WIPO Domain Name Decision D2019-1157 for shakeologyclub.com
WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Beachbody, LLC v. Contact Privacy, Inc. Customer 1244448913, Contact Privacy, Inc. / Thomas Medley Case No. D2019-1157 1. The Parties
The Complainant is Beachbody, LLC, United States of America (“United States”), represented by Cozen O’Connor, United States.
The Respondent is Contact Privacy, Inc. Customer 1244448913, Contact Privacy, Inc., Canada / Thomas Medley, United States. 2. The Domain Name and Registrar
The disputed domain name is registered with Google LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 17, 2019. On May 20, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 21, 2019, the Registrar 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 May 23, 2019 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 May 23, 2019.
The Center verified that the Complaint together with 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 27, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 16, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2019.
The Center appointed Gregory N. Albright as the sole panelist in this matter on July 4, 2019. 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 following factual information is derived from the Amended Complaint and supporting materials submitted by the Complainant.
The Complainant owns the following trademark registrations:
- United States Registration No. 3,534,958 for SHAKEOLOGY in connection with “nutritional and dietary supplements; meal replacement shakes; meal replacement bars” in International Class 5, registered on November 18, 2008;
- United States Registration No. 4,171,714 for in connection with “nutritional and dietary supplements; meal replacement shakes adapted for medical use” in International Class 5, registered on July 10, 2012;
- United States Registration No. 3,979,663 for SHAKEOLOGY THE HEALTHIEST MEAL OF THE DAY in connection with “nutritional and dietary supplements; meal replacement shakes; meal replacement bars” in International Class 5, registered on June 14, 2011;
- International Registration No. 1045004 for SHAKEOLOGY in connection with “nutritional and dietary supplements adapted for medical purposes; dietary meal replacement shakes adapted for medical purposes; dietary meal replacement bars adapted for medical purposes” in International Class 5, registered on April 13, 2010; and
- Canadian Registration No. TMA804,603 for SHAKEOLOGY in connection with “Nutritional and dietary supplements, namely, vitamins and mineral supplements; meal replacement shakes; meal replacement bars” in International Class 5, registered on August 17, 2011.
The disputed domain name was registered by the Respondent on May 5, 2019. The disputed domain name resolves to a webpage offering for sale the Complainant’s SHAKEOLOGY products. 5. Parties’ Contentions A. Complainant
The Complainant is a well-known creator and seller of in-home fitness, health, wellness and weight loss solutions, including nutritional supplement products, in-home exercise and fitness DVD-based workout kits, and exercise gear. The Complainant has a strong presence in the fitness industry as a leading provider of exercise and fitness instruction, exercise, health and nutrition goods and services and has achieved great success since 1998.
The Complainant’s popular SHAKEOLOGY nutritional supplement products are a key component of the Complainant’s business. The Complainant sells its SHAKEOLOGY products around the world including in the United States, Canada, the United Kingdom, and Europe. The Complainant does not sell its SHAKEOLOGY products wholesale. Rather, consumers must either purchase SHAKEOLOGY products directly from the Complainant’s websites or through an authorized Beachbody coach.
The Complainant’s SHAKEOLOGY products have achieved great success since introduction on September 1, 2017, in large part because of the Complainant’s marketing and promotional efforts, including through the Complainant’s websites (“/shk/us” and “”), Facebook product page, Twitter account, YouTube channel, as well as substantial print and Internet-based advertising. The Complainant’s promotional and marketing efforts have generated substantial success for the Complainant and a huge consumer following. The Complainant’s SHAKEOLOGY products were featured in the May 2011 issue of Oprah’s O Magazine, with an annual circulation of over 2.5 million copies. As a result of the Complainant’s efforts, the SHAKEOLOGY trademarks have acquired a valuable reputation and goodwill among consumers, and consumers associate the marks with the Complainant. In addition to the Complainant’s common law trademark rights, the Complainant owns the trademark registrations summarized in Section 4, above.
In an apparent attempt to trade on the Complainant’s marks, the Respondent registered the disputed domain name, which incorporates the entirety of the Complainant’s SHAKEOLOGY trademark, and is confusingly similar thereto. The mere addition of the descriptor “club” to the disputed domain name does not distinguish, and instead increases, the likelihood of confusion amongst consumers as to