The Complainant is Beachbody, LLC, Santa Monica, California, United States of America, represented by Cozen O'Connor, United States of America.
The Respondent is Derek Armson, APD Marketing Ltd, St. Albans, Herts, United Kingdom of Great Britain and Northern Ireland. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2011. On April 20, 2011, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On April 20, 2011, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on April 28, 2011. The Center verified that the Complaint together with the amendment to 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 April 29, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 19, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 24, 2011. On May 24, 2011 after the transmission of notification of the Respondent’s default, two emails were received from the Respondent. The first email stating that the Respondent had responded to the Complaint on May 13, 2011. The second email forwarded the Response of May 13, 2011. On May 26, 2011 the Center acknowledged receipt of the two email communications with the one attachment consisting of a snapshot of website. The Center further informing the Respondent that he had omitted submitting his Response to the Center at the email address: domain.disputes@ in accordance to the requirements in paragraph 5 of the Rules, as indicated in paragraph 5 of the Notification of Complaint.
The Center appointed Michael J. Spence as the sole panelist in this matter on June 6, 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.
Following the appointment of the Panel, the Complainant submitted supplemental material which the Panel accepted on June 14, 2011 as part of the material for consideration, along with the Respondent's two emails of May 24, 2011 in accordance with paragraph 10(c) of the Rules. The Respondent was then given two weeks to respond to the Complainant’s Supplemental material (as requested by the Respondent in his email of June 8, 2011) which it did not do by the due date of June 28, 2011. 4. Factual Background
The Complainant has an established reputation in the field of "in-home health, wellness, weight loss and fitness solutions". It has been operating in this field since 1998. Its activities include the promotion of weight loss and fitness products under the trade marks POWER 90 and P90X for which it has United States, Community trade mark and International registrations. It does not have registration of the trade mark POWER-90X. The Respondent operates as an Amazon affiliate in the resale of what it claims to be the Complainant's products under the disputed domain name. 5. Parties’ Contentions A. Complainant
The Complainant contends: that the disputed domain name is identical or confusingly similar to its registered trade marks; that the Respondent has no relationship with the Complainant and could be selling counterfeit goods on a site designed to mislead consumers into believing that there is an association with the Respondent and the Complainant; and that the Respondent therefore has no rights or legitimate interests in the disputed domain name. The Complainant, both in its original Complaint and in the supplemental material emphasises that the lack of a relationship between the Respondent and Complainant is not made clear, and that the domain name has been registered and is being used in bad faith. B. Respondent
The Respondent contends: that because the term “Power-90X” is not a registered trademark the disputed domain name is neither identical nor confusingly similar to one of the Complainant's trade marks; that it was operating a legitimate resale site in which the relationship between the Respondent and Complainant was made clear; that it had no intention to create confusion or to profit from any confusion created by similarity between the disputed domain name and any trade mark; and that it was therefore not operating in bad faith. 6. Discussion and Findings A. Identical or Confusingly Similar
The disputed domain name contains the entirety of the trade mark POWER 90. Moreover, it consists in a combination of the two trade marks POWER 90 and P90X. For this reason there can be no doubt that it is either identical or confusingly similar to the Complainant's trade marks.
The Panel therefore finds that the Complainant has established the first element of paragraph 4(a) of the Policy in relation to the disputed domain name. B. Rights or Legitimate Interests
In this case, given the established reputation of the Complainant's mark and the strong likelihood of confusion, this Panel finds that the only possible legitimate interest that the Respondent might claim is as a reseller of the Complainant's goods. However, paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0) makes it clear that in order to constitute a legitimate, albeit unauthorized, resale site one of the criteria is that the site must “accurately and prominently [disclose] the registrant's relationship with the trademark holder". An important issue here, therefore, is whether the site operated under the disputed domain name discloses that relationship, and this is the issue to which both the Respondent and Complainant have paid most attention in the emails of May 24, 2011 and the Complainant's supplemental material. The thrust of the Respondent's contention is that the nature of the site as a resale site should be evident by implication especially given the fact that the site contains user reviews of the Complainant's product. This does not, however, meet the requirement of specific disclosure outlined in the WIPO Overview 2.0 and cases cited therein. There is no evidence of the Respondent having any other rights or legitimate interests in the disputed domain name.
The Panel therefore finds that the Complainant has established the second element of paragraph 4(a) of the Policy in relation to the disputed domain name. C. Registered and Used in Bad Faith
Given the evident intention of the Respondent to profit from the marketing arrangement involved conducting an Amazon affiliate site, and the strong likelihood of confusion in attracting consumers to that site, there can be little doubt that it would constitute bad faith for the Respondent to continue to operate under the disputed domain name.
The Panel therefore finds that the Complainant has established the third element of paragraph 4(a) of the Policy in relation to the disputed domain name. 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
Michael J. Spence
Sole Panelist
Dated: July 13, 2011
Full & Egal Universal Law Academy