The Complainant is Beachbody, LLC of Santa Monica, California, the United States of America, represented by Cozen O'Connor, the United States of America.
The Respondent is Anonymous Registrant / US BEACHBODYY LLC of Guyana. 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 October 5, 2010. On October 6, 2010, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the Disputed Domain Name. On October 8, 2010, HiChina Zhicheng Technology Ltd. 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 October 13, 2010 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On October 13, 2010, the Center also transmitted an email to the parties in both Chinese and English regarding the language of proceedings. On the same day, the Complainant filed an amended Complaint and confirmed its 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 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 19, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was November 8, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 10, 2010.
The Center appointed Kar Liang Soh as the sole panelist in this matter on November 15, 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 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 trademark BEACHBODY has been registered by the Complainant in the United States of America and through the Madrid Protocol. These registrations include the following:
Jurisdiction Trademark No Registration date
USA 2,862,904 July 13, 2004
USA 2,665,151 December 24, 2002
International 897949 August 31, 2006
Registration
The Disputed Domain Name was registered on August 2, 2010, some years after the trademark registrations above. Other than information given in the WhoIs record of the Disputed Domain Name, little is known about the Respondent. The Panel notes that the address, city and state of the Respondent is “ait cite 8808”, “bl” and “ca” respectively. The telephone and facsimile numbers are given as starting with “01.” which the Panel understands to refer to the international dialing code “+1” for the United States of America.
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 a number of trade marks, none of which are specifically BEACHBODY. On September 24, 2010, the Complainant wrote to the Respondent at the email address provided on 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 BEACHBODY trade mark;
(2) demanding that the Respondent cease further use of the Complainant’s BEACHBODY trade mark; and
(3) requiring the Respondent to transfer the Disputed Domain Name to the Complainant.
The Respondent did not reply to the Complainant’s correspondence. 5. Parties’ Contentions A. Complainant
The Complainant contends that:
(1) The Disputed Domain Name is nearly identical or confusingly similar to the Complainant’s trademark BEACHBODY. It incorporates the trademark BEACHBODY in its entirety. The suffix letters “LLC” is used to designate a limited liability company. The Complainant is a limited liability company;
(2) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name. The Respondent is not affiliated with 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 trademark 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 Chinese, the default language of the proceeding is 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 the Complainant has requested that the language of the proceeding be English;
(2) The Respondent is based in Guyana. The national language of Guyana is English;
(3) The content of the website formerly resolved from the Disputed Domain Name is exclusively in English;
(4) The Respondent has chosen not to participate in the proceedings;
(5) 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;
(6) It is unclear from the available information whether the Complainant and the Respondent are conversant in Chinese. If they are not, retaining Chinese as the language of the proceeding would serve no purpose; and
(7) The Respondent would not be prejudiced by the selection of English as the language of the proceeding. 6.2. Findings
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 trademark 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 trademark rights in the trademark BEACHBODY by virtue of the trademark registrations identified in the Complaint. These registrations pre-date the Disputed Domain Name registration by at least a few years.
The only difference between the Disputed Domain Name and the trademark BEACHBODY is the additional suffix “LLC” in the Disputed Domain Name. Otherwise, the trademark BEACHBODY is incorporated entirely in the Disputed Domain Name. The Complainant correctly points out that the suffix “LLC” refers to a limited liability corporation which the Complainant is. The suffix “LLC” is clearly a generic description and does not succeed in distinguishing the Disputed Domain Name from the Complainant’s trademark BEACHBODY.
Therefore, the Panel holds that the Disputed Domain Name is confusingly similar to the trademark BEACHBODY. The first limb of paragraph 4(a) is established. B. Rights or Legitimate Interests
The Complainants have 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 this 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
The Complainant alleges that the Respondent has registered the Disputed Domain Name primarily for the purpose of disrupting the business of a competitor under paragraph 4(b)(iii) of the Policy. A respondent can only disrupt the business of a competitor if the respondent offers goods or services that compete with or rival that of the complainant trade mark owner. It is unclear from the evidence that any of the products in the printout from the Respondent’s webpage are under the trade mark BEACHBODY. In the absence of better information, it is not possible for the Panel to determine whether there is bad faith registration and use pursuant to paragraph 4(b)(iii) (see Product Partners, LLC v. li li,WIPO Case No. D2010-1615; Tribeca Film Center, Inc v. Lorenzo Brusasco-Mackenzie,WIPO Case No. D2000-1772).
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 trademark BEACHBODY as a domain name directing traffic to the Respondent’s website is a clear attempt at associating with the Complainant and the Complainant’s products. The Respondent’s website appears to be commercially oriented. It presents what appear to be online shopping cart facilities for the purchase of products. On its face, the Respondent’s website is intentionally directed at commercial gain.
The absence of the trademark BEACHBODY on the Respondent’s website is inexplicable unless a reasonable person entertains the possibility that the Respondent is intentionally associating the website with the Complainant’s trademark BEACHBODY. BEACHBODY is a distinctive word in relation to DVDs. The trademark registrations for BEACHBODY pre-date the Disputed Domain Name registration by some years. The DVDs offered on the website are also goods of interest under the Complainant’s trademark registrations for BEACHBODY. It is fair to surmise that the Respondent was aware of the Complainant and the Complainant’s products under the trademark 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 Respondent’s website by creating a likelihood of confusion with the Complainant’s mark. A reasonable person who visited the Respondent’s website 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 Panel finds the contact particulars of the Respondent to be highly suspicious. The Respondent was identified as “Anonymous Registrant” in the Complaint as initially filed. The Respondent clearly did not wish to be known. After the Complaint was filed, the Registrar provided the registrant name “US BEACHBODYY LLC” which is clearly a typographical replication of the Complainant’s name. Even so, the particulars of the Respondent appear to be fictitious.
An applicant for registration of a domain name has a duty to act honestly. The deliberate use of fictitious and/or ineffective contact particulars is additional evidence of bad faith (see ECCO Sko A/S v. Protected Domain Services Customer ID: NCR-2448048 / jizhiteam,WIPO Case No. D2010-1113; Farouk Systems Inc. v. David,WIPO Case No. D2009-1245). The products on the Respondent’s website have been alleged to be counterfeits but the Respondent has declined to deny such serious allegations. It is difficult to avoid drawing an adverse inference against the Respondent.
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 29, 2010
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