The Complainant is Beachbody, LLC of California, United States of America represented by Cozen O'Connor of United States of America.
The Respondent is gert, yhhi of Hunansheng, the People’s Republic of China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 15, 2010. On December 16, 2010, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the disputed domain name. On December 17, 2010, Xin Net Technology Corp. 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 29, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 19, 2011.
The Center appointed Douglas Clark as the sole panelist in this matter on January 20, 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 Panel deals with the language of proceedings in its substantive decision. 4. Factual Background
The Complainant is a company specializing in in-home health, wellness, weight loss and fitness solutions since 1998. In 2003 it launched P90X branded DVDs, kits and other products. The Complainant states that the P90X branded DVDs have become very popular.
The Complainant has registered P90X as a trademark in International Classes 5, 9 41 and 44 in the United States in 2004 and applied for an international registration covering DVDs in International Class 9 in 2008. The international registration has designated China and approximately 30 other countries. No evidence was filed to confirm if the trademark has been registered in China.
The disputed domain name was registered on May 26, 2010. 5. Parties’ Contentions A. Complainant
Identical or confusingly similar
The Complainant contends that the domain name is confusingly similar to the Complainant’s trademark because it only adds the descriptive term “popular”.
No rights or legitimate interests
The Complainant contends the Respondent has no rights or legitimate interests in the domain name in that it is not affiliated with the Complainant and has not shown it has any legitimate basis for registration of the domain name.
Registered and used in bad faith
The Complainant contends that the Respondent’s website has been used to sell counterfeit copies of the Complainant’s DVDs and that this shows both registration and use in bad faith. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings Language of Proceedings
The domain name registration agreement being in Chinese, pursuant to Rules, paragraph 11, unless otherwise agreed by the parties, or specified otherwise in the Registration Agreement, the language of the administrative proceedings shall be the language of the Registration Agreement, i.e. the default language of the proceedings shall be Chinese. However, the Complainant submitted request for English to be the language of the proceedings along with the Complaint.
Below is a summary of the Complainant’s arguments on the issue of the language of proceedings:
(1) the website was used to sell counterfeit products to an English-speaking market, which included counterfeit product packaging and documentation solely in English;
(2) the website solely featured content on the associated website, including contact information, in the English language;
(3) the domain name at issue combines terms with English-only definitions, the administrative proceedings should also be in English.
Pursuant to paragraph 11 of the Rules, the Panel is granted the power to determine the language of proceedings, having regard to the circumstances of the case. This Panel stated in Z, Inc. v. Zufu aka Huahaotrade,WIPO Case No. D2008-1191 that
“[o]ne important consideration of this issue is the fairness to both parties in their abilities to prepare the necessary documents and protect their own interests”.
The Center has provided both parties with an opportunity to comment on the language of the proceedings by sending both parties a consolidated language of proceeding notification. The Complainant has provided submissions in its Complaint regarding the proper language of proceedings, while the Respondent did not raise any objection or reply thereto. This Panel concluded in the Z, Inc. v. Zufu aka Huahaotrade, supra, cited above:
“A Respondent’s failure to respond to these notices should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint [. . .] a clear default by a Respondent who has been informed in their own language of the proceedings, and of the preliminary acceptance of the Complaint in a particular language, would certainly be a strong factor in support of a Panel subsequently determining that there should be consistency between the language of the Complaint as originally accepted and the language of proceedings as ultimately determined by the Panel [. . .] a default by the Respondent after having been notified of the proceedings and being requested to comment or object to the language request should be a strong factor for the Panel to proceed in line with the Center’s decision on language.”
Considering that both parties have been given fair opportunities to present their cases and the Respondent has been given an opportunity to object to the proceedings being conducted in English but has not responded, the Panel finds that in the circumstances of this case, and in particular because from the evidence filed it does appear that the website at the disputed domain name is solely written in English and directed to an English speaking audience, paragraph 11 of the Rules is best served by allowing the proceedings to be conducted in accordance with the Center’s standard practice. If the Respondent had filed a response in Chinese, this would have been accepted. As the only pleading before the Panel is in English, the Panel will issue its decision in English. Substantive grounds
There being no Response, paragraphs 5(e) and 14(a) of the Rules direct the Panel, in the absence of exceptional circumstances, to decide the dispute on the basis of the Complaint.
Under paragraph 4(a) of the Policy, the Complainant must prove the following three elements in order to make out a successful case:
(i) The 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 domain name; and
(iii) The domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has registered trademark rights in the trademark P90X in the United States America.
The Respondent has registered the disputed domain name , which merely adds the word "popular". The addition of the words “popular" does not in anyway detract from the similarity to the P90X mark.
The Panel finds that the disputed domain name is confusingly similar to the Complainant's registered mark P90X.
Accordingly, the Complainant has satisfied the first element under paragraph 4(a) of the Policy. B. Rights or Legitimate Interests
The Respondent registered the disputed domain name in 2010, after the Complainant registered its trademarks. The Respondent is not known by the disputed domain name and has never been authorized by the Complainant to use the registered marks. The website at the disputed domain name appears to have been selling counterfeit P90X DVDs and to be directed at an English speaking market, including the United States.
The Respondent has not provided evidence of the type specified in paragraph 4(c) of the Policy giving rise to rights or legitimate interests in the disputed domain name.
The Panel is satisfied from the evidence filed that the use made by the Respondent of the disputed domain name is not bona fide, and cannot give rise to rights or legitimate interests on the part of the Respondent under paragraph 4(a) of the Policy.
Accordingly, the Complainant has satisfied the second element under paragraph 4(a) of the Policy. C. Registered and Used in Bad Faith
The disputed domain name was registered after the Complainant registered its trademark. The use made by the Respondent of the disputed domain name to sell P90X DVDs that appear to infringe the Complainant’s rights is clear evidence of use in bad faith.
The Panel accordingly finds that the disputed domain name was registered and is being used in bad faith.
Accordingly, the Complainant has satisfied the third element under paragraph 4(a) 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.
Douglas Clark
Sole Panelist
Dated: January 23, 2011
Full & Egal Universal Law Academy