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 Huangda of Putian, Fujian, China. 2. The Domain Name and Registrar
The disputed domain name is registered with Jiangsu Bangning Science & technology Co. Ltd. (the Registrar). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 15, 2011. On August 16, 2011, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On August 17, 2011, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On August 18, 2011, the Center transmitted an email communication to the parties in both Chinese and English regarding the language of the proceeding. On August 18, 2011, the Complainant submitted a request that English be the language of the proceeding. The Respondent did not comment on the language of the proceeding by the specified due date.
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 August 24, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 14, 2011.
The Center appointed Jonathan Agmon as the sole panelist in this matter on September 21, 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, Beachbody, LLC, is a company based in the United States of America, which engages in the development, production, sale and distribution of weight loss and fitness products and services, including the P90X branded fitness DVDs and kits since 2003.
The Complainant owns multiple trademark registrations for the mark P90X around the world. For example: United States trademark registration No. 2,869,491 – P90X, with the registration date of August 3, 2004; United States trademark registration No. 2,843,063 – P90X, with the registration date of May 18, 2004; International trademark registration No. 974040 – P90X, with the registration date of July 25, 2008; and others.
The Complainant sent the Respondent and its hosting providers cease and desist letters, dated January 13, 2011, April 29, 2011, May 13, 2011 and July 27, 2011, demanding that the Respondent cease from infringing its rights. The Respondent did not reply to the Complainant’s letters.
The disputed domain name was registered on December 24, 2010.
The disputed domain name used to lead Internet users to an on-line market place, which offered for sale allegedly counterfeit copies of the Complainant’s products, while using the Complainant's trademarks.
The disputed domain name currently resolves to an offline webpage. 5. Parties’ Contentions A. Complainant
The Complainant argues that its P90X mark has acquired a valuable reputation and goodwill among the public.
The Complainant further argues that the Respondent registered the disputed domain name with full knowledge of the Complainant, and its pre-existing rights and with the intent to trade-off the values of these.
The Complainant further argues that the disputed domain name is confusingly similar to Complainant’s P90X mark, and incorporates the mark entirely in the exact same chronological order as found in Complainant’s P90X trademark, with the addition of the descriptive term “schedule”.
The Complainant further argues that the mere addition of the descriptive term “schedule” does not distinguish the disputed domain name from the Complainant’s trademark, as “schedule” is a descriptive term that indicates a plan for carrying out a process or procedure, as in an exercise or workout schedule.
The Complainant further argues that the Respondent is not affiliated with the Complainant and there is no evidence to suggest that the Respondent registered the disputed domain name to advance a legitimate interest.
The Complainant further argues that the Respondent was advertising, offering and selling counterfeit copies of the Complainant’s products on the website at the disputed domain name.
The Complainant further argues that the Respondent created at the disputed domain name a website that mimics the look and feel of the Complainant’s official website at the domain name . The Complainant further states that the Respondent also created a detailed “Frequently Asked Questions” web page titled “FAQS” and used an email address [p90x…@] as a contact email address to purportedly invite consumers to inquire about the products and status of purchased orders.
The Complainant further argues that the website at the disputed domain name used the Complainant’s copyrighted images, graphics and content, and used the same color background, logos and fonts as the Complainant’s official website.
The Complainant further argues that the disputed domain name is likely to mislead or confuse the public as to its source or origin. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Procedural Issue – Language of the Proceedings
Paragraph 11(a) of the Rules provides that:
“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”
The language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of proceedings should be English.
The Panel cites the following with approval:
“Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case.” (Groupe Auchan v. xmxzl,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of proceedings:
a) The website at the disputed domain name used to sell products that seem to be the Complainant's products while using the English language;
b) The Respondent did not object to the Complainant's request that English be the language of proceedings.
c) The disputed domain name includes the English descriptive word “schedule”.
Upon considering the above, the Panel decides to render the Complainant's request and rules that English be the language of proceedings. B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant owns multiple trademark registrations for the mark P90X around the world. For example: United States trademark registration No. 2,869,491 – P90X, with the registration date of August 3, 2004; United States trademark registration No. 2,843,063 – P90X, with the registration date of May 18, 2004; International trademark registration No. 974040 – P90X, with the registration date of July 25, 2008; and others.
The disputed domain name differs from the registered P90X trademark by the additional word “schedule” and the additional gTLD “.net”.
The disputed domain name integrates the Complainant’s trademark P90X in its entirety, as a dominant element.
The additional word “schedule” does not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant’s P90X trademark, especially as “schedule” is a descriptive term that can indicate an exercise or workout schedule, which relates to the Complainant’s products and services.
Previous UDRP panels have ruled that the mere addition of a non significant element does not sufficiently differentiate the domain name from the registered trademark: “The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant’s registered mark” (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505). Also, “the trademark RED BULL is clearly the most prominent element in this combination, and that may cause the public to think that the domain name is somehow connected with the owner of RED BULL trademark” (Red Bull GmbH v. PREGIO Co., Ltd.,WIPO Case No. D2006-0909).
“The mere addition of a descriptive term to an identical trademark has been repeatedly held by previous panels as not sufficient to avoid confusion between the domain name and the trademark” (Red Bull GmbH v. Chai Larbthanasub,WIPO Case No. D2003-0709).
Also, the addition of the gTLD “.net” to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD “.net” is without legal significance since the use of a TLD is technically required to operate a domain name.
The result is that the Complainant has shown that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights.
Consequently, the Panel finds that the Complainant had shown that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights. C. Rights or Legitimate Interests
Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name (Policy, paragraph 4(a)(ii)).
In the present case, the Complainant alleged that the Respondent has no rights or legitimate interests in respect of the disputed domain name and that the Respondent failed to assert any such rights, or legitimate interests.
The Panel finds that the Complainant established such a prima facie case inter alia due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use its P90X trademark or a variation of it. The Respondent did not submit a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name. Thus, the Respondent did not rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. D. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant owns a registration for the P90X trademark since the year 2004. It is suggestive of the Respondent’s bad faith in these particular circumstances that the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
The Complainant also provided evidence to demonstrate its trademark's goodwill. The Panel cites the following with approval: “The Respondent’s selection of the disputed domain name, which wholly incorporates the Trade Mark, cannot be a coincidence […] Given the fame of the Trade Mark, there is no other conceivable interpretation of the Respondent's registration and use of the disputed domain name other than that of bad faith” (Swarovski Aktiengesellschaft v. Zhang Yulin, WIPO Case No. D2009-0947). It is therefore unlikely that the Respondent had no knowledge of the Complainant upon registering the disputed domain name.
The Complainant contends that the disputed domain name has been used, without the Complainant’s consent, to offer for sale counterfeit copies of the Complainant’s products on a website at the disputed domain name that mimics the look and feel of the Complainant’s official website. The Respondent has not contested the Complainant’s allegations. In the circumstances, this is evidence of bad faith registration and use.
Using the disputed domain name to promote similar or identical goods to the goods being offered by the Complainant is clear evidence that the Respondent registered and is using the disputed domain name with knowledge of the Complainant and of the use the Complainant is making in its P90X trademark, and indicates that the Respondent’s primary intent with respect to the disputed domain name is to trade off the value of these. The Respondent’s actions therefore constitute bad faith. See Herbalife International, Inc. v. Surinder S. Farmaha,WIPO Case No. D2005-0765, stating that “the registration of a domain name with the knowledge of the complainant’s trademark registration amounts to bad faith”. The Panel also finds that Respondent’s attempt to attract, for commercial gain, users to its website with the intent of creating a likelihood of confusion with the Complainant’s trademark and its affiliation with the Respondent’s website falls under paragraph 4(b) of the Policy.
Moreover, the Panel finds that the Respondent’s failure to respond to the Complainant’s cease and desist letter is a further indication of the Respondent’s bad faith (see Compiere Inc. v. Access, Denied,WIPO Case No. D2007-0131).
The Panel further notes that the website at the disputed domain name currently resolves to an offline page. This does not prevent a finding of bad faith registration and use.
Based on the evidence presented to the Panel, including the late registration of the disputed domain name and the use of the Complainant’s trademark in the disputed domain name, the Panel draws the inference that the disputed domain name was registered and used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) of the Policy. 7. Decision
For 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.
Jonathan Agmon
Sole Panelist
Dated: October 4, 2011
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