Complainant is Beachbody, LLC of Santa Monica, California, United States of America, represented by Cozen O'Connor, United States of America.
Respondent is Jask Millson of Shanghai, the People’s Republic of China. 2. The Domain Names and Registrar
The disputed domain names and are registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 7, 2011. On January 7, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain names. On January 7, 2011, GoD, Inc. transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on January 13, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 2, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on February 3, 2011.
The Center appointed Nathalie Dreyfus as the sole panelist in this matter on February 15, 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. 4. Factual Background
According to GoD, Inc.’s WhoIs database, the disputed domain names and were, respectively, registered on August 15, 2010 and November 10, 2010. Both domain names currently resolve to an error page. At one point however, the disputed domain names resolved to a website displaying what appears to be fitness DVDs bearing the name “P90X”. Complainant alleges that said DVDs are counterfeit versions of its P90x and Insanity branded DVDs and workout kits. It is unfortunate however that Complainant omitted to provide some visual of the website or of the counterfeit products to reinforce its allegations.
Complainant is notably the owner of the following trademark registrations, covering goods and services of international classes 5, 9 and 41:
- U.S. Reg. No. 2,869,491, P90X, registered on August 3, 2004;
- U.S. Reg. No. 2,869,490, P90X, registered on August 3, 2004;
- U.S. Reg. No. 2,843,063, P90X, registered on May 18, 2004;
- U.S. Reg. No. 2,973,356, P90X, registered on July 19, 2005;
- U.S. Reg. No. 3,669,400, P90X, registered on August 18, 2009;
- U.S. Reg. No. 3,444,723, P90X, registered on June 10, 2008;
- U.S. Reg. No. 3,696,777, INSANITY, registered on October 13, 2009;
- International Reg. No. 974040, P90X, registered on July 25, 2008;
- International Reg. No. 1006552, INSANITY, registered on July 1, 2009.
Respondent is Jask Millson, located in Shanghai, China. 5. Parties’ Contentions A. Complainant
First, Complainant asserts that the disputed domain names are confusingly similar to Complainant’s trademarks P90X and INSANITY. Complainant further argues that the addition or insertion of the descriptive English words “sale”, “cheap”, “workout” and “store” does not prevent a finding of confusing similarity.
Second, Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. Complainant claims that Respondent is not affiliated with Complainant, that Respondent is advertising, offering and selling counterfeit copies of Complainant’s products including P90x and Insanity branded DVDs and workout kits, and that Respondent is causing initial consumer confusion.
Third, Complainant contends that the disputed domain names were registered and used in bad faith since Respondent used the website to which said domain names resolved to advertise, offer for sale and sell counterfeit copies of its products, including P90x and Insanity branded DVDs and workout kits. Among other things, Complainant claims that Respondent attempted to take commercial advantage of its trademarks and of its commercial reputation by trading off Complainant’s goodwill. Furthermore, Complainant asserts that it sought to have the website’s content removed on several occasions but that Respondent kept switching hosting providers. B. Respondent
Respondent did not reply to Complainant’s contentions and is therefore in default. 6. Discussion and Findings
The Panel is required to 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 appropriate.
Paragraph 4(a) of the Policy requires Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain names; and (iii) that the disputed domain names have been registered and are being used in bad faith. Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that Respondent has rights or legitimate interests in the disputed domain names. A. Identical or Confusingly Similar
The first element under the paragraph 4(a)(i) of the Policy requires Complainant to establish that the disputed domain names are identical or confusingly similar to a trademark in which it has rights.
The Panel finds that Complainant has established its registered trademark rights in P90X and INSANITY as evidenced by the trademark registrations submitted with the Complaint.
The Panel accepts that the disputed domain names are confusingly similar to Complainant’s P90X and INSANITY trademarks. The disputed domain names incorporate, respectively, the terms “P90X” and “insanity” in full, which provide the dominant element of the disputed domain names. Previous UDRP decisions have often held that the mere incorporation of a trademark in its entirety may be sufficient to establish that a domain name is identical or confusingly similar to complainant’s registered mark (Allianz SE v. Antonio Porchia,WIPO Case No. D2010-0694 and Alstom v. Value-Domain Com,WIPO Case No. D2009-1249).
The disputed domain names further incorporate, respectively, the common descriptive English words “sale” and “cheap” on one hand, and “workout” and “store” on the other. In light of previous UDRP decisions, the Panel considers that the mere addition of these types of words does not alleviate the likelihood of confusion (Allianz SE v. Antonio Porchia, supra and The Coca-Cola Company v. PrivacyP / Acosta Jose Julian,WIPO Case No. D2010-0335). Moreover, confusion is all the more likely to occur since some of the terms added to Complainant’s trademarks describe characteristics of the products and services sold by Complainant.
Furthermore, the adjunction of “.com”, due to the current technical requirements of the domain name system, should not be taken into account when evaluating the identity or similarity between the disputed domain names and Complainant’s trademarks (F. Hoffman-La Roche AG v. Steven Pratt,WIPO Case No. D2009-0589 and Canadian Tire Corporation Limited v. Swallowlane Holdings Ltd.,WIPO Case No. D2009-0828).
Complainant has therefore made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The second element under paragraph 4(a)(ii) of the Policy requires Complainant to establish that Respondent lacks rights or legitimate interests in the disputed domain names.
Paragraph 4(c) of the Policy sets out examples of what a respondent may demonstrate to show that it has rights or legitimate interests in respect of a domain name.
“Any of the following circumstances, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
Several UDRP decisions have established that once a complainant has made a prima facie case that a respondent lacks rights or legitimate interests, the burden shifts to the respondent to prove its rights or legitimate interests in the disputed domain name (F. Hoffman-La Roche AG v. Steven Pratt, supra and Canadian Tire Corporation Limited v. Swallowlane Holdings Ltd., supra).
The Panel believes from the record that there is no relationship between Respondent and Complainant and that Respondent is neither a licensee of Complainant nor has Respondent otherwise obtained an authorization to use Complainant’s trademarks.
Yet, the disputed domain names resolved to a website where P90X fitness related products and services were sold at reduced prices. This tends to confirm Complainant’s allegation that Respondent was advertising, offering and selling counterfeit copies of Complainant’s products, although it is regrettable that Complainant has not provided further supporting evidence of the counterfeiting through visuals of the website’s content.
Taking these elements into consideration, the Panel finds that Respondent has registered and used Complainant’s trademarks with the sole intention of exploiting the reputation of Complainant’s P90x and Insanity products and services without having to bear any advertising or promotional costs. Therefore, Respondent was deriving advantage from initial interest confusion. The Panel accepts that such behaviour does not provide a right or legitimate interest for the purposes of the Policy, in accordance with previous UDRP panel decisions such as Mpire Corporation v. Michael Frey,WIPO Case No. D2009-0258.
In the present case, the Panel finds that Complainant has made a prima facie showing of Respondent’s lack of rights or legitimate interests with respect to the disputed domain names. The Panel’s opinion is further corroborated by the lack of a Response by Respondent in these proceedings as well as the Panel’s findings further below. Consequently, the Panel considers that the condition set out by paragraph 4(a)(ii) of the Policy has been met by Complainant. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states circumstances which, if found, shall be evidence of bad faith registration and use, namely:
(i) circumstances indicating that Respondent has registered or acquire the disputed domain names primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainants who are the owner of the trademarks or service marks or to a competitor of Complainants, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain names; or
(ii) Respondent has registered the disputed domain names in order to prevent the owner of the trademarks or service marks from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the disputed domain names, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s web site or other on-line location, by creating a likelihood of confusion with Complainants’ marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s web site or location or of a product or service on the web site or location.
It should be noted that the circumstances of bad faith are not limited to the above. 1. Registration in bad faith
The Panel considers that it is unlikely that Respondent was unaware of Complainant’s trademarks when it registered the disputed domain names. Firstly, Respondent displayed on its website the trademark INSANITY and sold allegedly counterfeit P90x products and services, which supports an inference that Respondent registered the disputed domain names in bad faith.
Secondly, a simple and easy search of the term “P90X” with a search engine further shows the trademark’s degree of exposure to the public and, accordingly, to Respondent. Moreover, a trademark search would have revealed the existence of Complainant’s prior trademark rights over the terms “P90x” and “insanity.” Respondent’s failure to do so is a contributory factor to its bad faith (LANCÔME PARFUMS ET BEAUTÉ & CIE, L’ORÉAL v. 10 Selling,WIPO Case No. D2008-0226).
These findings lead the Panel to conclude that the disputed domain names have been registered in bad faith by Respondent.
In order to meet the requirement of paragraph 4(a)(iii) of the Policy, it is not sufficient to prove that the disputed domain names were registered in bad faith, it is also necessary to prove that the disputed domain names are being used in bad faith. 2. Use in bad faith
As previously indicated, Respondent was likely aware of the existence of Complainant’s trademarks P90X and INSANITY. In light of this knowledge, Respondent used the disputed domain names and to advertise, offer and sell allegedly counterfeit copies of Complainant’s products including P90x and Insanity branded DVDs. In the present case, the Panel finds that Respondent was using the disputed domain names to intentionally attempt to attract Internet users to the website associated with the said domain names by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of its website for commercial gain and earning.
Moreover, Respondent’s failure to reply to the Complaint and take any part in these proceedings suggests bad faith on its part (KNAUF Insulation Holding GmbH, KNAUF Insulation SPRL v. Belize Domain WHOIS Service Lt,WIPO Case No. D2010-1218).
For these reasons, the Panel finds that the disputed domain names have been registered and used in bad faith. Therefore, the Panel considers that the condition set out by paragraph 4(a)(iii) of the Policy has been met by Complainant. 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 Complainant.
Nathalie Dreyfus
Sole Panelist
Dated: February 28, 2011
Full & Egal Universal Law Academy