The Complainant is Beachbody, LLC of Santa Monica, California, United States of America, represented by Cozen O'Connor, United States of America.
The Respondent is messi lucy/messi assena of the People’s Republic of China. 2. The Domain Names and Registrar
The disputed domain names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and are registered with HiChina Zhicheng Technology Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 8, 2010. On November 9, 2010, the Center transmitted by email to HiChina Zhicheng Technology Ltd. a request for registrar verification in connection with the disputed domain names. On November 10, 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 November 12, 2010, the Center transmitted by email to the parties in both Chinese and English regarding the language of the proceeding. On the same day, the Complainant requested English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 November 18, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 8, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 9, 2010.
The Center appointed Sebastian Hughes as the sole panelist in this matter on December 28, 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 A. Complainant
The Complainant is a company incorporated in California, the United States of America and the owner of an international registration and several registrations in the United States of America for the trade mark P90X (the “Trade Mark”). The Complainant is also the owner of a registration in the United States of America for the trade mark INSANITY (the “INSANITY Trade Mark”). B. Respondent
The Respondent is an individual apparently with an address in China.
The disputed domain names were each registered on June 18, 2010. 5. Parties’ Contentions A. Complainant
The Complainant made the following submissions in the Complaint.
The Complainant has been a leader in the field of in-home health, wellness, weight loss and fitness solutions since 1998. The Complainant’s well-known DVDS, kits and other products branded under the Trade Mark have achieved great success since their introduction in 2003. The Complainant’s DVDS and kits branded under the INSANITY Trade Mark have also achieved great success since their introduction in 2009. The Complainant has engaged in widespread promotion of its DVDs, kits and other products sold under the Trade Mark and the INSANITY Trade Mark (the “Trade Marks”) via the Internet, infomercials and televised promotional appearances.
The disputed domain names are confusingly similar to the Trade Mark and/or the INSANITY Trade Mark. They each comprise the Trade Mark and/or the INSANITY Trade Mark together with non-distinctive words such as “free”, “nutrition guide”, “workout” and “program”.
With the exception of the disputed domain names , and , which, at the time of filing of the Complaint, were not being used by the Respondent, the websites to which the disputed domain names are resolved (the “Websites”) offer for sale unauthorised counterfeit products under the Trade Marks. It is likely the Respondent intends to offer for sale counterfeits via websites linked to these currently passively-used disputed domain names as well.
The Respondent has no rights or legitimate interests in the disputed domain names and has registered and used the disputed domain names in bad faith to intentionally attract users, for commercial gain, to the Websites, by creating confusion with the Trade Marks.
The Respondent has ignored pre-filing correspondence from the Complainant asserting the Complainant’s rights and requesting transfer of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Language of the Proceeding
The language of the Registration Agreement for the disputed domain names is Chinese. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or unless specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. No agreement has been entered into between the Complainant and the Respondent to the effect that the proceeding should be English.
Paragraph 11(a) of the Rules allows the Panel to determine the language of the proceeding having regard to all the circumstances. In particular, it is established practice to take paragraphs 10(b) and (c) of the Rules into consideration for the purpose of determining the language of the proceeding. In other words, it is important to ensure fairness to the parties and the maintenance of an inexpensive and expeditious avenue for resolving domain name disputes. Language requirements should not lead to undue burdens being placed on the parties and undue delay to the proceeding (Whirlpool Corporation, Whirlpool Properties, Inc. v. Hui’erpu (HK) Electrical Appliance Co. Ltd.,WIPO Case No. D2008-0293; Solvay S.A. v. Hyun-Jun Shin,WIPO Case No. D2006-0593).
The Complainant has requested that English be the language of the proceeding for the following reasons:
(1) the disputed domain names are used to sell counterfeit products to an English speaking market, which includes counterfeit product packaging and documentation solely in English;
(2) the content of the Websites, including contact information, is solely in English; and
(3) given that the disputed domain names at issue combine terms primarily with English-only definitions, and with no meaning in Chinese, the administrative proceedings should also be in English.
The Respondent did not make any submissions with respect to the language of the proceeding and did not object to the use of English as the language of the proceeding.
In exercising its discretion to use a language other than that of the registration agreement, the Panel has to exercise such discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng,WIPO Case No. D2006-0432).
The Panel finds that sufficient evidence has been adduced by the Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language (Finter Bank Zurich v. Shumin Peng, supra).
In view of the above, it is not foreseeable that the Respondent will be prejudiced, should English be adopted as the language of the proceeding.
Having considered all the matters above, the Panel determines under paragraph 11(a) of the Rules that English shall be the language of the proceeding. B. Identical or Confusingly Similar
The Panel finds that the Complainant has rights in the Trade Marks acquired through use and registration which predate by several years the dates of registration of the disputed domain names.
UDRP panels have for the vast majority consistently held that domain names are identical or confusingly similar to a trade mark for purposes of the Policy “when the domain name includes the trade mark, or a confusingly similar approximation, regardless of the other terms in the domain name” (Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662).
It is also established that the addition of generic terms to the disputed domain name has little, if any, effect on a determination of confusing similarity between the domain name and the mark (Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253); furthermore, mere addition of a generic or descriptive term does generally not exclude the likelihood of confusion (PRL USA Holdings, Inc. v. Spiral Matrix,WIPO Case No. D2006-0189).
In the present case, the Panel concludes that the addition of non-distinctive words such as “workout”, “exercise”, “nutrition”, “program” and “results”, words frequently used in retailing and marketing of branded goods in the exercise, health and fitness industries, and the addition of non-distinctive words and acronyms symbolising certain countries, does not serve to distinguish the disputed domain names from the Trade Marks in any way.
Every one of the disputed domain names contains the Trade Mark in its entirety. Furthermore, two of the disputed domain names, and , also contain the INSANITY Trade Mark in its entirety.
The Panel finds that the disputed domain names are confusingly similar to the Trade Marks.
The Panel therefore holds that the Complaint fulfills the first condition of paragraph 4(a) of the Policy. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a list of circumstances any of which is sufficient to demonstrate that the Respondent has rights or legitimate interests in the disputed domain names:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain names or names corresponding to the domain names in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain names even if you have acquired no trade mark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
There is no evidence that the Complainant has authorised, licensed, or permitted the Respondent to register or use the disputed domain names or to use the Trade Marks. The Complainant has prior rights in the Trade Marks which precede the Respondent’s registration of the disputed domain names by several years. There is therefore a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain names, and the burden is thus on the Respondent to produce evidence to rebut this presumption (Do The Hustle, LLC v.Tropic Web,WIPO Case No. D2000-0624; Croatia Airlines d.d. v. Modern Empire Internet Ltd.,WIPO Case No. D2003-0455).
The Complainant has asserted that the Websites are used by the Respondent to market counterfeit P90x and Insanity goods. There can be no legitimate interest in the sale of counterfeits (Lilly ICOS LLC v. Dan Eccles,WIPO Case No. D2004-0750).
The Respondent has failed to show that it has acquired any trade mark rights in respect of the disputed domain names or that the disputed domain names are used in connection with a bona fide offering of goods or services.
There has been no evidence adduced to show that the Respondent has been commonly known by the disputed domain names.
There has been no evidence adduced to show that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain names. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy. D. Registered and Used in Bad Faith
Pursuant to paragraph 4(b)(iv) of the Policy, the following conduct amounts to registration and use in bad faith on the part of the Respondent:
“By using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website 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 your website or location or of a product or service on your website or location.”
The Complainant has submitted compelling evidence to suggest that the disputed domain names have been used to offer for sale counterfeit products under the Trade Marks via the Websites. This is strong evidence of bad faith (Prada S.A. v. Domains For Life,WIPO Case No. D2004-1019).
The Panel therefore finds the requisite element of bad faith has been satisfied, under paragraph 4(b)(iv) of the Policy.
Three of the disputed domain names appear not to have been used by the Respondent. It has been established in many UDRP cases that passive holding under the appropriate circumstances falls within the concept of the domain name being used in bad faith (Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003; Action S.A. v. Robert Gozdowski,WIPO Case No. D2008-0028). The Panel finds that, in the circumstances of this case, the passive use of these three disputed domain names by the Respondent amounts to bad faith on the part of the Respondent.
Given the circumstances of this case, the Panel also considers the failure of the Respondent to respond to the letters of demand from the Complainant and to file a Response to the Complaint further supports an inference of bad faith (Bayerische Motoren Werke AG v. (This Domain is For Sale) Joshuathan Investments, Inc.,WIPO Case No. D2002-0787).
For all the foregoing reasons, the Panel concludes that the disputed domain names have been registered and are being used in bad faith. Accordingly the third condition of paragraph 4(a) of the Policy has been fulfilled. 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 names , , , , , , , , , , , , , , , , , , , , , , , , , , , , , , and be transferred to the Complainant.
Sebastian Hughes
Sole Panelist
Dated: January 11, 2011
Full & Egal Universal Law Academy