Yoga Studio Gets Itself into a Twist over Rival`s Confusingly Similar Domain Name

Glo Digital, Inc. v. Tarik Celebi

WIPO Case No. D2023-4113

by Ivan Lipshitz, Adv., JMB Davis Ben-David

 

I kick off the New Year with this the first of my case reviews in my new occasional series:  “Lessons to Be Learnt- An Occasional Review of Recent UDRP Decisions”. In this series I will review and analyze some recent UDRP panel decisions relating to UDRP complaints. Readers will recall that in a previous article  I explained that to succeed in a complaint under the Uniform Domain-Name Dispute Resolution Policy ( the “UDRP” or the “Policy”), the complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are that: (i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.

Asserted Trademark: GLO & YOGAGLO
Domain Name at Issue: <gloyogastudios.com> (the “disputed domain name”)

Panelist: Robert A. Badgley, Sole Panelist
Date: December 28, 2023

Complaint denied.

Relevant Facts:

Complainant, founded in 2008, is Glo Digital, Inc. a rapidly growing fitness and wellness company offering on demand on-line live yoga, meditation, pilates, and fitness classes. Over 2,000,000 consumers have used Glo Digital’s services since 2008. Complainant holds trademark registrations for GLO and YOGAGLO in several jurisdictions. For example, YOGAGLO, was registered on July 3, 2012 at the United States Patent and Trademark Office (“USPTO”) Reg. No. 4,166,507 in connection with, among other things, “broadcasting and streaming of audio-visual media content in the fields of fitness, exercise and health-related matters” with an October 18, 2008 date of first use in commerce, as well as USPTO Reg. No. 4,993,684 for GLO, registered on July 5, 2016 in connection with, among other things, “broadcasting and streaming of audio-visual media content in the fields of fitness, exercise and health-related matters” with a December 2014 date of first use in commerce. Complainant offers its various online services at its website located at “www.glo.com”. 

Complainant also maintains an active social media presence, with numerous followers on leading social media platforms. In addition, Complainant has a mobile application available for download at the Apple App Store and Google Play Store. 

The disputed domain name, <gloyogastudios.com>, resolves to a website where Respondent invites visitors to sign up for yoga classes in Respondent’s “GLO Yoga” physical studio that it operates in the Bay Area, California, USA. Tarik Celebi is the founder and owner of GLO Yoga Studios. He has been using the name GLO Yoga in commerce since 2020. GLO Yoga Studios is a registered business in the State of California and has a pending trademark submission for the name GLO Yoga with the USPTO. Respondent claims to have chosen the disputed domain name because it is the name of his business. On its website, Respondent uses the term “GLO Yoga” extensively, and uses a stylized logo which differs significantly from Complainant’s stylized logo. Respondent also invites users to download its “GLO Yoga” mobile app at the Apple App Store or at Google Play Store. 

Respondent had apparently attempted to reach out to Complainant requesting a mutual collaboration. Its first communication to Complainant was on January 27,2022 via email. This was the first time Complainant became aware of Respondent`s business and the disputed domain name and in Complainant`s view demonstrates that Respondent was, and is, well aware of Complainant and the goodwill associated with Complainant’s GLO Marks. Or, to put it another way, but for this goodwill, Respondent would not have wanted to enter a collaboration with Complainant. 

There followed a string of email exchanges between Respondent and Complainant but attempts to reach a mutual collaboration met with no success and only exacerbated the dispute between them. From the email exchanges between the parties, it was disclosed that Complainant’s classes are exclusively online and Respondent operates exclusively “in-person classes”. Therefore, although the parties are in the same line of business, they have completely different business models; it was this contrast that, in the eyes of the Respondent, gave rise to a mutually beneficial potential synergy between the parties.  

Respondent`s intention in a mutual collaboration with Complainant was to forge a partnership with Glo Online whereby Complainant could refer their clients in the Bay Area who wanted “in- person classes “ to Respondent and Respondent could  likewise do the same to them for online classes. Respondent also touted a large press release article placement in the Associated Press and other publications promising the potential for instant nationwide joint exposure for the parties. 

Discussions for a collaboration broke down, leading to Complainant’s counsel sending an email to Respondent on March 28,2022, asserting Complainant’s trademark rights and “demanding that Respondent cease using GLO YOGA as a mark and cease using the (disputed) domain name” whereupon Respondent sent an email stating: “After reviewing this with our investors and on the advice of counsel, we have determined that there is no likelihood of confusion between our marks.” Complainant eventually brought the above-mentioned UDRP complaint to WIPO for transfer of the disputed domain name at issue, contending that it had satisfied each of the elements required under the Policy for a transfer of the disputed domain name. Respondent’s principal defense was to assert that its business does not compete with Complainant’s because Complainant’s offerings are all virtual and Respondent’s yoga services are provided at its physical location.

Panel’s Finding:

The Panel affirmed that Complainant has rights in the mark GLO through registration and use demonstrated in the record. The Panel also found the disputed domain name to be confusingly similar to that mark. The disputed domain name incorporates the mark in its entirety and adds the words “yoga studios” to the mark. This addition does not overcome the fact that the GLO mark remains clearly recognizable within the disputed domain name. Complainant therefore established that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, as required by paragraph 4(a)(i) of the Policy. 

With regard to Paragraph 4(a)(iii) of the Policy, namely, proving evidence of registration and use of the disputed domain name in “bad faith”,the Panel concluded that Complainant had failed to prove that Respondent had registered the disputed domain name in bad faith. 

The Panel  was at pains to point out that the record of evidence was less than perfect on both sides. There were glaring holes in the record and unanswered questions even after a procedural order had been issued requiring both parties to present additional evidence.  For instance, neither party had put into the record the “large press release” mentioned in Respondent’s January 27, 2022 email to Complainant. 

The Panel also had the impression that both parties had been less than forthcoming with information that one might otherwise expect to provide in support of their respective versions. On the one hand, Respondent’s claims were not always backed up by evidence, and the fact that Respondent adopted the term “Glo” for its yoga business after Complainant had been using the mark GLO for several  years in connection with its own yoga business, was suspicious. 

To the Panel’s knowledge, while the word “Glo” has no generic or obvious descriptive connection with yoga, it may have a suggestive quality in that one may “glow” following yoga practice, and hence the element of coincidence here was an open question. 

On the other hand, Respondent  had registered the disputed domain name  and, within a few months, applied for and secured a business license. More importantly, Respondent also developed its own logo – very different from  Complainant’s – and by all accounts it appeared to have been operating a legitimate yoga studio in its town. 

The Panel also noted that Respondent had registered the disputed domain name on July 7, 2020, and first approached Complainant about a “collaboration” on January 27, 2022. This gap of 18 months, during which time Respondent was actually operating a yoga studio, does not tend to support the claim that Respondent registered the disputed domain name in order to target Complainant’s mark. 

The Panel accordingly found that it is possible that Respondent registered the disputed domain name without knowledge of Complainant’s mark, but later learned of Complainant’s mark, and then sought to explore a mutually beneficial business relationship with Complainant.

In conclusion, on the record before it, and as presented by the parties and bearing in mind Complainant’s burden of proof in this proceeding, the Panel could not find that the alleged conduct of Respondent suggested a cybersquatter targeting another party’s trademark for improper commercial gain. Because of this, the Panel found that Complainant had not established bad faith registration of the disputed domain name, and the Complaint failed.

The Panel did not address the element pursuant to paragraph 4(a)(ii) of the Policy, that Respondent lacks rights or legitimate interests in the disputed domain name given its conclusion that Complainant had failed to prove registration and use of the disputed domain name in bad faith.

In its ruling the Panel specifically highlighted that its decision in this case was under the UDRP which has no bearing on whether Complainant has a viable trademark infringement, or unfair competition, cause of action against Respondent. It stated that that is a question for another tribunal under a different set of standards, and it lies beyond the Panel’s remit.

Complainant was accordingly found not to have met the conditions set out by paragraph 4(a)(iii) of the Policy and the complaint was denied. The disputed domain was therefore ordered to remain with Respondent.

Final Thoughts:

Assertions of Bad Faith Require Evidence

This is not a straightforward case. There were glaring inadequacies, deficiencies and omissions in the evidence adduced by both parties. The first point to note is that conclusory allegations and mere assertions of bad faith will never be sufficient to succeed in a UDRP complaint for the purposes of proving that “the disputed domain name has been registered and is being used in bad faith” (paragraph 4(a)(iii) of the Policy). If a complainant makes conclusory allegations of bad faith but does not adduce specific documentary evidence that warrants a holding that respondent proceeded in bad faith at the time it registered the disputed domain name, a panel will find that complainant has failed to meet its burden of proof of bad faith registration and use under paragraph 4(a)(iii) of the Policy and it will fail with its claim under the UDRP, as the Complainant found out to its peril in this case. 

Mere assertions of bad faith, even when made on multiple grounds, do not prove bad faith. See also Redfig LLC v. Bill Patterson / Reserved Media LLC Claim Number: FA2310002065116 and Chris Pearson v. Domain Admin / Automattic, Inc. Claim Number: FA1504001613723 finding in both cases that the complainant failed to present actual evidence that the respondent registered and used the disputed domain name in bad faith.

The UDRP is Concerned with Cybersquatting, Not Trademark Infringement

It has been clearly established and recognized by UDRP panels over a considerable period of time that “[t]he Policy’s purpose is to combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trademark disputes. See Luvilon Industries NV v. Top Serve Tennis Pty Ltd., DAU2005-0004 (WIPO Sept. 6, 2005).and Courtney Love v. Brooke Barnett, Claim Number: FA 944826 (Forum May 14, 2007) which established that “the purpose of the Policy is not to resolve disputes between parties who might each have legitimate rights in a domain name.  The purpose of the Policy is to protect trademark owners from cybersquatters, that is, from people who abuse the domain name system in a very specific way, which specific way is outlined in Paragraph 4(a) of the Policy.” 

The UDRP is designed to deal with clear cases of cybersquatting, see IAFT International LLC v. MANAGING DIRECTOR / EUTOPIAN HOLDINGS, CLAIM NO FA 1577032 (Forum Oct. 9, 2014) in which is stated: “The objectives of the Policy are limited — designed to obviate the need for time-consuming and costly litigation in relatively clear cases of cyber-squatting — and not intended to thwart every sort of questionable business practice imaginable.”

Tailor your Expectations to the Case that you are able to Present

Trademark owners must be aware of the distinction between trademark infringement and domain name abuse under the UDRP.  UDRP proceedings are summary in nature and are concerned with the narrow question to be determined under these proceedings whether a complainant in the UDRP proceeding has been successful in showing that all three of the elements set out under paragraph 4(a) of the Policy are present. 

Therefore, the evidence and supporting material that complainant is able and willing to bring to the proceedings are crucial to support its claims and contentions that all three of the elements set out under paragraph 4(a) of the Policy are present. 

However, the question of trademark infringement on the other hand, is beyond the scope of UDRP proceedings, and while a competitor`s or rival business` or other third party`s unlawful conduct may indeed constitute trademark infringement or may amount to passing off by registering and using an identical or confusingly similar domain name to complainant`s registered mark, it is still required to demonstrate that a respondent lacks rights or legitimate interest in a disputed domain name, or constitutes bad faith for the purposes of Paragraph 4(a) of the Policy. To assert and claim trademark infringement per se, other remedies may be available in a different forum to claim redress.

If any of your trademarks may be subjected to domain name abuse and you need assistance to file a domain name dispute resolution complaint to secure or enforce your digital brand, or need assistance in developing an enforcement strategy to safeguard your digital assets from all forms of infringement, violation and abuse,or where a trademark holder is challenging your domain name, please email Ivan Lipshitz at: Ivan.Lipshitz@jmbdavis.com or JMBmail@jmbdavis.com.

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