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 Alice Lina of Huzhou, Zhejiang, the People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 13, 2010. On December 14, 2010, the Center transmitted by email to Melbourne IT Ltd. a request for registrar verification in connection with the disputed domain name. On December 14, 2010, Melbourne IT Ltd. 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 December 16, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2011.
The Center appointed Eva Fiammenghi as the sole panelist in this matter on January 13, 2011. 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.
The Center notified on January 18, 2011 to the parties the Panel Order No. 1 ordering the Complainant to provide evidence demonstrating its ownership of the trademarks indicated in the Annexes D-J to the Complaint.
On January 18, 2011 the Complainant submitted to the Panel the documents evidencing that the change of name of the owner of the trademarks indicated in the Annexes D-J of the Complaint to Beachbody, LLC has been recorded by the Assignment Division of the United States Patent and Trademark Office and in the International Register published in the WIPO Gazette of International Marks. 4. Factual Background
According to the Complaint, the Complainant has been a leader in the field of in-home health, wellness, weight loss, and fitness solutions since 1998. One of the main components of the Complainant’s business encompasses the development, production, sale and distribution of its Beachbody family of weight loss and fitness products and services, including its famous P90X fitness DVDs and kits. The Complainant’s widely known P90X-branded DVDs, kits, and other products and services have achieved great success since their introduction in 2003.
According to the Complaint, the great success of the P90X products and services is due in part to the Complainant’s marketing and promotional efforts. These efforts include advertising and promotion through the Complainant’s websites, print and other Internet-based advertising, in-person and televised promotional appearances by its trainers, and its infomercials, amongst other efforts. The success of P90X is also generated by its consumers and the word of mouth buzz those consumers have generated. Success stories of countless individuals who have utilized P90X to help achieve their respective fitness goals are far too numerous to recount, but include stories from all types of people ranging from your average men and women in almost all age groups, to well-trained professional athletes and celebrities looking to stay fit and in shape.
The disputed domain name was registered on July 24, 2010. In its Complaint, the Complainant provided evidence that the website associated with the disputed domain name used to offer for sale products under the Complainant’s trademark. 5. Parties’ Contentions A. Complainant
I. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights:
As a result of the Complainant’s efforts, the quality of the Complainant’s products and services and the promotion and word of mouth buzz, the P90X mark and the P90X DVDs, products and services have been prominently placed in the minds of the public. The Complainant and its P90X mark have acquired a valuable reputation and goodwill among the public as consumers, purchasers and members of the public at large have become familiar with the Complainant’s P90X fitness DVDs and other products and services.
While the Complainant has gained significant common law trademark and other rights in its P90X marks through its use, advertising and promotion, the Complainant has also protected its valuable P90X mark by filing for and obtaining trademark registrations in various jurisdictions throughout the world, and has obtained an International Registration. These registrations include:
- United States Reg. No. 2,869,491 for the P90X word mark for “nutritional and dietary supplements” in International Class 5, registered on August 3, 2004, and used by the Complainant in connection with those products at least as early as July 21, 2003.
- United States Reg. No. 2,869,490 for the P90X & Design mark for “meal replacement bars, nutritional and dietary supplements” in International Class 5, registered on August 3, 2004, and used by the Complainant in connection with those products at least as early as July 21, 2003.
- United States Reg. No. 2,843,063 for the P90X word mark for “educational services, namely physical fitness instruction” in International Class 41 and for “dietary instruction, namely nutritional counseling services” in International Class 44, registered on May 18, 2004, and used by the Complainant in connection with those services at least as early as February 18, 2003.
- United States Reg. No. 2,973,356 for the P90X & Design mark for “educational services, namely instruction in the use of exercise equipment and diet programs” in International Class 41, registered on July 19, 2005, and used by the Complainant in connection with those services at least as early as July 2003.
- United States Reg. No. 3,669,400 for the P90X & Design mark for “pre-recorded video tapes, cassettes, DVDs and CDs featuring exercise, fitness and dietary information and instruction” in International Class 9, registered on August 18, 2009, and used by the Complainant in connection with those products at least as early as July 21, 2003.
- United States Reg. No. 3,444,723 for the P90X word mark for “pre-recorded video tapes, cassettes, DVDs, and CDs, featuring exercise, fitness and dietary information and instruction” in International Class 9, registered on June 10, 2008, and used by the Complainant in connection with those products at least as early as February 18, 2003.
- International Reg. No. 974040 for the P90X word mark for “pre-recorded video tapes, cassettes, DVDs, and CDs, featuring exercise, fitness and dietary information and instruction” in International Class 9, registered on July 25, 2008, and used by the Complainant in connection with those products at least as early as 2003.
Copies of all the above trademark registrations have been provided to the Panel as annexes D,E,F;G,H,I.J of the Complaint.
It is clear from the above that the Complainant used its P90X marks in commerce and obtained trademark registrations long before that the Respondent registered the disputed domain name .
Given the Complainant’s extensive and exclusive rights in the P90X mark, there can be little question that the Respondent purchased the disputed domain name with full knowledge of and with the intent to trade off of the Complainant’s pre-existing rights.
The disputed domain name is confusingly similar to the Complainant’s widely known P90X mark. The domain name incorporates the entirety of the Complainant’s P90X mark, displaying the identical characters in the exact same chronological order, in combination with the descriptive terms “extreme fitness”. The addition of this descriptive term does not distinguish the domain name from the Complainant’s P90X trademarks. But rather increases the likely consumer confusion and clearly infringes Complainant’s marks.
II. The Respondent has no rights or legitimate interests in respect of the disputed domain name:
The Respondent is not affiliated with the Complainant and there is no evidence to suggest that the Respondent has registered the disputed domain name to advance legitimate interests or for bona fide offering of legitimate goods or services. The facts on this matter indicate the exact opposite since the Respondent was and is in actually advertising, offering and selling counterfeit copies of the Complainant’s products at including counterfeit versions of the Complainant‘s P90X-Insanity and ChaLEAN Extreme-branded DVDs and workout kits.
III. The disputed domain name was registered and is being used in bad faith:
Given the fact that the Respondent has used the website located at to advertise, offer for sale and sell counterfeit copies Complainant’s products, including P90X-Insanity and ChaLEAN Extreme-branded DVDs the Complainant believes that the Respondent’s use of the disputed domain name is 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 Respondent, by registering the disputed domain name and using the domain name to advertise, offer for sale and sell counterfeit versions of the Complainant’s products, at a minimum, has registered the disputed domain name 1) attempting to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website, and of the goods being sold on the website, and 2) primarily for the purpose of disrupting the business of a competitor, which is a circumstance of bad faith registration and use pursuant to Policy, paragraph 4(b)(iii). B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
To qualify for cancellation or transfer of the disputed domain name, the Complainant must prove each of the following elements of paragraph 4(a) of the Policy, namely:
(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
In accordance with paragraph 15(a) of the Rules, the Panel shall decide the Complaint 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. A. Identical or Confusingly Similar
UDRP panels have 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” (See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662).
In the present case, the disputed domain name incorporates the Complainant’s widely known registered trademark P90X. The addition of the words “Extreme Fitness” are purely descriptive and, it may be added, are also misleading in view of the range of the Complainant’s products and services sold under the Complainant’s registered trademark P90X; and, furthermore, the addition of these elements do not serve to distinguish, for Policy purposes, the disputed domain name from the Complainant’s registered trademark P90X.
Likewise, the addition of the generic top-level domain (gTLD) “.com” to the disputed domain name does not constitute an element in the domain name so as to avoid confusing similarity.
In view of the above, the Panel finds that the disputed domain name registered by the Respondent is confusingly similar to the Complainant’s trademark, in which the Complainant has demonstrated, to the satisfaction of the Panel, that it has rights and commercial use of the same for several years.
The first element of the Policy has, therefore, been met. B. Rights or Legitimate Interests
In order to determine whether the Respondent has any rights or legitimate interests in respect of the disputed domain name (paragraph 4(c) of the Policy), attention must be paid to any of the following circumstances in particular but without limitation:
whether before any notice to the Respondent of the dispute, there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;
whether the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
There is no evidence before the Panel to show that the Respondent was acting in pursuance of any rights or legitimate interests when registering the disputed domain name. On the contrary, if the Respondent had any such rights or legitimate interests, the Respondent would have reasonably been expected to assert them, which the Respondent clearly has not done, by not replying to the Complaint.
Neither is there any evidence before the Panel that the Respondent has been authorized or licensed by the Complainant to use the Complainant’s widely known registered trademark P90X. In the view of the Panel, the adoption by the Respondent of a domain name confusingly similar to the Complainant’s trademark P90X inevitably leads to confusion on the part of Internet users and consumers seeking information about the Complainant and its products (see further on this point below). The consequential tarnishing of the Complainant’s trademark P90X and also the goodwill that the Complainant has established in this trademark through its promotion, advertising and commercial use of the same, sufficient evidence of which has been provided to the Panel, are done by the Respondent without any right or legal justification for doing so.
The Panel finds no evidence that the Respondent has used, or undertaken any demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services.
Likewise, no evidence has been adduced that the Respondent has commonly been known by the disputed domain name; nor, for the reasons mentioned above, is the Respondent making a legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that the Respondent has failed to produce any evidence to establish rights or legitimate interests in the disputed domain name. The Panel therefore finds that the Complaint fulfills the second condition of paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
Regarding the bad faith requirement, paragraph 4(b) of the Policy lists four examples of acts, which prima facie constitute evidence of bad faith. However, this list is not exhaustive, but merely illustrative.
Paragraph 4(b)(iv) of the Policy is particularly relevant to the present case and provides that there is evidence of bad faith in the following circumstances:
“(iv) by using the domain name, [the Respondent] has intentionally attempted to attract, for commercial gain, Internet users to its 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 its web site or location.”
Based on the record in the case file, the Panel considers that the Respondent, by registering the disputed domain name for commercial purposes, is trading on the Complainant’s valuable goodwill established in its widely known registered trademark P90X.
Again, by having registered and used the disputed domain name incorporating the Complainant’s widely known registered trademark P90X for commercial purposes and without the authorization of the Complainant, the effect is to mislead Internet users and consumers into thinking that the Respondent is, in some way or another, connected to, sponsored by or affiliated with the Complainant and its business; or that the Respondent’s activities are approved or endorsed by the Complainant. None of which, on the basis of the record in the case file, is, in fact, the situation. Such misleading consequences, in the view of the Panel, are indicative of bad faith on the part of the Respondent.
Furthermore, the fact that the disputed domain name includes the Complainant’s widely known trademark P90X, held and used in commerce by the Complainant for several years prior to the date the Respondent became the registrant of the disputed domain name and the fact that, the Respondent must have known and been aware of the Complainant’s rights in this mark at the time the Respondent registered the disputed domain name, which includes the Complainant’s mark, is a further factor supporting a conclusion of bad faith.
Finally, the failure of the Respondent to reply to the Complaint or take any part in the present proceedings is, again in the view of the Panel, a further indication of bad faith on the part of the Respondent.
For all the foregoing reasons, the Panel concludes that the disputed domain name has been registered and is 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 name be transferred to the Complainant.
Eva Fiammenghi
Sole Panelist
Dated: January 25, 2011
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