The Complainant is Beachbody, LLC of Santa Monica, CA, United States of America, represented by Cozen O'Connor, United States of America.
The Respondent is S Devin, Devin s, of Putian, China. 2. The Domain Names and Registrar
The disputed domain names ; ; ; ; ; ; ; ; ; ; ; ; ; ; ; ; ; are registered with I Corp. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 20, 2011. On September 21, 2011, the Center transmitted by email to I Corp. a request for registrar verification in connection with the disputed domain names. On September 22, 2011, I Corp. transmitted by email to the Center its verification response confirming that the 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 the Respondent of the Complaint, and the proceedings commenced on September 30, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was October 20, 2011. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 21, 2011.
The Center appointed Jonas Gulliksson as the sole panelist in this matter on November 3, 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 is the owner of the following registered trade marks:
U.S. Reg. No. 2,869,490 for the P90X & Design mark for meal replacement bars, nutritional and dietary supplements in International Class 5, registered on August 3, 2004.
U.S. Reg. No. 2,869,491 for the P90X word mark for nutritional and dietary supplements in International Class 5, registered on August 3, 2004.
U.S. Reg. No. 2,843,063 for the P90X word mark for educational services, namely physical fitness instruction in International Class 41 and for dietary instruction namely nutritional counseling services in International Class 44, registered on May 18, 2004.
U.S. Reg. No. 2,973,356 for the P90X & Design mark for educational services, namely instruction in the use of exercise equipment and diet programs in International Class 41, registered on July 19, 2005.
U.S. Reg. No. 3,444,723 for the P90X word mark for pre-recorded video tapes, cassettes, DVDs and CDs featuring exercise, fitness and dietary information and instruction in International Class 9, registered on June 10, 2008.
U.S. Reg. No. 3,669,400 for the P90X & Design mark for pre-recorded video tapes, cassettes, DVDs and CDs featuring exercise, fitness and dietary information and instruction in International Class 9, registered on August 18, 2009.
International Reg. No. 974040 for the P90X word mark for pre-recorded video tapes, cassettes, DVDs and CDs featuring exercise, fitness and dietary information and instruction in International Class 9, registered on July 25, 2008.
The disputed domain names were registered on May 19, June 2 and July 3, 2010. 5. Parties’ Contentions A. Complainant
The Complainant has been a leader in the field of in-home health, wellness, weight loss and fitness solutions since 1998. The P90X products were introduced to the market in 2003. One of the main components of the Complainant’s business encompasses the development, production, sale and distribution of weight loss and fitness products and services, including its P90X Extreme Home Fitness DVD and kits. As a result of the Complainant’s marketing and promotional efforts inter alia the Complainant has gained significant common law rights in the P90X mark. The Complainant owns the domain name which contains the official P90X products web site.
The disputed domain names are all confusingly similar to the Complainant’s P90X mark. All of the disputed domain names incorporate the entirety of the P90X mark combined with the descriptive terms “discount”, “offer”, “outlet”, “dvd”, “workout”, “exercise” and/or “fitness”. The descriptive terms increases the likelihood of confusion among consumers and a false belief that these web sites are owned and operated by the Complainant as they are descriptive of web sites that offer P90X fitness, workout and exercise DVD products at a reduced price.
The Respondent is not affiliated with the Complainant and has not registered the disputed domain names with a legitimate interest or for a bona fide offering. On the contrary, the Respondent was and is using the web sites of the disputed domain names to advertise, offer and sell illegitimate counterfeit copies of the Complainant’s products. For some of the disputed domain names, the Respondent uses the Complainant’s copyrighted product images, graphics and content as well as the same color background, logos and fonts that is used on the Complainant’s official product web site resolving from the domain name . In addition, the Respondent created a detailed Frequently Asked Question (FAQ) tab, which further deceives consumers into believing that the web sites are associated with the Complainant’s products and business.
The Respondent registered the disputed domain names long after the Complainant had registered the P90X marks and all web sites of the disputed domain names are in English. The Respondent has attempted to take commercial advantage of the Complainant’s trade marks and commercial reputation and trade of the Complainant’s goodwill. The Respondent has registered and is using the disputed domain name in bad faith pursuant to Policy paragraph 4(b)(iii) and (iv).
The Complainant has corresponded with the Respondent via email notifying the Respondent of the Complainants rights and requesting transfer of the some of the disputed domain names, but received no answer. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The Complainant must make out its case in accordance with the requirements set out in paragraph 4(a) of the Policy. Namely the Complainant must prove that:
(i) the disputed domain names are identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names (paragraph 4(a)(ii)); and
(iii) the disputed domain names have been registered and are being used in bad faith (paragraph 4(a)(iii)). A. Identical or Confusingly Similar
The Complainant has relied on the trade mark registrations of the P90X trade marks listed under section 4 above. The Panel finds that the Complainant has proved its right to the P90X trade mark by the submitted registration certificates of the marks.
In accordance with the consensus view, the Panel does not regard the top-level suffix “.com” when deciding if the disputed domain names are identical or confusingly similar to the Complainant’s trade mark. In accordance with this, the disputed domain names and the registered trade mark only differ by the generic and/or descriptive words “discount”, “offer”, “outlet”, “dvd”, “workout”, “exercise” and/or “fitness”. The Panel finds that the incorporated P90X trade mark constitutes the most distinctive element of the disputed domain names and that the addition of generic and/or descriptive words to the trade mark in the disputed domain names is insufficient to avoid a finding of confusing similarity under the first element of the UDPR (See Lime Wire LLC v. David Da Silva/C,WIPO Case No. D2007-1168).
In accordance with the findings above the Panel concludes that the disputed domain names are confusingly similar to the Complainant’s registered P90X trade mark in the meaning of Policy, paragraph 4(a)(i) and the first element of the Policy is thus fulfilled. B. Rights or Legitimate Interests
The Complainant must make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name under Policy, paragraph 4(a)(ii) and then the burden shifts to the Respondent to prove its rights or legitimate interests.
The Complainant has stated that there are no business relations between the Complainant and the Respondent. Further, the Complainant has submitted screen shots of web sites at the disputed domain names and which prove to contain offers of products marketed and offered for sale as P90X.
The Panel finds, based on the WhoIs information on record, that the Respondent is not commonly known by the disputed domain names. Also, there are no indications that the Respondent is making a legitimate noncommercial or fair use of the disputed domain names.
In the light of what is stated above the Panel finds that the Complainant has made a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain names. The Respondent has not proved otherwise. Therefore, the Panel finds that the second element of the Policy is fulfilled. C. Registered and Used in Bad Faith
As to what is relevant in this case, the Policy, paragraph 4(b) states that the following circumstances, in particular but without limitation, shall be evidence of registration and use of a domain name in bad faith:
(iii) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its web site or location or of a product or service on its web site or location.
The Panel finds the fact that the registrations of the disputed domain names were made after the trade mark registrations as an indication of bad faith. Also, the Panel finds it highly improbable that the Respondent has selected arbitrarily the disputed domain names’ word combinations without having prior knowledge of the Complainant’s rights and business.
The Complainant has proved, by submitted screen shots of web sites of the disputed domain names, that the Respondent is using two of the disputed domain names to market and offer products for sale which seems to be identical to the Complainant’s P90X products. Also, on these web sites the Respondent has used the same layout as the Complainant uses on its official product web site, including inter alia the Complainant’s product images.
It is the Panels firm view that the Respondent has registered the disputed domain names in awareness of the Complainant’s rights. The Panel finds that the submitted screen shots of web sites on the and domain names fulfills the Complainant’s burden to prove the bad intentions and use of all the Respondent’s disputed domain name registrations. This view is confirmed by the Panel’s investigations into the other disputed domain names. The Panel finds that the Respondent’s registrations were made with the aims of disrupting the business of the Compliant and, for commercial gain, attracting Internet users to its web site by creating a likelihood of confusion with the Complainant's mark as to inter alia the source of and the products on its web sites. The Panel further notes that the other websites at the other disputed domain names were inactive websites.
All in all, the Panel finds that the disputed domain names were registered and are being used in bad faith. The third element of the Policy is thus fulfilled. 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 disputed domain names ; ; ; ; ; ; ; ; ; ; ; ; ; ; ; ; and be transferred to the Complainant.
Jonas Gulliksson
Sole Panelist
Dated: November 16, 2011
Full & Egal Universal Law Academy