The Complainant is Product Partners, LLC of Santa Monica, California, United States of America, represented by Cozen O'Connor, United States of America.
The Respondent is Floriberto Solorzano of Cataula, Georgia, United States of America. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 26, 2010. On August 26, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On August 27, 2010, GoD, 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 August 31, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was September 20, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 22, 2010.
The Center appointed Michelle Brownlee as the sole panelist in this matter on September 30, 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
The Complainant owns United States Trademark Registration Nos. 2,869,491, 2,869,490, 2,843,063, 2,973,356, 3,669,400, and 3,444,723 for the marks P90X and P90X and design in connection with various goods and services related to fitness and weight loss, including nutritional and dietary supplements, physical fitness instruction services, and pre-recorded DVDs and videotapes featuring physical fitness instruction. The Complainant also owns International Registration No. 974040 for the mark P90X in connection with pre-recorded video tapes, cassettes, DVDs, and CDs featuring exercise, fitness and dietary information and instruction.
The Respondent registered the Domain Name on April 10, 2010. 5. Parties’ Contentions A. Complainant
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 P90X®-branded DVDs, kits, and other products and services have achieved great success since their introduction in 2003. In addition to the Complainant's P90X-branded DVDs and the P90X mark, the Complainant has also used the common law trademarks P90X PLUS and P90X+ in connection with workout DVDs, since at least as early as December 2007.
The Complainant has acquired a valuable reputation and goodwill in its P90X family of marks through extensive advertising and promotion, as well as word of mouth. The Complainant alleges that the P90X is famous in the United States.
The Respondent was using the Domain Name to advertise, offer for sale and sell counterfeit versions of the Complainant’s P90X DVDs. Because the Complainant contacted the host of the web site to complain about the site’s illegal activities, the site is now blank.
The Complainant contends that the Domain Name is confusingly similar to the Complainant’s P90X and P90X PLUS trademarks, that the Respondent has no legitimate interests in respect of the Domain Name, and that the Respondent registered and is using the Domain Name in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that in order to be entitled to a transfer of a domain name, a complainant must prove the following three elements:
(1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has demonstrated that it owns rights in the trademark P90X, and has also presented evidence that it has common law rights in the mark P90X PLUS. There are many UDRP decisions that find that the pairing of a distinctive trademark with descriptive terms is confusingly similar to the distinctive trademark. See, e.g., MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions,WIPO Case No. D2007-1140; Parfums Christian Dior v. 1 Netpower, Inc.,WIPO Case No. D2000-0022 ( and confusingly similar to CHRISTIAN DIOR); Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer,WIPO Case No. D2001-0032 ( and confusingly similar to LEXUS). Accordingly, the Panel finds that the Domain Name, which pairs the P90X PLUS trademark with the less distinctive term “workout,” is confusingly similar to the Complainant’s P90X PLUS trademark. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides that a respondent can demonstrate rights or legitimate interests in a domain name by demonstrating one of the following facts:
(i) before receiving any notice of the dispute, the respondent used or made preparations to use the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent has been commonly known by the domain name; or
(iii) the respondent is 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 at issue.
The Respondent has not presented evidence that the Respondent used or made preparations to use the Domain Name in connection with a bona fide offering of goods or services, that the Respondent is commonly known by the Domain Name or that the Respondent is making a noncommercial or fair use of the Domain Name, or in any other way refuted the Complainant’s prima facie case. The Complainant has alleged that the Respondent used the Domain Name in connection with a web site that offered counterfeit versions of the Complainant’s workout DVDs for sale, and the Respondent has not denied the allegation. In the Panel’s view, this cannot be considered a bona fide offering of goods or services. Accordingly, the Panel finds that the Complainant has established this element of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances are evidence of registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Complainant has established bad faith under paragraph 4(b)(iv) of the Policy. The Respondent registered the Domain Name several years after the Complainant began using the P90X PLUS mark and P90X mark in connection with workout DVDs. Further, the Respondent was using the Domain Name in connection with a web site that offered counterfeit versions of such DVDs for sale, which demonstrates that the Respondent was well aware of the Complainant’s rights when the Respondent registered and used the Domain Name. There is no question that the Respondent’s use of the Domain Name was an intentional attempt to divert Internet traffic to the Respondent’s site by creating a likelihood of confusion with the Complainant’s trademark. 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 Domain Name be transferred to the Complainant.
Michelle Brownlee
Sole Panelist
Dated: October 14, 2010
Full & Egal Universal Law Academy