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Nominet UK Dispute Resolution Service |
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You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Young Living Essential Oils LC v Willis [2006] DRS 4131 (20 December 2006) URL: http://www.bailii.org/uk/cases/DRS/2006/4131.html Cite as: [2006] DRS 4131 |
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Nominet UK Dispute Resolution Service
DRS 04131
Young Living Essential Oils, LC v. Carol Willis
Decision of Independent Expert
Complainant: Young Living Essential Oils, LC
Address: 3125 W. Executive Pkwy.
Lehi
UT
Postcode: 84043
Country: US
Respondent: Carol Willis
Address: PO Box 5761
Burton-on-Trent
Postcode: DE13 9YW
Country: GB
youngliving.co.uk ("the Domain Name")
The complaint was received by Nominet in full on 24 October, 2006. Nominet validated the complaint and informed the Respondent, by both letter and by email on 25 October, 2006 noting that the Dispute Resolution Service had been invoked and that the Respondent had 15 days (until 16 November, 2006) to submit a Response. No Response or reply of any sort was received. Nominet informed the Complainant accordingly on 17 November, 2006, noting that Informal Mediation was not an option in this situation, and inviting the Complainant to pay the fee to obtain an Expert Decision pursuant to paragraph 7 of the Nominet UK Dispute Resolution Service Policy ("the Policy"). The fee was duly received by Nominet on 29 November, 2006.
Nominet invited the undersigned, Keith Gymer ("the Expert"), to provide a decision on this case and, following confirmation to Nominet that the Expert knew of no reason why he could not properly accept the invitation to act in this case and of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality, Nominet duly appointed the undersigned as Expert with effect from 6 December, 2006.
None.
The Complainant, Young Living Essential Oils, LC, is in the business of producing and marketing essential oils. The business was begun in 1989 and the company has an online presence using the domain name youngliving.com, which was registered in 1996 according to the .com WHOIS records.
The Complainant has various trade mark registrations for YOUNG LIVING, the earliest of which is US 2,736,573, registered on July 15, 2003 on an application filed September 30, 2002.
The Respondent, Carol Willis, trading under the name Ayurveda UK, offers Vedic therapies, which may make use of essential oils. The Respondent signed up as a Young Living distributor in 1999 on the basis of the Complainant's then current Policies and Procedures.
From the .uk WHOIS records, the Domain Name youngliving.co.uk was registered for the Respondent, Carol Willis, on 2 June, 2000. Contact details were provided.
Complainant:
The Complainant has asserted that:
1. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name (Policy Paragraph 2a(i)); and
2. The Domain Name, in the hands of the Respondent, is an Abusive Registration (Policy Paragraph 2a(ii)).
In support of its Complaint, the Complainant made the following submissions:
Young Living (Europe) Ltd. is the European arm of Young Living Essential Oils, LC (its American parent) and has been physically located in Huntingdon, Cambs., UK, since August 2005.
However, Young Living Essential Oils, LC, has had distributors in the UK since at least 1996.
Exhibit A [to the Complaint] shows a copy of the European arm's homepage, found at younglivingeurope.com.
Exhibit B [to the Complaint] is submitted as evidence of Young Living's presence in Europe since at least 1999, being a sales receipt for products sent to the United Kingdom in that year.
Respondent has most recently been using the name of Complainant's company, Young Living, in the disputed domain name in association with their premium spa services. Typing in the disputed name until this last month lead a user to Respondent's spa site at www.ayurveda.uk.com. While it may be possible that Respondent uses Young Living's essential oil products in the operation of her business, Young Living is not mentioned on the home page in question and is difficult to find in any site linked to from that page. Respondent was an independent contractor for sales of Young Living's products up until the time of the dispute.
Exhibits C–H [to the Complaint] are copies of correspondence sent back and forth from Young Living's corporate office in the US to Respondent's address in the UK, in chronological order.
These letters detail what we [the Complainant] allege are violations of not only intellectual property law in the US and UK, but also violation of our Policies & Procedures, which our independent contractors must sign and agree to prior to engaging in business with us.
These Policies & Procedures are attached as Exhibit I [to the Complaint], and in particular, the relevant sections are 1.3, which require our distributors to conform to the present and all future modifications of the Policies, and section 5.5, which forbids usage of company trademarks in domain names and email addresses.
Complainant alleges that this flagrant disregard of our Policies & Procedures, as well as intellectual property laws common to our countries of residence, constitute an abusive registration. In addition, Respondent offered to sell back the domain name to the company for £250,000 at a point in earlier negotiations with the manager of Young Living (Europe), which is the outrageous demand referred to in attached Exhibit C [to the Complaint].
Exhibit J [to the Complaint] is an email from our European manager confirming this amount.
In the subsequent correspondence, Exhibits D–H [to the Complaint], Respondent lowers her asking price for the domain, but refuses to move from £5,000, which is presumably far in excess of the price Respondent paid for the domain name originally. Complainant alleges that this is an abusive tactic according to guidelines set down by Nominet, and alleges that this is no more than a typical cyber-squatting tactic. As well, Exhibit H has made it clear that Respondent is no longer using the disputed domain name to drive traffic to her spa services website, but instead is using the name to advertise sale of the domain for £5,000.
We allege that this change in usage of the domain name is also abusive in that Respondent is attempting to use third parties in order to pressure Complainant into accepting her price for the domain name, which is no longer apparently of interest to her, as detailed in Exhibit H.
Young Living (Europe) has common-law trademark rights in "Young Living" in the UK, and has applied for a Community Trade Mark with serial no. 5,137,542 (Exhibit K [to the Complaint]). In addition, "Young Living" is a registered trademark in the United States with registration number 2,736,573 (Exhibit L [to the Complaint]), and is also registered in Australia (Reg. No. 1,066,773) (Exhibit M [to the Complaint]) and Japan (Reg. No. 894,684, through the Madrid Protocol) (Exhibit N [to the Complaint]).
First usage of the trademark in the UK occurred in 1996.
In light of the above allegations, Complainant believes that this is an abusive registration in hands of the Respondent, considering her outrageous ransom demands on the domain name, as well as in her use of Young Living's goodwill to advertise her own, unrelated business services. As holders of trademark rights, Complainant has a responsibility to police usage of its trademarks. Since Respondent has refused to acknowledge wrong-doing in this matter, we respectfully request that Nominet restore rights in the disputed domain name to Complainant as a result of the abusive registration.
As a result, it is requested that the domain is also transferred to the Complainant.
Respondent:
The Respondent made no Response to, and raised no challenge to, any of the facts and statements submitted by the Complainant.
General
Paragraph 2 of the Policy requires that, for the Complainant to succeed, it must prove to the Expert, on the balance of probabilities, both that it has Rights in respect of a name or mark which is identical or similar to the Domain Name; and that the Domain Name, in the hands of the Respondent, is an Abusive Registration as defined in Paragraph 1 of the Policy.
Complainant's Rights
The Complainant in this case has asserted principally that it has rights in the name YOUNG LIVING and that this name is identical or similar to the Domain Name.
The Complainant has provided ample evidence of its rights, including in trade mark registrations for the YOUNG LIVING mark and, although it is clear that the registered trade mark rights have been acquired in the period since the Domain Name was originally registered by the Respondent, the Complainant's commercial use of the YOUNG LIVING name considerably predates the registration of the Domain Name at issue by the Respondent.
The Respondent has not directly challenged in these proceedings any of the submissions made by the Complainant regarding the Complainant's rights in the name, although it is noted that, in correspondence with the Complainant, attached as Exhibit F to the Complaint, the Respondent asserted that '"Young Living" it is a generic term that could be used by anyone to promote products or services that appertains to healthy living'.
Under the Policy, "Rights includes but is not limited to, rights enforceable under English law. However, a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business".
There is no requirement that the Rights should necessarily predate the registration of the Domain Name, although in the present case it is clear that the Complainant would have had such rights under common law from its earlier use of the YOUNG LIVING name and registration of the domain name youngliving.com.
It is also clear that, despite the Respondent's assertion, the term YOUNG LIVING is not directly descriptive of the Complainant's business and is perfectly apt to function distinctively as a trade mark for the Complainant's goods and services.
Accordingly, the Expert concludes that the Complainant does have Rights in this case in respect of the name and mark YOUNG LIVING, which is also considered to be similar to the Domain Name for the purposes of the Policy.
Abusive Registration
The Complainant also has to show that the Domain Name is an Abusive Registration. Paragraph 1 of the Policy defines "Abusive Registration" as a Domain Name which either:
i. was registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR
ii. has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant's Rights.
A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration are set out in Paragraph 3a of the Policy:
i. Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name:
A. primarily for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;
B. as a blocking registration against a name or mark in which the Complainant has Rights; or
C. primarily for the purpose of unfairly disrupting the business of the Complainant;
ii. Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant;
iii. The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations, where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain name is part of that pattern;
However, the factors listed in Paragraph 3 of the Policy are only exemplary and indicative. They are not definitive. It is Paragraph 1 of the Policy, which provides the applicable definition as indicated above.
The Complainant has made various assertions in support of its allegation that the Domain Name is an Abusive Registration.
The Complainant alleges that the Respondent "is in flagrant disregard of our Policies and Procedures", and refers to sections of these Young Living Policies as specified in Exhibit I to the Complaint, dating from May 2005, which include a prohibition on Distributors registering domain names incorporating the YOUNG LIVING trade marks.
Unfortunately for the Complainant, it is common ground that the May 2005 Young Living Policies were not those signed by the Respondent, and the Complainant has failed to put in evidence any copy of the 1999 version of these Policies for comparison.
The May 2005 Young Living Policies also prescribe that "All disputes and claims relating to Young Living … shall be settled totally and finally by arbitration in Salt Lake City, Utah …", which, if applicable, would also appear to preclude use of the Nominet DRS by the Complainant!
Consequently, the Expert does not consider that the specific terms of the Young Living Policies are of particular relevance in their detail. Their existence, and the fact that the Respondent has admitted to signing up to the 1999 terms, however, does demonstrate that the Complainant recognised, and the Respondent accepted, that there were commercial interests to protect in the Young Living business.
In any event, the Respondent has admitted (in Exhibit F to the Complaint) that "the domain name youngliving.co.uk was bought by me in 2000 in good faith and with the sincere intention of using it to promote the sale of Young Living Essential Oils…". It is therefore quite clear that the Respondent's acquisition of the Domain Name was not made in innocent ignorance of the Complainant's Rights, and implicitly recognises that "Young Living" in this context, was a trade mark for essential oils.
The Respondent has also expressly indicated (in the same Exhibit) that she is happy to have the present dispute "resolved by the official ruling body", which is identified as Nominet. The Expert therefore concludes that the parties have both agreed to forego exclusive arbitration in Salt Lake City to settle this dispute.
In addition to her original registration of the Domain Name, knowing of the Complainant's prior Rights, the evidence shows that the Respondent has subsequently sought to extract payment of sums coming down from £250,000 (Exhibit J), through £50,000 (Exhibit D), to £5000 (Exhibit F) from the Complainant for transfer of the Domain Name to the Complainant.
The Respondent has also subsequently openly offered the Domain Name for sale to "other interested parties", who are unidentified by the Respondent.
In the Expert's view, the evidence demonstrates that the Respondent has knowingly taken the Complainant's mark and incorporated it in the Domain Name for the purpose initially of profiting from reselling the Complainant's own products in the UK, and ultimately for trying to obtain excessive monetary consideration from the Complainant for the transfer of the Domain Name.
It there is also a significant risk that, were the Domain Name to be sold to a third party and put to active use, such use would take unfair advantage of or be unfairly detrimental to the Complainant's Rights. The threat of such a sale may be seen as an abuse in itself. To adopt the words of Aldous LJ in the One in A Million judgment (British Telecommunications plc and Others v. One in a Million Ltd and Others [1999] ETMR 61), in the hands of the Respondent, the Domain Name incorporating the YOUNG LIVING mark is an "instrument of deception".
The Expert therefore concludes that the Domain Name was registered or otherwise acquired in a manner which, at the time the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights and that the Domain Name has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant's Rights. It is an Abusive Registration for the purposes of the Policy.
Having concluded that the Complainant has Rights in respect of a name or mark which is similar to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert orders that the Domain Name, youngliving.co.uk, should be transferred to the Complainant.
December 20, 2006
Keith Gymer Date
