The Complainant is Ecoyoga Ltd of Ford, Argyll, United Kingdom of Great Britain and Northern Ireland represented by SEQ Legal LLP, Kingdom of Great Britain and Northern Ireland.
The Respondent is siteleader.com, Siteleader Hosting of Moergestel The Netherlands; Brighton, Massachusetts, United States of America.
The disputed domain name <ecoyoga.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com (“Directi”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 7, 2009. On October 8, 2009, the Center transmitted by email to Directi a request for registrar verification in connection with the disputed domain name. On October 9, 2009, Directi transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 9, 2009 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an Amended Complaint on October 13, 2009. The Center verified that the Amended 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 October 19, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on November 9, 2009. The administrative proceeding was suspended at the Complainant's request on November 11, 2009 in order to allow parties to negotiate settlement options. On November 18, 2009, the proceeding was re-instituted at the Complainant's request.
The Center appointed John Swinson as the sole panelist in this matter on November 26, 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.
Directi has queried whether PrivacyProtect.org (“PrivacyProtect”) should be a Respondent in these proceedings. The Center advised Directi that it is for the Panel to determine the correct parties. The Panel notes that use of privacy services to mask the identity of domain name registrants is becoming increasingly common and in such cases it is usual for the Center to confirm who the true owner is with the Registrar of the disputed domain name (see e.g., Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. D2007-1886).
Based on the evidence provided, the Panel considers “SiteLeader.com, Siteleader Hosting” (“SiteLeader”) to be the correct Respondent and does not consider that PrivacyProtect.org (as a domain name privacy service) should play any further part in the proceedings. (See Xtraplus Corporation v. Flawless Computers, WIPO Case No. D2007-0070; Viacom International Inc. v. Pablo, Palermao / Moniker Privacy Services, WIPO Case No. D2008-1179 and Media West-GMP, Inc. and Gannett Satellite Information Network, Inc. v. Registrant [624819] Services LLC, WIPO Case No. D2007-0169). Accordingly, references to the Respondent in this decision refer to SiteLeader.
The following are undisputed facts summarised from the Complaint.
The Complainant is a company incorporated in 2002, in the United Kingdom of Great Britain and Northern Ireland (“UK”) with its registered address in Ford, Argyll, Scotland.
The Complainant is involved in the sale and distribution of yoga mats and yoga related products under the brand “Ecoyoga”. The Complainant markets its Ecoyoga products through a website currently available at “www.ecoyoga.co.uk”.
The Complainant owns a registered trade mark for the word mark ECOYOGA in the UK (see UK Trade Mark Registration number 2318392).
The disputed domain name was first registered by a Mr. Loening dba The Yoga Centre on October 26, 1999. Mr. Loening is a director and shareholder of the Complainant. The disputed domain name was registered through the Respondent, who has provided, among other things, domain name registration services. The Panel also notes that the Respondent appears to be a domain name registrar.
Additional material, comprising correspondence between Directi (the Registrar of the disputed domain name) and the Respondent was also submitted to the Panel by the Center as part of the case file. The Panel has considered the information set out in this correspondence in its decision. The relevant correspondence is summarised below.
The Respondent sent an email to Directi on November 4, 2009 requesting that Mr. Loening be listed as the legal owner of the disputed domain name. In this email the Respondent admitted that there had been an accidental error made in relation to the registration details of the disputed domain name. This email was then followed up with another email to Directi around the same time, stating that the Complainant still owed money to the Respondent for past domain name renewal fees as Mr. Loening had reversed the last payment. On November 4, 2009, Directi replied to these emails (collectively) stating that they could not take any action regarding payment issues as there was an ongoing UDRP dispute with regard to the disputed domain name. This appears to be the end of correspondence between the parties regarding this matter.
The Complainant makes the following contentions:
The Complainant is involved in the sale and distribution of yoga mats and yoga related products. The Complainant markets its Ecoyoga products through a website currently available at “www.ecoyoga.co.uk”. The Complainant has carried on this business since its incorporation on August 18, 2002.
The Complainant has spent a considerable amount of time and money marketing the Ecoyoga products offline, including through the production of flyers, postcards and editorial material.
The Complainant owns the following trade mark in the UK:
ECOYOGA - Trade Mark Registration number 2318392, registered August 15, 2003 in respect of yoga bolsters, yoga clothes, yoga mats, yoga belts, yoga blocks, yoga hat bags and yoga equipment.
The Complainant is the beneficial owner (Mr. Loening is the registered owner) of the following domain names:
“ecoyoga.co.uk” registered on July 23, 2002;
“ecoyoga.org” registered on July 29, 2002.
The Complainant supplies yoga mats to numerous distributors and retailers throughout the world in countries such as Denmark, United States of America, Australia and Japan.
As a result of its continuous use of ECOYOGA since 2002 in the course of the Complainant's business, the Complainant has acquired registered and unregistered rights in the ECOYOGA mark.
The disputed domain name is identical to the Complainant's ECOYOGA trade mark.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Complainant is the rightful owner of the disputed domain name.
The disputed domain name was first registered to Mr. Loening dba The Yoga Centre through the Respondent. The Respondent's email address was given (by the Respondent) as the administrative contact address for the disputed domain name, such that the Respondent had effective control of the disputed domain name from the date of registration.
In 2000, Mr. Loening paid the Respondent in respect of the continued registration of the disputed domain name for a period of 10 years (up until 2010).
In 2001, Mr. Loening attempted to transfer the disputed domain name from the control of the Respondent without success. He has made several further attempts, all without success.
In September 2009, Mr. Loening became aware that the disputed domain name no longer redirected to the Complainant's website (it was being offered for sale) and that he was no longer the registrant. Mr. Loening noted that the name was registered with “ConnectDomain.com Worldwidedomains, Inc.”. When “www.connectdomain.com” is entered into a browser, it reverts to the Respondent's website, “www.siteleader.com”.
In or around September 2009, the Respondent advised Mr. Loening that amounts were owed to the Respondent in respect of the registration of the disputed domain name. On September 15, 2009 Mr. Loening wrote to the Respondent asking how much money was needed in return for the release of the disputed domain name. On September 17, 2009 the Respondent replied that the fee would be USD 395.00 and that as a measure of good faith the Complainant's website would be enabled again. This email from the Respondent also stated that “the domain name will need to stay at our registrar for an additional year…no exceptions will be made”. Mr. Loening made this payment on September 21, 2009.
The Respondent deducted a further amount from Mr. Loening's bank account on September 23, 2009. Mr. Loening had this transaction reversed by his bank by letter dated September 26, 2009, on the basis that he had not authorised the payment.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Complainant is the rightful owner of the disputed domain name. The history of the dealings between the parties to date makes it clear that there is no evidence that the Respondent is:
- using or making demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services;
- making a legitimate non-commercial or fair use of the disputed domain name; or
- commonly known by the disputed domain name.
The Complainant contends that the Respondent has registered and used the disputed domain name in bad faith. The following factors show an overwhelming case of bad faith:
- the disputed domain name was used by the Complainant from 2002 until September 2009 and was held in the name of The Yoga Centre, which is owned by Mr. Loening (who is a shareholder and director of the Complainant);
- despite several attempts by Mr. Loening to regain control of the disputed domain name, the disputed domain name has remained within the effective control of the Respondent (in part due to the fact that the Respondent gave its own email address as the administration contact for the disputed domain name). This shows that the Respondent has a history of improperly preventing the Complainant from controlling the disputed domain name;
- in response to an accidental failure to pay a fee, the Respondent transferred the disputed domain name from Mr. Loening to itself which amounts to domain name hijacking;
- through the actions of the Respondent the identity of the Respondent was initially hidden from the Complainant by means of a privacy protection service; and
- the Respondent has tried to obtain other payments in connection with the disputed domain name by deducting money from Mr. Loening's account without notice or explanation.
The Respondent did not reply to the Complainant's contentions.
To succeed in its claim, the Complainant must demonstrate that all of the elements in paragraph 4(a) of the Policy have been satisfied, namely:
(i) the disputed domain name registered by the Respondent is identical or confusingly similar to a name, trademark or service mark in which the Complainant has rights; and
(ii) the Respondent has no rights or legitimate interests in respect to the disputed domain name; and
(iii) the disputed domain name has been registered and subsequently used in bad faith.
Paragraph 4(a) of the Policy states that the burden of proving these elements lies with the Complainant.
The Complainant is the registered owner of UK Trade Mark Registration number 2318392 for the word mark ECOYOGA. This mark has been registered from August 15, 2003.
The ECOYOGA trade mark is identical to the disputed domain name. The suffix “.com” can be ignored for this purpose.
The Complainant has, in addition, been using the disputed domain name for at least seven years and has common law rights in its mark due to past use.
Accordingly, the first element has been met.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in the disputed domain name:
“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 your rights or legitimate interests to the domain name for the purposes of Paragraph 4(a)(ii):
(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 trademark or service mark at issue.”
The Complainant is required to make out an initial prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name.
The Complainant contends that the Respondent has no rights or legitimate interests in respect of the disputed domain name because the Complainant is the rightful owner of the disputed domain name. The Complainant also contends that the Respondent cannot establish rights or legitimate interests in the disputed domain name in line with paragraph 4(c) of the Policy.
The Panel finds that there is no evidence that the Respondent is commonly known by the domain name or is making a legitimate noncommercial or fair use of the disputed domain name. Nor is there any indication of the Respondent using, or undertaking demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of goods or services. The Panel also finds that the non-payment of fees by the Complainant to the Respondent does not establish rights or legitimate interests in the disputed domain name in the Respondent.
Moreover, the Panel is able to presume in this case that the Respondent has no rights or legitimate interests in the disputed domain name, based on the Respondent's failure to respond to the Complainant's allegations. See GEOCITIES v. GEOCIITES.COM, WIPO Case No. D2000-0326, where the respondent was found to have 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, and Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse., WIPO Case No. D2000-1221, where the respondents' failure to respond was construed as an admission that they had no legitimate interest in the domain names. Although the principals of these decisions may not apply in all circumstances, the Panel considers that it is appropriate to apply them in this case in relation to this dispute where the Respondent is appears to also be a registrar and would fully understand the Policy.
The Complainant has established a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name and as the Respondent did not submit a response, it has not rebutted the prima facie case established by the Complainant.
Accordingly, on the evidence available to it, the Panel finds that the second element has been met.
Paragraph 4(b) of the Policy enumerates several ways that if found by the Panel to be present, shall be evidence of the use and registration of the domain name in bad faith. However this list is not exhaustive and it is open to the Panel to determine that the disputed domain name has been registered and used in bad faith in other circumstances.
From the date of registration of the domain name, the Respondent gave its own email address as the administration contact for the disputed domain name (without permission from Mr. Loening) which gave it effective control of the disputed domain name.
The Panel is able to infer that the Respondent registered and used the disputed domain name in bad faith due to the following reasons:
- The Respondent took control of the disputed domain name due to the non-payment of fees, apparently without knowledge or consent of the Complainant or Mr. Loening.
- When Mr. Loening paid the relevant fees owed to the Respondent for the disputed domain name, the disputed domain name was still not transferred to Mr. Loening.
Based on the evidence before the Panel, the Panel finds that the action taken by the Respondent in transferring registration of the disputed domain name from Mr. Loening to the Respondent is an act of bad faith. Furthermore, the Respondent's conduct in failing to transfer the disputed domain name to Mr. Loening after payment of the fees owed to the Respondent is further evidence of the Respondent's bad faith.
In the additional material provided to the Panel, there is an email dated November 4, 2009 from the Respondent to Directi. In this email, the Respondent admits that there was an accidental error involved in trying to change the domain name registration for the disputed domain name. At the end of this email, the Respondent requests Directi to transfer the disputed domain name from the Respondent to Mr. Loening. The Panel finds that this correspondence shows that the Respondent knew that Mr. Loening was the correct owner of the domain name and as such, the refusal to transfer the disputed domain name back to Mr. Loening is evidence of bad faith.
As the Respondent did not submit a response, it has been unable to rebut the evidence of bad faith that necessarily arises from the information set out in the Complainant's contentions.
Accordingly, on the evidence available to it, the Panel finds that the third element has been met.
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 <ecoyoga.com> be transferred to the Complainant.
The Panel also directs that the Center, if appropriate, provide a copy of this decision to ICANN for ICANN's review as a result of the Respondent's conduct.
John Swinson
Sole Panelist
Dated: December 11, 2009