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 Cody Bramlett, of San Diego, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name, , is registered with GoD, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 23, 2011. On September 26, 2011, the Center transmitted by email to GoD, Inc. a request for registrar verification in connection with the disputed domain name. On September 26, 2011, GoD, Inc. 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 October 3, 2011. In accordance with the Rules, paragraph 5(a), the due date for a Response was October 23, 2011. On October 12, 2011 the Center received an email communication from a third-party claiming to be the authorized representative for the Respondent, seeking an extension to the period of time to submit a Response. On October 14, 2011, the apparent authorized representative for the Respondent produced a written agreement between the Complainant and Respondent for a seven-day extension to the period of time to submit a Response. The Center granted the Respondent said seven-day extension, resetting the due date for a Response to October 30, 2011. The Center notified the Respondent of its default on October 31, 2011. However, on November 3, 2011, due to an administrative error, the Respondent was permitted an additional three days – until November 6, 2011 in which to submit a Response. The Center thereafter received a communication from the Respondent on November 3, 2011, which shall serve as a Response in these proceedings.
The Center appointed Dennis A. Foster as the sole panelist in this matter on November 8, 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 a United States of America company that markets products and services related to in-home fitness, wellness and weight loss. The Complainant owns United States Patent and Trademark Office (“USPTO”) registrations for the marks, BEACHBODY (e.g., Registration No. 2,665,151; issued December 24, 2002) and BEACHBODY.COM (Registration No. 3,078,168; issued April 11, 2006).
The disputed domain name, , was registered on June 28, 2010. The Respondent uses the disputed domain name to host a website that offers products and services that compete directly with those offered by the Complainant. 5. Parties’ Contentions A. Complainant
- Since 1998, the Complainant has been a leading United States of America company in the field of in-home fitness, wellness, weight loss and fitness solutions. The Complainant has traded under the BEACHBODY trademark and service mark to provide many products and services in those areas.
- The Complainant has successfully promoted its products and services through many avenues, including its website found at the domain name, , which the Complainant owns. As a result, the Complainant’s BEACHBODY mark has gained considerable recognition and reputation among the public.
- In addition to establishing common law trademark rights in its BEACHBODY mark, the Complainant has registered that mark with the USPTO. The Complainant has also registered the mark, BEACHBODY.COM, with the USPTO.
- The disputed domain name, , is confusingly similar to the Complainant’s BEACHBODY and BEACHBODY.COM marks. The disputed domain name incorporates the entirety of the Complainant’s marks, and the mere addition of the descriptive term “kettlebells” to the marks does not mitigate that confusing similarity. Kettlebell describes a type of dumbbell, an item that is commonly used in fitness exercises and thus apropos to the Complainant’s line of products and services.
- The Respondent has no rights or legitimate interests in the disputed domain name. There is no affiliation between the Complainant and Respondent. The Respondent uses the name to host a website that offers goods and services that compete directly with those offered by the Complainant, even featuring a fitness schedule bearing the Complainant’s BEACHBODY trademark.
- The Respondent registered and is using the disputed domain name in bad faith to falsely suggest that an association, affiliation or sponsorship exists between the Complainant and the Respondent’s website. The Respondent has made such false suggestion for its commercial gain through the marketing of competing products and services.
- The Complainant sent correspondence to the Respondent requesting a transfer of the disputed domain name, but the Respondent refused that request, agreeing only to cease using the BEACHBODY designation as a business name. B. Respondent
- The Respondent had no knowledge of the Complainant when the disputed domain name was registered. The name simply reflects the Respondent’s business: an outdoor fitness boot camp, which is located at a beach and utilizes kettlebells in its workout regimen.
- The Respondent started his business as a hobby to help friends with fitness. He has since spent his own money in developing that business and the website found at the disputed domain name. The Respondent is an honest person, who would not seek to infringe upon or profit from another’s rights.
- The Respondent has not attempted to sell the disputed domain name to the Complainant. Instead, after communications with the Complainant, the Respondent has discontinued use of the name, “Beachbody”, on his website and has actually discontinued use of the domain name. The Respondent has incurred even more costs in developing another domain name and website.
- Since the Respondent has given up the disputed domain name, it is now available for anyone to purchase. The Respondent never made any money due to confusion with the Complainant, and experienced frustration in attempting to deal amicably with the Complainant in defending his rights. C. Discussion and Findings
Paragraphs 4(a)(i) – (iii) of the Policy instruct the Panel to find that the Complainant has prevailed in these proceedings and should be entitled to obtain a transfer of all rights in the disputed domain name, , provided that the Complainant can prove that:
(i) The disputed domain name is 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 disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Complainant has demonstrated to the Panel sufficient evidence of its rights in the BEACHBODY and BEACHBODY.COM marks, in the form of valid USPTO registrations (Annexes D – G), to satisfy the requirements of Policy paragraph 4(a)(i). See, Expedia, Inc. v. Elia Tan, NAF Claim No. FA0991075 (“As the EXPEDIA mark is registered with the USPTO, Complainant has met the requirements of Policy [paragraph] 4(a)(i).”); and Philip Morris USA Inc. v. yfmg,WIPO Case No. D2010-0058 (“A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner.”).
The disputed domain name, , completely incorporates both of the Complainant’s marks. That name adds merely the descriptive term, “kettlebells,” to the Complainant’s BEACHBODY.COM mark. Numerous prior Policy panel decisions have held that the mere addition of generic or descriptive terms to a fully incorporated trademark or service mark in a disputed domain name does not diminish the confusing similarity between that name and the mark. This is especially true if such term(s) is(are) related to the business in which the Complainant is engaged. In this case, “kettlebells” is a term used for a type of dumbbell weight, which is a staple item found in fitness training, the exact field to which the Complainant’s operations pertain. Ergo, the Panel determines that the disputed domain name is confusingly similar to the Complainant’s mark. See, Harrods Limited v. Simon Harkin Travel,WIPO Case No. D2004-0546 (finding the disputed domain name, , to be confusingly similar to the mark, HARRODS); and Ashley Furniture Industries, Inc. v. Isaac Schreiber, NAF Claim No. FA1398088 (finding to be confusingly similar to the Complainant’s ASHLEY mark, where the complainant was in the furniture business).
Accordingly, the Panel finds that the Complainant has satisfied the requirements of Policy paragraph 4(a)(i). B. Rights or Legitimate Interests
The Panel believes that the Complainant has overcome its initial burden of furnishing a prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name by establishing rights in a confusingly similar mark and asserting that the Respondent has no affiliation with the Complainant whatsoever. It is then incumbent upon the Respondent to come forth with specific evidence to rebut that case. See, Phillip Morris, supra, (“Once the Complainant has established 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.”); and G.D. Searle & Co. v. Martin Marketing, NAF Claim No. FA0118277 (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”).
The Respondent contends that he was unaware of the Complainant and its mark when registering the disputed domain name, and that he is operating a workout fitness business associated with a beach and kettlebell weights that began as a hobby. If convincing to the Panel, the Respondent’s contentions would place his actions within the parameters of paragraph 4(c)(i) of the Policy, which sets forth an acceptable justification for disputed domain registration thusly:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
In this case, the Panel is not convinced of the Respondent’s contention. The Respondent offers no evidence beyond his bald assertion that he is engaged in or preparing to engage in such a business. For instance, there is no presentation of receipts for fees received or business expenses, lists of clients served, schedules of classes or any specific plans to proceed into operation. Without some concrete evidence of this sort, the Panel cannot conclude that paragraph 4(a)(i) applies in this case. See Sydney Markets Limited v. Nick Rakis trading as Shell Information Systems,WIPO Case No. D2001-0932 (In denying the applicability of Policy paragraph 4(c)(i) to the case, the panel opined that “[t]he Respondent has not provided the panel with a business plan, proof of registration of a business name…or any other evidence to show that it has invested any time, money or energy in preparing for use and actual use of the contested domain name in connection with a bona fide offering of goods and services.”); and AIB-Vincotte Belgium ASBL, AIB-Vincotte USA Inc./Corporation Texas v. Guillermo Lozada, Jr.,WIPO Case No. D2005-0485 (“…once Complainants make a prima facie showing, Respondent has to submit concrete evidence of at least demonstrable preparations in order to rebut Complainants’ showing that Respondent has not used, nor does it plan to use, the domain names in connection with the bona fide sale of goods or services.”).
The Respondent, Cody Bramlett, has failed to claim that he, or his business, is commonly known as the disputed domain name, , as might have sufficed to demonstrate his rights or legitimate interests in the name per paragraph 4(c)(ii). Furthermore, since the Respondent has contended – albeit unconvincingly – that he is involved in a commercial venture with respect to the disputed domain name, he fails also to fall within the prescriptions of paragraph 4(c)(iii), requiring “noncommercial or fair use” of the name.
The Respondent has therefore failed to successfully rebut the Complainant’s prima facie case.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of Policy paragraph 4(a)(ii). C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets forth four circumstances under which a panel may find bad faith registration and use of a disputed domain name. However, the Policy does not limit such a finding to those circumstances. See, HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,WIPO Case No. D2007-0062 (“The examples of bad faith registration and use set forth in paragraph 4(b) are not meant to be exhaustive of all circumstances from which such bad faith may be found.”); and Ashley Furniture, supra, (“The Panel …when conducting a Policy analysis…is not limited to the enumerated factors in Policy [paragraph] 4(b).”).
In this case, the Panel finds the Respondent, as an American resident, knew or should have known of the Complainant’s marks before registering the disputed domain name. The marks were registered with USPTO and the Complainant had a well-established website found at the Complainant’s domain name, , for many years prior to registration of the disputed domain name. Moreover, the Respondent concedes that, before he removed it, the Complainant’s BEACHBODY trademark was referenced on his initial website. Such knowledge on the part of the Respondent provides a sufficient basis for the Panel to issue a ruling of bad faith registration and use of the disputed domain name. See, for example, Maori Television Service v. Damien Sampat,WIPO Case No. D2005-0524; Façonnable SAS v. Names4sale,WIPO Case No. D2001-1365 (“A finding of bad faith may be made where the Respondent ‘knew or should have known’ of the registration and use of the trademark prior to registering the domain name…”); and SportSoft Golf, Inc. v. Hale Irwin’s Golfers’ Passport, NAF Claim No. FA0094956.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of Policy paragraph 4(a)(iii). 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.
Dennis A. Foster
Sole Panelist
Dated: November 22, 2011
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