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 Private Whois Service of Nassau, Bahamas. 2. The Domain Name and Registrar
The disputed domain name is registered with I Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2010. On September 23, 2010, the Center transmitted by email to I Corp. a request for registrar verification in connection with the disputed domain name. On September 24, 2010, I Corp. 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 September 28, 2010, 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 October 1, 2010.
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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 5, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 25, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 26, 2010.
The Center appointed Nasser A. Khasawneh as the sole panelist in this matter on November 3, 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 trademark and service mark registrations for P90X.
As evidenced by the registrar I Corp.’s confirmation and the WhoIs database of the registrar, the Respondent is Private Whois Service and is located in Nassau, Bahamas. According to the WhoIs database of the reigistrar, the disputed domain name was registered on April 3, 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. The Complainant’s P90X-branded products, which include fitness digital video disks and kits have been on the market since 2003. 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 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 P90X products being prominently positioned in the public mind. As a result, the Complainant is alleging that the P90X mark has 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 trademark and service mark registrations were secured for the P90X mark beginning around 2004. The Complainant also notes that the Respondent did not register the disputed domain name until April 3, 2010. The Complainant contends that based on this, as well as through its registrations and use of P90X in the marketplace, that the Respondent must have been aware of the Complainant at the time of the registration of the disputed domain name. The Complainant argues that the disputed domain name is nearly identical to and confusingly similar to its P90X mark. The Complainant avers that since the disputed domain name incorporates the entirety of the P90X mark with identical characters and in the same chronological order as the Complainant’s mark that the dominant portion of the domain name is identical to its P90X mark. Additionally, the suffix “s” merely designates the plural form of the Complainant’s P90X mark and does not change that fact that the disputed domain name is still nearly identical and confusingly similar to the P90X mark.
In this case, the Respondent is not affiliated with the Complainant. The Complainant also avers that there is no evidence that the Respondent has registered the disputed domain name to advance legitimate interests or to provide a bona fide offering of goods or services. The Complainant also alleges that the Respondent was offering counterfeit copies of the Complainant’s P90X -branded products at the website to which the disputed domain name resolves.
The Complainant also notes that the Respondent has not provided any legitimate basis for its registration and subsequent use of the disputed domain name. The Complainant avers that the Respondent’s current sale of counterfeit copies of the Complainant’s products through the disputed domain name 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 the disputed domain name to offer counterfeit copies of the Complainant’s P90X -branded products clearly evidences bad faith registration and use. The Complainant argues that the Respondent clearly attempted to take advantage of the Complainant’s P90X mark 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 argues that the reputation associated with the Complainant’s P90X-branded products combined with the Respondent’s subsequent use of the disputed domain name clearly demonstrates both bad faith use and registration.
The Complainant also notes that it sent two letters to the Respondent in August of 2010 requesting that the disputed 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 disputed 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 nearly identical and confusingly similar to the Complainant’s P90X mark under paragraph 4(a)(i).
The Complainant notes that it has utilized the P90X mark since its introduction in 2003. The Complainant has also produced a number of Annexes to the Complaint evidencing its registered trademark rights for 90X. As evidenced by these registration documents, P90X was first registered in the United States in 2004 and 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 for 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 the Complainant’s 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 mark.
The records produced by the Complainant indicate that the disputed domain name was not created until April 3, 2010. This date is well after the Complainant’s initial registration of the P90X mark in 2004.
In this case, the disputed domain name wholly incorporates the Complainant’s P90X mark that the Complainant has rights to based on the presented evidence. The Panel also finds support in the Complainant’s contention that the “s” suffix does not alter the fact that the disputed domain name is nearly identical and/or confusingly similar to the P90X mark. While the “s” may not necessarily represent a plural of the mark P90X, a number of previous UDRP panel decisions have held that domain names that are virtually identical and/or confusingly similar to a complainant’s mark but for a misspelling or an added letter are sufficient for the purposes of the Policy. See Arthur Guinness Son & Co (Dublin) Limited v. Dejan Macesic,WIPO Case No. D2000-1698; E, Inc. v. Digi Real Estate Foundation,WIPO Case No. D2006-1043. Taking into account the fact that the Complainant’s P90X mark is wholly incorporated into the disputed domain name, the Panel finds that the “s” following the “p90x” designation in the domain name does not alter the confusing similarity between the disputed domain name and the Complainant’s P90X mark.
The Panel also finds that the use of the “.com” suffix is an irrelevant distinction that does not alter the confusing similarity between the disputed domain name and the Complainant’s P90X mark. Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709.
Based on the above, 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 required to make a prima facie showing that the Respondent lacks rights or a legitimate interest in the disputed domain name. Once the Complainant has presented its case in this regard, the Respondent thereafter carries the burden of demonstrating to the Panel that it has rights to or legitimate interests 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 a respondent can use to demonstrate that it possesses rights or legitimate interests in a disputed domain name. Additionally, the absence of rights or legitimate interests can also be established if a complainant makes out a prima facie case and the respondent fails to rebut the case. 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 trademark rights to the P90X mark since 2004. 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 the P90X mark, was not registered until April 3, 2010. This date is well after the Complainant’s initial use and registration of P90X.
The Complainant notes that it is not affiliated with the Respondent and has not provided it with any rights to use the P90X mark. Despite being given the opportunity to evidence its rights to the P90X mark, the Respondent has not responded to the Complainant’s allegations. Moreover, the Respondent did not submit any evidence to show that it was commonly known by the disputed domain name. As a result, the Respondent has failed to evidence that it was associated with or had a right to use the P90X mark.
The Panel also finds support in the Complainant’s contention that the Respondent is not using the disputed domain name for a legitimate interest or for a bona fide offering of goods and services. Upon visiting the website to which the disputed domain name resolves, the Panel noticed that the website is exclusively devoted to the sale of the Complainant’s P90X products. The website was not a landing page that includes pay-per-click links, but provided advertisements for the sale of the P90X products and a big red bar that lead Internet users directly to a payment page where they could purchase the goods.
The current use of the disputed domain name is clearly commercial in nature. As a note, it is unclear whether the products being offered by the Respondent are counterfeit products. However, as the Respondent has not evidenced any right to use the P90X mark or any relationship with the Complainant, in the Panel’s view, the Respondent’s current use of the disputed domain name is not be a bona fide or legitimate use in either case.
In order to have a legitimate use of the disputed domain name, the Respondent must not infringe upon the Complainant’s rights to the P90X mark. 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 a case, the use of the P90X mark 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.
Here, the Complainant’s mark of P90X is clearly being infringed upon. The disputed domain name wholly incorporates the Complainant’s mark of P90X. Additionally, the Respondent is using the disputed domain name to sell the goods of the Complainant. The Panel also finds that due to these facts, a reasonable consumer could be confused and possibly associate the Respondent with being affiliated with the Complainant.
In this case there is clearly no bona fide or noncommercial fair use of the disputed domain name. Based on the preponderance of the evidence, 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 a 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 Complainant’s rights to the P90X mark were established. 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 the disputed domain name without knowledge of the Complainant’s rights to the P90X mark. 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-branded products. Accordingly, based on the evidence, the Panel 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 website at the 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 finds sufficient evidence to conclude that the Respondent was misleadingly representing itself as being associated with the Complainant and its business by using the Complainant’s marks and products on the disputed domain name. Accordingly, the Panel finds that the disputed domain name is being used in bad faith.
Based on the evidence, the Panel is able to conclude that the disputed domain name 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 11, 2010
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