Olivera Bogdanovich-Flacco v. Paolo Weston
Claim Number: FA1901001827922
Complainant is Olivera Bogdanovich-Flacco (“Complainant”), represented by John Maldjian of Maldjian Law Group LLC, New Jersey, USA. Respondent is Paolo Weston (“Respondent”), represented by Holly Weston of Wyldfoxhunt, LLC, Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hauteyogapalmbeach.com>, registered with Godaddy.Com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 31, 2019; the Forum received payment on January 31, 2019.
On January 31, 2019, Godaddy.Com, Llc confirmed by e-mail to the Forum that the <hauteyogapalmbeach.com> domain name is registered with Godaddy.Com, Llc and that Respondent is the current registrant of the name. Godaddy.Com, Llc has verified that Respondent is bound by the 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 February 5, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 2019 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 February 5, 2019, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On February 28, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
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. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
1. Respondent’s <hauteyogapalmbeach.com> domain name is confusingly similar to Complainant’s HAUTE YOGA mark.
2. Respondent does not have any rights or legitimate interests in the <hauteyogapalmbeach.com> domain name.
3. Respondent registered and uses the <hauteyogapalmbeach.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Olivera Bogdanovich-Flacco, uses the HAUTE YOGA mark in connection with yoga instruction. Complainant holds a registration for the HAUTE YOGA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 3,532,185, registered Nov. 11, 2008).
Respondent registered the <hauteyogapalmbeach.com> domain name on August 14, 2013, and uses it to compete with Complainant.
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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that Complainant’s registration of the HAUTE YOGA mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <hauteyogapalmbeach.com> domain name uses the HAUTE YOGA mark, and simply adds the descriptive term “palm beach” and a gTLD. These changes do not sufficiently distinguish a domain name from a mark. See Avaya Inc. v. Evelyn Dayda / Avaya Unlimited Sources LLC, FA 1611255 (Forum May 4, 2015) (finding that as “the ‘usa’ portion of the disputed domain name is a generic geographic term, the internet user will assume that the domain name deals with the activities of Complainant in the USA and that it will lead to a website dealing with that subject. The domain name is therefore confusingly similar to the AVAYA mark and the Panel so finds.”); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel finds that Respondent’s <hauteyogapalmbeach.com> domain name is confusingly similar to Complainant’s HAUTE YOGA mark.
The Panel finds that complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <hauteyogapalmbeach.com> domain name, and is not commonly known by the disputed domain name. Complainant has not authorized Respondent to use the HAUTE YOGA mark in any way. The WHOIS information of record identifies the owner of the disputed domain name as “Paolo Weston.” The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent is not commonly known by the <hauteyogapalmbeach.com> domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”).
Complainant argues that Respondent uses the <hauteyogapalmbeach.com> domain name to intentionally divert users away from Complainant’s website to Respondent’s own competing website for commercial gain. Using a confusingly similar domain name that resolves to a webpage that directly competes with a complainant generally fails to indicate a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy. See Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum Feb. 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Complainant provides a screenshot of the resolving webpage for the disputed domain name, which resolves to the URL <theyogasocietypb.com> and offers yoga services. Complainant also provides a screenshot of the former webpage associated with the disputed domain name, offering yoga services in Palm Beach, Clematis, and Jupiter. The Panel finds that this use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and/or (iii), which constitutes further evidence of Respondent’s lack of rights and legitimate interests.
The Panel finds that complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent uses the domain name to trade off the goodwill associated with Complainant’s HAUTE YOGA mark to commercially benefit by offering competing services. The Panel agrees and finds bad faith under Policy ¶ 4(b)(iv). See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”).
Complainant argues that Respondent had actual or constructive knowledge of Complainant’s HAUTE YOGA mark at the time of registering the <hauteyogapalmbeach.com> domain name. Complainant contends that Respondent’s knowledge can be presumed given Respondent’s choice to use the distinctive mark in its entirety within the domain name. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii). See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”).
The Panel finds that complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <hauteyogapalmbeach.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: March 1, 2019
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