The Complainant is Beachbody, LLC of United States of America, represented by Cozen O'Connor, United States of America.
The Respondent is July Chou of China. 2. The Domain Names and Registrar
The disputed domain names , , , , , and are registered with GoD, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 13, 2012. On July 16, 2012, the Center transmitted by email to GoD, LLC a request for registrar verification in connection with the disputed domain names. On July 17, 2012, GoD, LLC 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 July 20, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was August 9, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 10, 2012.
The Center appointed Torsten Bettinger as the sole panelist in this matter on August 22, 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 the producer and manufacturer of exercise and fitness equipment, including a wide range of workout DVD products. The Complainant has been involved in the home fitness industry since 1998 and is the owner of numerous trademarks for its P90X, INSANITY and TURBOFIRE brands. P90X was first registered as a trademark as early as 2004, and the Complainant secured a Madrid registration (with protection in the People’s Republic of China) in 2008. Similarly, the Complainant’s INSANITY mark was registered in the United States in 2009, and Madrid protection was granted in July of 2009. The Complainant’s TURBOFIRE mark was registered in the United States in January of 2010, with Madrid protection extended in April of the same year. All three of these brands are used by the Complainant in connection with its home fitness products and workout materials.
The Respondent registered the disputed domain names in May of 2012 and has used several of them to display online shops offering either unauthorized or counterfeit copies of the Complainant’s goods. The additional disputed domain names display parking pages with pay-per-click (“PPC”) links related to the fitness industry. One of the disputed domain names, , currently resolves to an “under maintenance” message.
The Complainant sent the Respondent a cease-and-desist letter on May 28, 2012, requesting the Respondent to cease use of the disputed domain names and to remove the Complainant’s copyrighted material and images from the Respondent’s websites. The Respondent did not reply to the Complainant’s letter or follow-up messages. 5. Parties’ Contentions A. Complainant
The Complainant asserts that each of the elements specified in paragraph 4(a) of the Policy has been satisfied.
With regards to the first element of the Policy, the Complainant states that the disputed domain names are confusingly similar to its P90X, INSANITY and TURBOFIRE marks because each of the disputed domain names fully contains one of the Complainant’s registered trademarks in addition to non-distinctive dictionary terms. The addition of the words “buy”, “on”, “show”, “workout”, “fitness”, “store” and “online” do nothing to detract from the appearance of the trademarks in the disputed domain names and have, of themselves, no distinguishing character. The fact that the terms correspond to the industry of the Complainant, and to the Complainant’s products, further increases the likelihood of Internet user confusion.
The Complainant avers that the Respondent has no rights or legitimate interests in the disputed domain names as it is not an authorized reseller of the Complainant’s goods, and has not been licensed to use the Complainant’s marks in any way. The Complainant states that the Respondent is utilizing the Complainant’s copyrighted pictures and materials, and that the Respondent has copied the look and feel of the Complainant’s websites in creating the content displayed on many of the disputed domain names. Additionally, the Complainant alleges that the Respondent uses the disputed domain names to “offer unauthorized/counterfeit versions” of the Complainant’s fitness products. Thus, the Complainant states that the Respondent’s use of the disputed domain names is not a bona fide offering, nor a noncommercial or fair use.
Concerning the third requirement of the Policy, the Complainant contends that the Respondent has registered and used the disputed domain names in bad faith under paragraphs 4(b)(iii) and 4(b)(iv) of the Policy. The Complainant alleges that the Respondent has attempted to disrupt the business of the Complainant, a competitor in the fitness industry, and further that the Respondent has attempted to attract Internet users to its website for commercial gain via confusion as to the ownership of the disputed domain names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
The Complainant has provided evidence of its United States and Madrid trademark registrations for its P90X, INSANITY and TURBOFIRE marks. Each of the disputed domain names contains one of the Complainant’s trademarks in addition to one or more descriptive words (in two instances the TURBOFIRE mark has been reproduced in a domain name, utilizing a dash “-” between the “turbo” and “fire” portion of the mark, which the Panel disregards as irrelevant under this element of the Policy).
The addition of a dictionary word or term which is descriptive of a complainant’s goods or services will not generally serve to distinguish a respondent’s domain name from the relevant trademark. See Revlon Consumer Products Corporation v. Vladimir Sangco,WIPO Case No. D2010-1774; Viacom International Inc. v. Transure Enterprise Ltd.,WIPO Case No. D2009-1616; and Ansell Healthcare Products Inc. v. Australian Therapeutics Supplies Pty, Ltd.,WIPO Case No. D2001-0110. In this case, the descriptive terms “buy”, “on”, “show”, “workout”, “fitness”, “store” and “online” are related to the Complainant’s industry and products, which may serve to heighten Internet user confusion. See Osram GmbH v. Ocean Grenier,WIPO Case No. D2008-0083.
Finally, it is well established that a gTLD suffix, such as “.com”, is generally held to be irrelevant for the purposes of determining identity or confusing similarity under the Policy. See Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429.
The Panel thus finds that the disputed domain names are confusingly similar to the Complainant's registered trademarks and that the Complainant has established the requirement of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires the Complainant to prove that the Respondent has no rights or legitimate interests in the disputed domain name. It is, however, the consensus view among UDRP panelists that if the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under paragraph 4(c) of the Policy, then the respondent may lack rights or legitimate interests in the domain name. See Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110.
In this case, the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain names. The Complainant confirms that it has not licensed or authorized the Respondent to use its trademarks in any fashion and that there is no connection between the Respondent and the Complainant. There is no evidence on the present record, or in the publicly-available WhoIs records, to indicate that the Respondent is commonly known by any of the disputed domain names or a name corresponding to the disputed domain names. The Respondent appears to be an individual named “July Chou”, with an (apparently non-functional) address in China. Additionally, as several of the disputed domain names are used to host online shopping websites offering products similar to those of the Complainant, from which the Respondent presumably generates revenue, the Respondent clearly is not making any noncommercial or fair use of those domain names.
A broader question is raised by the Complainant in its assertion that the goods offered on the Respondent’s site are “unauthorized/counterfeit versions” of the Complainant’s products. The Complainant states that it maintains careful control over its goods and distributors, and alleges that the Respondent could in no way be selling authorized copies of its materials. Beyond these allegations and statements, however, the Complainant provides minimal evidence to support its claims of counterfeiting. The Complainant provides screen prints of the Respondent’s websites, where copies of the Complainant’s graphics have been displayed and where products that appear identical to those of the Complainant are advertised.
In order to successfully assert that a respondent is selling counterfeit goods, a complainant must provide sufficient evidence to support its claims. Such evidence may include expert review of goods secured through a “trap purchase”, testimonials received from Internet customers dissatisfied with the imitation merchandise secured through the respondent, or other similar support. See Karen Millen Fashions Limited v. Belle Kerry,WIPO Case No. D2012-0436.
The Panel has carefully reviewed the submitted screen shots, which compare the Complainant’s legitimate goods with those offered by the Respondent and, taken in connection with the Respondent’s misappropriation of the Complainant’s graphics, logos and website content, finds it more likely than not that the Respondent is offering either unauthorized copies of the Complainant’s materials or counterfeit goods. The Panel notes in this regard that the Respondent has been provided with notice of these proceedings and been given a fair opportunity to reply to these allegations of the Complainant. The Respondent has elected not to reply, thereby providing no rebuttal to this charge. If the Respondent were able to refute this claim, or perhaps believed it had established reseller or other rights to use the disputed domain name, one would expect the Respondent to come forward with such evidence. See Moncler S.r.l. v. Manlingtrade,WIPO Case No. D2011-0548.
In the absence of a Response, a panelist “shall decide the dispute based upon the [C]omplaint”, pursuant to the Rules, paragraph 5(e), and the panelist may accept as true the reasonable allegations set forth in the Complaint. See Carey International, Inc. v. Texas International Property Associates -NA NA,WIPO Case No. D2010-1232 and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, (“WIPO Overview 2.0”) paragraph 4.6.
Accordingly, the Panel finds that the Respondent’s use of the , , and domain names to display online web-shops offering unauthorized or counterfeit copies of the Complainant’s goods does not constitute a bona fide offering of goods or services.
The disputed domain names, , and currently resolve to PPC parking pages with links to workout and home fitness products. Under the circumstances, the use of a domain name containing a complainant’s trademark to provide advertising links does not constitute a bona fide commercial offering under the Policy. See Auer Lighting GmbH v. Domain Privacy LTD / The Tidewinds Group, Inc.,WIPO Case No. D2009-1622. Likewise, due to the commercial nature of PPC pages, this clearly does not constitute a legitimate noncommercial or fair use of the disputed domain names.
Finally, regarding the disputed domain name , which presently resolves to an “under maintenance” notice, the Panel notes that passive holding of a domain name is not consistent with a respondent’s right or legitimate interest. The Respondent has been provided with an opportunity to supply a defense, but has not provided any evidence of “demonstrable preparations to use” this domain name in connection with a bona fide commercial or noncommercial activity, and thus under the circumstances, the Panel finds that the Respondent has no rights or legitimate interests in this domain name. See BGL Group Limited v. Mobilise Me Inc,WIPO Case No. D2009-0669.
Under these circumstances, the Panel holds that the Respondent has no rights or legitimate interests in the disputed domain names and that the requirement of paragraph 4(a)(ii) is also satisfied. C. Registered and Used in Bad Faith
The Complainant has demonstrated that its P90X, INSANITY and TURBOFIRE marks are marketed in connection with home fitness and workout products. The marks were registered numerous years prior to the registration of the disputed domain names in May of 2012, and the use to which the Respondent has put the disputed domain names clearly indicates that it was aware of the Complainant at the time of registration.
Furthermore, by fully incorporating the Complainant’s trademarks in the disputed domain names and using the disputed domain names in connection with websites reproducing the Complainant’s trademarks, in addition to offering for sale either unauthorized or counterfeit copies of the Complainant’s goods, the Respondent is clearly attempting to divert Internet traffic intended for the Complainant’s website to its own for commercial gain by creating a likelihood of confusion as to the source or sponsorship of the Respondent’s websites and products. Such use constitutes bad faith under paragraph 4(b)(iv) of the Policy. See Chicago Mercantile Exchange Inc. v. Whois Privacy Protection Service Inc./Nguyen Thanh Cong,WIPO Case No. D2010-1766.
The Respondent’s actions in connection with the disputed domain names connected to PPC websites similarly constitutes activity proscribed by paragraph 4(b)(iv) of the Policy. The passive holding of the domain name additionally constitutes bad faith use in light of the other factors present in the case, including the Respondent’s registration of numerous domain names containing the Complainant’s marks, the unauthorized reproduction of the Complainant’s website content, and the provision of clearly false address information in the WhoIs records.
The Panel therefore concludes that the requirement of paragraph 4(a)(iii) of the Policy has also 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 disputed domain names , , , , , and be transferred to the Complainant.
Torsten Bettinger
Sole Panelist
Dated: August 23, 2012
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