DECISION

Yoga Works, Inc. v. Jenna Arpita d/b/a Shanti Yoga Works

Claim Number:  FA0304000155461

PARTIES

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.

PANEL

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.

PROCEDURAL HISTORY

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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

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.

FINDINGS

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. 

DISCUSSION

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.

Identical and/or Confusingly Similar

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).

Rights or Legitimate Interests

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).

Registration and Use in Bad Faith

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.

DECISION

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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