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 li li of Fujian, the People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name (“Disputed Domain Name”) is registered with HiChina Zhicheng Technology Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2010. On September 24, 2010, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the Disputed Domain Name. On September 25, 2010, HiChina Zhicheng Technology Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On September 29, 2010, the Center transmitted an email to the parties in both Chinese and English regarding the language of proceedings. On October 4, 2010, the Complainant submitted a request that English be the language of proceedings. The Respondent did not comment on the language of proceedings by the specified due date. The Center sent an email communication to the Complainant on September 29, 2010 regarding the Respondent’s information. 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 7, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 27, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 28, 2010.
The Center appointed Kar Liang Soh 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 has been in the business of providing in-home health, wellness, weight loss and fitness solutions since 1998. The Complainant’s products include DVDs and kits under the trade marks BEACHBODY. The Complainant attributes the success of its products under the trade mark BEACHBODY to advertising and promotion through the Complainant’s websites, including a flagship website under the domain name , and other media including print and television.
The trade mark BEACHBODY has been registered by the Complainant in the United States and through the Madrid Protocol. These registrations include the following:
Jurisdiction Trade mark No. Registration date
United States 2,862,904 March 8, 2005
United States 2,665,151 April 15, 2008
WIPO 897949 August 31, 2006
The Disputed Domain Name was registered on March 14, 2010, some years after the trade mark registrations above. Other than the information given in the WhoIs record of the Disputed Domain Name, little is known about the Respondent. The Panel notes that the address and city fields of the WhoIs record states “p t”.
According to the printout of the website resolved from the Disputed Domain Name given by the Complainant, the website was exclusively in English and associated various DVD products with the trade mark INSANITY. The content of the website does not appear to feature the trade mark BEACHBODY. On March 22, 2010, the Complainant wrote to the Respondent at the email addresses provided in the WhoIs record of the Disputed Domain Name:
(1) alleging that the website resolved from the Disputed Domain Name promoted, sold and distributed counterfeits of DVDs under the Complainant’s INSANITY trade mark;
(2) demanding that the Respondent cease further use of the Complainant’s INSANITY and BEACHBODY trade marks; and
(3) requiring the Respondent to transfer the Disputed Domain Name to the Complainant.
The Complainant also informed the hosting provider of the website resolved from the Disputed Domain Name and the website has since been removed by the hosting provider. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
(1) The Disputed Domain Name is nearly identical or confusingly similar to the Complainant’s trade mark BEACHBODY. It incorporates the trade mark BEACHBODY in its entirety. The word “dvd” is a reference to a type of product sold by the Complainant;
(2) The Respondent has no legitimate interests in respect of the Disputed Domain Name. The Respondent is not affiliated to the Complainant. There is no evidence to suggest the Respondent registered the Disputed Domain Name to advance any legitimate interests or bona fide offering of goods or services. The Disputed Domain Name was used by the Respondent for illegitimate purposes; and
(3) The Disputed Domain Name was registered and used in bad faith. The Respondent has attempted to take commercial advantage of the Complainant’s trade mark and commercial reputation and trade off the Complainant’s goodwill. The Disputed Domain Name was registered for the purpose of disrupting the business of a competitor by selling counterfeit copies of the Complainant’s BEACHBODY line of DVDs at the Respondent’s website contrary to paragraph 4(b)(iii) of the Policy. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 Language of the Proceeding
As the language of the registration agreement of the Disputed Domain Name is in Chinese, the default language of the proceeding should be Chinese. However, taking into account the following circumstances and exercising the prerogatives given pursuant to paragraph 11 of the Policy, the Panel determines that English should be the language of the proceeding:
(1) The Complaint was submitted in English and requested that the language of the proceeding be English;
(2) The content of the website resolved from the Disputed Domain Name is exclusively in English;
(3) The Respondent has chosen not to participate in the proceedings;
(4) Insisting that Chinese shall be the language of the proceeding will serve no beneficial purpose and will in all likelihood cause delay to the proceeding; and
(5) It is unclear from the available information whether the Complainant is conversant in Chinese but if the Complainant is not, forcing Chinese upon the Complainant as the language of the proceeding would not only serve no purpose but cause unnecessary hardship on the Complainant. 6.2 Decision
To succeed in the proceeding, the following limbs of paragraph 4(a) of the Policy must be established:
(1) The Disputed Domain Name is identical or confusingly similar to a trade mark in which the Complainant has rights;
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(3) The Disputed Domain Name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant clearly has trade mark rights in the trade mark BEACHBODY by virtue of the trade mark registrations identified in the Complaint. These registrations pre-date the registration Disputed Domain Name by at least a few years.
The only difference between the Disputed Domain Name and the trade mark BEACHBODY is the additional suffix “dvd” in the Disputed Domain Name. Otherwise, the trade mark BEACHBODY is incorporated entirely in the Disputed Domain Name. The Complainant correctly points out that the suffix “dvd” refers to a product which the Complainant offers. In fact, DVD products are specifically identified in the specification of the Complainant’s United States trade mark registration 2,862,904 in Class 9. The suffix “dvd” is clearly generic of the Complainant’s products and does nothing to distinguish the Disputed Domain Name from the Complainant’s trade mark BEACHBODY.
Therefore, the Panel holds that the Disputed Domain Name is confusingly similar to the trade mark BEACHBODY. The first limb of paragraph 4(a) is established. B. Rights or Legitimate Interests
The Complainant has denied any relationship with the Respondent. The Complainant has also leveled a very strong allegation that the Respondent’s products on the website resolved from the Disputed Domain Name are counterfeits. The Respondent has declined to explain the serious situation and/or demonstrated any circumstances which may suggest any rights or legitimate interests. In the circumstances, in accordance with established principles, the Panel holds that the Complainant has shown a prima facie case that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. Since the Respondent has failed to rebut the prima facie case, the second limb of paragraph 4(a) of the Policy is also established. C. Registered and Used in Bad Faith
Paragraph 4(b)(iii) cited by the Complainant states an example of bad faith registration and use of a domain name:
“[the Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor”.
Paragraph 4(b)(iii) is quite specific in that the following elements must exist:
(1) There is an identified business;
(2) The business belongs to a competitor of the complainant; and
(3) The primary purpose for registering the domain name is to disrupt that business.
The Panel is of the view that to show bad faith registration and use pursuant to paragraph 4(b)(iii), a complainant must go beyond showing that the domain name in question incorporated a trade mark in its entirety with the addition of other elements. If the respondent’s activities under the domain name does not compete with the complainant’s business, there is no bad faith registration and use pursuant to paragraph 4(b)(iii). The Panel is inclined to agree with the view in Tribeca Film Center, Inc. v. Lorenzo Brusasco-Mackenzie,WIPO Case No. D2000-1772 that a respondent can only disrupt the business of a competitor if the respondent offers goods or services that can compete with or rival that of the complainant trade mark owner.
It is alleged in the Complaint that the website at the Disputed Domain Name offered counterfeits of the Complainant’s Beachbody line of DVDs. With respect to the Complainant, the Panel is unable to locate any reference to any products under the trade mark BEACHBODY in the printout of the webpage at the Disputed Domain Name submitted with the Complaint. Instead, the DVDs promoted on the Respondent’s website appear to be marketed under the trade mark INSANITY.
The Complainant’s demand letter of March 22, 2010 alleges somewhat differently from the Complaint that the Respondent was promoting and selling counterfeits of INSTANITY DVDs (as opposed to BEACHBODY DVDs). It is not clear from the evidence what trade mark rights are owned by the Complainant in relation to the trade mark INSANITY or the association between the trade marks INSANITY and BEACHBODY. In the absence of better information, the Panel regrets that it is not in a position to consider whether the facts amount to bad faith registration and use pursuant to paragraph 4(b)(iii).
In any event, the Panel is of the view that paragraph 4(b)(iv) of the Policy is relevant to the present circumstances. Paragraph 4(b)(iv) provides another example of bad faith registration and use:
“… by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] 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 [the Respondent’s] web site or location.”
The use of the trade mark BEACHBODY as a domain name directing traffic to the website at the Disputed Domain Name is a clear attempt at associating with the Complainant and the Complainant’s products. The website at the Disputed Domain Name is commercially oriented. It presents an icon at the bottom right of the webpage submitted with the Complaint which is highly suggestive of a link to facilitate purchase of products. The text below this icon also states the price of goods. On the face, the website at the Disputed Domain Name is intentionally directed at commercial gain.
The absence of the trade mark BEACHBODY on the website at the Disputed Domain Name is inexplicable unless a reasonable person entertains the possibility that the Respondent is intentionally associating the website with the Complainant’s trade mark BEACHBODY. BEACHBODY is a distinctive word in relation to DVDs. The trade mark registrations for BEACHBODY pre-date the Disputed Domain Name by some years. The DVDs offered on the website at the Disputed Domain Name are also goods of interest under the Complainant’s trade mark registrations for BEACHBODY. It is fair to surmise that the Respondent was aware of the Complainant and the Complainant’s products under the trade mark BEACHBODY when the Respondent registered the Disputed Domain Name.
As such, it is highly conceivable that the Respondent was using the Disputed Domain Name to attract Internet users to the website at the Disputed Domain Name by creating a likelihood of confusion with the Complainant’s mark. A reasonable person who visited the website at the Disputed Domain Name was likely to be misled in relation to the source, sponsorship, affiliation, or endorsement of the website and the products purportedly made available for online sale on the website. These facts are consistent with the requirements of paragraph 4(b)(iv) of the Policy.
Further, the Respondent’s provision of contact particulars comprising a street named “p t” in a city named “p t” is of significance. The street “p t” and city “p t” are clearly fictitious. The Panel takes guidance from the decision in ECCO Sko A/S v. Protected Domain Services – Customer ID: NCR-2448048 / jizhiteam,WIPO Case No. D2010-1113 (see also Farouk Systems Inc. v. David,WIPO Case No. D2009-1245) in this regard. The relevant paragraphs in that decision state:
“An applicant for registration of a domain name has a duty to act honestly. The deliberate use of fictitious and/or ineffective contact particulars to register a domain name without any valid reason is bad faith and the subsequent use of the domain name is tainted by the bad faith. In the present case, the Respondent has used fictitious information in registering the Disputed Domain Name.
The use of the Disputed Domain Name to sell products alleged to be counterfeits under the Complainant’s trademark ECCO seems to be the only explanation before the Panel for the Respondent’s adoption of the Disputed Domain Name.”
The above paragraphs speak of the present circumstances as well. The Respondent has used fictitious information (in the address and city fields) to register the Disputed Domain Name. The products on the website at the Disputed Domain Name have been alleged to be counterfeits. The Respondent has declined to deny such serious allegations. It is difficult to avoid the drawing of an adverse inference that the products on the website at the Disputed Domain Name are likely to be counterfeits.
In view of the above, the Panel is satisfied that bad faith registration and use under the third limb of paragraph 4(a) is established. 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.
Kar Liang Soh
Sole Panelist
Dated: November 19, 2010
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