Yoga Works, Inc. v. Jenna Arpita d/b/a
Shanti Yoga Works
Claim
Number: FA0304000155461
Complainant is
Yoga Works, Inc., Santa Monica, CA, USA (“Complainant”) represented
by Marvin H. Kleinberg, of Kleinberg & Lerner, LLP. Respondent
is Jenna Arpita d/b/a Shanti Yoga Works, Nelson, BC, CA
(“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <shantiyogaworks.com>, registered with Go
Daddy Software, Inc.
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.
John
J. Upchurch as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on April 23, 2003; the Forum received a hard copy of the
Complaint on April 25, 2003.
On
April 24, 2003, Go Daddy Software, Inc. confirmed by e-mail to the Forum that
the domain name <shantiyogaworks.com> is registered with Go Daddy
Software, Inc. and that Respondent is the current registrant of the name. Go
Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy
Software, 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
May 2, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 22, 2003 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@shantiyogaworks.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
June 4, 2003, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the Forum appointed John J. Upchurch 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."
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.
A. Complainant makes the following assertions:
1. Respondent’s <shantiyogaworks.com>
domain name is confusingly similar to Complainant’s YOGA WORKS mark.
2. Respondent does not have any rights or
legitimate interests in the <shantiyogaworks.com> domain name.
3. Respondent registered and used the <shantiyogaworks.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Yoga Works, Inc., owns several trademark registrations for the YOGA WORKS mark,
including U.S. Reg. No. 2,022,243 (registered on December 10, 1996) and
Canadian Reg. No. TMA442,252 (registered on April 28, 1995). Complainant has
used its mark in commerce since as early as 1987 as a provider of yoga related
goods and services. Complainant also operates a website at the
<yogaworks.com> domain name, providing information about its yoga studio
and services in Santa Monica, California.
Respondent,
Jenna Arpita d/b/a Shanti Yoga Works, registered the <shantiyogaworks.com>
domain name on September 20, 2002, and is not licensed or authorized to use
Complainant’s YOGA WORKS mark for any purpose. Respondent hosts a website at
the disputed domain name which provides scheduling and other information
pertaining to Respondent’s yoga studio in Nelson, British Columbia.
Respondent’s website includes the “Shanti Yoga Works” logo at the upper left
portion of the page. Respondent also displays a hyperlink to its “small legal
department” which links Internet users to a webpage that illustrates the
communications that have transpired between Complainant’s cease and desist
efforts against Respondent and Respondent’s response that Complainant didn’t
“protect their trademark, so they lost their exclusive claim” to use the
mark.
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."
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(e), 14(a) and 15(a) of the Rules and
draw such inferences it considers appropriate pursuant to paragraph 14(b) of
the Rules.
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.
Complainant has
established rights in the YOGA WORKS mark through registration of the mark in
the with the U.S. Patent and Trademark Office and with the Canadian
Intellectual Property Organization.
Respondent’s <shantiyogaworks.com>
domain name is confusingly similar
to Complainant’s YOGA WORKS mark. Respondent’s domain name entirely
incorporates Complainant’s YOGA WORKS mark with the addition of the word
“shanti.” The dominant feature of the domain name is Complainant’s mark, and
the word “shanti” does not dispell the confusing similarity between the mark
and the domain name. See Pfizer, Inc. v. Papol Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name
incorporates the VIAGRA mark in its entirety, and deviates only by the addition
of the word “bomb,” the domain name is rendered confusingly similar to
Complainant’s mark); see also Vivid
Video, Inc. v. Tennaro a/k/a Vivid Revolution, FA 126646 (Nat. Arb. Forum
Nov. 14, 2002) (finding that any distinctiveness resulting from Respondent’s
addition of a generic word to Complainant’s mark in a domain name is less
significant because Respondent and Complainant operate in the same industry).
Accordingly, the
Panel finds that the <shantiyogaworks.com> domain name is confusingly similar to Complainant’s YOGA WORKS mark under
Policy ¶ 4(a)(i).
Complainant can
make a prima facie case that Respondent has no rights or legitimate
interests in the <shantiyogaworks.com> domain name by
demonstrating that the “safe harbor” provisions of Policy ¶¶ 4(c)(i)-(iii) do
not apply to Respondent. With such a showing, Complainant’s burden of
demonstrating rights or legitimate interests in the domain names shifts to
Respondent. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Oct. 1, 2002) (holding where Complainant has asserted that Respondent has no
rights or legitimate interests with respect to the domain name it is incumbent
on Respondent to come forward with concrete evidence rebutting this assertion
because this information is “uniquely within the knowledge and control of the
respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624
(WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has
no rights or legitimate interests with respect to the domain, the burden shifts
to Respondent to provide credible evidence that substantiates its claim of
rights and legitimate interests in the domain name).
Respondent did not respond to the Complaint in this administrative
proceeding. Under the circumstances, the Panel chooses to view Respondent’s
failure to respond as evidence that it lacks rights or legitimate interests in
the disputed domain name. See Pavillion Agency, Inc. v. Greenhouse
Agency Ltd., D2000-1221
(WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be
construed as an admission that they have no legitimate interest in the domain
names); see also Geocities v.
Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has
no rights or legitimate interests in the domain name because the Respondent
never submitted a response or provided the Panel with evidence to suggest
otherwise).
Due to
Respondent’s default, the Panel also chooses to view the Complaint in a light
most favorable to Complainant, and will draw all appropriate and factually
substantiated inferences in favor of Complainant. See Vertical Solutions
Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31,
2000) (holding that Respondent’s failure to respond allows all reasonable
inferences of fact in the allegations of Complainant to be deemed true); see
also Ziegenfelder Co. v. VMH Enter.,
Inc., D2000-0039 (WIPO Mar. 14, 2000) (drawing two inferences based on
Respondent’s failure to respond: (1) Respondent does not deny the facts
asserted by Complainant, and (2) Respondent does not deny conclusions which
Complainant asserts can be drawn from the facts).
Respondent
operates a yoga studio in Nelson, British Columbia, at the <shantiyogaworks.com>
domain name, and includes a logo on its homepage which says “Shanti Yoga
Works.” Complainant registered its YOGA WORKS mark with the Canadian
Intellectual Property Organization more than seven years before Respondent
registered the disputed domain name and began providing services under
Complainant’s mark. Granted, Respondent operates what appears to be a fully
operative website related to the providing of yoga services at its studio in
Canada, a studio that is geographically distant from that of Complainant.
However, Respondent does not have the right to operate such services under the
disputed domain name, incorporating Complainant’s entire registered mark,
especially as Complainant was granted a trademark registration for the mark in
Respondent’s country of domicile. The fact remains that searches for
Complainant’s mark online will lead Internet users to Respondent’s website, who
was never authorized to utilize the YOGA WORKS mark. Such unauthorized use
dilutes Complainant’s registered mark. Without any evidence before the Panel to
rebut Complainant’s assertions against Respondent, the Panel finds that the
providing of information and services under Complainant’s mark is not a “bona
fide” offering of goods or services pursuant to Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use of a domain name pursuant to Policy ¶
4(c)(iii). Thus, these provisions are inapplicable to Respondent. See MBS
Computers Ltd. v. Workman, FA
96632 (Nat. Arb. Forum Mar. 16, 2001) (finding no rights or legitimate
interests when Respondent is using a domain name identical to Complainant’s
mark and is offering similar services); see also N. Coast Med., Inc. v. Allegro Med., FA
95541 (Nat. Arb. Forum Oct. 2, 2000) (finding no bona fide use where Respondent
used the domain name to divert Internet users to its competing website).
Respondent lists its name as “Shanti Yoga Works” in its WHOIS contact
information and includes a logo on its website with this name. However, given
Respondent’s failure to respond to the Complaint, there is no affirmative
evidence before the Panel that Respondent was ever “commonly known by” the
disputed domain name prior to its registration of the disputed domain name. On
the other hand, Complainant’s registration of the YOGA WORKS mark predates
Respondent’s registration of the disputed domain name by over seven years, and
Complainant has not licensed or authorized Respondent to operate under
Complainant’s trademark. Thus, the Panel finds that Respondent is not “commonly
known by” the disputed domain name for the purposes of Policy ¶ 4(c)(ii). See
RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001)
(Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been
commonly known by the domain name prior to registration of the domain name to
prevail"); see also Charles
Jourdan Holding AG v. AAIM, D2000-0403 (WIPO
June 27, 2000) (finding no rights or legitimate interests where (1) Respondent
is not a licensee of Complainant; (2) Complainant’s prior rights in the domain
name precede Respondent’s registration; (3) Respondent is not commonly known by
the domain name in question).
Respondent did not submit a response to the Complaint in this dispute.
Complainant’s Complaint has sufficiently established a prima
facie case against Respondent having no rights or legitimate interests in
the disputed domain name. Thus, Respondent’s failure to rebut Complainant’s
assertions results in its inability to meet the burden that shifted to
Respondent upon Complainant’s establishment of a prima facie case.
Accordingly, the
Panel finds that Respondent does not have rights or legitimate interests in the
<shantiyogaworks.com> domain
name under Policy ¶ 4(a)(ii).
Respondent registered the <shantiyogaworks.com> domain name in
bad faith. Complainant’s registration of the YOGA WORKS mark in Canada operated
to give Complainant the exclusive right to use its mark throughout Canada. Trade-marks
Act, R.S.C., ch. T-10, §
18 (1985). Disregarding these rights,
Respondent registered the disputed domain name at a time when Complainant had a
valid trademark registration, and Respondent has not come forward to rebut or
explain why it chose to do so. Respondent’s constructive notice as to
Complainant’s rights in the YOGA WORKS mark is evidence that the domain name
was registered in bad faith. See Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal
presumption of bad faith, when Respondent reasonably should have been aware of
Complainant’s trademarks, actually or constructively”).
Respondent used
the <shantiyogaworks.com>
domain name in bad
faith. Respondent’s communications with Complainant make it clear that Respondent
was aware that it was using Complainant’s YOGA WORKS mark without authorization
by Complainant. Whether or not a case exists against Complainant having a valid
trademark registration—the principal thrust of Respondent’s “legal
department’s” website—is beyond the scope of this proceeding, but the Panel
need not determine this issue in order to find evidence of Respondent’s bad
faith use of the disputed domain name. Respondent operates in the same field as
Complainant. Granted, the parties do not operate in the same geographical
areas. Nevertheless, Internet users seeking Complainant via a search for
Complainant’s registered mark will come across Respondent’s website, and may be
confused as to whether Complainant sponsors or is somehow affiliated with
Respondent. More importantly, especially in light of the statements made by
Respondent’s “legal department” that it believes Respondent has no enforceable
rights in its registered mark, Respondent’s use dilutes Complainant’s mark.
Again, Respondent’s failure to respond to Complainant’s allegations that
Respondent is now deliberately attempting to “destroy the distincitve nature”
of Complainant’s mark leads the Panel to infer that Respondent is using the
disputed domain name in bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb.
Forum May 18, 2000) (finding that in determining if a domain name has been
registered in bad faith, the Panel must look at the “totality of
circumstances”).
The Panel thus
finds that Respondent registered and used the <shantiyogaworks.com> domain name in bad faith, and that Policy ¶
4(a)(iii) is satisfied.
Having
established all three elements required under ICANN Policy, the Panel concludes
that relief shall be GRANTED.
Accordingly, it
is Ordered that the <shantiyogaworks.com> domain name be TRANSFERRED
from Respondent to Complainant.
John J. Upchurch , Panelist
Dated:
June 17, 2003
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