Complainant is Beachbody, LLC of Santa Monica, California, United States of America, represented by Cozen O'Connor, United States of America.
Respondent is Tianxiang Xu of Putain, Fujian, China. 2. The Domain Names and Registrars
The disputed domain names:
(a) , , and are registered with CSL Computer Service Langenbach GmbH dba J; and
(b) and are registered with GoD, Inc (together the “Registrars”);
collectively referred to as the “Domain Names”. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2011. On October 31, 2011, the Center transmitted by email to the Registrars a request for registrar verification in connection with the Domain Names. On October 31, 2011, and November 2, 2011 the Registrars transmitted by email to the Center their verification responses 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 November 10, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 30, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on December 1, 2011.
The Center appointed Clive L. Elliott as the sole panelist in this matter on December 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
The Domain Names were registered as follows:
(1)
March 15, 2011
(2)
April 1, 2011
(3)
April 14, 2011
(4)
May 5, 2011
(5)
July 20, 2011 5. Parties’ Contentions A. Complainant
Complainant asserts that it has been a leader in the field of in-home health, wellness, weight loss, and fitness solutions since 1998 and that one of the main components of its business encompasses the development, production, sale and distribution of its Beachbody family of weight loss and fitness products and services, including its P90X Extreme Home Fitness and Insanity fitness DVDs and kits. Complainant contends that it’s P90X and Insanity branded fitness DVDs, kits, and other products and services have achieved great success since their introduction in 2003 and 2008, respectively.
Complainant states that the success of its P90X and Insanity branded fitness DVDs, kits, and other products and services is due in part to its marketing and promotional efforts. It advises that these efforts include advertising and promotion through its websites, print and other internet-based advertising, in-person and televised promotional appearances by its trainers, and its infomercials, among other efforts. Complainant attributes the success of the P90X and Insanity branded fitness DVDs, kits, and other products and services to its consumers and word of mouth. Complainant contents that there are many success stories of individuals who have utilized the P9OX and Insanity branded products and services to help achieve their respective fitness goals and include stories from all types of people ranging from average men and women in almost all age groups, to well-trained professional athletes and celebrities looking to stay fit and in shape.
Complainant advises that as a result of its efforts, the quality of its products and services, and the promotion by word of mouth, the P90X and Insanity branded fitness DVDs, kits, and other products and services have been prominently placed in the minds of the public. Complainant submits that as a result it and its federally registered P90X and INSANITY marks have acquired a valuable reputation and goodwill among the public as consumers, purchasers and members of the public at large have become familiar with its P90X and Insanity branded products and services. Complainant asserts that while it has gained significant common law trademark and other rights in its P90X and INSANITY marks through its use, advertising and promotion, that it has also protected its P90X and INSANITY marks by filing for and obtaining trademark registrations in various jurisdictions throughout the world, and has obtained an International Registration.
Complainant asserts that it has used its P90X and INSANITY marks, sold its P90X and Insanity branded DVDs, kits, and other products and services in commerce, and obtained the above-referenced trademark registrations long before Respondent's registrations of the Domain Names in 2011. Complainant submits therefore that Respondent has purchased the Domain Names with full knowledge, and the intent to trade off, of Complainant’s pre-existing rights.
Complainant submits that the Domain Names are confusingly similar to its own well-known P90X and INSANITY marks, and incorporate the entirety of Complainant's P90X and INSANITY marks, displaying the identical characters in the exact same chronological order as found in Complainant's INSANITY trademark in combination with the descriptive term “all” for the domain name, and displaying the identical characters in the exact same chronological order as found in Complainant's P90X trademark in combination with the descriptive terms “lean”, “dvd”, “order”, and/or “review”.
Complainant contends that the addition of descriptive terms to its P90X and INSANITY marks fails to distinguish the Domain Names from Complainant’s marks, and increases the likelihood of confusion, amongst consumers as to the source of the Domain Names. Complainant notes that the meaning of the term “all” is “entirety,” and Respondent’s registration of the Domain Name denotes a website that is devoted entirely to the sale of “INSANITY® DVDs” and other products. Likewise, the meaning of the term “lean” is descriptive of being healthily thin, and Respondent’s registration of the Domain Name denotes a website that sells “P90X®” products to help people achieve a healthily thin physique. Complainant further contends that the meaning of the term “dvd” is the description of the high-capacity optical disks on which the P90X fitness exercise videos are embedded. Likewise, the common meaning of the term “order” is descriptive of reserving and buying a product, and Respondent’s registration of the Domain Name denotes a website that makes available for purchase “P90X® DVDs” and products.
Complainant submits that consumers who visit are likely to be confused based upon the false belief that is owned and operated by Complainant as a website for promoting and selling its P90X-branded products and services. Lastly, Complainant states that the common meaning of the term “review” is to survey or to evaluate critically, and Respondent's registration and use of the and Domain Names suggest that these and related websites offer legitimate evaluations of the P90X products for consumers to learn more about the program before purchasing.
Complainant contends that Respondent's registration of the Domain Names combine at least one of the above descriptive terms with Complainant's P90X and INSANITY marks and that consumers who visit these websites are likely to be confused, based upon the false belief that these websites are owned and operated by Complainant as websites for promoting and selling P90X and/or Insanity branded products and services.
Complainant states that Respondent is not affiliated with it, and observes that there is no evidence to suggest that Respondent has registered the Domain Names to advance legitimate interests or for the bona fide offering of legitimate goods or services. Complainant asserts that Respondent is advertising, offering and selling counterfeit copies of Complainant’s products at the websites associated with the Domain Names, including counterfeit versions of Complainant’s P90X and Insanity branded DVDs and workout kits.
Complainant advises that it closely monitors the distribution and sale of its P90X and Insanity branded products, which are only sold via television infomercials, on the Internet at Complainant’s authorized websites located at the domain names , and , and through authorized independent contractor sales representatives known as “Beachbody Coaches”, who reside only in the United States.
Complainant asserts that the fact that Respondent has deliberately created websites such as those associated with the Domain Names which are identical and mimic both the look and feel of Complainant's official websites at the domain names and , to sell counterfeit product further indicates that Respondent has not registered the Domain Names to advance a legitimate interest. Complainant also asserts that on the websites that resolve to the Domain Names Respondent has used Complainant's copyrighted product images, graphics and content, and uses the same color background, logos and fonts as Complainant's official product website at the domain names and .
Complainant contends that Respondent's use of the Domain Names in connection with the sale of counterfeit copies of the P90X and Insanity branded of products constitutes a willful and blatant bad-faith attempt to deceive consumers into believing that consumers are visiting websites owned by Complainant; and believing that the products offered for sale at websites associated with the Domain Names are legitimate products authorized by Complainant.
Complainant advises that on July 20, 2011 and August 1, 2011 it sent Respondent correspondence notifying Respondent of Complainant’s rights and requesting that Respondent transfer the domain name to Complainant. Complainant also advises that on the same dates, it sent Respondent and the website hosting providers, notices of rights and requests of transfer of the Domain Names by email and received no response. Complainant states that it conducted a reverse WhoIs search and found four other domain names that incorporate its famous P9OX and INSANITY marks with the above-referenced descriptive terms registered to Respondent. B. Respondent
Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings
The Panel is satisfied that Complainant has brought sufficient evidence to conclude that the Domain Names, or the websites to which they resolve, are subject to common control and that the consolidation is fair and equitable in this case. A. Identical or Confusingly Similar
Complainant asserts that it is a leader in the field of in-home health, wellness, weight loss, and fitness solutions and has traded since 1998, principally in relation to its Beachbody family of weight loss and fitness products and services. It further asserts that it has used the trademarks P90X in relation to extreme home fitness and INSANITY in relation to fitness DVDs and kits.
Complainant asserts that it has achieved common law trademark and other rights in its P90X and INSANITY marks through their use, advertising and promotion and further has protected its P90X and INSANITY marks by filing for and obtaining trademark registrations in various jurisdictions around the world.
On this basis the Panel concludes that Complainant has rights in its P90X and INSANITY trademarks (hereinafter the “P90X and INSANITY Trademarks”). Such rights date back to in or about 2003 and 2008, respectively; which is well before the dates of registration of the Domain Names i.e. during 2011.
It is clear that by virtue of its commercial operations in, inter alia, the fitness area, which is disputed, that an unrelated entity using a similar domain name is likely to lead to members of the public being confused and deceived.
Complainant submits that the Domain Names are confusingly similar to the P90X and INSANITY Trademarks and incorporate the entirety of the said Trademarks. It is further contended that the Domain Names display the identical characters in the exact same chronological order as found in Complainant's INSANITY trademark, in combination with the descriptive term “all” for the domain name, and displaying the identical characters in the exact same chronological order as found in Complainant’s P90X trademark, in combination with the descriptive terms “lean”, “dvd”, “order”, and/or “review”. There is clearly a basis for this submission and in the absence of any explanation from Respondent as to why it chose the Domain Names, it is found that:
a) Complainant has rights in respect of the P90X and INSANITY Trademarks.
b) The Domain Names are confusingly similar to the said Trademarks.
Accordingly, the Panel is satisfied that the first element of the Policy has been met. B. Rights or Legitimate Interests
Complainant asserts that Respondent has created a situation whereby the Domain Names resolve to websites which are identical and mimic both the look and feel of Complainant's official websites at the domain names and . It is further alleged that these websites promote and sell counterfeit products.
Respondent makes no effort to refute these allegations. The Panel concludes that such activities are inconsistent with legitimate rights or interests and that the use of the Domain Names in connection with the sale of counterfeit copies of P90X and Insanity branded products is plainly unjustified.
The Panel is of the view that, on the basis of the record and submissions, the Domain Names are being employed as a means of wrongly diverting Internet customers. In those circumstances, it is difficult to see how Respondent’s conduct could be characterized as legitimate. On this basis, it is found that Respondent has no rights or legitimate interests in the Domain Names.
The Panel is satisfied that the second element of the Policy has been met. C. Registered and Used in Bad Faith
The Panel concludes that Respondent has intentionally attempted to attract for commercial gain Internet users to its websites or other online locations not related to Complainant and thereby creating a likelihood of confusion with Complainant and/or the P90X and INSANITY Trademarks.
The Panel finds that Respondent registered and is using the Domain Names to take bad faith advantage of Internet users who may wish to access Complainant’s website or obtain its weight loss and/or fitness goods and services and that these Internet users are likely to be attracted to Respondent’s websites or goods/services and be misled as to their origins, sponsorship or association.
Given the number of domain names involved, the multiplicity of coincidences in terms of the display of identical characters and in the same chronological order, the similar get-up's of their websites, to name a few, the inference of actual knowledge on Respondent’s part is inescapable, as is the conclusion that Respondent knew of Complainant’s P90X and INSANITY Trademarks. Accordingly, it is found that Respondent has acted in bad faith.
The Panel has no difficulty in concluding that the third limb of the Policy has been met. 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 Names: , , , , and be transferred to Complainant.
Clive L. Elliott
Sole Panelist
Dated: December 21, 2011
Full & Egal Universal Law Academy