WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Hay House, Inc. v. Gillian Bowles Case No. D2009-0878 1. The Parties
The Complainant is Hay House, Inc. of California, United States of America, represented by Hodgson Law Group, United States of America.
The Respondent is Gillian Bowles of Cardiff, United Kingdom of Great Britain and Northern Ireland, appearing pro se. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 1, 2009. On July 2, 2009, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On July 2, 2009, GoD, Inc. transmitted by email to the Center its verification response, confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 14, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 3, 2009. The Response was filed with the Center on July 31, 2009.
The Center appointed John Swinson as the sole panelist in this matter on August 10, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. >4. Factual Background
The Complainant is a publisher, founded by Louise Hay, the author of “You Can Heal Your Life”.
The Complainant operates a website at “”. According to this website, the Complainant primarily sells self-improvement literature. This website also promotes self-help events, such as the “You Can Heal Your Life” conference to be held in September and October 2009.
The Complainant has business operations in the United States, the United Kingdom and Australia (amongst other countries). It also operates a similar website at “”.
The Complainant filed a Community Trade Mark application for the HEAL YOUR LIFE word mark on October 14, 2008, and an application for the HEAL YOUR LIFE word and device on November 6, 2008. These marks were both registered (May 20, 2009 and June 10, 2009 respectively); however the word mark is currently subject to cancellation proceedings (brought by the Respondent). The Complainant also has a United States trade mark registration for HEAL YOUR LIFE word mark (registration No. 77414014) which was registered on March 10, 2009.
The Respondent is an individual residing in the United Kingdom. She is a published author of titles such as “Medicine and Health Healing with the Mind-Body Link” and “How To Cure Your Fibroids Naturally”. The Respondent is referred to in some third party websites as being a Louise Hay Teacher.
The website operating from the disputed domain name contains the following introduction:
“This site is all about how to become a Heal Your Life Teacher and running your own Heal Your Life Workshops.”
The website also provides further information under the subject headings “Heal Your Life Workshop Teacher Training”, “Heal Your Life Workshops”, “Heal Your Life Philosophies” and “Heal Your Life Teacher Resources”.
The real dispute between the Complainant and the Respondent appears to be a trade mark ownership and/or licensing dispute, which extends well beyond the scope of these administrative proceedings. 5. Parties' Contentions A. Complainant
The Complainant makes the following contentions:
The Complainant is the owner of European Community Trademark No. 7312192 dated May 20, 2009 for the word mark HEAL YOUR LIFE and European Community Trademark No. 7372303 dated June 10, 2009 for the word and device mark HEAL YOUR LIFE.
The Complainant is a publishing company specializing in self-help products and live workshops and events – it is the largest publisher of self-help books in the world. It was founded in 1984 by Louse Hay, and now has offices in the United Kingdom, Australia, India, South Africa and Hong Kong.
Louise Hay self-published the book “You Can Heal Your Life” in 1984 and this book has sold more than 40 million copies worldwide. Louise Hay also began presenting workshops called “Love Yourself, Heal Your Life” in 1985 (and allowed an authorized licensee, Dr. Crane, to conduct similar workshops).
The disputed domain name contains the Complainant's entire trade mark. Inclusion of generic terms such as “teacher training” does not eliminate that similarity.
The Respondent's website contains links to “Heal Your Life Workshop Teacher Training” and a link to “Louse Hay Workshops”. These links are not affiliated with or authorized by the Complainant. The Respondent is trading on the name and notoriety of the mark HEAL YOUR LIFE to offer her own services. The addition of “teacher training” does not distinguish the Respondent's services from those of the Complainant.
Providing links to the Complainant's competitors who sell related products (trainings, seminars and materials in the self-help genre) is not a noncommercial fair use of the disputed domain name. The disputed domain name directs consumers to other landing pages where they can sign up for training courses and seminars in Wales, United Kingdom. The Respondent collects a fee for these services, evidencing her intention to gain commercially from the use of the Complainant's trade mark. These links also tarnish the Complainant's mark and are used to divert customers. It also provides evidence of registration and use of the disputed domain name in bad faith.
The Respondent completed a workshop in Ireland in 1999 with Dr. Crane (Louise Hay's authorized licensee) and received a certificate for completing the course. Completion of this course gave (at best) the Respondent an implied right to use HEAL YOUR LIFE to lead workshops, but as such, the license was terminable at will. This implied license was terminated by the Complainant on April 20, 2009. There has never been an express or implied grant of rights to the Respondent to use the HEAL YOUR LIFE mark outside the scope of leading workshops, for example, for creating a competitive teacher training program.
The Complainant first contacted the Respondent on November 20, 2008 after learning she had registered the disputed domain name and that she was using the name to offer competing teacher trainings. The Respondent was never authorized or certified as a Louise Hay teacher, and any implied right to use HEAL YOUR LIFE was terminated by the Complainant officially on April 20, 2009. The Respondent is misleading the public by using HEAL YOUR LIFE to offer teacher trainings on a subject for which she is not authorized or licensed.
The Respondent had actual knowledge of the Complainant's rights for many years, and was placed on notice in November 2008 that her registration and use of the disputed domain name was infringement and unauthorized.
The Respondent's registration and use of the disputed domain name exceeded the scope of any and all implied rights to lead workshops using the Complainant's trade mark. The use of the disputed domain name to sell unauthorized trainings has a potentially adverse effect on the entire HEAL YOUR LIFE program. B. Respondent
The Respondent makes the following contentions:
The trade mark referred to by the Complainant (CTM No. 7312192) is currently subject to an application for declaration of invalidity, with a current status of “Cancellation Pending”. The Respondent filed this application on the following grounds: that the mark is not a registrable term; the mark was filed in bad faith; and the Respondent is a long-standing proprietor of earlier rights to the term in the United Kingdom. CTM No. 7372303 is a figurative mark and is a composite of images and words, so it is irrelevant for these proceedings as it cannot appear in a domain name.
The Respondent has also opposed the Complainant's United Kingdom Madrid application for HEAL YOUR LIFE.
The Respondent has been using the term “Heal Your Life” in the United Kingdom since 2003. The Complainant filed its trade marks in bad faith, with a view to expropriating the goodwill and reputation established by the Respondent.
The Complainant had no rights in the HEAL YOUR LIFE word mark at the time of the Respondent's training in 1999, and therefore the Complainant could not assign or restrict usage or rights in the mark at that time. The filing date for CTM No. 7312192 is October 14, 2008, while the first use in commerce dates for the United States mark is listed as April 1, 2008.
“Heal Your Life” is entirely descriptive of the Respondent's “Heal Your Life” workshops and the services the Respondent offers from the disputed domain name. This term has a clear and common meaning of healing of life issues. Both the Complainant's trade mark and the disputed domain name are descriptive. The Complainant does not have the right to restrict the Respondent's use of a descriptive term in the course of trade.
The Complainant's evidence of products sold under the HEAL YOUR LIFE mark is misleading, because it simply lists a few products where “Heal Your Life” is used as a sub-text. This is not evidence of use “as a trade mark”. There are a large number of products with “Heal Your Life” in the title, which have nothing to do with the Complainant.
The Respondent has never claimed to be authorized by the Complainant to do the Complainant's teacher training. The Respondent's teacher training is an entirely new work, developed and created out of 10 years experience running her own “Heal Your Life” workshops. The Respondent does not require the permission of the Complainant to run her courses. The Respondent also makes it clear on her website that there is no connection with Louise Hay or the Complainant.
The Complainant provides no evidence of Dr. Crane's contractual relationship with the Complainant. The Complaint gives the false impression that Dr. Crane has always been a licensee of the Complainant, but in reality the Complainant publicly disassociated itself from Dr. Crane and her training company in 2001. The Complainant then abandoned the training segment of the market and has not run training since that time. Dr. Crane continued training using the name “Healing Lives, Achieving Dreams”. Dr. Crane and the Complainant appear to have re-established their relationship in 2008; however Dr. Crane has not been an authorized trainer for 20 years.
It is the Complainant that is trading on the name and notoriety of the Respondent in relation to her workshops, and seeking commercial gain. The Complainant has a long-standing and bona fide business established for over 10 years in the United Kingdom. The Complainant is attempting to hijack the Respondent's rights in the term “Heal Your Life” and divert the Respondent's customers. The Respondent is currently the largest provider of “Heal Your Life” workshops in the United Kingdom and has marketed these workshops to the United Kingdom and Europe since 2003. The Respondent also produced the “Heal Your Life” chant and meditation CD in 2004 to support trainings which are sold worldwide.
The Respondent registered the disputed domain name on October 8, 2008 in relation to her new course called the “Heal Your Life Teacher Training Course”. The Respondent immediately put the website to use for genuine and bona fide purposes, and ran the first teacher trainings in April 2009. The teacher training courses are a natural and legitimate development of the Respondent's “Heal Your Life” workshops and are a new work. The Respondent typically runs four workshops a year, with 18 participants in each. There are also advanced courses, and teacher trainings. The Respondent's Heal Your Life products and services consistently appear at the top of search engines, which demonstrate substantial reputation and goodwill. There are thousands of potential customers who directly associate “Heal Your Life” with the Respondent's services and products.
No implied license existed between the Complainant and the Respondent, because no conditions were attached to the Respondent's training and the Complainant has provided no evidence of a license. The certification granted to the Respondent confirmed that the Respondent attended training approved by Hay House.
The Respondent was previously listed on a central list of teachers maintained on “” website (up until 2009). This website is owned by Dr. Crane. This website had the disclaimer that listing on the website did not imply an endorsement by or affiliation with Louise Hay, Hay House etc.
This is not a case where the Complainant has long-term established marks, where the domain name was registered long after the Complainant had established rights in the mark, and the Respondent had no rights or legitimate interests in the domain name and was using the domain name in bad faith. The Respondent had no actual knowledge of the Complainant's trade mark until November 20, 2008. 6. Discussion and Findings
In order to qualify for a remedy, the Complainant must prove each of the following three elements (as set out in Paragraph 4(a) of the Policy):
(a) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(c) the disputed domain name has been registered and is being used in bad faith.
The onus of proving these elements is that of the Complainant. A. Identical or Confusingly Similar
The Complainant owns registered Community Trade Marks covering the European Union for HEAL YOUR LIFE (both word and device marks). The Panel notes that the word mark is currently being contested by the Respondent; however the Complainant also owns a registered trade mark in the United States for the word mark HEAL YOUR LIFE which is not subject to any opposition or cancellation proceeding.
The Panel finds that the United States registration is sufficient for the Complainant to show trade mark rights in HEAL YOUR LIFE.
The disputed domain name contains the Complainant's registered trade mark in its entirety. Incorporation of a complete trade mark in a domain name is sufficient to establish confusing similarity for the purposes of the Policy (see for example, Nokia Group v. Mr. Giannattasio Mario,WIPO Case No. D2002-0782).
The disputed domain name also adds the words “teacher training”. These words are of a generic nature, and are indicative of the type of services that are available from the corresponding website. As such, they are not enough to distinguish the disputed domain name from the registered trade mark, as they rarely change the overall impression of the domain name being connected to the owner of the trade mark (see for example Chippendales USA, LLC v. Latins Finest,WIPO Case No. D2003-0980). This is particularly so, because the additional words of “teacher training” comprise a description of services once provided by the Complainant.
Accordingly, the Panel finds that the first element has been met. B. Rights or Legitimate Interests
The Complainant and the Respondent both contend that they are the owner of the HEAL YOUR LIFE mark, and that other is trading off their reputation in the mark.
The evidence provided by each party has been difficult to reconcile, and there appears to be factors relevant to the second and third elements of the Policy in each party's favour.
The Complainant's first use of HEAL YOUR LIFE appears to have arisen in 1984, when Louise Hay's book called “You Can Heal Your Life” was first published. This book became a best seller, so it is reasonable to conclude that Louise Hay and her publisher (the Complainant) acquired a significant reputation in this phrase. Workshops and seminars were also conducted under this name (or a similar name), although there is some dispute as to the period during which these services were offered. It is not disputed that these courses were at least conducted in 1999 and 2000, when the Respondent attended them.
The Panel notes that the Respondent registered the disputed domain name (on October 8, 2008) prior to the Complainant filing its Community Trade Mark applications (on October 14, 2008) for HEAL YOUR LIFE. The Panel also notes that the date of first use of HEAL YOUR LIFE nominated by the Complainant in the United States trade mark registration, is April 1, 2008. While this suggests the Complainant did not use the mark anywhere in the world before this time, the date of first use is still prior to the date the Respondent registered the disputed domain name. It is also evident that the Complainant used “You Can Heal Your Life” from a much earlier time.
The Respondent's contentions in this area are at times contradictory, or at least confusing:
- The Respondent attended several of the Complainant's workshops (including the “You Can Heal Your Life Study Course” and “Love Yourself, Heal Your Life Workshop”) in 1999 and 2000 and received certificates confirming that she completed such courses. The Respondent has noted in correspondence to the Complainant that she is a fully trained Louise Hay teacher, and believes she is entitled to run workshops after she paid for and received this training.
- The Respondent contends that she was using “Heal Your Life” of her own volition, without reference to the Complainant's trade mark, from 2003. According to the Respondent, she developed and ran her own “Heal Your Life” workshops in the United Kingdom and Europe, without reference to the Complainant or its work.
- The Respondent also contends that “Heal Your Life” is descriptive, and that the disputed domain name relates to the descriptive meaning of the term.
- The Respondent has provided evidence of her use of “Heal Your Life”, such as newspaper advertisements from 2003. This evidence of use refers to Louise Hay.
While the phase “Heal Your Life” could be considered descriptive in other circumstances, the fact that the Respondent attended the Complainant's training in 1999 and 2000, and refers to Louise Hay in her advertisements, indicates that the Respondent did not choose the disputed domain name for its descriptive value. Rather, it appears that the Respondent chose HEAL YOUR LIFE for its association with the Complainant.
This evidence also tells against the possibility that the Respondent chose the disputed domain name without any reference to the Complainant's trade mark, or rights in that term. Admittedly, the Complainant's trade mark was filed after the date the Respondent registered the disputed domain name. However, the Complainant had been using HEAL YOUR LIFE in relation to publications and events since 1984, and given that the Respondent operates in the same field and attended the Complainant's training, it seems highly unlikely that the Respondent chose the domain name without reference to the Complainant's work.
Considering Paragraph 4(b) of the Policy, the Panel finds that:
(i) the Complainant provided the Respondent with notice of its dispute on November 20, 2008. The disputed domain name was registered by the Respondent on October 8, 2008, and the Respondent appears to have made use of the disputed domain name immediately, by offering teacher training for the “Heal Your Life” program. However, the Respondent's use of the disputed domain name offered goods and services which competed with, or were closely connected to, the Complainant's goods and services. Use in these circumstances does not constitute a bona fide offering of goods and services.
(ii) the Respondent may have acquired rights in “Heal Your Life”, through using that term to describe her services from 2003 onwards. However, as mentioned above, the Panel is not satisfied that such a name was chosen without reference to the Complainant's “You Can Heal Your Life” publication or seminars. If the Respondent was granted rights to use the Complainant's phrase after receiving training, such rights would be implicit, and would have been likely to have been granted to every other person who attended such training. Any rights the Respondent had to use HEAL YOUR LIFE (if any such rights existed) were terminated by the Complainant in April 2009.
(iii) by using a name which closely resembles the Complainant's trade mark, the Panel is unable to accept that the Respondent's use of the disputed domain name is legitimate noncommercial or fair use. The Respondent is intending to make a commercial gain from the website, from providing training courses and workshops which are very similar in nature to the goods and services provided by the Complainant. The Respondent's past references to Louise Hay in her advertisements indicate that her workshops have an affiliation or endorsement by the Complainant. The disclaimer on the Respondent's website is not sufficient to prevent confusion arising.
The parties obviously had a relationship which existed prior to these proceedings. The evidence tends to indicate that the Respondent was authorized to lead HEAL YOUR LIFE courses, or considered she was so authorized. However what is not entirely clear is whether the Respondent's training with the Complainant entitled her to use the HEAL YOUR LIFE mark to promote these courses. If it did, the Panel agrees with the Complainant that such right would have been a non-exclusive, implied license, which the Complainant later terminated.
The Panel finds that the second element has been established. C. Registered and Used in Bad Faith
As discussed above, the Panel cannot accept that the Respondent chose the “Heal Your Life” brand without reference to the Complainant's successful publication or courses which adopted a similar name. There is not enough evidence before the Panel to convince it that the Complainant authorized the Respondent to use the HEAL YOUR LIFE mark to offer competing goods and services. The self-help teacher training services offered by the Respondent via the disputed domain name compete with the Complainant's goods and services, and are provided under a confusingly similar name. The intention appears to have been for the Respondent to attract Internet users for commercial gain, by creating a likelihood of confusion between the Respondent and the Complainant. As such, the Panel infers bad faith.
As mentioned above, what remains of the dispute between the parties is better determined by the courts.
The Panel finds that the third element has been established. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
John Swinson
Sole Panelist
Dated: August 21, 2009
Full & Egal Universal Law Academy