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 YizheYou of Fuzhou, Fujian, The People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 17, 2010. On September 17, 2010, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On September 17, 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 September 22, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 12, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 13, 2010.
The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on October 25, 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 in this instance is Product Partners LLC, a Limited Liability Company with its principal place of business in Santa Monica, California. Since 1998, the Complainant has been a leader in the field of in-home health, wellness, weight loss and other various fitness solutions and products. As evidenced by the accompanying Annexes, the Complainant holds a number of trade and service marks to P90X and INSANITY.
As evidenced by a Whois database search at GoD, Inc., the Respondent is YizheYou and is located in the People’s Republic of China. According to the Whois database search, the disputed domain name of was registered on February 7, 2010. 5. Parties’ Contentions A. Complainant
The Complainant is a provider of a number of in-home health, wellness, weight loss and fitness solution products and has been in this business since 1998. Two of the Complainant’s products, the P90X®-branded and INSANITY®-branded fitness digital video disks and kits have been on the market since 2003 and 2009 respectively. The Complainant alleges that the products above have achieved great success since their respective introductions to the market. The Complainant avers that the success of the P90X®-branded and INSANITY®-branded products is a result of the Complainant’s marketing and promotional efforts which permeate virtually all types of media outlets. The Complainant also argues that the “word of mouth” buzz by respective consumers has also resulted in the Complainant’s products being prominently positioned in the public mind. As a result, the Complainant is alleging that the P90X and INSANITY marks have acquired a certain amount of good will and reputation in the marketplace.
In arguing the first element under the Policy, the Complainant notes that it has gained common law trademark rights to the P90X family of marks through its use and promotion of its products. The Complainant also notes that a number of trade and service mark registrations were secured for the P90X and INSANITY marks beginning around 2003. The Complainant also notes that the Respondent did not register the disputed domain name until February 7, 2010. The Complainant contends that based on this, as well as through their registrations and use of P90X and INSANITY in the marketplace, that the Respondent must have been aware of the Complainant at the time of registration. Since the disputed domain name of wholly and identically incorporates the Complainant’s P90X and INSANITY marks, the Complainant is arguing that the disputed domain name is identical to a mark in which the Complainant has rights.
The Complainant also avers that the Respondent has no rights or legitimate interest in . In this case, the Respondent is not affiliated with the Complainant and there is no evidence to suggest that there is a legitimate or bona fide offering of goods or services. In fact, the Complainant alleges that the Respondent was offering counterfeit copies of the Complainant’s P90X® and INSANITY® products.
The Complainant also notes that the Respondent has not provided any legitimate basis for its registration and subsequent use of the disputed domain name. Complainant avers that the Respondent’s current sale of counterfeit copies of the Complainant’s products through is wholly illegitimate. As a result the Complainant argues that the Respondent has no right to the disputed domain name and is not using the disputed domain name in connection with a legitimate offering of goods or services.
In arguing the third element of the Policy, the Complainant avers that the Respondent’s adoption and use of to offer counterfeit copies of the Complainant’s P90X® and INSANITY® products clearly evidences bad faith registration and use. The Complainant argues that the Respondent clearly attempted to take advantage of the Complainant’s P90X and INSANITY marks and to trade off the Complainant’s reputation and goodwill. The Complainant contends that the Respondent’s initial registration of the disputed domain name indicates an attempt to disrupt the business of a competitor pursuant to paragraph 4(b)(iii) of the Policy. The Complainant believes that the reputation associated with the Complainant’s products combined with the Respondent’s subsequent use of The Complainant also notes that it sent a letter to the Respondent requesting that the domain name be transferred, but received no response. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings In accordance with the Rules, a Panel is required to render its Decision 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. (Rules, paragraph 15(a)). Additionally, in each case a complainant must establish each element of paragraph 4(a) of the Policy, which are as follows: (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 domain name; and (iii) the disputed domain name has been registered and is being used in bad faith. The complainant must establish these elements regardless of whether the respondent replies to the complaint. The Vanguard Group, Inc. v. Lorna Kang,WIPO Case No. D2002-1064. A. Identical or Confusingly Similar In this case, the Complainant is arguing that the disputed domain name is identical to a trademark in which the Complainant has rights under the paragraph 4(a)(i). The Complainant first notes that the Complainant has been in business since 1998 and that it has utilized the P90X and INSANITY marks since their introduction in 2003 and 2009 respectively. The Complainant has also produced a number of Annexes evidencing its registered rights to the P90X and INSANITY marks. As evidenced by these registration documents, P90X was first registered in the United States in 2004 and the INSANITY mark was first registered in the United States in 2009. The P90X mark was also registered internationally under the Madrid Protocol in 2008. The Complainant also notes that certain common law trademarks have arisen from the P90X family of marks due to the Complainant’s promotion and use of the products in commerce. In this case, since the Complainant has a registered trademark to P90X that was made well before the registration of the disputed domain name, the Panel does not feel that there is a need to assess common law trademark rights here. Based on the Annexes, the Panel finds that the Complainant has shown sufficient evidence that it possesses rights to the P90X and INSANITY marks. The records produced by the Complainant indicate that the disputed domain name was not created until February 7, 2010. This date is well after the Complainant’s initial registration of the P90X mark as well as after the registration of the INSANITY mark. In this case, the disputed domain name of wholly incorporates the marks of P90X and INSANTIY, in which the Complainant has rights based on the presented evidence. The Panel also finds that the use of the “.com” suffix is an irrelevant distinction that does not alter the likelihood of confusion between the disputed domain name and the Complainant’s marks of P90X and INSANITY. Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709. The Panel would also like to note that the Complainant has not evidenced any rights to the combination of P90X and INSANITY. However, the Panel believes that the combination of two marks that the Complainant has rights to is sufficient evidence that the disputed domain name is identical to a trademark or trademarks in which the Complainant has rights. As a result the Panel finds that the Complainant has met the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests Under paragraph 4(a)(ii) of the Policy, the Complainant is now required to make a prima facie showing that the Respondent lacks rights or a legitimate interest in . Once the Complainant has presented its case in this regard, the Respondent thereafter has the burden of rebuttal, or to the Panel may conclude that the Respondent indeed lacks rights to or a legitimate interest in the disputed domain name. See Julian Barnes v. Old Barn Studios Limited, WIPO Case No. D2001-0121. Paragraph 4(c) of the Policy provides a non-exhaustive list of circumstances that the Respondent can use to demonstrate that it possess rights or a legitimate interest in the disputed domain names. Additionally, the absence of rights or legitimate interests can also be established if a Complainant makes out a prima facie case and the Respondent enters no Response. De Agostini S.p.A. v. Marco Cialone,WIPO Case No. DTV2002-0005. In this instance, the Complainant has evidenced that it possessed a number of registered rights to the P90X and INSANITY marks since 2004 and 2009 respectively. The Panel is also convinced that prior to the registrations that the Complainant utilized the P90X® brand in commerce to a sufficient extent to warrant some degree of market reputation and goodwill. The disputed domain name which wholly incorporated both the P90X and INSANITY marks, was not registered until February 7, 2010. This date was well after the Complainant’s initial use and registration of P90X and after its introduction of the INSANITY® branded products. The Complainant notes that it is not affiliated with the Respondent and has not provided him with any rights to use the P90X or the INSANITY marks. Despite being given the opportunity to evidence its rights to the P90X and INSANITY marks, the Respondent has not responded to the Complainant’s allegations. As a result the Respondent has failed to evidence that he was commonly known by, associated with, or had a right to use the P90X and INSANITY marks. The Panel also finds support in the Complainant’s contention that the Respondent has not registered the disputed domain name for a legitimate interest or for a bona fide offering of goods and services. Upon visiting , the Panel noticed that a number of products were being offered for sale by the Respondent. The great majority of those products were in fact the Complainant’s products. It is unclear whether the products being offered were in fact counterfeit products. After clicking on one advertisement for the Complainant’s P90X® branded product, it appeared as though the products were being offered directly and there was no pay-per-click element. However, on a subsequent visit, the Panel found that the disputed domain name reverted to a blank webpage. In all cases, the Respondent has not provided evidence that he was an authorized reseller of the Complainant’s goods or any other evidence to rebut the Complainant’s contentions. Based on these facts, and taking into account the evidence provided by the Complainant, the Panel finds that the current use is of a commercial nature and is unauthorized. As a result, the Panel finds support that there was no bona fide use of the disputed domain name. Likewise, in order to have a legitimate use of , the Respondent must not infringe upon the Complainant's rights to the P90X or the INSANITY marks. See Chanel, Inc. v. Estco Technology Group, WIPO Case No. D2000-0413. In this case, the Respondent is utilizing the disputed domain name to sell products of the Complainant, which may or may not also be counterfeit products. In such as case, the use of the P90X and INSANITY marks in the disputed domain name and the subsequent resale of the Complainant’s products is prima facie infringement of the Complainant’s rights. See U-Haul International, Inc. v. Affordable Web Productions,WIPO Case No. D2003-0511. The use is clearly commercial in nature and is being made without the permission of the Respondent. Also, due to the incorporation of the Complainant’s P90X and INSANITY marks in the disputed domain name as well as the sale of the Complainant’s products through the disputed domain name, the Panel finds that there could be potential confusion amongst consumers that the Respondent is somehow authorized to sell the products or is somehow associated with the Complainant. The Panel finds support in the Complainant’s evidence that the Respondent is not using in connection with a bona fide offering of goods or services and has not been associated or attained any rights to the Complainant’s marks. The Panel also believes that it is clear that the Respondent is not making a noncommercial or fair use of the disputed domain name without the intent for commercial gain and to mislead consumers. Based on the above, the Panel finds that the Respondent's use of the disputed domain name is commercial in nature, and no legitimate or bona fide use of the disputed domain names exist. As a result the Panel finds that the Complainant has satisfied the requirements under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith The final element under paragraph 4(a)(iii) of the Policy requires the Complainant to show that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides a number of instances that constitute bad faith registration, but in the same manner as paragraph 4(c), this list is not exhaustive. In addition to the instances under paragraph 4(b), a panel is also able to draw inferences about bad faith registration in light of the facts and circumstances of the case in determining whether the complainant has met its burden. Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. With respect to bad faith registration, the Complainant contends that the Respondent’s intention was to disrupt the business of a competitor under paragraph 4(b)(iii) of the Policy. The Panel finds some support in this contention. As evidenced by the Complainant, the disputed domain name was registered after the Complainants rights to the P90X and INSANITY marks had been established. The fact that both marks are utilized together in the disputed domain name and are both coincidentally registered marks of the Complainant, is further evidence of bad faith registration. Also, the fact that the Respondent is offering the products of the Complainant through the disputed domain name eliminates any potential coincidence that the Respondent registered without knowledge of the Complainant’s rights to the P90X and INSANITY marks. It seems beyond doubt that such registration was done to disrupt the business of the Complainant and to profit off the reputation that has become associated with the P90X® and INSANITY® branded products. Based on the above, the Panel also finds that it is clear that the Respondent registered the disputed domain name in an attempt to attract, for commercial gain, Internet users to the disputed domain name. In terms of bad faith use, the Panel also finds support in the Complainant’s argument that the advertisement and resale of the Complainant’s products (whether counterfeit or not under these circumstances) is being done in bad faith. The Panel would also like to reiterate that based on its subsequent visit to the disputed domain name, it appears that this activity had ceased. Notwithstanding this fact, by using the Complainant’s marks and products on its domain name, the Panel finds sufficient evidence to conclude that the Respondent was misleadingly representing itself as being associated with the Complainant and its business. Accordingly, any attempt to benefit commercially from the reputation of another party’s well-known trade or service marks is prohibited under the Policy. See I, Inc. v. Tenenbaum Ofer,WIPO Case No. D2000-0075. Based on the preponderance of the evidence, the Panel is able to conclude that was registered and is being used in bad faith by the Respondent. As a result the Panel finds that the Complainant has met the requirements of paragraph 4(a)(iii) of the Policy. 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. Nasser A. Khasawneh
Sole Panelist
Dated: November 12, 2010
Full & Egal Universal Law Academy