Complainant is Beachbody, LLC of Santa Monica, California, United States of America represented by Cozen O'Connor, United States of America.
Respondent is Robert Hayes c/o Dynadot Privacy of San Mateo, California, United States of America. 2. The Domain Names and Registrar
The disputed domain names and are registered with Dynadot, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 11, 2011. On March 14, 2011, the Center transmitted by email to Dynadot, LLC a request for registrar verification in connection with the disputed domain names. On March 14, 2011, Dynadot, LLC 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 March 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was April 5, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on April 6, 2011.
The Center appointed Lorelei Ritchie as the sole panelist in this matter on April 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. 4. Factual Background
Complainant is a company that specializes in the field of in-home health, wellness, weight loss, and fitness products. Complainant has obtained several trademark registrations in the United States, where Respondent lists its address of record, for the mark BEACHBODY, including Registration No. 2665151 (issued 2002); Registration No. 2862904 (issued 2004); and Registration No. 3450780 (issued 2008), as well as International Registration No. 897949 (issued 2006). Complainant also owns Registration No. 3078168 (issued 2006) for BEACHBODY.COM. Complainant asserts to maintain an active presence on the Internet through the domain name . Complainant uses this domain name to connect to a website through which it informs potential customers about its BEACHBODY and BEACHBODY.COM marks and services.
The disputed domain names and were registered on June 22, 2009. Respondent has no affiliation with Complainant. Respondent provides sponsored links from the website associated with the disputed domain names to websites that describe or advertise goods or services that are unaffiliated with Complainant or Complainant’s services.1 These include competing products. Complainant has not authorized these links, nor the use of its trademarks therewith. 5. Parties’ Contentions A. Complainant
Complainant contends that (i) and are identical or confusingly similar to Complainant’s trademarks; (ii) Respondent has no rights or legitimate interests in the disputed domain names; and (iii) Respondent registered and is using the disputed domain names in bad faith. B. Respondent
Respondent did not reply to Complainant’s contentions in this proceeding. 6. Discussion and Findings A. Identical or Confusingly Similar
This Panel must first determine whether and are identical or confusingly similar to a trademark or service mark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. The Panel finds that both are. The disputed domain names both incorporate in full Complainant’s registered trademark BEACHBODY.
The Panel finds that the added words “exercise” or “products” would be perceived by Internet users as descriptive of a website where they could find information about Complainant’s “products,” or “exercise” products in particular. This is particularly so since Complainant is known for, and indeed has registered trademarks to cover, among other things, its exercise products. So, consumers would expect to find information offered by Complainant on such websites.
Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Microsoft Corporation v. Step-Web,WIPO Case No. D2000-1500 (transferring ); General Electric Company v. Recruiters,WIPO Case No. D2007-0584 (transferring ); CBS Broadcasting, Inc. v. Y2K Concepts Corp.,WIPO Case No. D2000-1065 (transferring ).
This Panel therefore finds that the disputed domain names and are identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that respondent has been “commonly known by the domain name”; or (iii) “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”.
Respondent did not reply to the Complaint, however, and no evidence has been presented to this Panel that might support a claim of Respondent’s rights or legitimate interests in the disputed domain names. Rather, as mentioned in section 4 of this Panel’s decision, Respondent has used the disputed domain names to divert Internet users via sponsored links, to websites that are unaffiliated with Complainant or Complainant’s services.
Therefore, this Panel finds that Complainant has provided sufficient evidence of Respondent’s lack of “rights or legitimate interests” in accordance with paragraph 4(a)(ii) of the Policy which Respondent has not rebutted. C. Registered and Used in Bad Faith
There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [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 the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location.” As noted in section 4 of this Panel’s decision, Respondent has provided sponsored links from the websites to which the disputed domain names and refer to websites that describe or advertise goods or services that are unaffiliated with Complainant or Complainant’s services. These include competing products. Complainant has not authorized these links, nor the use of its trademarks therewith. Hence, Respondent is trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondent’s own commercial gain.
Therefore, this Panel finds that Respondent registered and used the disputed domain names in bad faith in accordance with paragraph 4(a)(iii) 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 disputed domain names and be transferred to Complainant.
Lorelei Ritchie
Sole Panelist
Dated: April 30, 2011
1 Complainant did not submit printouts of the webpages showing use of the disputed domain names by Respondent. The only such evidence was provided by the Center’s case manager as part of a thorough check into the background of the proceeding. The better practice would have been for Complainant to provide the evidence to the Panel as an exhibit.
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