The Complainant is Product Partners, LLC of Santa Monica, United States of America, represented by Cozen O’Connor, United States of America.
The Respondent is Zheng Moses of Dongguang, the People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Tucows Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2010. On July 8, 2010, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On the same day, Tucows Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. 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 July 13, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 2, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2010.
The Center appointed Ian Blackshaw as the sole panelist in this matter on August 9, 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
According to the Complaint, the Complainant has been a leader in the field of in-home health, wellness, weight loss, and fitness solutions since 1998. One of the main components of the Complainant’s business encompasses the development, production, sale and distribution of its Beachbody family of weight loss and fitness products and services, including its famous P90X fitness DVDs and kits. The Complainant’s well-known P90X-branded DVDs, kits, and other products and services have achieved great success since their introduction in 2003.
The great success of the P90X products and services is due in part to the Complainant’s marketing and promotional efforts. These efforts include advertising and promotion through the Complainant’s websites, print and other Internet-based advertising, in-person and televised promotional appearances by its trainers, and its infomercials, amongst other efforts. The success of P90X is also generated by its consumers and the word of mouth buzz those consumers have generated. Success stories of countless individuals who have utilized P90X to help achieve their respective fitness goals are far too numerous to recount, but include stories from all types of people ranging from your average men and women in almost all age groups, to well-trained professional athletes and celebrities looking to stay fit and in shape.
The Complainant is the owner of the registered trademarks mentioned below. 5. Parties’ Contentions A. The Complainant makes the following contentions:
i. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
As a result of the Complainant’s efforts, the quality of the Complainant’s products, and the promotion and word of mouth buzz, the P90X mark and the P90X DVDs, products and services have been prominently placed in the minds of the public. The Complainant and its P90X mark have acquired a valuable reputation and goodwill amongst the public as consumers, purchasers and members of the public at large have become familiar with the Complainant’s P90X fitness DVDs and other products and services. Indeed, the P90X mark is famous in the United States.
While the Complainant has gained significant common law trademark and other rights in its P90X marks through its use, advertising and promotion, the Complainant has also protected its valuable P90X mark by filing for and obtaining trademark registrations in various jurisdictions throughout the world, and has obtained an International Registration. These registrations include:
- United States Reg. No. 2,869,491 for the P90X word mark for “nutritional and dietary supplements” in International Class 5, registered on August 3, 2004, and used by the Complainant in connection with those products at least as early as July 21, 2003. A copy of this registration is attached as Annex D.
- United States Reg. No. 2,869,490 for the P90X & Design mark for “meal replacement bars, nutritional and dietary supplements” in International Class 5, registered on August 3, 2004, and used by the Complainant in connection with those products at least as early as July 21, 2003.
- United States Reg. No. 2,843,063 for the P90X word mark for “educational services, namely physical fitness instruction” in International Class 41 and for “dietary instruction, namely nutritional counseling services” in International Class 44, registered on May 18, 2004, and used by the Complainant in connection with those services at least as early as February 18, 2003.
- United States Reg. No. 2,973,356 for the P90X & Design mark for “educational services, namely instruction in the use of exercise equipment and diet programs” in International Class 41, registered on July 19, 2005, and used by the Complainant in connection with those services at least as early as July 2003.
- United States Reg. No. 3,669,400 for the P90X & Design mark for “pre-recorded video tapes, cassettes, DVDs and CDs featuring exercise, fitness and dietary information and instruction” in International Class 9, registered on August 18, 2009, and used by the Complainant in connection with those products at least as early as July 21, 2003.
- United States Reg. No. 3,444,723 for the P90X word mark for “pre-recorded video tapes, cassettes, DVDs, and CDs, featuring exercise, fitness and dietary information and instruction” in International Class 9, registered on June 10, 2008, and used by the Complainant in connection with those products at least as early as February 18, 2003.
- International Reg. No. 974040 for the P90X word mark for “pre-recorded video tapes, cassettes, DVDs, and CDs, featuring exercise, fitness and dietary information and instruction” in International Class 9, registered on July 25, 2008, and used by the Complainant in connection with those products at least as early as 2003.
Copies of all the above trademark registrations have been provided to the Panel.
It is clear from the above that the Complainant used its P90X mark in commerce and obtained trademark registrations long before the Respondent’s purchase of the disputed domain name on April 22, 2010. Given the Complainant’s extensive and exclusive rights in the P90X mark, there can be little question that the Respondent purchased the disputed domain name with full knowledge of and with the intent to trade off of the Complainant’s pre-existing rights.
Similarly, there is little question that the disputed domain name is confusingly similar to the Complainant’s well-known P90X mark. The domain name incorporates the entirety of the Complainant’s above-referenced P90X mark, displaying the identical characters in the exact same chronological order as found in the Complainant’s P90X trademark. Indeed, the dominant portion of the domain name, namely P90X, is identical to the Complainant’s P90X trademark.
Further, the use of “world” in combination with the Complainant’s well-known P90X mark does not decrease the confusingly similar nature of the disputed domain name. For example, given the Complainant’s world-wide rights in its P90X mark, the prominent consumer recognition of the P90X brand by consumers throughout the world, and the many and numerous products offered by the Complainant in connection with the P90X mark, the Respondent’s use of “world” after the Complainant’s P90X mark will indicate to consumers both the Complainant’s world-wide brand and sales efforts, as well as the world of products they recognize as being offered in connection with the mark.
ii. The Respondent has no rights or legitimate interests in respect of the disputed domain name
The Respondent is not affiliated with the Complainant. Further, there is no evidence to suggest that the Respondent has registered the disputed domain name to advance legitimate interests or for the bona fide offering of legitimate goods or services. In fact, the circumstances of this registration are very similar to those that the Complainant sees on a daily basis as it enforces against manufacturers of counterfeit P90X and other products located in China who register P90X-based domain names to sell counterfeit product. Even discounting the Complainant’s belief that the Respondent intends to use the disputed domain name in connection with the sale of counterfeit copies of P90X and other exercise DVDs of the Complainant, the Respondent has not provided any legitimate basis for its registration of a domain name that includes and focuses on the Complainant’s well-known P90X registered trademark.
iii. The disputed domain name was registered and is being used in bad faith
Given the high number of counterfeit goods bearing the P90X mark exported from China and the absence of evidence supporting the Respondent’s legitimate interests in registering the disputed domain name, the Complainant believes that the Respondent’s adoption and intended use of the disputed domain name is in bad faith.
The Respondent has attempted to take commercial advantage of the Complainant’s trademark and commercial reputation and trade off the Complainant’s goodwill. The Respondent, by registering the disputed domain name, has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor, which is a circumstance of bad faith registration pursuant to Policy paragraph 4(b)(iii).
On June 23, 2010, the Complainant sent the Respondent a letter in which it notified the Respondent of the Complainant’s rights and requested that the Respondent transfer the disputed domain name to the Complainant. A copy of the notice of rights provided by the Complainant to the Respondent has been provided to the Panel. The Respondent has ignored the Complainant’s June 23, 2010 correspondence. B. Respondent
The Respondent, having been duly notified of the Complaint and of these proceedings, did not reply to the Complainant’s contentions or take any part in them. 6. Discussion and Findings
To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.
In accordance with paragraph 14(a) of the Rules, in the event that a party, in the absence of exceptional circumstances, does not comply with any of the time periods established by the Rules or the Panel, the Panel shall proceed to a decision on the Complaint; and (b) if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences as it considers appropriate.
In accordance with paragraph 10(d) of the Rules, the Panel shall determine the admissibility, relevance, materiality and weight of the evidence.
In previous UDRP cases in which the respondent failed to file a response, the panels’ decisions were based upon the complainants’ assertions and evidence, as well as inferences drawn from the respondents’ failure to reply. See The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064; and also Köstritzer Schwarzbierbrauerei v. Macros-Telekom Corp.,WIPO Case No. D2001-0936.
Nevertheless, the panel must not decide in the complainant’s favor solely based on the respondent’s default. See Cortefiel S.A. v. Miguel García Quintas,WIPO Case No. D2000-0140. The Panel must decide whether the Complainant has introduced elements of proof, which allow the Panel to conclude that its allegations are true. A. Identical or Confusingly Similar
It is well established in previous UDRP cases that, where a disputed domain name incorporates a complainant’s registered trademark, this may be sufficient to establish that the disputed domain name is identical or confusingly similar for the purposes of the Policy. See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525.
In the present case, the disputed domain name incorporates the Complainant’s well-known registered trademark P90X. The addition of the word “world” is purely descriptive and, it may be added, is also misleading in view of the range of the Complainant’s products and services sold under the Complainant’s registered trademark P90X; and, furthermore, the addition of this descriptor does not serve to distinguish, for Policy purposes, the disputed domain name from the Complainant’s registered trademark P90X. See Harrods Limited v. Simon Harkin Travel,WIPO Case No. D2004-0546 in which the panel held that:
“Although the Domain Name consists of the word “harrods” and the word “travel,” it is well settled that a domain name suffix, such as the word “travel” in the present case, is merely descriptive and does not add any distinctiveness to the word “harrods,” which is the quintessential and distinctive part of the Domain Name. See also Harrods Limited v. Vineet Singh,WIPO Case No. D2001-1162, where the Panel held that “… any use of the name Harrods in conjunction with a description… would suggest a false sense of origin…for any associated goods or services”. See also Harrods Limited v. Brad Shaw, WIPO Case No. D2004-0411, where the panel held that “The Domain Name consists of the word HARRODS plus a hyphen and the generic term “poker”. The latter is not a distinguishing feature and does not lessen the likelihood of confusion with the trademark”.
Again, in Harrods Limited v. Peter Pierre,WIPO Case No. D2001-0456, it was stated that, consistent with previous decisions “[…] common nouns are rarely distinguishing elements. Where […] the common noun selected coincides with and in fact connotes if not denotes precisely the goods or services in respect of which the other element of the domain name is registered as a trademark, confusing similarity is inevitable”.
See further on this point, the cases of United States Olympic Committee v. MIC,WIPO Case No. D2000-0189; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a, For Sale,WIPO Case No. D2000-0662; and Nintendo of America, Inc. v. Gray West International,WIPO Case No. D2000-1219.
Likewise, the addition of a generic top-level domain (gTLD) “.com” to the disputed domain name does not constitute an element in the domain name so as to avoid confusing similarity. See Telecom Personal, S.A., v. NAMEZERO.COM, Inc,WIPO Case No. D2001-0015; Société Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri,WIPO Case No. D2002-0760; F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451; and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003.
In view of the above, the Panel finds that the disputed domain name registered by the Respondent is confusingly similar to the Complainant’s trademark, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights and commercial use of the same for several years. The first element of the Policy has, therefore, been met. B. Rights or Legitimate Interests
In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:
- whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s 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;
- whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;
- whether the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests with respect to registering the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint. See 1-800-F, Inc, Fresh Intellectual Properties, Inc., Fannie May Confections, Inc. v. G Design,WIPO Case No. D2006-0977.
Neither is there any evidence before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s well-known registered trademark P90X. Indeed, in the view of the Panel, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s trademark P90X inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products (see further on this point below), and the consequential tarnishing of the Complainant’s trademark P90X and also the goodwill that the Complainant has established in this trademark through its promotion, advertising and commercial use of the same, sufficient evidence of which has been provided to the Panel, without any right or legal justification for doing so.
Also, the Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
Therefore, for all the above reasons, the Panel concludes that the Respondent has neither rights nor legitimate interests in the disputed domain name. C. Registered and Used in Bad Faith
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative. See Nova Banka v. Iris,WIPO Case No. D2003-0366.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [the Respondent’s] web site or location or of a product or service on its web site or location.”
Based on the record in the case file, the Panel considers that the Respondent, by registering the disputed domain name, is trading on the Complainant’s valuable goodwill established in its well-known registered trademark P90X.
Again, by registering and using the disputed domain name incorporating the Complainant’s well-known registered trademark P90X, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which, on the basis of the record in the case file, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent. See Columbia Insurance Company v. Pampered Gourmet,WIPO Case No. D2004-0649.
Furthermore, the fact that the disputed domain name includes the Complainant’s well-known trademark P90X, held and used in commerce by the Complainant for several years prior to the date the Respondent became the registrant of the disputed domain name, the Respondent must have known and been aware of the Complainant’s rights in this mark at the time the Respondent registered the disputed domain name, which includes the Complainant’s mark, is a further factor supporting a conclusion of bad faith. See Segway LLC v. Chris Hoffman,WIPO Case No. D2005-0023; Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Cellular One Group v. Paul Brien,WIPO Case No. D2000-0028. In this Panel’s view a domain name which contains a third-party’s registered trademark would typically be used in good faith only by the owner of the respective right, by licensees, or a similar class of rights-holder, which does not appear to be the situation in the present case.
Further, see also Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493 in which it was stated that “[…] consumers expect to find a company on the Internet at a domain name address comprised of the company’s name or trademark.” As this is not, in fact, the situation in the present case, the use by the Respondent of the disputed domain name is confusing and misleading and, in the view of the Panel, is a further indication that the disputed domain name was registered and is being used in bad faith.
Also, even though not conclusive, the failure of the Respondent to reply to the Complainant’s correspondence, as mentioned above, in the view of the Panel, is a further indication of bad faith on the part of the Respondent.
Finally, the failure of the Respondent to answer the Complaint or take any part in the present proceedings is, again in the view of the Panel, a further indication of bad faith on the part of the Respondent. See Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787.
Therefore, taking all these particular facts and circumstances into account and for all the above-mentioned reasons, the Panel concludes that the Respondent has registered and is using the disputed domain name in bad faith. 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 disputed domain name be transferred to the Complainant.
Ian Blackshaw
Sole Panelist
Dated: August 16, 2010
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