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 Jingtao of Wuhan, Hubei, the People’s Republic of China. 2. The Domain Names and Registrar
The disputed domain names and (the “Domain Names”) are registered with N LLC 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 20, 2011. On January 21, 2011, the Center transmitted by email to N LLC a request for registrar verification in connection with the Domain Names. On January 25, 2011, N LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact. 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 January 27, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was February 16, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 18, 2011.
The Center appointed Ian Lowe as the sole panelist in this matter on March 2, 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
The Complainant (formerly known as Product Partners LLC) is engaged in the provision of in-home health, wellness, weight loss and fitness solutions. A significant part of its business since 1998 has comprised the development, production, sale and distribution of fitness products and services under the BEACHBODY trademark including DVDs, kits and other products. The Complainant is the registered proprietor of a number of United States and International trademarks in respect of BEACHBODY.
The Domain Names were registered on May 10 and May 11, 2011. At the time of the Complaint they both resolved to a website whose home page was headed "BEACHBODY WORKOUT". The website offered for sale products similar to the Complainant's P90X, Insanity and RevAbs DVDs and workout kits. 5. Parties’ Contentions A. Complainant
A summary of the Complainant's contentions is as follows:
a) The Complainant is the registered proprietor of a number of United States and International trademarks for the word mark BEACHBODY including i) United States Registration number 2,862,904 registered on July 13, 2004; and ii) International registration number 897,949 registered on August 31, 2008, both in Classes 5, 9 and 41 covering a range of products and services such as pre-recorded DVDs featuring exercise, fitness and dietary information and instruction.
b) The Complainant has also gained significant common law trademark and other rights in its BEACHBODY marks through its use, advertising and promotion of products and services under the mark since 1998.
c) The Domain Names are confusingly similar to the Complainant's BEACHBODY mark in that they both incorporate the entirety of the mark together only with descriptive terms such as "buy", "DVD", "discount" and "sale".
d) The Respondent has no legitimate interests in respect of the Domain Names. The Respondent is not affiliated with the Complainant and there is no evidence that the Respondent registered the Domain Names to advance legitimate interests. In fact the Respondent is using the Domain Names to advertise, offer and sell counterfeit copies of the Complainant's P90X, Insanity and RevAbs branded DVDs. The Respondent failed to respond to correspondence asserting the Complainant's rights in the BEACHBODY mark and objecting to the sale of counterfeit copies of the Complainant's products from the Respondent's website.
e) Since the Respondent is using the Domain Names for a website dealing in counterfeit copies of the Complainant's products there can be little question that the Respondent's registration and use of the Domain Names is in bad faith. It is taking commercial advantage of the Complainant's trademark and commercial reputation and goodwill. The Respondent is attempting to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation or endorsement of the website to which the Domain Names resolve. Further, the Respondent registered and is using the Domain Names for the purpose of disrupting the Complainant's business. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Names the Complainant must prove that:
(i) the Domain Names are 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 Names; and
(iii) the Domain Names have been registered in bad faith and are being used in bad faith. A. Identical or Confusingly Similar
The Domain Names both comprise the Complainant’s registered trademark BEACHBODY together only with the generic words “buy”, "DVD", "discount" or "sale". The “.com” domain suffix may be ignored for the purpose of determining identity or confusing similarity with the Complainant’s mark. The addition of the generic words does not detract from the distinctiveness of the BEACHBODY mark.
The Panel accordingly finds that the Domain Names are confusingly similar to a trademark in which the Complainant has rights. B. Rights or Legitimate Interests
The Complainant submits that there is no evidence that the Respondent registered the Domain Names in order to pursue legitimate interests and that, on the contrary, the Respondent has no affiliation with the Complainant and is using the Domain Names to advertise, offer for sale and sell counterfeit copies of the Complainant's DVD products.
The Complaint includes the usual certificate by the Complainant's representative that the information in the Complaint is complete and accurate and that the assertions made in it are warranted. The copies of the Respondent's web pages indicate that the only contact details given for the operator of the Respondent's website are email addresses linked to the Domain Names. No statement is made on the website as to the status of any relationship between the Respondent and the Complainant although the inference is that the operator of the website is authorised to sell the products offered for sale which, of course, the Complainant does not accept.
On balance, the Panel agrees that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the Domain Names. As the WIPO Overview of WIPO Panel Views on Selected UDRP Questions states, the consensus view is that once a complainant makes out a prima facie case on this element then the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. The Respondent has chosen not to answer the Complainant’s case or to respond to the allegations made in the Complaint. In the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in the Domain Names. C. Registered and Used in Bad Faith
On the same basis, the Panel is satisfied that the Respondent registered and has used the Domain Names for the purpose of attracting users to its websites for commercial gain by creating a likelihood of confusion with the Complainant’s mark as to the “source, sponsorship, affiliation or endorsement” of the websites or of a product or service on the websites. The Panel finds that the Respondent must have had the Complainant in mind when it registered the Domain Names and, on the Complainant's case, the Respondent has done so for the purpose of selling products similar to those of the Complainant. The Panel therefore finds that the Respondent registered and is using the Domain Names in bad faith in terms of paragraph 4(b)(iv) 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 Names and be transferred to the Complainant.
Ian Lowe
Sole Panelist
Dated: March 16, 2011
Full & Egal Universal Law Academy