitled to broaden the scope of her trademark rights in order to sustain a legitimate interest in the Domain Name that Respondent does not possess.
Respondent has failed to rebut Complainant’s arguments of bad faith registration and use. Moreover, Respondent’s actions suggest that she never had any intention to resolve the conflict and stop the infringement as long as two days after Complainant’s April 18, 2016 e-mail exchange with Complainant, Respondent filed an application to register COURAGEOUS COACHING TRAINING as a trademark with the U.S. Patent and Trademark Office. (Attached as Exhibit 2 to Complainant’s Additional Submission). The application is currently undergoing examination at the USPTO, and was most recently the subject of an accepted Letter of Protest in which Complainant’s nearly identical COURAGEOUS COACHING mark was cited as a potential bar to registration.
Complainant’s Additional submission is contrary to the law and must be rejected as long as it did not address any new legal principles or facts that could not have been anticipated in the Complaint. Complainant's Additional Submission only serves to affirm what was readily apparent from its Complaint.
Complainant did not prove that it has established rights in “coaching training”. Even assuming it has established such rights, those did not exist before Respondent acquired rights in the domain name <courageouscoaching.com>.
Complainant does not argue over misinforming on the date when it actually started using the <courageouscoaching.com> domain name. Complainant’s use of the domain name began just months before filing its UDRP proceedings and well after Respondent acquired rights in its domain name.
The factual history presented by the Complaint and Response confirm that, before any notice to Respondent of the dispute, Respondent had "use of the domain name or a name corresponding to the domain name in connection with a bona fide offering" of services.
Despite Complainant's protests in its Additional Submission, Respondent has accurately characterized Complainant's request to redirect the Domain Name to a different domain name.
Estoppel/Waiver by Complainant
Respondent makes the following argument in its Complaint:
“As set forth in paragraphs 43 - 46 above, Ms. Summerhawk sent an email on April 18, 2016 that urged Respondent to redirect the Domain Name to another domain name. By doing so, she stated the "the situation [would be] resolved." Respondent has done what Ms. Summerhawk has requested.
Because Respondent has complied with Ms. Summerhawk's request, Complainant cannot now complain about the use of the redirect. It is estopped from asserting, or it has waived, any right it may have had to make such a claim. For this reason alone, the Complaint should be denied.
Complainant makes the following contentions regarding Respondent’s argument:
‘Respondent’s claim that the re-direction of the Domain Name to a competing website at www.tribeclcc.com was at Complainant’s request is false and misleading. The April 2016 e-mail exchange between the parties reflects a discussion meant to address Respondent’s infringing use of the Domain Name and the possibility of amicable resolution. In that exchange, Complainant made it very clear to Respondent that the use of Complainant’s COURAGEOUS COACHING mark in a domain name (termed a “URL” in this exchange) was unacceptable and infringed her rights. (“Because my company owns the trademark it's a phrase that you'll have to immediately stop using as a url and in the web copy.) (See Decl. of Kate Swoboda, Ex. 6) The parties then discussed the possibility of Respondent re-directing her website to another domain name, one that did not infringe Complainant’s rights.
In other words, Complainant was asking Respondent to choose another domain name for use with her website, not to forward the Domain Name to a different domain name that resolved to the same website. Such a resolution would have been neither logical nor satisfactory because Complainant’s trademark would still have been associated with an infringing domain name that resolved to a competing website.
Worse yet, Respondent’s claim that she re-routed the Domain Name through her “tribeclcc.com” domain name as a means of addressing Complainant’s legitimate concerns over confusion in the marketplace is disingenuous at best. Literally two days after Complainant’s April 18, 2016 e-mail exchange with Complainant, Respondent filed an application to register COURAGEOUS COACHING TRAINING as a trademark with the U.S. Patent and Trademark Office. (Attached as Exhibit 2 is a printout from the USPTO database of Respondent’s recently filed
application.) This application is currently undergoing examination at the USPTO, and was most recently the subject of an accepted Letter of Protest in which Complainant’s nearly identical COURAGEOUS COACHING mark was cited as a potential bar to registration.”
Given that the estoppel doctrine is not incorporated into the UDRP Policy, the Panel does not find legal grounds to make determinations on estoppel claims. See Progman Consulting Oy v. Whois Watchdog, WIPO Case No. D2010-1393 (“It is by now well established that trademark doctrines of laches or estoppel have not been incorporated into the Policy”); see also Disney Enters. Inc. v. Meyers, FA 697818 (Forum June 26, 2006) (“Respondent’s efforts at arguing related equitable defenses such as estoppel and acquiescence are equally misplaced as these legal arguments are not contemplated by the Policy. Moreover, recognition of these arguments in accordance with Respondent’s desires requires the Panel to make a legal determination regarding the continuing validity of Complainant’s DISNEY mark. Such action is beyond the scope of the UDRP proceeding and if Respondent desires such an outcome it should avail itself of the proper judicial proceedings by which such a result might be accomplished.”).
Therefore, the Panel opts to proceed with the traditional UDRP analysis.
Complainant provides coaching and mentoring services, including coach training to become a life coach, business coach or money coach (See Compl., at Attached Ex. 5. USPTO registrations confer rights in a mark.).
Complainant has established trademark rights in the COURAGEOUS COACHING® under the Federal Registration No. 4,074,064 for the mark COURAGEOUS COACHING in standard characters, filed May 11, 2011, registered December 20, 2011, and asserting a first use date of February 2, 2011 in connection with “educational and entertainment services, namely, conducting classes, workshops, seminars in the field of money acquisition and management and distribution of course materials in connection therewith, and education consulting related thereto; professional coaching services in the field of money acquisition and management” in International Class 41.
Respondent provides life coaching services. Respondent has been a life coach since at least 2006 and has been continuously using the term “courageous” in its services centering the same around the concepts “courageous”, “courageous life”.
Respondent registered the disputed domain name on January 5, 2014 and has used it since that date to promote its coaching training services.
Complainant acquired its <courageouscoaching.com> domain name on April 7, 2016 from a domain name re-seller.
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 name; and
(3) the domain name has been registered and is being used in bad faith.
Previous Panels have generally held that Complainant has demonstrated that it has rights in a trademark based on registrations with the USPTO. See Dell Inc. v. Rino Manangkalangi, FA 1626784 (Forum Aug. 5, 2015) (holding that Complainant has rights in the ALIENWARE trademark and service mark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with the USPTO.). The Panel thus finds that Complainant has demonstrated its rights in the COURAGEOUS COACHING mark under Policy ¶ 4(a)(i).
The Respondent’s <courageouscoachingtraining.com> incorporates the entire Complainant’s mark, less the space, the generic/descriptive term, “training,” and the “.com” gTLD, which makes it confusingly similar to the Complainant’s registered trademark. Alterations, such as additions of generic terms and a gTLD have not been considered distinguishing. See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”); see also Novell, Inc. v. Taeho Kim, FA 167964 (Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”).
Therefore, the Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
Respondent argues that it has a legitimate interest in the disputed domain name as long as it is “Courageous Living LLC” and has been using the terms “courage,” “courageous,” and “courageous living” in connection with life coaching services since 2009 (see Resp., at Attached Annex 1, ¶ 5), about two years before Complainant started use of “courageous” in connection with its services in 2011.
Respondent further asserts it has been featured in many legitimate publications through her work on creating a “courageous” approach to life. See Resp., at Attached Annex 1, ¶ 7. Respondent also argues that she has always used the domain name in connection with her services. Prior to acquiring the disputed domain name, Respondent has used “courageous” in connection with its training services. See Resp., at Attached Ex. A–B.
The records of the case show that the domain name acquired by Respondent is descriptive of the services it has offered online since the domain name registration date. As mentioned, Respondent had been in coaching services, providing training under the name “Courageous”, before Complainant’s rights in the mark “COURAGEOUS COACHING” emerged. Furthermore, as follows from the evidence on the record, both parties target different audiences, which support Respondent’s allegations that it relied on the generic values of the words “coaching” and “training” in its bona fide offering of services.
Previous Panels have agreed that a bona fide offering may exist where a domain name’s use corresponds to the terms of the domain name itself. See Canned Foods, Inc. v. Ult. Search Inc., FA 96320 (Forum Feb. 13, 2001) (stating that “Respondent is using the domain name <groceryoutlet.com> for a website that links to online resources for groceries and similar goods. The domain name is therefore being used to describe the content of the site,” as evidence that the respondent was making a bona fide offering of goods or services with the disputed domain name name); see also Walsh Bishop Assocs. v. Honggi, Honggi Kim, FA 907521 (Forum Mar. 6, 2007) (“[A] respondent may have a legitimate interest in a domain name name if the domain name name is used to profit from the generic value of the word, without intending to take advantage of complainant’s rights in that word.”).
Therefore, the Panel agrees that the circumstances of the instant case indicate that Respondent has not attempted to take advantage of the trademark value of Complainant’s mark and has made a bona fide offering of services per Policy ¶ 4(c)(i).
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii) and that Respondent overcame the complainant’s burden showing it has rights and legitimate interests in the domain name. See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Having established that Respondent has rights and legitimate interests in the <courageouscoachingtraining.com> domain name pursuant to Policy ¶ 4(a)(ii), the Panel also finds that Respondent did not register or use the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Lockheed Martin Corp. v. Skunkworx Custom Cycle, D2004-0824 (WIPO Jan. 18, 2005) (finding that the issue of bad faith registration and use was moot once the panel found the respondent had rights or legitimate interests in the disputed domain name); see also Vanguard Group Inc. v. Investors Fast Track, FA 863257 (Forum Jan. 18, 2007) (“Because Respondent has rights and legitimate interests in the disputed domain name, his registration is not in bad faith.”).
The Panel finds that Respondent selected the domain name for its website in good faith for the following reason:
- the name is descriptive of its services (according to Respondent, “coaching training” refers to training people to actually become life coaches; and represents a different target consumer and different trade channel altogether),
- the fact that the domain name exactly matching the Complainant’s mark, which was available for purchase at the time Respondent acquired its domain name, was not chosen by Respondent serves yet another evidence that it aimed at profiting from generic value of the words based on their descriptiveness and not the reputation associated with the Complainant’s mark due to confusion with Complainant’s services,
- the case records do not show that Complainant promoted its services online before the registration date of the disputed domain name. Although Complainant argues that Respondent had at least constructive knowledge of the COURAGEOUS COACHING mark and Complainant’s rights in the mark when registering and using the disputed domain name, and therefore Policy ¶ 4(a)(iii) nonexclusive bad faith is present, panels often do not consider constructive notice as a valid argument under the Policy. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”). Moreover, in the exchange of correspondence between the parties, Complainant recognizes itself that Respondent might have been unaware that it was using Complainant’s registered mark in its domain name.
Past Panels have agreed that if the terms of a disputed domain name actually reflect its purpose, then there may be no bad faith. See Successful Money Mgmt. Seminars, Inc. v. Direct Mail Express, FA 96457 (Forum Mar. 7, 2001) (finding the domain name <seminarsuccess.com> to be generic and that the respondent registered and used the domain name in good faith “because Respondent selected the name in good faith for its web site, and was offering services under the domain name prior to the initiation of the dispute”); see also Schering AG v. Metagen GmbH, D2000-0728 (WIPO Sept. 11, 2000) (finding that the respondent did not register or use the domain name <metagen.com> in bad faith where the respondent registered the domain name in connection with a fair business interest and no likelihood of confusion was created).
Therefore, the Panel finds that Complainant has failed to meet the requirements of Policy ¶ 4(a)(iii).
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <courageouscoachingtraining.com> domain name REMAIN WITH Respondent.
Natalia Stetsenko Panelist
Dated: October 10, 2016
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