The Complainant is Beachbody, LLC of Santa Monica, California, United States of America, represented by Cozen O’Connor, United States.
The Respondent is Gerard Casazza of Sayville, New York, United States, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with FastDomain, Inc. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 16, 2012. On March 16, 2012, the Center transmitted by email to FastDomain, Inc. a request for registrar verification in connection with the disputed domain name. On the same date, FastDomain, 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 March 21, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was April 10, 2012. The Response was filed with the Center on April 4, 2012.
The Center appointed William R. Towns as the sole panelist in this matter on April 18, 2012. 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 in the business of providing fitness, nutrition, weight loss and wellness products and services, including dietary supplements and diet aids, which have been marketed under the BEACHBODY mark since as early as 1999. The Complainant is the owner of multiple United States trademark registrations for BEACHBODY and other BEACHBODY-formative marks, the earliest of which was issued by the United States Patent & Trademark Office (USPTO) on December 24, 2002.
The disputed domain name was created on April 18, 2011, according to the concerned Registrar’s WhoIs records. The Respondent initially used the disputed domain name to redirect Internet traffic to the Respondent’s website at “” (“FirstClassS”), on which the Respondent offers for sale a variety of fitness, nutrition and weight loss products, although not the Complainant’s products.
Shortly after the registration of the disputed domain name, the Respondent contacted the Complainant. The Complainant objected to the Respondent’s use of the disputed domain name, and the Complainant offered to reimburse the Respondent for his registration costs in exchange for the transfer of the disputed domain name, which the Respondent refused. The Complainant through its legal counsel then sent a cease and desist letter to the Respondent. The Respondent, indicating he was seeking a “fair price” for the disputed domain name, offered to transfer the disputed domain name to the Complainant in consideration of payment of several thousand dollars, or to redirect the disputed domain name to the Complainant’s website in consideration of a recurring monthly payment of USD 250. Neither proposal was acceptable to the Complainant.
The disputed domain name currently resolves to a website entitled “Supplement Reviews” (referred to by the Respondent as “BeachBodyS”). This change was made following the Respondent’s receipt of the Complainant’s cease and desist letter. The BeachBodyS website contains a disclaimer of any association with the Complainant. A link on the website entitled “Need Supplements?” takes Internet visitors to the Respondent’s FirstClassS website, where, as noted above, the Respondent offers for sale fitness, nutrition, and weight loss products similar to or competing with the products offered by the Complainant. 5. Parties’ Contentions A. Complainant
The Complainant submits that the disputed domain name is confusingly similar to its BEACHBODY mark, as the disputed domain name incorporates the Complainant’s mark in its entirety. The Complainant asserts that it has used the BEACHBODY mark in commerce since 1999, and has obtained multiple registrations of the mark in the United States of America, as well as internationally. According to the Complainant, the addition of the common term “supplement” does not negate this confusing similarity, but instead calls to mind the Complainant’s business and increases the likelihood of consumer confusion.
The Complainant asserts that the Respondent has no legitimate interests in respect of the disputed domain name. The Complainant submits that the Respondent is not affiliated with the Complainant, and that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. To the contrary, the Complainant argues that the Respondent has used the disputed domain name to redirect Internet users to the Respondent’s FirstClassS website, an online nutritional supplements store that sells products of the Complainant’s competitors. The Complainant asserts that the Respondent’s use of the disputed domain name with health, wellness, and nutritional goods and services dilutes the BEACHBODY mark and impermissibly seeks to trade on the significant goodwill built up by the Complainant in relation to the mark.
The Complainant contends that the Respondent registered and is using the disputed domain name in bad faith. The Complainant submits that the Respondent registered the disputed domain name in order to sell it to the Complainant at an amount greatly in excess of its registration costs, to disrupt the business of the Complainant, and to intentionally attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainant’s BEACHBODY marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website, or the goods and services offered thereon.
In support of this, the Complainant submits that a short time after the registration of the disputed domain name the Respondent notified the Complainant that he intended to use the disputed domain name with an online nutritional supplements store, and to adopt “Beachbody Supplements” as his business name. The Complainant relates that it promptly voiced objections to the use of this designation, given the Complainant’s rights in the BEACHBODY mark. The Complainant requested that the Respondent cease all use of the “Beachbody Supplements” designation, but offered to reimburse the Respondent for his costs of registration in exchange for the transfer of the disputed domain name.
According to the Complainant, the Respondent would not agree to transfer the disputed domain name to the Complainant for registration costs, but agreed not use the Beachbody Supplements designator provided the Complainant was willing to offer a “fair price” to acquire the disputed domain name. The Respondent noted that “Beachbody has a lot of brand recognition” and that the disputed domain name was “a very valuable SEO tool.”
The Complainant relates that it thereafter through its outside counsel sent a cease and desist letter to the Respondent to reiterate the Complainant’s rights in its family of BEACHBODY mark, and to again request that the Respondent discontinue all use of “Beachbody” and transfer the disputed domain name to the Complainant. According to the Complainant, the Respondent again refused to transfer the disputed domain name for the reasonable costs of registration, and demanded payment of USD 5,000 in consideration for the transfer the disputed domain name. The Complainant states that it refused the Respondent’s demand, following which the Respondent offered to redirect the disputed domain name to the Complainant’s website in exchange for monthly payments of USD 250, which the Complainant also refused.
It was following these exchanges, according to the Complainant, that the Respondent created the BeachBodyS website to which the disputed domain name currently resolves. The Complainant characterizes this as nothing more than a thinly disguised promotional website for the Respondent’s online business at FirstClassS, noting that the home page of the Respondent’s website prominently displays a “Need Supplements?” tab linked to a web page with a caption stating “Check out First Class Supplements For all your Supplement Needs!”, which in turn is linked to the FirstClassS website.1 B. Respondent
The Respondent contends that the disputed domain name is not confusingly similar to the Complainant’s mark. According to the Respondent, his website at “BeachBodyS” is used solely for purposes of providing consumer reviews of various supplements. The Respondent states that none of the Complainant’s products are reviewed on the website, but only other brands of supplements. The Respondent further submits that his website expressly disclaims any association with the Complainant, that he has intentionally omitted “Beachbody” from the website title “Supplement Reviews”, and that his website does not in any manner resemble the Complainant’s website. Accordingly, the Respondent asserts that it should be “extremely clear” to Internet visitors that the BeachBodyS website is not affiliated with the Complainant.
The Respondent argues that he has rights or legitimate interests in the disputed domain name because the disputed domain name is being used to post consumer reviews of various supplements, to assist people in making good choices about supplements that they use. The Respondent submits that the BeachBodyS website will create a large community of supplement enthusiasts, which should actually benefit the Complainant. The Respondent states that there is no proof to support the Complainant’s assertion that the disputed domain name is being used to redirect customers to the Respondent’s FirstClassS website.
The Respondent denies that he registered or has used the disputed domain name in bad faith. According to the Respondent, the disputed domain name was acquired for use with a business he planned to launch under the name “Beach Body Supplements Inc.” The Respondent states that he abandoned this idea after contacting the Complainant. According to the Respondent, the Complainant objected to the Respondent’s use of “Beach Body”, and demanded that the Respondent transfer the disputed domain name to the Complainant. The Respondent relates that he refused to do so, but did offer to sell the disputed domain name to the Complainant at a price between USD 1,500 and USD 2,500. The Respondent argues that merely registering a domain name that corresponds to a common word and being willing to sell the domain name does not constitute bad faith. Further, the Respondent denies registering the disputed domain name primarily for the purpose of selling it to the Complainant, or to prevent the Complainant from registering a domain name reflecting its BEACHBODY mark. 6. Discussion and Findings A. Scope of the Policy
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. Milwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store,WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”, also known as “cybersquatting”. Weber-Stephen Products Co. v. Armitage Hardware,WIPO Case No. D2000-0187. See Final Report of the WIPO Internet Domain Name Process, April 30, 1999, paragraphs 169 and 170.
Paragraph 15(a) of the Rules provides that the Panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the Panel deems applicable.
Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the Respondent 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 with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Cancellation or transfer of the disputed domain name are the sole remedies provided to the Complainant under the Policy, as set forth in paragraph 4(i).
Paragraph 4(b) of the Policy sets forth four situations under which the registration and use of a disputed domain name is deemed to be in bad faith, but does not limit a finding of bad faith to only these situations.
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in the disputed domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is primarily if not exclusively within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of a right or legitimate interest in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270. B. Identical or Confusingly Similar
The Panel finds for purposes of paragraph 4(a)(i) of the Policy that the disputed domain name is confusingly similar to the Complainant’s BEACHBODY mark, in which the Complainant has demonstrated rights. In considering the question of identity or confusing similarity, the first element of the Policy stands essentially as a standing requirement.2 The threshold inquiry under the first element of the Policy is largely framed in terms of whether the trademark and the disputed domain name, when directly compared, are identical or confusingly similar.
There are differing views as to what is meant by “confusingly similar” in this context. In Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662, the panel applied a test which expressly disavowed any call for a likelihood of Internet user confusion; by contrast in Sanofi-Aventis v. Jason Trevenio, WIPO Case No. D2007-0648, the panel took a diametrically opposed view. The range of views is discussed in Apple Inc. v. Fred Bergstrom, Lotta Carlsson, Georges Chaloux and Marina Bianchi, WIPO Case No. D2011-1388.
In this instance, the disputed domain name incorporates the Complainant’s BEACHBODY mark in its entirety, and the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark, whichever test is applied. In the Panel’s view, the confusing similarity of the disputed domain name to the Complainant’s mark is not overcome merely by the addition of the word “supplements”, particularly in view of the nature of the Complainant’s trade. See, e.g., National Association for Stock Car Auto Racing, Inc. v. Racing Connection / The Racin’ Connection, Inc.,WIPO Case No. D2007-1524.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. C. Rights or Legitimate Interests
As noted above, once the Complainant makes a prima facie showing under paragraph 4(a)(ii) of the Policy, paragraph 4(c) shifts the burden of production to the Respondent to come forward with evidence of rights or legitimate interests in a disputed domain name. The Panel is persuaded from the record of this case that a prima facie showing under paragraph 4(a)(ii) has been made. The disputed domain name incorporates the Complainant’s BEACHBODY mark in its entirety, and is confusingly similar to the Complainant’s mark. Further, the record reflects that the disputed domain name, since its registration by the Respondent, has been used first to redirect Internet users to the Respondent’s commercial FirstClassS website, where the Respondent sells fitness, nutrition, and weight loss products similar to or competing with products offered by the Complainant, and then with the Respondent’s BeachBodyS website, which contains a link (“Need Supplements?”) to the Respondent’s FirstClassS website. There is no indication that the Respondent has been commonly known by the disputed domain name, and it is undisputed that the Respondent has not been authorized to use the Complainant’s mark.
Pursuant to paragraph 4(c) of the Policy, the respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent’s 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; or
(ii) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent appears to assert rights in the disputed domain name based on a claim to be making a legitimate noncommercial or fair use of the disputed domain name in connection with the Respondent’s BeachBodyS website. However, the record reflects that the Respondent initially used the disputed domain name to direct Internet users to the Respondent’s commercial website, FirstClassS, where the Respondent advertises and sells products that are similar to or compete with the Complaint’s BEACHBODY-branded products. It was not until the Complainant’s issuance of a cease and desist letter that the Respondent first began using the disputed domain name with the BeachBodyS website, which, as discussed earlier, provides a link under a prominently displayed “Need Supplements?” tab to the Respondent’s FirstClassS website. In light of such factors, the Panel concludes that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain name within the meaning of paragraph 4(c)(iii) of the Policy. See The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC,WIPO Case No. D2009-0057.
In the Panel’s opinion, the record in this case amply demonstrates that the Respondent knew of and had in mind the Complainant’s mark when registering the disputed domain name. The Panel considers that the Respondent more likely than not acquired the disputed domain name in order to trade on the initial interest confusion between the disputed domain name and the Complainant’s mark, so as to attract Internet users to the Respondent’s websites. The Respondent on his FirstClassS website offers nutritional supplements, fitness and weight loss products that are similar to and compete with the Complainant’s BEACHBODY-branded products, and the Respondent’s BeachBodyS website provides a link to it. In view of the foregoing, the Panel concludes that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy. See, e.g., Barceló Corporación Empresarial, S.A. v. Hello Domain,WIPO Case No. D2007-1380; Robert Bosch GmbH v. Asia Ventures, Inc.,WIPO Case No. D2005-0946; E v. Ult. Search, Inc.,WIPO Case No. D2001-1319.
Nor has the Respondent demonstrated to the satisfaction of this Panel that he registered the disputed domain name based on a good faith belief that its value was based on attraction as either dictionary words or as a descriptive term. To the contrary, the record, in the Panel’s view, reflects that the Respondent has targeted the Complainant’s mark. See Media General Communications, Inc. v. Rarenames, WebReg,WIPO Case No. D2006-0964. See also Asian World of Martial Arts Inc. v. Texas International Property Associates,WIPO Case No. D2007-1415; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager,WIPO Case No. D2007-0062. In the circumstances of this case, the Respondent’s posting of a disclaimer on the BeachBodyS website, subsequent to becoming aware of the dispute, is of no consequence.3
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant for valuable consideration in excess of respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) circumstances indicating that the respondent is using the domain name to intentionally attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on its website or location.
The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. The overriding objective of the Policy is, “to curb the abusive registration of domain names in the circumstances where the registrant is seeking to profit from and exploit the trademark of another”. M, LP v. Bill Zag and NWLAWS.ORG,WIPO Case No. D2004-0230.
For the reasons discussed under this and the preceding heading, the Panel considers that the Respondent’s conduct in this case constitutes bad faith registration and use of the disputed domain name within the meaning of paragraph 4(a)(iii) of the Policy. The Panel is persuaded from the record that the Respondent was aware of the Complainant and the Complainant’s BEACHBODY mark when registering the disputed domain name. The Panel concludes that the Respondent most likely registered and has used the disputed domain name with the intent to exploit and profit from the goodwill associated with the Complainant’s BEACHBODY mark. See Aubert International SAS and Aubert France SA v. T Co., WIPO Case No. D2008-1986. The Panel further is of the view that the Respondent registered and has used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy, to intentionally attract Internet users to his websites for commercial gain, by creating a likelihood of confusion with the Complainant’s mark as to source, sponsorship or affiliation. See E, Inc. v. Ult. Search Inc.,WIPO Case No. D2001-1319.
Accordingly, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 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 disputed domain name be transferred to the Complainant.
William R. Towns
Sole Panelist
Dated: May 2, 2012
1 In support of the factual allegations summarized herein, the Complainant has submitted annexes to the Complaint consisting inter alia of email communications with the Respondent and screen shots of the Respondent’s websites.
2 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 1.2.
3 See WIPO Overview 2.0, paragraph 3.5.
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