YA Plus v. Gary Collins / Free-Style Yoga Alliance
Claim Number: FA1606001678808
Complainant is YA Plus (“Complainant”), represented by Patrick J. Jennings of Pillsbury Winthrop Shaw Pittman, LLP, District of Columbia, USA. Respondent is Gary Collins / Free-Style Yoga Alliance (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <freestyle-yogaalliance.com>, registered with GoDaddy.com, LLC.
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 9, 2016; the Forum received payment on June 15, 2016.
On June 10, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <freestyle-yogaalliance.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 June 16, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 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 postmaster@freestyle-yogaalliance.com. Also on June 16, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 17, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons 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.
A. Complainant
Complainant asserts trademark rights in YOGA ALLIANCE and alleges that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant is a nonprofit association representing the interests of the Yoga community;
2. Respondent is a member of Complainant’s association;
3. Complainant owns[i] United States Federal Trademark Reg. 3,022,896, registered December 6, 2005 for the trademark YOGA ALLIANCE;
4. the disputed domain name was registered on November 22, 2015; and
5. the disputed domain name resolves to a website showing the trademark and promoting Yoga.
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.
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry – a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
Paragraph 4(a)(i) of the Policy does not distinguish between registered and unregistered trademark rights. It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. Complainant provides evidence of its United States Federal registration for YOGA ALLIANCE and so Panel is satisfied that it has rights in that name.[ii]
The disputed domain name is confusingly similar to the trademark as it takes the trademark and adds to it non-distinctive matter in the form of the gTLD “.com” and the word, “freestyle”, a descriptive term in the art of Yoga.[iii]
Panel therefore finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests.[iv]
The publicly available WHOIS information for Respondent does not provide any evidence that Respondent might be commonly known by the disputed domain name. There is no evidence that Respondent has trademark rights of its own and Complainant asserts that it has not authorized Respondent to use its trademark or to register any domain name incorporating its trademark in support of which it refers to a trade mark use policy which it alleges Respondent has contravened.
The Panel finds that Complainant has established a prima facie case and so the onus shifts to Respondent to establish a legitimate interest in the domain name.
The Panel must be satisfied on the evidence that Respondent has no right or legitimate interest to the disputed domain name and in these Administrative Proceedings there are matters which deserve attention notwithstanding the absence of a Response.
In particular, a question arises as to whether Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the service mark at issue and so is protected by paragraph 4(c)(iii), set out above.
Complainant is a not-for-profit organization. Complainant’s website states that its “mission is to promote and support the integrity and diversity of the teaching of yoga.” Complainant advocates for self-regulation in the yoga industry and universal access to safe yoga practices. Through its sister organization, Yoga Alliance Registry, Complainant also encourages safe yoga instruction by promoting adoption of quantitative standards, provides feedback to registered yoga schools, and supports scholarship programs, among other things.
Complainant explains that Respondent operates a Yoga school that has been registered by Yoga Alliance Registry and that Respondent is a member of Complainant’s association. Nonetheless, Complainant submits that these facts do not give Respondent the right to make use of the trademark and unauthorized use is in violation of Complainant’s Trademark Usage Policy.
Complainant’s Trademark Usage Policy is exhibited and can be found on Complainant’s website, www.yogaalliance.org. It references the trademark relevant to these proceedings and other registered trademarks. These trademarks, owned by Yoga Alliance or Yoga Alliance Registry, are collectively referred to in the Trademark Usage Policy as “the Trademarks” which states that:
No individual or entity may register, use, or attempt to register or use any of the Trademarks or domain names consisting of, in whole or part, any of the Trademarks without the prior written permission of Yoga Alliance or Yoga Alliance Registry.
The document later states that that registered schools and registered teachers may use certain trademarks. It is not entirely clear whether that permission extends to Respondent and whether or not the permission relates to the trademark, YOGA ALLIANCE.
In any case, Complainant states that:
The Domain Name is being used to confuse consumers into thinking that Respondent is an authorized licensee of Complainant. For instance, …Respondent states that ‘[w]e currently offer Yoga Teacher Training courses to 200 hour level (TTC200), this is a basic level course for graduate students to teachers. Our courses are designed specifically to follow Yoga Alliance USA guidelines as a registered Yoga School (RYS200) including our special features of becoming a Free-StyleYoga teacher.’ Similarly, … Respondent states that “[o]ur TTC200 is certified by Yoga Alliance USA and we are a registered Yoga School, RYS200 offering specialised and fully interactive Free-Style training courses. The emphasis is placed on the our students, where they are paired off from the first day which creates an incredible bond between two students, giving mutual support during the course not forgetting the 24/7 dedication and support from the trainers” and that “[o]ur TTC courses have been designed according to Yoga Alliance USA standards incorporating their 5 educational categories into our courses leading to 200 hours of accredited learning and teaching.
The Panel has reason to examine Complainant’s assertion that the domain name is being used to confuse consumers into thinking that Respondent is an authorized licensee of Complainant.
The two examples given above in support of that claim are not examples of use of the domain name; instead, they show use of the words “Yoga Alliance” in the body of the resolving website. The words are being used descriptively to link the courses offered by Respondent with the (admitted) certification it has from Complainant. The Panel finds it unlikely that there would be any confusion in that regard. Further, as a matter of trademark law, Respondent would not need Complainant’s permission to use the words in that descriptive way.
The larger question, namely whether the domain name itself might confuse Internet users into thinking that Respondent is an authorized licensee of Complainant (when it is not, the argument infers), is not materially relevant to paragraph 4(a)(ii) of the Policy which is concerned with Respondent’s possible rights or interests in the domain name. A relevant question might be whether or not Complainant has permitted Respondent to use the trademark but, as mentioned earlier, it is paragraph 4(c)(iii) of the Policy that requires consideration since its application would shield Respondent regardless of permission.
The Panel can see no evidence that Respondent’s use of the domain name either misleadingly diverts consumers or tarnishes the trademark. Accordingly, the question is whether Respondent is making a legitimate noncommercial or fair use of the domain name. As to the former, the Panel has reviewed Respondent’s website and can see that fees are charged for Yoga retreats. Although the costs might be recovery costs there is still, at one level, a business conducted by reference to the domain name and so the use cannot be called noncommercial.
The remaining issue is whether there is fair use of the domain name and here a distinction is to be drawn between the descriptive use of the words “Yoga Alliance” on the resolving webpage and the use of those words as part of the disputed domain name. In the absence of a Response there is no clear evidence that Respondent is permitted to use the words in a trademark sense and the Trademark Usage Policy makes it plain that without express permission Respondent should not register a domain name incorporating the trademark.
Since there is no fair use need for Respondent to incorporate the trademark into the disputed domain name the Panel finds that Respondent does not come under the protection of paragraph 4(c)(iii) of the Policy.
Accordingly, there is nothing which meets the evidentiary burden which moved to Respondent and so Panel finds that Complainant has established the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and that it is being used in bad faith.
Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established.
The four specified circumstances are:
‘(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.’
There is nothing in the evidence provided with the Complainant that might engage the operation of any of those four scenarios. Paragraphs 4(b)(i) to (iii) are inapposite and the application of paragraph 4(b)(iv) would require proof that Respondent’s intention was to cause confusion as to the source, sponsorship, affiliation, or endorsement of its website. Clearly that is not the case.
It follows that Complainant must then show, as separate matters, registration in bad faith and use in bad faith. On the evidence and for the reasons given the Panel is not prepared to find either bad faith registration or bad faith use of the domain name. Accordingly, Complainant has not established the last aspect of the Policy.
The Panel finds it appropriate to add here that the Policy was created to prevent the bad faith practice of cybersquatting and by its terms it is directed against this and other obvious forms of domain name abuse. The Policy is not intended as an alternative to proceedings for breach of contract or infringement of intellectual property rights or as a mechanism to resolve business disputes that might incidentally involve the use of a domain name. Those are matters for other fora.
Having failed to establish one of the three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <freestyle-yogaalliance.com> domain name REMAIN WITH Respondent.
Debrett G. Lyons, Panelist
Dated: July 31, 2016
[i] The evidence of trademark rights comprises a copy of the original USPTO registration certificate in the name of Yoga Alliance as owner, together with what appears to be a USPTO extract showing renewal of that registration. Although there is no evidence of an assignment of the registration the renewal data lists YAPLUS as the owner of the registration and so the Panel is prepared to accept that Complainant is the present registered owner.
[ii] See State Farm Mut. Auto. Ins. Co. v. Periasami Malain, FA 705262 (Forum June 19, 2006) (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark, STATE FARM, establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003) finding that the complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the complainant’s rights in the mark for purposes of Policy paragraph 4(a)(i).
[iii] Panels have found that such alterations to a mark are insufficient to overcome a finding of confusing similarity (see, for example, Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) finding confusing similarity where the disputed domain name contained the complainant’s entire mark and differed only by the addition of a generic or descriptive phrase and top-level domain.
[iv] See Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000).
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