Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Kali Ray, Malibu, CA, USA ("Complainant"). The Respondent is Tri Yoga Ltd., London, United Kingdom ("Respondent").

The domain name at issue is "TRIYOGA.COM", registered with Network Solutions, Inc. ("NSI").

The Panelist, M. KELLY TILLERY, ESQUIRE, certifies that he has acted independently and impartially and to the best of his knowledge, has no known conflict in serving as the Panelist in this proceeding.

Complainant submitted a Complaint to the National Arbitration Forum ("The Forum") electronically on 08/01/2000; The Forum received a hard copy of the Complaint on 07/31/2000.

On 08/02/2000, NSI confirmed by e-mail to The Forum that the domain name "TRIYOGA.COM" is registered with NSI, that Respondent is the current registrant of the name and that the name was registered/created on June 24, 1999. NSI has verified that Respondent is bound by the Network Solutions Service Agreement Version 5.0 and has thereby agreed to resolve domain name disputes brought by third parties in accordance with ICANNís UDRP.

On 08/03/2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of 08/23/2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, and to all entities and persons listed on Respondentís registration as technical, administrative and billing contacts by e-mail. It was also e-mailed to postmaster@triyoga.com.

On August 25, 2000, pursuant to Complainantís request to have the dispute decided by a Single Member Panel, The Forum appointed M. Kelly Tillery, Esquire as Panelist.

Complainant requests that the domain name be transferred from Respondent to Complainant.

A. Complainant

Complainant contends that she is the owner of U.S. Patent and Trademark Office Registration No. 1, 714,251 "TRIYOGA" registered on September 8, 1992 and in use since April 11, 1986. In addition, Complainant claims that she registered her service mark with the state of California on September 23, 1987 for a ten (10) year term.

Complainant further contends that she has used the following for a Web Site for approximately four (4) years: "kaliraytriyoga.com" and that she has used the e-mail address triyoga@aol.com since September 22, 1996. Complainant has submitted a number of documents indicating extensive use of the mark TRIYOGA since as early as 1987 in the United States and other countries. Complainant also claims that she is the registered owner of the domain names "triyoga.net" and "triyoga.org". [emphasis added].

Complainant contends that she has since as early as April 11, 1986 utilized the TRIYOGA mark to identify a complete, systematic Yoga teaching method created, established and practiced by Complainant Kali Ray, that there are Kali Ray TRIYOGA Centers in several countries around the world with teacher training facilities in the U.S. and that TRIYOGA teachers have been certified throughout the world including Australia, Canada, India, Russia, South America, Ukraine, France, Germany and other European countries. Complainant contends that the TRIYOGA mark is advertised extensively and recognized by consumers internationally in connection with Complainant Kali Ray.

Complainant contends that Respondent has no rights or legitimate interests in the TRIYOGA domain name, that Respondent has not been commonly known by the domain name and that the mark is identical to the registered mark of Complainant Kali Ray.

Complainant contends that, contrary to Respondentís claims, that she did in fact object to the registration and use by Respondent of the domain name in question.

B. Respondent

Respondent contends that it operates the largest Yoga Center in the United Kingdom, that TRIYOGA has been used by Respondent and/or its principals for over two years and Respondent does not in any way hold itself out as being involved or connected with Complainant or her style of Yoga teaching.

Respondent further contends that Complainant was aware of Respondentís use of the TRIYOGA name at the time of the registration of the domain name and that Complainant made no objection and "wrote back in supportive terms."

Respondent further contends that itsí founder "had no knowledge whatsoever of Complainant or her style of yoga at the time of commencement of the business and there has been no actual confusion."

Respondent further claims that Complainant should be estopped from complaining of the use due to Complainantís "assent to such use."

Complainant has sustained its burden to prove by a preponderance of the credible, relevant, admissible evidence that the domain name is identical to a valid Federally-registered service mark in which Complainant has rights. Rule 4(a)(i).

Complainant has met its burden to prove by a preponderance of the credible, relevant admissible evidence that Respondent has no rights or legitimate interests in respect of the domain name. Rule 4(a)(ii).

Complainant has met its burden to prove by a preponderance of the credible, relevant admissible evidence that Respondentís domain name has been registered and is used in bad faith. Rule 4(a)(iii).

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("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:

(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 owns a valid U.S. Federally-registered service mark for "TRIYOGA" ń USPTO Registration No. 1,714,251 and has utilized same since as early as April 11, 1986. The USPTO registration was issued on September 8, 1992, long before Respondentís alleged first use of TRIYOGA, purportedly at least two years prior filing Respondentís Answer to the Complaint herein and almost seven years prior to the registration/creation of the domain name in question herein. The registered service mark "TRIYOGA" is identical to the applicable portion of the domain name in question. Thus, Respondentís domain name is identical to a service mark in which Complainant has rights. Rule 4(a)(i).

Complainant has asserted and established its rights in and to the domain name in question and has alleged that Respondent has no rights or legitimate interests in respect of the domain name.

The only Rule which might support a claim by Respondent to having rights to and legitimate interests in respect of the domain name is Rule 4 (c)(i). That Rule provides that Respondent may demonstrate its rights to and legitimate interests in respect of the domain name if it is found that based on an evaluation of all of the evidence presented, Respondent ëbefore any notice of the dispute, used or made demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services.í

The record does not include any credible evidence whatsoever which would permit this Arbitrator to find such activity on behalf of Respondent.

Respondent claims that no evidence "has been produced at all" regarding Rule 4(a)(ii). The only "evidence" of record on this point is the "Reply To Complaint" signed by Jonathan Sattin, Director of Respondent alleging that "the name has been used by the company and/or its principals for over two (2) years." No other evidence regarding any such use, other than the actual registration of the domain name in question, is of record.

The domain name in question was registered or "created" on June 24, 1999. Although Respondent claims that Complainant made no objection to same and "wrote back in supportive terms," no evidence of such action or inaction on behalf of Complainant is of record. On the contrary, the absence of any documentation of these claims by Respondent is telling.

This Arbitrator finds that Complainant is not estopped from complaining of the misuse of the TRIYOGA name by Respondent and that Complainant did in fact complain as soon as practicable to Respondent of the use of the domain name in question.

However, this Arbitrator simply cannot find based upon this record that Respondent has demonstrated rights to and/or legitimate interests in the domain name by any use of the domain name in connection with a bona fide offering of goods or services.

It is incumbent upon this Arbitrator to evaluate all of the evidence presented to determine its admissibility, weight and credibility of those presenting it. Although Complainant has presented substantial evidence in support of its claims, Respondent has presented no evidence other than assertions make in its Reply signed by its Director and Founder, Jonathan Sattin. While it is indeed the burden of Complainant to prove the three (3) elements of ICANN Policy 4(a), said burden is sustained at least as to the requirements of Rule 4 (a)(ii), when Respondent fails to bring forth any evidence whatsoever to demonstrate rights to and legitimate interests in the domain name.

The record clearly establishes Complainant Kali Ray is a very prominent and well-respected figure in the international yoga community. It is difficult for this Arbitrator to believe Respondentís contention that Respondent had no knowledge of the Complainant or her style of Yoga at the time of commencement of his business. If nothing else, Respondent had constructive notice of the service mark registration filed with the U.S. Patent and Trademark Office as early as September 8, 1992, long before Respondent began its business.

Considering the fame and reputation of Complainant Kali Ray in the international yoga community, it is difficult to escape the conclusion that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, internet users to its Web Site by creating a likelihood of confusion with Complainantís mark as to the source, sponsorship, affiliation or endorsement of its Web Site or location of a product or service on its Web Site. In accordance with Rule 4(b)(iv), that is sufficient to establish that the domain name has been registered and is being used in bad faith.

The domain name "triyoga.com" should be immediately transferred to Complainant.