The Complainant is Jivamukti, Inc. of Shady, New York, United States of America, represented by Hinckley, Allen & Snyder LLP, United States of America.
The Respondent is Private Registration (B3) of Grand Cayman, Cayman Islands, Overseas Territory of the United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with Bargin Register Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 13, 2010. On October 13, 15, 19, 22, and November 1, 2010, the Center transmitted by email to Bargin Register Inc. a request for registrar verification in connection with the disputed domain name. Bargin Register Inc. failed to transmit any reply.
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 November 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 25, 2010. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on November 26, 2010.
The Center appointed Johan Sjöbeck as the sole panelist in this matter on December 1, 2010. 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 has submitted evidence that it is the owner of the following trademark registrations for JIVAMUKTI YOGA:
United States of America trademark JIVAMUKTI YOGA with registration No. 2,101,342 and registration date September 30, 1997 for goods and services in classes 16, 25 and 41.
European Community trademark JIVAMUKTI YOGA with registration No. 003213204 and registration date October 8, 2004 for goods and services in classes 16, 25 and 41.
Japanese trademark JIVAMUKTI YOGA with registration No. 5337277 and registration date July 9, 2010 for goods and services in classes 16, 25 and 41.
According to the publicly available WhoIs records, the disputed domain name was originally registered on February 25, 2002. The true identity of the holder of the disputed domain name has been protected by various privacy services, and the disputed domain name has been transferred to different registrars multiple times. 5. Parties’ Contentions A. Complainant
Since 1984 the Complainant has continuously used the trade name and trademark JIVAMUKTI in connection with its business. The Complainant provides products and services in connection with yoga instruction and yoga practice under its JIVAMUKTI trademark, including instructional books and videos, clothing, yoga mats and belts, personal care items such as lotions and therapeutic gels, yoga classes and teacher certification. The Jivamukti branded yoga is a unique form of yoga practice, created by David Life and Sharon Gannon. It combines Ashtanga yoga practices and spiritual teachings and beliefs with an emphasis on applying yoga philosophy to daily life.
The Complainant operates Jivamukti branded yoga centers in New York, Charleston, Toronto, Berlin, Munich and London. The Complainant provides Jivamukti branded yoga teacher training and certification classes consisting of an intensive 300-hour, month-long program.
The Complainant’s Jivamukti branded yoga has many celebrity followers, including Gwyneth Paltrow, Sting, Christy Turlington, and Russell Simmons. Jivamukti branded yoga has been featured on numerous television programs that aired on BBC, NBC, ABC, PBS, MTV, CNN and Discovery networks. Jivamukti branded yoga has also been featured in print publications including the New York Times, Time magazine and New York magazine. The Complainant has acquired common law trademark rights in the term JIVAMUKTI through its extensive use of such mark in connection with its yoga products and services since 1984 thereby giving the Complainant exclusive rights to use its JIVAMUKTI trademark in connection with yoga products and services.
Furthermore, the Complainant is the owner of the registered trademark JIVAMUKTI YOGA in the United States since 1997, JIVAMUKTI YOGA in the European Union since 2004 and JIVAMUKTI YOGA in Japan since 2010.
The JIVAMUKTI name and trademark is an arbitrary mark. “Jivamukti” is a Sanskrit word and was selected by the founders of the Complainant for its meaning, which is “liberation while living.” The term “jivamukti” in Sanskrit has no direct relationship to yoga or yoga related products. As such, JIVAMUKTI is an inherently distinctive trademark subject to the broadest scope of trademark protection.
Over the past 26 years, the Complainant has established a strong customer base and is known throughout its trading area as a provider of quality yoga products and services under the JIVAMUKTI mark.
The Complainant registered the domain name in 1996 and uses its website to advertise, promote and sell its yoga products and services. The Complainant’s website permits users to search for certified Jivamukti branded yoga teachers, register for classes, review Jivamukti branded teachings and guides and purchase clothing, yoga accessories, personal care items such as lotions, books, videos and music.
The disputed domain name was registered on February 25, 2002, and the relevant WhoIs records indicate multiple ownership changes since the creation of the domain name in 2002, the most recent being on or after June 2008.
The Respondent is using the disputed domain name as a “link farm” that provides hyperlinks to third party websites that advertise and sell competing yoga related products and services. The Respondent is trying to attract to its website at the disputed domain name consumers who are looking for the Complainant and its Jivamukti branded yoga products and services. The Respondent presumably receives a pay-per-click fee or commission every time it redirects a consumer to the competing third party websites.
Furthermore, the website to which the disputed domain name resolves states “[t]his domain may be for sale” and contains a link to a domain broker whereby the Respondent has invited the public to make an offer, with a minimum asking price of USD 600. Thus, the Respondent registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration for valuable consideration in excess of the Respondent’s out-of-pocket costs related to the domain name.
The disputed domain name is confusingly similar to the Complainant’s registered trademark JIVAMUKTI YOGA, which has been used by the Complainant for at least 26 years in connection with the Complainant’s yoga products and services. JIVAMUKTI YOGA is registered as a trademark in the United States, the European Union and Japan. The disputed domain name encompasses the Complainant’s entire distinctive JIVAMUKTI name and mark and its registered JIVAMUKTI YOGA mark without the descriptive term “yoga”.
In addition to its registrations of the JIVAMUKTI YOGA trademark, the Complainant has long established common law trademark rights in the term JIVAMUKTI. Since 1984 the Complainant has continuously used the term JIVAMUKTI as its trademark in connection with a wide range of yoga products and services. The Complainant’s mark JIVAMUKTI has established sufficient secondary meaning to entitle it to common law trademark protection.
The only difference between the Complainant’s registered trademark JIVAMUKTI YOGA and the disputed domain name is the absence of the descriptive term “yoga” and the addition of the gTLD designation “.com”.
The Respondent has no rights or legitimate interests with respect to the mark JIVAMUKTI or the disputed domain name. The disputed domain name does not comprise the legal name of the Respondent or a name that is otherwise commonly used to identify the Respondent. There is nothing in the Respondent’s WhoIs information indicating that the Respondent is commonly known by the disputed domain name. The Respondent did not, prior to notice of this dispute, use the disputed domain name in connection with a bona fide offering of goods or services.
The Respondent has not made a legitimate noncommercial or fair use of the disputed domain name. Previous UDRP panels have found that offering for sale a domain name containing another’s trademark for commercial and financial gain cannot be reasonably characterized as a legitimate noncommercial or fair use. The Respondent is using the disputed domain name to direct Internet users to its own website at the disputed domain name which provides links to numerous third-party websites that advertise and sell yoga products and services in direct competition with the Complainant. The use of a domain name that is confusingly similar to a registered mark to divert Internet users to a competing website with that mark’s owner is not a use in connection with the bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Complainant never authorized, licensed or otherwise permitted the Respondent to use its trademark or any confusingly similar variation thereof, for any reason including as part of a domain name.
The Respondent registered and has used the disputed domain name in bad faith primarily by intentionally attracting for financial gain Internet users to the Respondent’s website at the disputed domain name by misleading and confusing Internet users who may be searching for the Complainant. The Respondent provides, for the purpose of achieving commercial gain, links to competing third party websites that advertise and sell competing products and services. Such behavior has been found by many UDRP panels to constitute bad faith registration and use. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove each of the following:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant is, according to the submitted evidence, the owner of three trademark registrations for JIVAMUKTI YOGA. The disputed domain name consists of the term “jivamukti” without the term “yoga”. The term” yoga” is a common generic and descriptive term as supported by the fact that the United States Patent and Trademark Office registered the Complainant’s trademark JIVAMUKTI YOGA with a disclaimer for the term “yoga”. Thus, the dominant portion of the Complainant’s trademark is JIVAMUKTI, and consequently the disputed domain name incorporates the dominant portion of the Complainant’s trademark in its entirety.
Having the above in mind, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark and that the Complainant has proved the requirements under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Complainant must show that the Respondent has no rights or legitimate interests with respect to the disputed domain name. The Respondent may establish a right or legitimate interest in the disputed domain name by demonstrating in accordance with paragraph 4(c) of the Policy any of the following:
(a) that it has made preparations to use the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute; or
(b) that it is commonly known by the disputed domain name, even if it has not acquired any trademark rights; or
(c) that it intends to make a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Complainant’s trademark registration for JIVAMUKTI YOGA predates the registration of the disputed domain name. The Complainant has not licensed or otherwise consented to the Respondent’s use of the trademark JIVAMUKTI YOGA in connection with the disputed domain name which is confusingly similar to the Complainant’s registered trademark.
From the submitted evidence in this case, it is clear that the Respondent’s website to which the disputed domain name resolves contains numerous sponsored commercial links to third party yoga websites, some of which are competitors of the Complainant. The Respondent’s use of the disputed domain name serves the purpose of generating revenue via advertised pay-per-click products and links and it has been held in previous UDRP cases that such use does not represent a use in connection with a bona fide offering of goods and services. See for example Sigikid H. Scharrer & Koch GmbH & Co. KG, MyBear Marketing-und Vertriebs GmbH, Mr. Thomas Dufner v. Bestinfo,WIPO Case No. D2004-0990.
The Respondent is not making a legitimate, noncommercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark. The Respondent, whose true identity is obscured by a privacy shield, has not submitted any evidence in this case indicating that the Respondent is the owner of any trademark rights in a mark identical or similar to the disputed domain name or that the Respondent is or has been commonly known by the disputed domain name.
By not submitting a Response, the Respondent has failed to invoke any circumstances which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in respect of the disputed domain name. Thus, there is no evidence in the case that refutes the Complainant’s submissions, and the Panel concludes that the Complainant has also proved the requirement under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Under paragraph 4(b) of the Policy, evidence of bad faith registration and use include without limitation:
(i) circumstances indicating that the disputed domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the disputed domain name were registered in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name, provided it is a pattern of such conduct; or
(iii) circumstances indicating that the disputed domain name was registered primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the disputed domain name has intentionally been used in an attempted to attract, for commercial gain, Internet users to a website or other on-line location, by creating a likelihood of confusion with a trademark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on a website or location.
The Complainant has submitted evidence indicating that the Respondent is offering the disputed domain name for sale with a minimum asking price of USD 600. Considering that the disputed domain name is confusingly similar to the Complainant’s trademark JIVAMUKTI YOGA, the evidence in the case indicates that the disputed domain name was registered the disputed domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of a trademark or to a competitor of the trademark owner, for valuable consideration in excess of the documented out-of-pocket costs directly related to the domain name.
The Panel notes that the Complainant’s trademark registration for JIVAMUKTI YOGA predates the registration of the disputed domain name. The Complainant has submitted evidence demonstrating that the website to which the disputed domain name resolves contains numerous advertising links to competing third party yoga websites promoting and/or offering third party yoga products and services, goods apparently associated with, if not identical to, those offered by the Complainant under its mark. Such exploitation of the reputation of trademarks to obtain click-through commissions from the diversion of Internet users is an indication of use in bad faith according to previous UDRP panels. See e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005 0623 and F. Hoffmann-La Roche AG v. Macalve e-dominios S.A., WIPO Case No. D2006-0451.
Although the use of privacy services per se does not constitute bad faith on the part of the Respondent, it has been held by previous UDRP panels that the use of a privacy shield may be considered an additional indication of bad faith, depending upon the circumstances. Under certain circumstances, a privacy shield may allow registrants to transfer domain name registrations to a third party without any public record that there has been a transfer, thus allowing the domain name holder(s) to evade enforcement of legitimate third-party rights or to obstruct proceedings commenced under the Policy. Here, the Panel finds that the Respondent’s use of a privacy shield supports its finding of bad faith registration and use. See Hipercard Banco Múltiplo S.A. v. Private Registration (B3) / Telecom Tech Corp.,WIPO Case No. D2010-0869.
Having the above in mind, the Panel on the present evidence in the case before it finds that the Respondent has intentionally been using the disputed domain name in an attempt to attract, for commercial gain, Internet users to the Respondent’s website at the disputed domain name by creating a likelihood of confusion with the Complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the websites or of a product or service on the website.
There is no evidence in the case that refutes the Complainant’s submissions.
The Panel concludes that the Respondent registered and is using the disputed domain name in bad faith and therefore that the Complainant has proved the requirements under paragraph 4(b) of the Policy 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.
Johan Sjöbeck
Sole Panelist
Dated: December 15, 2010
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